Case IPR2019-00612
`U.S. Patent No. 8,831,557
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.,
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`and
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`FIRSTFACE CO., LTD.,
`
`Patent Owner.
`
`________________
`
`Case IPR2019-00612
`U.S. Patent No. 8,831,557
`
`________________
`
`DECLARATION OF DR. ALFRED C. WEAVER
`
`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 1
`Weaver Declaration
`IPR2019-00612
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`

`

`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`TABLE OF CONTENTS
`
` 
`INTRODUCTION ........................................................................................... 1
`I.
`PROFESSIONAL BACKGROUND AND EXPERIENCE ........................... 1
`II.
`III. SCOPE OF ENGAGEMENT .......................................................................... 8
`IV. SUMMARY OF OPINIONS ......................................................................... 13
`V.
`LEGAL STANDARDS ................................................................................. 13
`A.
`Burden of Proof ................................................................................... 13
`B.
`Claim Construction ............................................................................. 14
`C.
`Person of Ordinary Skill in the Art ..................................................... 15
`D. Anticipation/Obviousness ................................................................... 16
`1.
`Obviousness (35 U.S.C. § 103) ................................................. 16
`VI. THE ’557 PATENT ....................................................................................... 24
`A.
`Background of ’557 Patent Subject Matter ......................................... 24
`1.
`HCI in General .......................................................................... 24
`2. Mobile Devices ......................................................................... 26
`The ’557 patent and the Challenged Claims ....................................... 27
`Problem Presented ............................................................................... 28
`Claim Construction ............................................................................. 30
`1.
`“simultaneously” ....................................................................... 30
`2.
`“inactive state” and “active state” ............................................. 30
`3.
`“user identification unit” ........................................................... 31
`VII. SUMMARY OF THE REFERENCES ......................................................... 32
`A.
`Fadell ................................................................................................... 32
`B. Gagneraud ........................................................................................... 35
`C.
`iOS ....................................................................................................... 37
`
`B.
`C.
`D.
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 2
`Weaver Declaration
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`Case IPR2019-00612
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`D. Goertz .................................................................................................. 37
`E.
`Herfet ................................................................................................... 38
`VIII. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE UNDER GROUND 1. ........ 40
`A.
`The cited art, even when combined, does not disclose performance of
`user identification simultaneously with switching the display to an active
`state. 40
`Fadell Does Not Perform User Identification Simultaneously
`1.
`with Switching the Display to an Active State. .................................. 40
`2.
`The deficiencies of Fadell are not resolved by Gagneraud....... 45
`B. A POSITA would not combine Fadell with Gagneraud to arrive at the
`claimed invention. .......................................................................................... 47
`1.
`Petitioners have not adequately articulated a motivation to
`combine Fadell with Gagneraud. ........................................................ 47
`2.
`Combining Fadell and Gagneraud would alter the fundamental
`operation of Fadell. .............................................................................. 48
`3.
`Power management considerations would dissuade a POSITA
`from combining Fadell with Gagneraud ............................................. 49
`IX. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE UNDER GROUND 2. ........ 52
`A. Goertz does not disclose an activation button that switches the display
`from an inactive state to an active state. ........................................................ 52
`B.
`The cited references do not disclose performing user identification
`simultaneously with switching the display to an active state. ....................... 54
`1.
`Goertz does not perform user identification simultaneously with
`switching the display to an active state. .............................................. 54
`2.
`The deficiencies of Goertz are not resolved by Herfet. ............ 55
`There is no motivation to combine Goertz with Herfet. ..................... 57
`
`C.
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`Petitioners have not adequately articulated a motivation to
`1.
`combine Goertz with Herfet. ............................................................... 57
`2.
`Herfet teaches away from the proposed combination by
`restricting its application to the power-on sequence. .......................... 59
`X. NO PRIOR ART REFERENCE DISCLOSES A DEVICE THAT
`PERFORMS FINGERPRINT RECOGNITION AND SIMULTANEOUSLY
`ACTIVATES THE DISPLAY SCREEN “BY A PRESS OF THE ACTIVATION
`BUTTON.” ............................................................................................................... 60
`XI. CONCLUSION .............................................................................................. 61 
` 
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 4
`Weaver Declaration
`IPR2019-00612
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`

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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`I, Alfred C. Weaver, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is Alfred Weaver. I am over the age of 18, have not been
`
`convicted of a crime involving moral turpitude, and am not otherwise disqualified
`
`from making this Declaration. I have personal knowledge of the facts contained in
`
`this Declaration and am competent to testify on the matters set forth below.
`
`2.
`
`I have been asked to provide my opinions as to whether certain prior art
`
`references render claims of United States Patent No. 8,831,557 (“the ’557 patent”)
`
`obvious and my opinions about what a person of ordinary skill in the art would have
`
`understood with respect to the ’557 patent in light of various prior art. I provide this
`
`testimony below.
`
`II.
`
`PROFESSIONAL BACKGROUND AND EXPERIENCE
`
`3.
`
`I am currently a Professor of Computer Science at the University of
`
`Virginia. I currently serve as the Associate Chair of the Computer Science
`
`Department, co-Director of the Computer Science Graduate Program, and Director
`
`of the Computer Science Ph.D. Graduate Program.
`
`4.
`
`I have over forty years of experience in computer science, including in
`
`the area human-computer interaction (“HCI”). I am qualified by education and
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 5
`Weaver Declaration
`IPR2019-00612
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`Case IPR2019-00612
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`experience to testify as an expert with respect to user interface design and human-
`
`computer interaction, especially as it relates to mobile devices.
`
`5.
`
`I earned a Bachelor of Science in Engineering Science from the
`
`University of Tennessee in 1971, having taken as many computer-related courses as
`
`were then available.
`
`6.
`
`I earned a Master of Science in Computer Science in 1973 from the
`
`University of Illinois at Urbana-Champaign (“UIUC”). My master’s thesis was
`
`related to the design and implementation of a novel programming language
`
`(VIPtran) with which a user could express industrial control logic. I designed a
`
`compiler that would parse the language statements and emit executable code.
`
`7.
`
`I earned a Ph.D. in Computer Science in 1976, also from UIUC. My
`
`Ph.D. dissertation was related to the design and implementation of a graphical
`
`interface by which a human user could draw a relay ladder diagram (used to describe
`
`the control logic of industrial processes), including a graphical compiler that parsed
`
`the user’s drawing and emitted executable code. I am a co-inventor of a patent related
`
`to my work: U.S. Patent No. 4,217,658, entitled “Process Control System that
`
`Controls Its Outputs According to the Results of Successive Analysis of the Vertical
`
`Columns of a Hypothetical Ladder Diagram.”
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`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
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`8.
`
`After receiving my Ph.D. I taught Computer Science for one year at
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`UIUC as a Visiting Assistant Professor of Computer Science. I joined the faculty of
`
`the Department of Applied Mathematics and Computer Science at the University of
`
`Virginia in 1977. I designed and implemented UVA’s first microcomputer
`
`laboratory,
`
`teaching microprocessor
`
`technologies (hardware, software, and
`
`communications) in a hands-on setting. This subject was new and popular in the
`
`1970s and 1980s. Note that I was teaching microprocessor programming and system
`
`design even before IBM introduced the personal computer in 1980.
`
`9.
`
`I designed and implemented UVA’s first course on Computer Networks
`
`in 1980. I taught both the theoretical and practical aspects of computer networking
`
`technology, with subjects ranging from ALOHAnet to Ethernet to token bus to token
`
`ring. I taught how to construct each network type and how to model mathematically
`
`the performance of each. I was a consultant for a number of networking projects,
`
`including the development of SHIPnet by Sperry Marine, the tram control system at
`
`DFW, and SAFENET (Survivable, Adaptable, Fiber Optic Network) for the U.S.
`
`Navy.
`
`10. The UVA Computer Science faculty separated from the Applied Math
`
`faculty and formed an independent Department of Computer Science in 1984. I
`
`served as the first Chair of the Department. I rose from Assistant Professor to
`
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`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
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`Associate Professor in 1983, and to full Professor in 1992. I am now the Associate
`
`Chair of the Department, co-director of the Computer Science Graduate Program,
`
`and Director of the Computer Science Ph.D. Graduate Program.
`
`11.
`
`I also was the Founding Director of the Internet Technology Innovation
`
`Center (a state-wide university collaboration to help brick-and-mortar businesses
`
`adapt to eCommerce) and the Founding Director of the Applied Research Institute
`
`(a group of UVA faculty dedicated to working on problems of critical national
`
`importance, especially computer security). I also taught the first UVA course on
`
`Electronic Commerce in 1995.
`
`12.
`
`I have been funded to undertake 134 separate research projects. My
`
`research group is most noted for our co-development of the Xpress Transfer Protocol
`
`for the U.S. Navy. XTP solved the problem of transmitting sensor data to any number
`
`of systems that need that data by utilizing a single multicast distribution; this avoided
`
`serial unicast, thus reducing network bandwidth requirements. XTP was a high-
`
`speed protocol with many new features (especially reliable delivery and multicast
`
`group management) and was a key component of the Navy’s SAFENET system,
`
`now MIL-STD-2204.
`
`13. Much of my research and scholarship has focused on HCI issues. My
`
`most recent journal article, co-authored with my Ph.D. student Liliya Besaleva, is
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`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
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`Case IPR2019-00612
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`entitled “Applications of Social Networks and Crowdsourcing for Disaster
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`Management Improvement.” It describes CrowdHelp, a disaster reporting system
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`based upon mobile devices and smartphones. The key to creating this system was
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`developing a usable HCI for victims, bystanders, first responders, and disaster
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`management officials.
`
`14. Similarly, my most recent conference paper, also co-authored with Ms.
`
`Besaleva, is entitled “CrowdQuake: Social Networking for Crisis Management.”
`
`This paper reported our development of a system that allows disaster management
`
`professionals to cluster data in real time according to the information needs of the
`
`moment (e.g., area with highest number of injured, area of most severely injured,
`
`areas within range of a particular disaster asset). A number of my other conference
`
`publications, such as “m-Health Application for Emergency Response Improvement
`
`through Crowdsourced Information” and “CrowdHelp: An Android Application for
`
`Emergency Response Improvement through Crowdsourced and Sensor-Detected
`
`Information,” also illustrate my expertise in the role of mobile computing and its
`
`HCI.
`
`15. Another journal article in which HCI was a prominent component is
`
`“Body Area Networks: Wireless Access to Physiological Data,” which describes a
`
`system we developed with National Science Foundation funding to allow doctors
`
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`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 9
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`anywhere in the world to monitor in real time the heartbeat characteristics of a
`
`soldier in combat. Another journal Article, “Remote Medical Monitoring,” reported
`
`an earlier result from the same study.
`
`16. Other conference publications report the results of our funded research
`
`to build low-power body sensors whose data can be read and displayed by mobile
`
`devices such as smartphones. “Securing Mobile Devices with Biotelemetry” reveals
`
`our design of a low-power heartrate sensor with a Bluetooth connection to a
`
`smartphone that can program the sensor and read and display the sensor data in real
`
`time. “Mobile Health Monitoring Through Biotelemetry” and “Control, Analysis,
`
`and Visualization of Body Sensor Streams” report on other aspects of this National
`
`Science Foundation funded research project that connects body sensors to mobile
`
`devices (e.g., smartphones, personal digital assistants, laptops) for the purpose of
`
`making real-time physiological data available to authorized personnel.
`
`17.
`
`I have also been asked to deliver several keynote speeches around the
`
`world. For example, I delivered speeches entitled “Providing Privacy and Security
`
`for Mobile Devices” in Hawaii, “Achieving Data Privacy and Security Using Web
`
`Services” in Hong Kong, “A Security Architecture for Distributed Data Security” in
`
`Italy, “Industrial Informatics” in Virginia, and “Electronic Commerce on the
`
`Internet” in Hawaii.
`
` 
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 10
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`IPR2019-00612
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`Case IPR2019-00612
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`18. Finally, I am active in a number of professional organizations. The
`
`Institute of Electrical and Electronics Engineers (“IEEE”) was formed in 1963 and
`
`encompassed another group, the Computer Society, formed in 1946, that promoted
`
`research and conferences on computing technologies. I joined IEEE in 1973 and the
`
`Computer Society shortly thereafter, and I have participated in numerous IEEE-
`
`sponsored events, with many papers published in IEEE-sponsored journals,
`
`conferences, and workshops. I was awarded the rank of IEEE Fellow in 1996
`
`(limited to 0.1% of the membership in any given year) for contributions to the design
`
`of computer communications protocols. I was awarded the rank of IEEE Life Fellow
`
`in 2015. I was also awarded the IEEE 3rd Millennium Medal, the IEEE Mittelmann
`
`Research Achievement Award, and the IEEE Hornfeck Service Award for my
`
`contributions to industrial electronics. I am also a Life Member of the IEEE
`
`Industrial Electronics Society, having served in numerous leadership positions,
`
`including IES President in 1994-95.
`
`19.
`
`I am currently a member of the Editorial Board of IEEE Computer
`
`magazine. I have been an area editor for computer networks and also for electronic
`
`commerce, and I was the editor for three years of the column “How Things Work.”
`
`20. The Association for Computing Machinery (“ACM”) was formed in
`
`1947 and, with its 100,000 current members, is the world’s largest professional
`
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`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 11
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`computing society. ACM brings together educators, researchers, and professionals
`
`to address the field’s challenges. I have been a professional member of ACM since
`
`1973 and have participated in many ACM-sponsored conferences and published in
`
`ACM-sponsored venues.
`
`21. A copy of my curriculum vitae is included with this declaration as
`
`Exhibit A.
`
`III. SCOPE OF ENGAGEMENT
`22.
`I have been retained by Nelson Bumgardner Albritton P.C. on behalf of
`
`Patent Owner Firstface Co., Ltd., to provide an analysis and opinions regarding
`
`United States Patent No. 8,831,557.
`
`23. Specifically, I have been asked to review and respond to the Petition
`
`for Inter Partes Review filed by Petitioners Apple Inc., Samsung Electronics Co.,
`
`Ltd. and Samsung Electronics America, Inc. in Case IPR2019-00612 (“Petition”)
`
`and the Declaration of Benjamin B. Bederson (Exhibit 1103 to the Petition).
`
`24.
`
`I have also been asked to provide my opinions about what a person of
`
`ordinary skill in the art (“POSA” or “POSITA”) would know and understand about
`
`the ’557 patent and the prior art references cited in the Petition and whether the
`
`challenged claims of the ’557 patent would have been obvious to a POSA at the time
`
`of invention in view of the cited prior art.
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` 
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 12
`Weaver Declaration
`IPR2019-00612
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`25. All of the opinions set forth in this Declaration have been made from
`
`the standpoint of a POSA. My understanding of the legal definition of a POSA and
`
`my opinion about what qualifications a POSA would have relative to the ’557 patent
`
`are provided below.
`
`26. The opinions expressed herein are my own opinions. They are based on
`
`my own education, experience, knowledge, and the information I have reviewed
`
`while preparing this Declaration. As of the date of this Declaration I have reviewed
`
`at least the following materials:
`
`Exhibit/
`Paper
`
`Description
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`U.S. Patent No. 8,831,557 to Jung et al.
`
`Prosecution History File of Application No. 13/590,483, which
`matured into U.S. Patent No. 8,831,557
`
`Declaration of Benjamin B. Bederson
`
`Declaration of Michael Hulse
`
`U.S. Patent Application Publication No. 2009/0083850 to Fadell et al.
`
`WIPO International Application Publication No. WO 2010/126504 to
`Gagneraud et al.
`
`Apple iPhone OS 3.1 User Guide (September 2009)
`
`Anand L. Shimpi, Apple’s iPhone: The Future is Here, AnandTech
`(July 2, 2007), http://www.anandtech.com:80/show/2265/4 (retrieved
`from
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` 
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 13
`Weaver Declaration
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`Description
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`Exhibit/
`Paper
`
`1109
`
`1110
`
`1113
`
`1114
`
`1117
`
`1121
`
`1122
`
`1123
`
`https://web.archive.org/web/20110225040334/http://www.anandtech.c
`om:80/show/2265/4)
`
`U.S. Patent No. 8,667,297 to Salter et al.
`
`WIPO International Application Publication No. WO 2007/140806 to
`Nurmi et al.
`
`U.S. Patent Application Publication No. 2010/0017872 to Goertz et al.
`
`German Patent Application Publication No. DE 197 10 546 A1 to
`Herfet (certified English translation + German language publication)
`
`U.S. Patent No. 8,965,449 to Rivera et al.
`
`Peter H. Lewis, THE EXECUTIVE COMPUTER; Compaq Finally
`Makes a Laptop, The New York Times (October 23, 1988)
`(https://www.nytimes.com/1988/10/23/business/the-executive-
`computer-compaq-finally-makes-a-laptop.html)
`
`J. Flinn & M. Satyanarayanan, Energy-aware adaptation for mobile
`applications, 33 SIGOPS Oper. Syst. Rev. 48-63 (December 12, 1999)
`(DOI= http://dx.doi.org/10.1145/319344.319155)
`
`A. Roy, S. M. Rumble, R. Stutsman, P. Levis, D. Mazières, & N.
`Zeldovich, Energy Management in Mobile Devices with the Cinder
`Operating System, Proceedings of the sixth conference on Computer
`systems (EuroSys ’11), Pages 139-52 (April 10, 2011)
`(DOI=http://dx.doi.org/10.1145/1966445.1966459)
`
`1124
`
`Your Palm Treo 680 Smart Device User Guide (2006)
`(https://www.att.com/support_static_files/manuals/Palm_Treo_680.pd f)
`
`1125
`
`D. Muthukumaran, A. Sawani, J. Schiffman, B. M. Jung, & T. Jaeger,
`
` 
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 14
`Weaver Declaration
`IPR2019-00612
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`Description
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`Exhibit/
`Paper
`
`1126
`
`1128
`
`1129
`
`1130
`
`1131
`
`1132
`
`1133
`
`Measuring Integrity on Mobile Phone Systems, Proceedings of the
`13th ACM symposium on Access control models and technologies
`(SACMAT ’08), Pages 155-64 (June 11, 2008)
`
`(DOI=http://dx.doi.org/10.1145/1377836.1377862)
`
`M. Landman, Managing Smart Phone Security Risks, 2010
`Information Security Curriculum Development Conference
`(InfoSecCD ’10), Pages 145-55 (October 1, 2010) (DOI=
`http://dx.doi.org/10.1145/1940941.1940971)
`
`File Wrapper of U.S. Provisional Patent Application No. 60/995,200
`to Sanford et al.
`
`iOS: A visual History, The Verge (September 16, 2013)
`(https://www.theverge.com/2011/12/13/2612736/ios-history-iphone- ipad)
`
`iPhone Q&A: Differences Between the Original iPhone & iPhone 3G,
`EveryiPhone.com (November 18, 2011)
`(https://everymac.com/systems/apple/iphone/iphone-faq/differences-
`between-the-original-iphone-and-iphone-3g.html)
`
`Declaration of Yosh Moriarty
`
`iPhone 3G Finger Tips (2009)
`
`P. Tarr, W. Harrison, H. Ossher, A. Finkelstein, B. Nuseibeh, & D.
`Perry, Workshop on Multi-Dimensional Separation of Concerns in
`Software Engineering, Proceedings of the 2000 International
`Conference on Software Engineering: ICSE 2000 the New
`Millennium, Pages 809-810 (2000)
`(DOI=https://doi.org/10.1145/337180.337827)
`
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 15
`Weaver Declaration
`IPR2019-00612
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`

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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`
`
`Description
`
`Exhibit/
`Paper
`
`Joint Claim Construction and Prehearing Statement, Docket No. 59,
`Firstface Co., Ltd. v. Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc., Case No. 3:18-cv-02243 (N.D. Cal.)
`
`Joint Claim Construction and Prehearing Statement, Docket No. 57,
`Firstface Co., Ltd. v. Apple Inc., Case No. 3:18-cv-02245 (N.D. Cal.)
`
`Declaration of Victor Cheung
`
`Anand L. Shimpi, iPhone 3G - First Battery Life Results (July 11,
`2008), http://www.anandtech.com:80/show/2566 (retrieved from
`http://web.archive.org/web/20100412072814/http://www.anandtech.com:
`80/show/2566)
`
`James Galbraith, Test results: iPhone 4 battery life (July 1, 2010)
`https://www.macworld.com/article/1152460/iphone4_battery.html
`(retrieved from
`http://web.archive.org/web/20120427120056/https://www.macworld.c
`om/article/1152460/iphone4_battery.html)
`
`U.S. Patent Application Publication No. 2012/0167170 to Shi, et al.
`
`U.S. Patent Application Publication No. 2012/0133484 to Griffin
`
`Declaration of Thomas Cecil
`
`Deposition Transcript of Benjamin Bederson
`
`1134
`
`1135
`
`1136
`
`2002
`
`2003
`
`2004
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`2005
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`2006
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`2007
`
`
`
`27.
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`I am being compensated for my time spent in this matter at a rate of US
`
`$500 per hour plus reasonable expenses incurred in connection with my testimony.
`
`This compensation is not dependent on the opinions I provide nor the outcome of
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` 
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`- 12 -
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 16
`Weaver Declaration
`IPR2019-00612
`
`

`

`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`this proceeding and is not otherwise contingent in any way on the issues involved in
`
`this matter.
`
`IV. SUMMARY OF OPINIONS
`28. As expressed herein and described further below, my opinions in this
`
`matter are:
`
`a. Claims 1, 8, 9, and 15 are not unpatentable under 35 U.S.C. §
`
`103(a) over the combination of Fadell in view of iOS and
`
`Gagneraud; and
`
`b. Claims 1, 8, 9, and 15 are not unpatentable under 35 U.S.C. §
`
`103(a) over the combination of Goertz in view of Herfet.
`
`V. LEGAL STANDARDS
`29.
`In this section, I address my understanding of various legal principles
`
`regarding invalidity of a United States patent.
`
`A. Burden of Proof
`30.
`I understand that the party challenging the validity of an issued United
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`States patent bears the burden of proof to demonstrate that such patent is invalid. I
`
`understand that in the context of an Inter Partes Review, a petitioner bears the
`
`burden to prove invalidity by a preponderance of the evidence. I understand this is a
`
`different legal standard than a District Court litigation, where the challenger of a
`
` 
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`- 13 -
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 17
`Weaver Declaration
`IPR2019-00612
`
`

`

`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`
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`patent’s validity is required to prove its case by clear and convincing evidence. I
`
`have applied the preponderance of the evidence standard to my opinions as
`
`expressed in this Declaration.
`
`B. Claim Construction
`31.
`I understand that the first step in determining validity is to properly
`
`construe the claims of a patent and that the second step is to compare the prior art to
`
`the properly construed challenged claims to determine whether the claim is valid. I
`
`am not a patent attorney or patent agent. My opinions regarding claim construction
`
`are limited to what I believe a POSA would have understood based on the relevant
`
`documents.
`
`32.
`
`I understand that validity is determined on a claim-by-claim basis.
`
`Thus, if one claim of a patent is invalid, it does not necessarily mean that any other
`
`claim is invalid.
`
`33.
`
`I understand that terms within a patent claim should be given their plain
`
`and ordinary meaning to a POSA at the time of the invention. I understand that the
`
`plain and ordinary meaning is determined from the language of the claims, the
`
`written description, and the prosecution history of the patent at issue. I understand
`
`that an inventor can act as his or her own lexicographer, ascribing a specific meaning
`
`to claim terms.
`
` 
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`- 14 -
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 18
`Weaver Declaration
`IPR2019-00612
`
`

`

`Case IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`
`
`C.
`34.
`
`Person of Ordinary Skill in the Art
`I understand that an important consideration when evaluating a patent’s
`
`validity is the level of ordinary skill in the relevant art. For example, in determining
`
`how much technical information is taught by a particular reference, that reference’s
`
`disclosure should be considered from the perspective of a POSA. Similarly, when
`
`evaluating the disclosure of the patent at issue, the understanding of a POSA is taken
`
`into account.
`
`35.
`
`I understand that several factors are considered in determining the level
`
`of ordinary skill in the art, including the educational level of active workers in the
`
`field, the types of problems encountered in the art, the nature of prior art solutions
`
`to those problems, prior art patents and printed publications, the activities of others,
`
`the sophistication of the technology involved, and the rapidity of innovations in the
`
`field.
`
`36.
`
` I generally agree with Dr. Bederson’s assessment of a person of
`
`ordinary skill:
`
`[A] person of ordinary skill in the art, at the earliest possible priority date of
`
`the ’557 patent, would have possessed a bachelor’s degree in Computer
`
`Science, Computer Engineering, or equivalent and have at least two years of
`
` 
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`- 15 -
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`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 19
`Weaver Declaration
`IPR2019-00612
`
`

`

`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`
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`relevant experience in the fields of user interface design and mobile devices,
`
`or otherwise equivalent industry experience in the relevant field.
`
`Ex. 1103 ¶ 29.
`
`37. Based on my experience, I have an understanding of the capabilities of
`
`a person of ordinary skill in the relevant field at the earliest possible priority date of
`
`the ’557 Patent. Further, I have had at least those capabilities myself at the earliest
`
`possible priority date of the ’557 Patent.
`
`D. Anticipation/Obviousness
`38.
`I understand that there are two general ways to prove that a patent claim
`
`is invalid: anticipation and obviousness. I understand that 35 U.S.C. § 102 relates to
`
`anticipation and 35 U.S.C. § 103 relates to obviousness.
`
`39.
`
`I understand that under 35 U.S.C. § 103, a person may not obtain a
`
`patent—even if the entire invention is not disclosed in a single piece of prior art—if
`
`the differences between the invention claimed and the prior art would have been
`
`obvious to a POSA at the time of the applicant’s invention date.
`
`1.
`
`Obviousness (35 U.S.C. § 103)
`
`40.
`
`I understand that a claimed invention is unpatentable if the differences
`
`between the invention and a prior art reference (or a combination of prior art
`
`references) are such that the subject matter as a whole would have been obvious at
`
` 
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`- 16 -
`
`Apple Inc., Samsung Electronics Co., Ltd.,
`and Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`Firstface Ex. 2001 - 20
`Weaver Declaration
`IPR2019-00612
`
`

`

`Case IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
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`the time the invention was made to a POSA. I understand that an analysis of
`
`obviousness is based on the “Graham Factors,” including an assessment of the scope
`
`and content of the prior art, the differences between the prior art and the claim, the
`
`level of ordinary skill in the art, and secondary considerations of non-obviousness,
`
`to the extent they exist.
`
`41.
`
`I understand that obviousness is determined from the point of view of
`
`a POSA at the time of the claimed invention. I further understand that a POSA is a
`
`hypothetical person who is presumed to be aware of all relevant prior art at the time
`
`of the invention. I further understand that a POSA may be able to combine the
`
`teachings of multiple prior art references by using ordinary creativity and the
`
`common sense that familiar items may have obvious uses beyond their primary
`
`purposes.
`
`42.
`
`I understand that for obviousness, a reference need not itself be
`
`enabling, but is prior art for all that it discloses. I understa