`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-006131
`
`U.S. Patent No. 9,633,373
`
`____________
`
`DECLARATION OF BENJAMIN B. BEDERSON IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`1 Case IPR2019-01011 has been consolidated with this proceeding.
`
`Apple Inc. Ex. 1039
`Apple Inc. v. Firstface Co., Ltd.
`IPR2019-00613
`Page 00001
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`I.
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`TABLE OF CONTENTS
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`PRIOR TESTIMONY ..................................................................................... 1
`
`II. MATERIALS REVIEWED ............................................................................ 2
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`IN THE RELEVANT TIMEFRAME .............................................................. 2
`
`IV. CLAIM INTERPRETATION.......................................................................... 2
`
`V.
`
`SUMMARY OF THE RELEVANT PRIOR ART ........................................... 3
`
`A. Griffin (Ex. 1027) ................................................................................. 3
`
`B.
`
`C.
`
`Goertz (Ex. 1013) ................................................................................. 3
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`Davis (Ex. 1015) ................................................................................... 4
`
`D.
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`iOS (Ex. 1007) ...................................................................................... 5
`
`VI. CLAIMS 1-2, 4-6, 10-14, and 18 OF THE ’373 PATENT ARE
`UNPATENTABLE .......................................................................................... 6
`
`A. Ground 1: Griffin in View of Davis and iOS Renders Obvious
`Claims 1-2, 4-6, 10-14, and 18 of the ’373 Patent ................................ 6
`
`1.
`
`2.
`
`The Combination of Griffin and iOS Discloses an
`Activation Button Separate From a Power Button ..................... 7
`
`The Combination of Griffin and Davis Discloses Turning
`on the Display and Initiating a Fingerprint Authentication
`Function in Response to a One-Time Pressing of the
`Activation Button ....................................................................... 9
`
`a.
`
`b.
`
`The Claims Are Not Limited to a Single Step or a
`Single User Action for Pressing the Activation
`Button and Scanning a Fingerprint .................................. 9
`
`The Combination of Griffin and Davis Discloses a
`“One-Time Pressing of the Activation Button”
`That Turns on the Touch Screen Display and
`“Initiates” the Fingerprint Authentication Function ....... 17
`
`
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`IPR2019-00613 Page 00002
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`3.
`
`A POSITA Would Have Been Motivated to Combine
`Griffin, Davis, and iOS ............................................................. 23
`
`B.
`
`Ground 2: Goertz in View of Davis and iOS Renders Obvious
`Claims 1-2, 4-6, 10-14, and 18 of the ’373 Patent .............................. 27
`
`1.
`
`2.
`
`The Combination of Goertz and iOS Discloses an
`Activation Button Separate From a Power Button ................... 28
`
`The Combination of Goertz and Davis Discloses Turning
`on the Display and Initiating a Fingerprint Authentication
`Function in Response to a One-Time Pressing of the
`Activation Button ..................................................................... 32
`
`a.
`
`b.
`
`The Claims Are Not Limited to a Single Step or a
`Single User Action for Pressing the Activation
`Button and Scanning a Fingerprint ................................ 32
`
`The Combination of Goertz and Davis Discloses a
`“One-Time Pressing of the Activation Button”
`That Turns on the Touch Screen Display and
`“Initiates” the Fingerprint Authentication Function ....... 33
`
`3.
`
`A POSITA Would Have Been Motivated to Combine
`Goertz with the Teachings of Davis ......................................... 34
`
`VII. CONCLUSION ............................................................................................. 38
`
`
`
`ii
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`IPR2019-00613 Page 00003
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`I, Benjamin B. Bederson, have previously been asked to testify as an expert
`
`witness in this action. As part of my work in this action, I have been asked by Apple,
`
`Inc. (“Petitioner”) to respond to certain assertions offered by Firstface Co., Ltd.
`
`(“Patent Owner”) in connection with U.S. Patent No. 9,633,373 (“’373 patent”) in
`
`IPR2019-00613 and IPR2019-01011. I hereby declare:
`
`I.
`
`1.
`
`PRIOR TESTIMONY
`
`I am the same Benjamin B. Bederson who provided Declarations in this
`
`consolidated proceeding, executed on January 23, 2019, as Exhibit 1003 in IPR2019-
`
`00613 (“First Declaration”) and executed on April 24, 2019, as Exhibit 1003 in
`
`IPR2019-01011 (“Second Declaration”), which, including their appendices, are
`
`incorporated by reference herein in their entirety.2 My qualifications and the
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`circumstances of my engagement were detailed in ¶¶2-15 and Appendix A of my
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`First Declaration.
`
`2.
`
`I offer statements and opinions on behalf of Petitioner, generally regarding the
`
`validity, prior art, and obviousness considerations, and understanding of a person of
`
`ordinary skill in the art (“POSITA”) as it relates to the ’373 patent.
`
`
`2 IPR2019-01011 specifically addressed the invalidity of the limitations of
`dependent claims 10 and 18 of the ’373 patent. Since those arguments and
`analyses do not appear to be in dispute at this stage of this consolidated
`proceeding, except by virtue of being dependent on the disputed independent
`claim, references to my prior statements will reference my IPR2019-00613 First
`Declaration unless stated otherwise.
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`
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`IPR2019-00613 Page 00004
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`
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`3.
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`I offer this declaration in rebuttal to the arguments raised by the Declaration
`
`of Dr. Alfred C. Weaver (Ex. 2001).
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`II. MATERIALS REVIEWED
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`4.
`
`In connection with my study of the POR and supporting declarations and
`
`reaching the conclusions stated herein, I have reviewed a number of additional
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`documents. In addition to those mentioned in my previous declaration, I have
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`reviewed the following additional documents:
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`• Declaration of Dr. Alfred C. Weaver and its accompanying exhibits; and
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`• All other documents referenced herein (see Appendix A).
`
`5. My opinions are also based upon my education, training, research, knowledge,
`
`and personal and professional experience.
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME
`
`6. My opinion regarding a person of ordinary skill in the art is discussed in my
`
`First Declaration, and my opinions are the same. Ex. 1003 ¶¶25-30.
`
`IV. CLAIM INTERPRETATION
`
`7.
`
`As stated in my First Declaration, I understand the claims under their ordinary
`
`and customary meaning as would be understood by a POSITA. Ex. 1003 ¶49.
`
`2
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`IPR2019-00613 Page 00005
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`V.
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`8.
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`SUMMARY OF THE RELEVANT PRIOR ART
`
`In my First Declaration, I summarized the disclosures and teachings of the
`
`prior art, including Griffin (Ex. 1027), Davis (Ex. 1015), iOS (Ex. 1007), and
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`Goertz (Ex. 1013). Ex. 1003 ¶¶50-97.
`
`A. Griffin (Ex. 1027)
`
`9.
`
`Dr. Weaver is incorrect in stating that “Griffin…generally describes unlocking
`
`a device…in response to two different actions by the user” and “makes clear that a
`
`single action, such as a button press, is not enough to unlock the device.” Ex. 2001
`
`¶78. As I explained in my First Declaration and further in rebuttal below, Griffin
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`explicitly discloses its system as “detecting a single continuous unlock action.” Ex.
`
`1027 ¶¶30-31, 35-36, Abstract. The single continuous unlock action of Griffin may
`
`involve multiple inputs such as a button press and a fingerprint scan (in combination
`
`with Davis, for example). Moreover, as I explain further below, the ’373 patent
`
`claims are directed to a “one-time pressing of the activation button” that turns on the
`
`touch screen display and initiates a function (e.g., a fingerprint authentication
`
`function). They are not limited to a single step or user action to both press the
`
`activation button and scan a fingerprint.
`
`B. Goertz (Ex. 1013)
`
`10. Dr. Weaver incorrectly characterizes my opinion by focusing on what Goertz
`
`alone teaches and further is incorrect in stating that Goertz “is limited to a multi-
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`3
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`IPR2019-00613 Page 00006
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`
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`step process, requiring multiple user actions to unlock the device.” Ex. 2001 ¶¶81-
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`82. My opinion has never been that Goertz alone discloses all of the steps required
`
`to implement its security via fingerprint identification. Rather, my analysis is based
`
`on the combined teachings of Goertz, Davis, and iOS. Moreover, as I explain
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`further below, the ’373 patent claims are directed to a “one-time pressing of the
`
`activation button” that turns on the touch screen display and initiates a function (e.g.,
`
`a fingerprint authentication function). They are not limited to a single step or user
`
`action to both press the activation button and scan a fingerprint.
`
`C. Davis (Ex. 1015)
`
`11. Dr. Weaver is incorrect in stating that Davis “criticizes the use of single-factor,
`
`password-based authentication to secure a device.” Ex. 2001 ¶83. Davis’s
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`Background section describes examples of one-factor, two-factor, and three-factor
`
`authentication schemes and properly notes that as the number of factors increases,
`
`security is also increased. Ex. 1015 ¶93. Davis does not, however, indicate that
`
`single-factor authentication should be avoided. Davis discloses embodiments with
`
`one, two, and three-factor authentication. Id. ¶¶46-47. Davis further discloses that
`
`“a subset of the authentication factors” can be used. Ex. 1015 ¶71.
`
`12. Dr. Weaver is incorrect in stating that “nothing in Davis discusses the use of a
`
`button to turn on a display screen, let alone use that button to turn on the display
`
`screen and perform another function, like fingerprint authentication.” Ex. 2001 ¶83.
`
`4
`
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`IPR2019-00613 Page 00007
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`
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`Davis states that “[t]hrough the use of convenience keys, execution of specific
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`applications can be launched by a single action, e.g., a key press on a convenience
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`key, rather than a series of actions, e.g., an actuation to bring up the display of a
`
`menu, an actuation to scroll through the menu to find a menu item associated with
`
`the desired application and a further actuation to select the desired application.” Ex.
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`1015 ¶41. For example, Davis discloses that from a locked/inactive state in which
`
`the display is disabled, “[u]nlocking the mobile device 102 may be as
`
`straightforward as using one of the auxiliary I/O devices 206 [e.g., a convenience
`
`key] to cause a dialog to be shown on the display 226.” Id. ¶40, 43, 45, 46. Pressing
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`a button while a device is inactive/locked and causing a dialog to be displayed and
`
`launch a specific application is disclosure of a button that turns on the display screen
`
`and performs another function. Nevertheless, my analysis was and is based on the
`
`combined teachings of Griffin, Davis, and iOS (Ground 1) and Goertz, Davis, and
`
`iOS (Ground 2), not Davis alone.
`
`D.
`
`iOS (Ex. 1007)
`
`13. Dr. Weaver is incorrect in stating that the iOS “home button…is not an
`
`‘activation button’ within the meaning of the claims of the ’373 patent” because iOS
`
`“never discloses that the home button can be used to activate a display.” Ex. 2001
`
`¶84. As explained in further detail below, iOS discloses that locking the iPhone turns
`
`off the display (Ex. 1007 at 145), and to unlock from that locked state, the user can
`
`5
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`IPR2019-00613 Page 00008
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`press the home button and then drag the slider (id. at 27, 23). The fact that the screen
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`was (1) off in the locked state and then (2) a slider is displayed after pressing the
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`home button means that the touchscreen had been turned on in response to pressing
`
`the home button. Thus, the iPhone home button is an activation button within the
`
`meaning of the claims of the ’373 patent. Nevertheless, my analysis was and is based
`
`on Griffin’s or Goertz’s disclosure of an activation button (home button) in
`
`combination with iOS’s teaching of a separate power button.
`
`VI. CLAIMS 1-2, 4-6, 10-14, and 18 OF THE ’373 PATENT ARE
`UNPATENTABLE
`
`A. Ground 1: Griffin in View of Davis and iOS Renders Obvious
`Claims 1-2, 4-6, 10-14, and 18 of the ’373 Patent
`
`14.
`
`In my First Declaration, I provided an analysis of the limitations of claims 1-
`
`2, 4-6, and 11-14 of the ’373 patent with respect to the combined disclosures and
`
`teachings of Griffin in view of Davis and iOS. Ex. 1003 ¶¶50-76. In my Second
`
`Declaration, I provided an analysis of the limitations of claims 10 and 18 of the ’373
`
`patent with respect to the combined disclosures and teachings of Griffin in view of
`
`Davis and iOS. IPR2019-01011, Ex. 1003 ¶¶50-82. My opinion that the challenged
`
`claims of the ’373 patent are unpatentable over Griffin in view of Davis and iOS
`
`remains the same and is incorporated by reference herein.
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`6
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`IPR2019-00613 Page 00009
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`
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`15. For the reasons discussed below, I disagree with Dr. Weaver’s opinion that the
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`Petition fails to demonstrate that any challenged claim is rendered obvious under
`
`Ground 1. Ex. 2001 ¶¶85-107.
`
`1. The Combination of Griffin and iOS Discloses an Activation
`Button Separate From a Power Button
`
`16. Dr. Weaver opines that the only reference that Petitioner points to for “an
`
`activation button separate from the power button” is the “home button” disclosed in
`
`iOS. Ex. 2001 ¶86. I disagree. Griffin was relied on for disclosing a home button
`
`(activation button) configured for pressing to turn on the touch screen display. For
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`example, Griffin discloses “a single ‘home’ button or convenience button 520,
`
`positioned at
`
`the center along an edge of
`
`the display 510” whose
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`“depression…constitutes the initiation of an unlock action.” Ex. 1027 ¶¶86, 25. This
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`was explained in the claim charts of the relevant “activation button” limitations,
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`claims [1e] and [1f]. Ex. 1003 ¶76. iOS was relied on for disclosing a separate
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`Sleep/Wake button (power button) configured to turn on and off the terminal by
`
`pressing. This was explained in the claim chart of the relevant “power button”
`
`limitation, claim [1d]. Ex. 1003 ¶76. Dr. Weaver does not appear to dispute that iOS
`
`teaches a power button.
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`17. Dr. Weaver opines that “the ‘home button’ in iOS is not an ‘activation button’
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`within the meaning of claim 1 because it is not ““configured for pressing to turn on
`
`the touch screen display .” Ex. 2001 ¶¶86-87. I disagree. As an initial matter, Dr.
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`7
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`IPR2019-00613 Page 00010
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`
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`Weaver misunderstands the proposed combination of Griffin and iOS. I relied on
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`Griffin for the activation button (home button) configured for pressing to turn on the
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`touch screen display (element [1.f]). Dr. Weaver does not appear to dispute that
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`Griffin’s activation button turns on the display. iOS further teaches providing a
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`power button that is separate from a “home” button, as discussed above.
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`18. Nevertheless, iOS’s home button, just like Griffin’s home button, turns on the
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`display. As explained in iOS, locking the iPhone turns off the display (Ex. 1007 at
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`145), and to subsequently unlock the iPhone, the user can press the home button and
`
`then drag a slider that appears on the screen (Ex. 1007, 26-27, 23). The fact that (1)
`
`the screen was off in the locked state and (2) then a slider is displayed on the screen
`
`after pressing the home button means that pressing the home button turns on the
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`display. Thus, contrary to Dr. Weaver’s assessment, the iPhone home button is an
`
`activation button within the meaning of the claims of the ’373 patent.
`
`19. Dr. Weaver’s suggestion that there may be other ways to turn on the display
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`screen in iOS is unsupported and irrelevant. Ex. 2001 ¶87. Dr. Weaver does not cite
`
`any support for the contention that the iPhone described by iOS actually turns on its
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`display using an accelerometer or hall effect sensor, but even if it did, the existence
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`of alternative methods of turning on the display would not negate the functionality
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`of the home button that is disclosed.
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`8
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`IPR2019-00613 Page 00011
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`20. Accordingly, Griffin in view of iOS discloses an activation button that turns
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`on the display and is separate from the power button.
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`2. The Combination of Griffin and Davis Discloses Turning on
`the Display and Initiating a Fingerprint Authentication Function
`in Response to a One-Time Pressing of the Activation Button
`
`21. Dr. Weaver opines that the “none of the prior art discloses turning on the
`
`display and performing one of the enumerated functions in response to a one-time
`
`pressing of the activation button” because Griffin discloses a “multi-step process
`
`requiring multiple user actions to perform fingerprint authentication,” and Davis
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`“also discloses a multi-step process requiring multiple user actions.” Ex. 2001 ¶¶88-
`
`107. For the reasons stated below, I disagree. The combination of Griffin and Davis
`
`discloses turning on the display and initiating a fingerprint function in response to a
`
`one-time pressing of the activation button.
`
`a.
`
`The Claims Are Not Limited to a Single Step or a Single
`User Action for Pressing the Activation Button and
`Scanning a Fingerprint
`
`22. Dr. Weaver opines that the claims are limited to “a single user action” and
`
`exclude “multi-step process[es].” E.g., Ex. 2001 ¶¶88, 101, 113. I disagree. The
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`plain language of the claims requires that a “one-time pressing of the activation
`
`button” does two things: (1) turns on the touch screen display and (2) “initiates” one
`
`or more additional functions (e.g., a fingerprint authentication function). By
`
`requiring that a single user action both press the activation button and scan a
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`9
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`IPR2019-00613 Page 00012
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`
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`fingerprint, for example, Dr. Weaver fails to give meaning to the word “initiates” in
`
`the claims.
`
`23. All claims recite that the function is “initiated” by the one-time press of the
`
`activation button. For example, claim 1 of the ’373 patent recites:
`
`an activation button separate from the power button and
`located outside the touch screen display, the activation
`button configured for pressing to turn on the touch screen
`display and to initiate one or more additional functions
`of the terminal,
`
`wherein the terminal has a first function and a second
`function to perform in response to user input via the
`activation button and is configured to provide user settings
`for configuring at least one of the first and second
`functions such that at least one of the first and second
`functions is set to be performed in addition to turning on
`the touch screen display upon pressing of the activation
`button while the touch screen display is turned off,
`wherein the first and second functions are different from
`each other and selected from the group consisting of
`fingerprint authentication, activating the camera, and an
`operation that involves playing a sound,
`
`wherein upon one-time pressing of the activation button
`while the touch screen display is turned off, the terminal is
`configured to turn on the touch screen display and further
`perform at least one of the first and second functions in
`addition to turning on the touch screen display such that:
`
`…
`
`in response to the one-time pressing of the
`activation button, the first function is performed in
`addition to turning on the touch screen display for
`displaying the lock screen thereon, and
`
`10
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`IPR2019-00613 Page 00013
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`
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`Ex. 1001, 12:57-13:21 (emphasis added). Claim 11 recites similar language:
`
`detecting one-time pressing of the activation button while
`the terminal is in an inactive state in which the touch
`screen display is turned off;
`
`in response to the one-time pressing, changing the terminal
`from the inactive state to an active state in which the touch
`screen display is turned on; and
`
`in addition to changing to the active state, further
`performing at least one of the first and second functions
`without additional user input other than the one-time
`pressing,
`
`wherein in changing to the active state and performing at
`least one of the first and second functions, the terminal
`operates such that:
`
`…
`
`wherein at least one of the first and second
`functions is initiated subsequent to changing to the
`active state and displaying the lock screen in
`response to the one-time pressing of the activation
`button,
`
`Id., 14:26-54 (emphasis added). This claim language makes clear that claims are
`
`directed to a system and method that “initiates” a function (e.g., a fingerprint
`
`authentication function) in response to the pressing of the activation button. Dr.
`
`Weaver does not address this claim language.
`
`24. Dr. Weaver appears to rely on the phrase “one-time press” to support his
`
`opinion. Ex. 2001 ¶85. However, as set forth in the claims and the patent, “one-
`
`time pressing of the activation button” refers to how many times the activation
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`11
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`IPR2019-00613 Page 00014
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`
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`button is pressed. As the specification explains, the activation button is pressed once
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`or multiple times:
`
`In addition, according to an embodiment of the present
`invention, an operation which differs according to the
`number of presses or a press time of the activation button
`120 can be performed when the mobile communication
`terminal 100 is in the inactive state. For example, a first
`operation can be set to be performed if the activation
`button 120 is pressed once, and a second operation can be
`set to be performed if the activation button 120 is
`times…. The mobile
`continuously pressed
`three
`communication terminal 120 can include a predetermined
`clock circuit or timer to calculate the cumulative number
`of continuous presses of the activation button 120 and
`measure a period of time for which the activation button
`120 is pressed. For example, the number of presses is
`determined to be two if the activation button 120 is re-
`pressed within a threshold time after one press. If the
`activation button 120 is pressed for the threshold time or
`more, a long press of the activation button 120 can be
`determined. Operations capable of being performed by
`pressing the activation button 120 in the inactive state will
`be described later.”
`
`Ex. 1001, 4:57-5:13 (emphasis added); see also Ex. 1001, 1:17-23 (“performing
`
`various functions according to the number of presses or a press time of a button”),
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`8:47-61 (“this operation may differ according to the number of presses or a press
`
`time of the activation button”), 4:65-5:13; claim 17 (“detecting repeated pressing of
`
`the activation button”). Therefore, the term “one-time pressing of the activation
`
`button,” which initiates the fingerprint authentication function, does not preclude
`
`other inputs or user actions, such as a subsequent fingerprint scan.
`
`12
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`IPR2019-00613 Page 00015
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`25. The claims necessarily encompass two inputs. All claims require a one-time
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`“press” of an activation button. A POSITA would have understood that this is a first
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`input. All claims further require initiating a function (in response to the “press” of
`
`the activation button). A POSITA would have understood that when a fingerprint
`
`authentication function is selected as the first function and the fingerprint sensor
`
`scans a fingerprint, this is a second input.
`
`26. The ’373 patent specification also discloses separate units for detecting the
`
`activation button press and operating the user identification function. The
`
`specification includes a section “3. User Identification Function” that describes
`
`“[w]hen the mobile communication terminal 100 is in the inactive state, a user
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`authentication process can be performed for security by pressing the activation
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`button 120.” Id., 7:14-17. The patent describes an activation sensing unit 410, which
`
`“senses whether or not the user has pressed the activation button 120.” Ex. 1001,
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`7:23-25. “If the activation sensing unit 410 senses that the activation button 120 has
`
`been pressed,” then a separate user identification unit 420 “operates the user
`
`identification function in various methods.” Id., 7:26-28. Figure 4A depicts the
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`separate units of mobile communication terminal 100:
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`13
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`IPR2019-00613 Page 00016
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`This confirms my understanding that the claims encompass multiple inputs and/or
`
`steps for pressing the activation button and scanning a fingerprint.
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`27. There is no support in the claims, specification, or prosecution history for
`
`interpreting “one-time pressing of the activation button” as limiting the claims to a
`
`single user action or single input to both press the activation button and scan a
`
`fingerprint. The specification includes only one sentence regarding fingerprint
`
`authentication, which says nothing about a single user action or single input to both
`
`press the activation button and scan a fingerprint:
`
`Although an example of an authentication method through
`iris recognition has been described above, other
`authentication methods, for example, an authentication
`key matching method, a password matching method, a
`face recognition method, a fingerprint recognition method,
`and the like, can be used.
`
`This sentence also does not explain how to accomplish what Dr. Weaver suggests
`
`the claims require, or what type of scanner to use. Moreover, the ’373 patent does
`
`14
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`IPR2019-00613 Page 00017
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`not disclose that the authentication process is any different when fingerprint
`
`authentication is used.
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`28. Moreover, one of the claimed functions is a “hands-free function,” which uses
`
`voice input (an additional user action). Dr. Weaver’s interpretation would read this
`
`usage of a hands-free function out of the claim. In addition, dependent claim 9 adds
`
`a requirement that “upon repeated pressing of the activation button…, the terminal
`
`is configured to turn on the touch screen display and further perform a third function
`
`other than the first and second functions.” The ’373 patent specification discloses a
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`number of “operations of the mobile communication terminal 100 capable of being
`
`performed by pressing the activation button 120” (Ex. 1001, 5:47-57) including
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`operations under the headings “Camera Activation Function,” “Health Sensing and
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`Health Information Transmission Functions,” “User Identification Function,”
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`“Location Information Transmission Function,” and “File Transmission Function.”
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`(Ex. 1001, 5:58-20). In describing the User Identification Function, the ’373 patent
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`specification discloses that “a password matching method” that “can be performed
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`by pressing the activation button.” Ex. 1001, 8:13-20. A POSITA would have
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`understood that these disclosed operations including the password matching method
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`were all examples of the claimed “third function”, and that entering a password
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`necessarily requires additional user inputs. Dr. Weaver’s interpretation would read
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`this password matching method out of the claim, even though the specification
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`discloses that it can be “performed by pressing the activation button.”
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`29.
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`I disagree with Dr. Weaver’s interpretation of the claims from the perspective
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`of “user action.” E.g., Ex. 2001 ¶88. For example, this is incorrect as to both of the
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`asserted independent claims. Claim 1 is an apparatus claim directed to a mobile
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`communication terminal, its components, and how those components are
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`configured, e.g., “an activation button…configured for pressing.” Claim 11 is a
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`method claim directed to steps performed by a mobile computing terminal, e.g.,
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`“detecting one-time pressing,” “changing the terminal from the inactive state to an
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`active state,” and “performing at least one of the first and second functions.”
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`30. Dr. Weaver’s interpretation with respect to claim 11 is incorrect for all of the
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`same reasons described above. As explained above, Dr. Weaver fails to address the
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`word “initiate,” which appears in claim 11. A POSITA would have understood that
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`the additional language of claim 11 merely clarifies that no additional user input
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`beyond the one-time pressing is required by the device to initiate the function:
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`in addition to changing to the active state, further
`performing at least one of the first and second functions
`without additional user input other than the one-time
`pressing,
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`wherein in changing to the active state and performing at
`least one of the first and second functions, the terminal
`operates such that:
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`…
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`wherein at least one of the first and second
`functions is initiated subsequent to changing to the
`active state and displaying the lock screen in
`response to the one-time pressing of the activation
`button,
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`Ex. 1001, claim 11 (emphasis added). It is clear from the language of the claims and
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`the specification that “one-time pressing of the activation button” addresses how
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`many times the activation button is pressed, and “without additional user input”
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`addresses whether the claim is limited to a single input to “initiate” the function. Dr.
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`Weaver’s interpretation, which requires a single user input and a single user action
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`to both press the activation button and scan a fingerprint (when fingerprint
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`authentication is the first function), has no support in the claims and specification.
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`31. Accordingly, in my opinion, the one-time pressing of the activation button,
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`consistent with the plain language of the ’373 patent and in light of the specification,
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`requires that the one-time pressing of the activation button turns on the display and
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`initiates a function. The claims do not require a single user input and a single user
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`action to both press the activation button and scan a fingerprint.
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`b.
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`The Combination of Griffin and Davis Discloses a
`“One-Time Pressing of the Activation Button” That
`Turns on the Touch Screen Display and “Initiates” the
`Fingerprint Authentication Function
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`32. Dr. Weaver opines that the “none of the prior art discloses turning on the
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`display and performing one of the enumerated functions in response to a one-time
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`pressing of the activation button” because Griffin discloses a “multi-step process
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`requiring multiple user actions to perform fingerprint authentication,” and Davis
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`“also discloses a multi-step process requiring multiple user actions.” Ex. 2001 ¶¶88-
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`102. I disagree. As explained above, Dr. Weaver’s argument is based on an incorrect
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`interpretation of the claims and an incorrect understanding of the disclosures of the
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`prior art. The claims do not require a single user input or a single user action to both
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`press the activation button and scan a fingerprint. Griffin in view of Davis discloses
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`a “one-time pressing of the activation button” that turns on the touch screen display
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`and “initiates” the fingerprint authentication function, as required by the claims. Ex.
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`1003 ¶¶50-76. Moreover, Griffin discloses interaction through a single, continuous
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`user action.
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`33. Dr. Weaver opines that “Griffin neither discloses turning on the display to
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`display a lock screen nor the performance of any separate (enumerated) function in
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`response to a single press of an activation button.” Ex. 2001 ¶89. However, contrary
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`to Dr. Weaver’s assertion, Griffin discloses turning on the display. Griffin discloses
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`that pushing the home button initiates an unlock action and reactivates the monitor.
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`Ex. 1027 ¶¶24-25, 29. Griffin further discloses that if the home button is pressed
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`during sleep mode, “the device display would then be activated” while the device
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`awaits the second input. Ex. 1027 ¶29. With respect to the lock screen and
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`fingerprint authentication function, I relied on Davis’s teachings in combination with
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`Griffin. As explained in my First Declaration, Davis discloses using fingerprint
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`authentication in an unlock procedure, and discloses showing a lock screen (Davis’s
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`fingerprint dialog) as part of the unlock process. Ex. 1015 ¶¶50-53, Fig. 4; Ex. 1003
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`¶¶53-62.
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`34. With respect to Davis, Dr. Weaver opines that Davis “never discloses that its
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`complex authentication procedure can be reduced down to a simple fingerprint
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`authentication.” Ex. 2001 ¶¶94-97. I disagree. For example, Figure 4 of Davis
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`shows an embodiment with (1) password authentication and (2) fingerprint
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`authentication in response to an unlock command:
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`
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`Ex. 1015, Fig. 4