UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-00613
`
`U.S. Patent No. 9,633,373
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-00613
`
`U.S. Patent No. 9,633,373
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................ i
`
`LIST OF EXHIBITS .............................................................................................. iii
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ................. 2
`
`A.
`
`B.
`
`C.
`
`Real Party-In-Interest ............................................................................ 2
`
`Related Matters ...................................................................................... 2
`
`Lead Counsel, Back-Up Counsel, and Service Information ................. 4
`
`III. PAYMENT OF FEES ................................................................................... 4
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................ 5
`
`A. Grounds for Standing ............................................................................ 5
`
`B.
`
`Identification of Challenge .................................................................... 5
`
`1.
`
`2.
`
`3.
`
`The Specific Art on Which the Challenge is Based ................... 5
`
`Statutory Grounds on Which the Challenge is Based ................. 7
`
`How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge ..... 7
`
`V.
`
`FACTUAL BACKGROUND ........................................................................ 8
`
`A.
`
`B.
`
`The ’373 Patent ..................................................................................... 8
`
`Prosecution History ............................................................................. 10
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...................................... 11
`
`VII. CLAIM INTERPRETATION .................................................................... 12
`
`i
`73956746_2
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`VIII. GROUNDS OF UNPATENTABILITY ..................................................... 12
`
`A. Ground 1: Claims 1-2, 4-6, and 11-14 are rendered obvious by Griffin
`in view of Davis and iOS under 35 U.S.C. § 103(a) ........................... 13
`
`1.
`
`2.
`
`Fingerprint authentication ......................................................... 13
`
`Fingerprint authentication—motivation to combine ................ 19
`
`3. Mobile device functions ............................................................ 20
`
`4. Mobile device functions—motivation to combine ................... 22
`
`5.
`
`6.
`
`7.
`
`User settings .............................................................................. 26
`
`User settings—motivation to combine ..................................... 26
`
`Claim charts .............................................................................. 28
`
`B.
`
`Ground 2: Claims 1-2, 4-6, and 11-14 are rendered obvious by Goertz
`in view of Davis and iOS under 35 U.S.C. § 103(a) ........................... 53
`
`1.
`
`2.
`
`Fingerprint authentication ......................................................... 53
`
`Fingerprint authentication—motivation to combine ................ 56
`
`3. Mobile device functions ............................................................ 57
`
`4. Mobile device functions—motivation to combine ................... 59
`
`5.
`
`6.
`
`7.
`
`User settings .............................................................................. 63
`
`User settings—motivation to combine and expectation ........... 63
`
`Claim charts .............................................................................. 64
`
`IX. CONCLUSION ............................................................................................ 86
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`LIST OF EXHIBITS
`
`U.S. Patent No. 9,633,373 to Jung et al.
`
`Prosecution History File of Application No. 14/848,156, which
`matured into U.S. Patent No. 9,633,373
`
`Declaration of Benjamin B. Bederson
`
`Declaration of Michael Hulse
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`Apple iPhone OS 3.1 User Guide (September 2009)
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`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 Application Publication No. 2010/0138914 to Davis et al.
`
`U.S. Patent No. 8,443,199 to Kim et al.
`
`U.S. Patent No. 8,965,449 to Rivera et al.
`
`U.S. Patent Application Publication No. 2013/0082974 to Kerr et al.
`
`U.S. Patent No. 9,703,468 to Reeves et al.
`
`
`
`iii
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`U.S. Patent No. 9,104,288 to Wever 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)
`
`Your Palm Treo 680 Smart Device User Guide (2006)
`(https://www.att.com/support_static_files/manuals/Palm_Treo_680.pd
`f)
`
`D. Muthukumaran, A. Sawani, J. Schiffman, B. M. Jung, & T. Jaeger,
`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)
`
`U.S. Patent Application Publication No. 2012/0133484 to Griffin
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`Declaration of Yosh Moriarty
`
`
`
`iv
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`
`
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`
`1032
`
`1033
`
`1034
`
`1035
`
`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)
`
`[intentionally left blank]
`
`Joint Claim Construction and Prehearing Statement, Docket No. 57,
`Firstface Co., Ltd. v. Apple Inc., Case No. 3:18-cv-02245 (N.D. Cal.)
`
`1036
`
`Declaration of Victor Cheung
`
`
`
`
`
`
`
`
`
`
`v
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`Petitioner Apple Inc. respectfully requests inter partes review of claims 1-2,
`
`4-6, and 11-14 of U.S. Patent 9,633,373 (“’373 patent,” Ex. 1001) in accordance
`
`with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ’373 patent claims the simple concept of using a button for different
`
`functions based on a duration that the button is pressed. For example, when a
`
`device’s display is off and a button is pressed, the device displays a lock screen and
`
`performs fingerprint authentication. Or, if the button is pressed for a certain duration,
`
`the device performs a different function like activating a camera. None of these
`
`processes—which amount to interface design choices of known device functions—
`
`were new at the time of the ’373 patent, alone or in combination.
`
`To secure the allowance of the ’373 patent, Patent Owner argued that the
`
`asserted prior art did not disclose the performance of functions while a lock screen
`
`was displayed. While the Examiner allowed the ’373 patent based on that alleged
`
`distinction from the asserted prior art, others had already practiced the claimed steps
`
`and functions prior to the ’373 patent. This is not surprising, as “lock screens” (i.e.,
`
`the screen shown when a device is locked) had been in use with mobile devices, such
`
`as laptops, PDAs, and phones for many years prior to the ’373 patent’s asserted 2012
`
`priority date. (Ex. 1003 ¶¶ 36-38.) Whether to perform a function while a lock screen
`
`was displayed was a simple matter of design choice (i.e., either a screen is displayed
`
`
`
`
`
`
`1
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`or not), and for devices with lock screens, it would have been expected for a lock
`
`screen to be displayed while the user identification function was performed to
`
`indicate, e.g., that user authentication has not been completed. For example, Davis
`
`plainly disclosed that a fingerprint unlock dialog was presented while fingerprint
`
`scanning was performed. (Ex. 1015, Fig. 4.) This naturally facilitated conveying
`
`information to the user (e.g., indicating a failed unlock).
`
`The USPTO did not consider Davis during the prosecution of the ’373 patent
`
`or discuss on the record any references providing analogous technical features. Had
`
`such references been available and considered by the Examiner, the ’373 patent
`
`claims never would have issued.
`
`This Petition demonstrates that claims 1-2, 4-6, and 11-14 of the ’373 patent
`
`are unpatentable over the prior art and that Petitioner has a reasonable likelihood of
`
`prevailing with respect to the same.
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest
`
`Apple Inc. is the real party-in-interest.
`
`B. Related Matters
`
`The ’373 patent is the subject of pending litigation in the following cases:
`
`
`
`
`
`
`2
`
`
`
`Name
`
`Firstface Co., Ltd. v.
`Apple Inc.
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`Case No.
`Filing Date
`
`3-18-cv-02245 (N.D. Cal.)
`
`4/13/2018
`
`
`Further, the following applications remain pending at the USPTO and may
`
`contain, or may be amended to contain, patentably indistinct claims:
`
`Title
`
`Application No.
`
`Filing Date
`
`Activating Display and
`Performing Additional Function
`in Mobile Terminal with One-
`time User Input
`
`15/938,702
`
`3/28/2018
`
`
`Petitioner is also concurrently filing petitions for inter partes review of
`
`related U.S. Patent Nos. 8,831,557 (two petitions) and 9,779,419 (IPRs 2019-
`
`00611, -00612, and -00614, respectively) and recommends assigning all petitions
`
`to the same panel.
`
`
`
`
`
`
`3
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`C. Lead Counsel, Back-Up Counsel, and Service Information
`
`Lead Counsel
`Scott A. McKeown
`Reg. No. 42,866
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4740
`Fax: +1-617-235-9492
`scott.mckeown@ropesgray.com
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP
`IPRM—Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`
`III. PAYMENT OF FEES
`
`Backup Counsel
`Gabrielle E. Higgins
`Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: +1-650-617-4015
`Fax: +1-617-235-9492
`gabrielle.higgins@ropesgray.com
`
`Christopher M. Bonny
`Reg. No. 63,307
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: +1-650-617-4011
`Fax: +1-617-235-9492
`christopher.bonny@ropesgray.com
`
`Victor Cheung
`Reg. No. 66,229
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4641
`Fax: +1-617-235-9492
`victor.cheung@ropesgray.com
`
`The undersigned authorizes the Office to charge the fee required by 37 C.F.R.
`
`§ 42.15(a) for this Petition for inter partes review to Deposit Account No. 18-1945.
`
`Any additional fees that might be due are also authorized.
`
`
`
`
`
`
`4
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’373 patent is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`from requesting inter partes review challenging the claims of the ’373 patent on the
`
`grounds identified herein.
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter partes
`
`review of claims 1-2, 4-6, and 11-14 of the ’373 patent, and that the Board cancel
`
`the same as unpatentable. The ’373 patent matured from U.S. Patent Application
`
`14/848,156 (filed 9/8/2015). The ’373 patent claims foreign priority to Korean
`
`Application 10-2011-0106839 (filed 10/19/2011).1
`
`1.
`
`The Specific Art on Which the Challenge is Based
`
`Petitioner relies upon the following prior art:
`
`
`
` 1
`
` Petitioner takes no position as to the propriety of the priority claims since the art
`
`presented herein predates the earliest filing. Petitioner reserves the right to challenge
`
`these priority claims.
`
`
`
`
`
`
`5
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`Ex. 1027 – U.S. Patent Application Publication 2012/0133484 to Griffin
`
`
`
`(“Griffin”) published on 5/31/2012 and is the Pre-Grant Publication of U.S. Patent
`
`Application 12/955,350 (filed 11/29/2010).
`
`
`
`Ex. 1007 – Apple iPhone OS 3.1 User Guide (September 2009) (“iOS”) was
`
`published and accessible to the public by at least 9/9/2009. See Declaration of
`
`Michael Hulse (Ex. 1004) and Declaration of Yosh Moriarty (Ex. 1031).
`
`
`
`Ex. 1013 – U.S. Patent Application Publication 2010/0017872 to Goertz et al.
`
`(“Goertz”) published on 1/21/2010.
`
`
`
`Ex. 1015 – U.S. Patent Application Publication 2010/0138914 to Davis et al.
`
`(“Davis”) published on 6/3/2010.
`
`Griffin is prior art to the ’373 patent under 35 U.S.C. § 102(e). Goertz, Davis,
`
`and iOS are prior art to the ’373 patent under 35 U.S.C. § 102(b).
`
`Griffin and an excerpt from a later revision of an iOS User Guide (for iOS
`
`4.2 and 4.3) were presented to the USPTO in IDSs during the original prosecution
`
`of the ’373 patent but were not considered by the USPTO with any specificity.
`
`Therefore, Griffin and iOS present new teachings for consideration with respect to
`
`the ’373 patent.2
`
`
`
` 2
`
` Grounds based on a reference cited in an IDS but not considered at any length (such
`
`as Griffin and iOS) should not be barred under 35 U.S.C. § 325(d). See, e.g.,
`
`
`
`
`
`
`6
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`Goertz and Davis were not considered during the original prosecution of the
`
`’373 patent, and they are not cumulative of any prior art considered by the original
`
`patent examiner.
`
`Griffin and Goertz each disclose mobile devices that turn on a touch screen
`
`display and initiate unlock functions based on one-time pressings of a button, and
`
`Davis discloses displaying a fingerprint unlock dialog while fingerprint scanning is
`
`performed—the combination of which was deemed missing from the prior art
`
`identified during prosecution.
`
`2.
`
`Statutory Grounds on Which the Challenge is Based
`
`#
`
`Claims
`
`35 U.S.C. §
`
`Prior Art
`
`1 1-2, 4-6, 11-14
`
`2 1-2, 4-6, 11-14
`
`103(a)
`
`Griffin (Ex. 1027) in view of
`Davis (Ex. 1015) and iOS (Ex. 1007)
`
`Goertz (Ex. 1013) in view of
`Davis (Ex. 1015) and iOS (Ex. 1007)
`
`
`
`3. How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claims 1-2, 4-6,
`
`and 11-14 of the ’373 patent are unpatentable under the statutory grounds identified
`
`
`
`IPR2017-00178, Paper 6 at 12-13 (PTAB April 25, 2017) and IPR2016-01876,
`
`Paper 8 at 7-9 (PTAB April 3, 2017).
`
`
`
`
`
`
`7
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`above, and that the Petitioner has at least a reasonable likelihood of prevailing on
`
`these grounds, including the identification of where each element of the claim is
`
`found in the prior art, is provided in Section VIII, below. Pursuant to 37 C.F.R. §
`
`42.104(b)(5), the exhibit numbers of the supporting evidence relied upon to support
`
`the challenges and the relevance of the evidence to the challenges raised, including
`
`identifying specific portions of the evidence that support the challenges, are provided
`
`in Section VIII, below.
`
`V.
`
`FACTUAL BACKGROUND
`
`A. The ’373 Patent
`
`The ’373 patent claims a simple combination of well-known consumer
`
`electronics functions: activating a display via a button and performing different
`
`functions based on how long the button is pressed. (Ex. 1001, Abstract, claim 1.)
`
`Fig. 1 of the ’373 patent shows an example of a mobile communication
`
`terminal 100:
`
`
`
`
`
`
`8
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`Terminal 100 includes a display
`
`unit 110 and an activation button 120.
`
`(Id., 3:42-48.) Display unit 110 can be
`
`switched from an OFF state (an
`
`“inactive state”) to an ON state (an
`
`“active
`
`state”) by pressing
`
`the
`
`activation button 120. (Id., 3:21-40,
`
`4:22-27.) A
`
`lock screen can be
`
`displayed when the terminal changes
`
`from the inactive state to the active
`
`state. (Id., 4:45-48.)
`
`The activation button 120 is
`
`configurable for other functions in
`
`addition to switching to the active state.
`
`(Id., 4:30-40, 5:51-57, 10:1-6.) The particular operation performed can depend on
`
`how the activation button 120 is pressed (e.g., pressed three times or pressed for a
`
`long time). (Id., 4:51-5:13.) In one example, the operation is a user authentication
`
`function performed when the display is off. (Id., 7:14-8:20.) In another example, the
`
`operation is a hands-free function or playing music. (Id., 9:22-28, 10:7-10.)
`
`
`
`
`
`
`9
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`Accordingly, the ’373 patent purports to enable a device to perform functions
`
`based on pressing of an activation button, where at least one of the functions is
`
`performed while a lock screen is displayed.
`
`But buttons, triggering functions depending on how buttons are pressed, and
`
`lock screens were all standard components of communication devices at the time of,
`
`and in no way unique to, the ’373 patent. As explained in detail below, others had
`
`already implemented activation buttons and lock screen authentication functions
`
`prior to the ’373 patent. The claims of the ’373 patent are simply obvious
`
`combinations of known techniques.
`
`B.
`
`Prosecution History
`
`U.S. Patent Application 14/848,156, which matured into the ’373 patent, was
`
`filed on 9/8/2015 with a single claim. (Ex. 1002 at 1-57.) Two preliminary
`
`amendments added claims 2-20. (9/9/2015 and 9/19/15; id. at 58-73.)
`
`Prosecution
`
`involved
`
`several
`
`rejections
`
`by
`
`the USPTO
`
`and
`
`arguments/amendments by Applicant. (See id. at 121-125, 198-202, 458-473, 478-
`
`495, 513-526, 635-688, 710-724.)
`
`
`
`
`
`
`10
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`The Examiner issued a Notice of Allowance on 2/9/2017, 3 including a
`
`statement of reasons for allowance:
`
`from
`teaching of biometric authentication
`The prior arts
`standby/inactive/display off state does not explicitly teach displaying
`the
`lock
`screen during
`the
`authentication
`from
`the
`standby/inactive/display off state nor does it suggest why one of
`ordinary skill in the [art] would be motivated to display a locked screen
`during/while fingerprint authentication transition from the standby state
`as a result of a one time press of an activation button.
`
`(Id. at 671-672; emphasis in original.)
`
`Thus, the claims of the ’373 patent were allowed because the process of
`
`displaying a lock screen while performing a function based on a one-time pressing
`
`of an activation button was deemed missing from the prior art.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The prior art demonstrates that a person of ordinary skill in the art
`
`(“POSITA”), at the time the ’373 patent was filed, would have been a person with
`
`bachelor’s degree in Computer Science, Computer Engineering, or equivalent and
`
`
`
` 3
`
` The 2/9/2017 Notice of Allowance did not properly rewrite the entirety of the
`
`amended claims in relation to prior claim listings. This Examiner’s error necessitated
`
`a later Certificate of Correction.
`
`
`
`
`
`
`11
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`have at least two years of relevant experience in the fields of user interface design
`
`and mobile devices, or otherwise equivalent industry experience in the relevant field.
`
`(Ex. 1003 ¶¶ 29-30.)
`
`VII. CLAIM INTERPRETATION
`
`Claim terms subject to inter partes review are to be “construed using the same
`
`claim construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” (37 C.F.R. §
`
`42.100(b))4
`
`VIII. GROUNDS OF UNPATENTABILITY
`
`Although the ’373 patent alleges to have invented a button that turns on a
`
`display and causes a function to be performed based on a press duration, such
`
`techniques were known in the communications device art prior to the earliest
`
`
`
` 4
`
` The parties have proposed constructions for additional terms in district court (Ex.
`
`1035). Construction of these terms does not impact the outcome of this proceeding
`
`because the claims are invalid under both parties’ proposed constructions and thus
`
`do not need to be construed here. See Nidec Motor v. Zhongshan Broad Ocean Motor,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`
`
`
`
`
`12
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`possible priority date of the ’373 patent. As demonstrated below, the prior art
`
`references render claims 1-2, 4-6, and 11-14 of the ’373 patent unpatentable.
`
`This Petition is supported by the Bederson Declaration, which describes the
`
`scope and content of the prior art at the time of the alleged invention of the ’373
`
`patent. (See also Ex. 1003 ¶¶ 17, 50, 77.)
`
`A. Ground 1: Claims 1-2, 4-6, and 11-14 are rendered obvious by
`Griffin in view of Davis and iOS under 35 U.S.C. § 103(a)
`1.
`
`Fingerprint authentication
`
`Griffin (“Multiple-Input Device Lock and Unlock”) discloses methods for
`
`transitioning between locked and unlocked states of a device. (Ex. 1027, Abstract.)
`
`Griffin discloses that mobile devices typically entered into a sleep mode or
`
`inactive mode to reduce power consumption and preserve battery life. (Id. ¶ 24.) In
`
`the sleep mode, functions, peripherals, and display screens were disabled until the
`
`devices received “wake up” signals from the user. For example, pressing a
`
`convenience key would reactivate a device, its monitor, and other processes. (Id. ¶¶
`
`24-25, see also ¶ 29.)
`
`Griffin discloses using a “home” button as a convenience key, which is
`
`depressed to initiate an unlock action and reactivate the device, its monitor, and other
`
`processes. (Id. ¶¶ 24-25, see also ¶¶ 29, 86.) An example of a user device 100 having
`
`a touchscreen display 510 and a convenience button 520 is shown in Fig. 5B:
`
`
`
`
`
`
`13
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`
`
`
`(Id. ¶¶ 86-88.)
`
`Griffin discloses configuring unlock procedures to use two or more input
`
`mechanisms. Griffin’s non-limiting list of example input mechanisms include
`
`buttons, keyboards, touchpads, touchscreens, capacitive buttons, capacitive input
`
`surfaces, force sensors, touch-sensitive surfaces, and infrared fingerprint detectors.
`
`(Ex. 1027 ¶¶ 35, 57-59, 77, 85.) Griffin’s technique of using a combination of input
`
`mechanisms and keeping components unpowered, inactivated, or otherwise disabled
`
`until needed, conserves power and reduces accidental activations. (Id. ¶¶ 33, 50, 54,
`
`85, 87.)
`
`Fig. 11 of Griffin, reproduced and annotated below, shows one possible flow
`
`of steps for unlocking a device. At step 1100, the system detects actuation of a first
`
`input mechanism. Then, it activates a second input mechanism so that a second input
`
`
`
`
`
`
`14
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`can be detected, at steps 1105 through 1120. (Id. ¶ 121.) When the proper inputs are
`
`received, the device is unlocked, at step 140. (Id. ¶ 122.)
`
`Griffin provides an open-ended system for choosing “first” and “second” input
`
`mechanisms. (Id. ¶ 85.) Specific examples include using the home button to wake
`
`the device followed by a touchscreen path trace (id. ¶¶ 85-88) and using a trackball
`
`
`
`
`
`
`
`
`15
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`and space key (id. ¶ 103). See also id. ¶¶ 93, 102, 106, 107. Griffin also discloses
`
`that the device includes a fingerprint detector. (Id. ¶ 77.)
`
`However, while Griffin discloses pressing the home/convenience button to
`
`initiate an unlock action and to turn on the display, Griffin does not explicitly
`
`disclose using the fingerprint detector as the second input mechanism for unlocking
`
`the device—and therefore does not explicitly disclose the display and timing
`
`requirements claimed in the ’373 patent.
`
`(Ex. 1003 ¶¶ 51-56.)
`
`Davis (“System and Method of Providing Biometric Quick Launch”) teaches
`
`using biometric inputs to unlock a device and launch applications. (Ex. 1015,
`
`Abstract, ¶ 1.) Davis explains that a variety of input mechanisms were used to
`
`provide varying levels of security to the unlock process, including basic unlock
`
`commands (simple/no security), passwords (higher security), smart cards (even
`
`higher security), and biometric authentication (even higher security). (Id. ¶¶ 46-47.)
`
`In the example of Fig. 4, below, Davis teaches using a combination of
`
`procedures to unlock a device.
`
`
`
`
`
`
`16
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`
`
`In Fig. 4, when an unlock command is received (step 402), an unlock dialog is
`
`presented (i.e., a lock screen), and password and smart card entry functions are
`
`performed (steps 406-414). (Id. ¶¶ 48-50.) Higher security in the form of fingerprint
`
`authentication is then performed, including presenting a fingerprint dialog (step 416;
`
`i.e., a lock screen), scanning a user’s finger (step 418), and unlocking the device if
`
`the fingerprint is valid (steps 420-422). (Id. ¶¶ 50-53.)
`
`Davis further teaches that unlocking procedures were customizable—
`
`rearranging the order in which functions are performed or using only a subset of the
`
`functions. (Id. ¶ 71.) Thus, a POSITA would have implemented an unlocking
`
`procedure that included an unlock command followed by a fingerprint dialog and a
`
`
`
`
`
`
`17
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`fingerprint unlock function (steps 416-422; see modified Fig. 4 below), but without
`
`any intervening input mechanisms. In this way, a single biometric input mechanism
`
`may have been used to unlock a device and launch an application. (Id., claim 1.)
`
`FIG. 4
`(modified)
`
`(Ex. 1003 ¶¶ 57-60.)
`
`
`
`Thus, Griffin, as modified by the teachings of Davis would have been
`
`implemented by a POSITA as follows:
`
`(1) User presses the home/convenience button, a first input mechanism (Griffin,
`
`Fig. 11 step 1100),
`
`(1a) which is the initiation of an unlock command (Griffin ¶ 86), and
`
`(1b) which wakes the screen (Griffin ¶¶ 24-25, 29) to display a fingerprint dialog
`
`(i.e., a lock screen) (as taught by Davis, modified Fig. 4 steps 402 and 416);
`
`(2)
`
`the second input mechanism is activated (Griffin Fig. 11 step 1105);
`
`(2a) Davis teaches that the second input is a fingerprint unlock function, including
`
`scanning a fingerprint and unlocking the device if the fingerprint is valid
`
`(Davis, modified Fig. 4 steps 418-422), wherein
`
`
`
`
`
`
`18
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`(2b) the fingerprint dialog (lock screen) is displayed while the fingerprint function
`
`is performed, such that, for example, a message is displayed if the fingerprint
`
`is not valid (Davis, modified Fig. 4 step 424).
`
`Therefore, Griffin as modified by the teachings of Davis would have indicated to a
`
`POSITA that a lock screen would have been displayed while the fingerprint function
`
`was performed. This would have allowed the user to remain informed about what is
`
`happening with the device, whether that is an indication that the fingerprint scan is
`
`taking place or that the fingerprint is invalid. (Ex. 1015 ¶ 53; see also Ex. 1017,
`
`10:61-65 and Fig. 13, Ref. Nos. 162-164, showing a fingerprint dialog known in the
`
`art.) The use of a lock screen to display a lock/unlock dialog on a device would have
`
`been little more than the use of a known technique in an existing device to yield the
`
`predictable result of displaying the device status to the user.
`
`(Ex. 1003 ¶¶ 61-62.)
`
`2.
`
`Fingerprint authentication—motivation to combine
`
`It would have been obvious to a POSITA to use a fingerprint function, as
`
`taught by Davis, for the second unlock input mechanism of Griffin. A POSITA
`
`would have been motivated to do so because biometric inputs provided higher levels
`
`of security against unauthorized users and increased user convenience. See, e.g., Ex.
`
`1014, 1:24-37. Because Griffin discloses a fingerprint detector in its device and
`
`discloses that a variety of inputs may be used for the multiple-input unlock
`
`
`
`
`
`
`19
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`procedures, the use of the fingerprint detector, as explicitly taught by Davis, would
`
`have required little more than a design decision to use the fingerprint detector as one
`
`of the inputs in Griffin’s unlock routine. A POSITA would have had a reasonable
`
`expectation of success in choosing an input for Griffin’s unlock routine, as Griffin’s
`
`“first” and “second” input mechanisms were designed to be chosen from available
`
`input mechanisms. And, as discussed above, Davis shows that fingerprint
`
`authentication was an existing and well-known unlock input at the time of the ’373
`
`patent.
`
`(Ex. 1003 ¶¶ 63, 36-41.)
`
`3. Mobile device functions
`
`With respect to other limitations claimed in the ’373 patent, such as the device
`
`including a camera, a power button separate from an activation button, or a duration-
`
`based function of the activation button to activate a camera, play music, or a hands-
`
`free function, these were standard or otherwise well-known features of mobile
`
`devices prior to the ’373 patent.
`
`For example, Davis teaches functions and applications that devices activated,
`
`including capturing a photo and playing music. (Ex. 1015 ¶ 78.)
`
`Furthermore, the iPhone User Guide for iPhone OS 3.1 Software discloses the
`
`following diagram of an iPhone available in 2009, showing a camera and a
`
`
`
`
`
`
`20
`
`
`
`U.S. Patent No. 9,633,373
`Petition for Inter Partes Review
`sleep/wake button that functioned as a power button and was separate from the home
`
`button (i.e., activation button) and used to turn the mobile device on/off:
`
`
`(Ex. 1007 (“iOS”), pp. 20 (annotated), 27.) iOS further discloses that one of the
`
`functions served by the home button was to activate Voice Control to make phone
`
`calls and play music using voice commands (i.e., hands-free). Voice Control
`
`activated whenever the home button was pressed and held for a duration. (Ex. 1007,
`
`pp. 38, 48, 77
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
