UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`
`
`____________
`
`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
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
` 1
`
` Case IPR2019-01011 has been consolidated with this proceeding.
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`
`
`____________
`
`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
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
` 1
`
` Case IPR2019-01011 has been consolidated with this proceeding.
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`GROUND 1: THE COMBINATION OF GRIFFIN, DAVIS, AND
`IOS RENDERS OBVIOUS THE CHALLENGED CLAIMS ........................ 1
`
`A.
`
`B.
`
`The Combination of Griffin and iOS Discloses an Activation
`Button Separate From a Power Button .................................................. 1
`
`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 ................ 3
`
`1.
`
`2.
`
`3.
`
`The Claims Are Not Limited to a Single Step or a Single
`User Action for Pressing the Activation Button and
`Scanning a Fingerprint ................................................................ 4
`
`The Combination of Griffin and Davis Discloses the
`Express Language of the Claim ................................................10
`
`Petitioner’s Modification of Davis’s Figure 4 Is
`Expressly Taught by Davis .......................................................14
`
`C.
`
`A POSITA Would Have Been Motivated to Combine Griffin,
`Davis, and iOS .....................................................................................16
`
`III. GROUND 2: THE COMBINATION OF GOERTZ, DAVIS, AND
`IOS RENDERS OBVIOUS THE CHALLENGED CLAIMS ......................19
`
`A.
`
`B.
`
`C.
`
`The Combination of Goertz and iOS Discloses an Activation
`Button Separate From The Power Button and Configured to
`Turn on The Display............................................................................19
`
`The Combination of Goertz and Davis Discloses Turning on the
`Display Initiating a Fingerprint Function in Response to a One-
`Time Pressing of the Activation Button ..............................................23
`
`A POSITA Would Have Been Motivated to Combine Goertz,
`Davis, and iOS .....................................................................................25
`
`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
`US. Patent No. 9,633,373
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`IV. CONCLUSION ..............................................................................................28
`
`IPR2019-00613
`
`IV.
`
`CONCLUSION .............................................................................................. 28
`
`
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`
`ii
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`ii
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Accent Packaging, Inc. v. Leggett & Platt, Inc.,
`707 F.3d 1318 (Fed. Cir. 2013) ............................................................................ 9
`Akzo Nobel Coatings, Inc. v. Dow Chemical Co.,
`811 F.3d 1334 (Fed. Cir. 2016) ............................................................................ 5
`Bausch & Lomb v. Barnes-Hind/Hydrocurve,
`796 F.2d 443 (Fed. Cir. 1986) ............................................................................ 16
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 17
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .......................................................................... 13
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 26
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 24
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ............................................................................ 5
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 13
`
`
`
`
`
`
`iii
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`
`
`GLOSSARY OF ABBREVIATIONS
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`
`Description
`Claims 1-2, 4-6, 10-14, and 18 of U.S. Patent No. 9,633,373
`
`IPR2019-00613, Paper 2, Petition for Inter Partes Review
`IPR2019-01011, Paper 1, Petition for Inter Partes Review
`IPR2019-00613, Paper 10, Decision Granting Institution of
`Inter Partes Review
`IPR2019-01011, Paper 9, Decision Granting Institution of Inter
`Partes Review
`Patent Owner
`Person of Ordinary Skill in the Art
`IPR2019-00613, Paper 16, Patent Owner’s Response to Petition
`
`IPR2019-00613, Paper 8, Patent Owner’s Preliminary Response
`to Petition
`
`Shorthand
`Challenged
`Claims or
`Claims
`P1
`P2
`ID1
`
`ID2
`
`PO
`POSITA
`POR or
`Response
`POPR
`
`
`Note: All emphasis herein added unless otherwise stated.
`
`
`
`iv
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`
`LIST OF EXHIBITS
`
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`
`Exhibit Description
`U.S. Patent No. 9,633,373 to Jung et al.
`1001
`1002
`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.
`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)
`
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`
`v
`
`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`
`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.p
`df)
`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
`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]
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`
`1034
`
`vi
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`U.S. Patent No. 9,633,373
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`
`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
`U.S. Patent 7,423,557 to Kang
`Declaration of Scott A. McKeown
`Rebuttal Declaration of Benjamin B. Bederson
`
`1035
`
`1036
`1037
`1038
`1039
`
`
`
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`vii
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`
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`I.
`
`INTRODUCTION
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`
`The Board correctly found at institution that Petitioner established a
`
`reasonable likelihood of prevailing in proving Claims 1-2, 4-6, 10-14, and 18
`
`unpatentable. ID1, 24; ID2, 22. PO’s Response unsuccessfully attempts to avoid
`
`the Claims’ obviousness by improperly reading the term “initiates” out of the claims,
`
`ignoring the references’ plain disclosures, and rehashing arguments rejected by the
`
`Board. PO’s Claims are unpatentable.
`
`II. GROUND 1: THE COMBINATION OF GRIFFIN, DAVIS, AND iOS
`RENDERS OBVIOUS THE CHALLENGED CLAIMS
`
`A. The Combination of Griffin and iOS Discloses an Activation
`Button Separate From a Power Button
`
`PO incorrectly argues that neither Griffin nor iOS discloses an activation
`
`button that is configured to turn on the display and is separate from the power button.
`
`POR, 14-16. The combination of Griffin and iOS discloses this element.
`
`Griffin discloses a home button (activation button), as shown in Figure 5B:
`
`
`
`1
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`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`Ex. 1027, Fig. 5B, ¶86; P1, 31-32. When pressed, Griffin’s activation button turns
`
`on the touch screen display. Ex. 1027 ¶25; P1, 33.
`
`Like Griffin, iOS discloses a home button (activation button). iOS further
`
`discloses a Sleep/Wake button (power button) separate from the home button, which
`
`turns on and off the terminal:
`
`
`
`Ex. 1007, 20, 26-27; P1, 20-21, 30-31.
`
`PO incorrectly argues that “the ‘home button’ in iOS is not an ‘activation
`
`button’...because it is not ‘configured for pressing to turn on the touch screen
`
`display.’” POR, 14. As an initial matter, Petitioner relied on Griffin for the
`
`activation button (home button) configured for pressing to turn on the touch screen
`
`display (element [1.f]). Ex. 1027 ¶25; P1, 33; Ex. 1039 ¶¶14-16. Moreover, contrary
`
`to PO’s incorrect assertion, iOS discloses that its home button—just like Griffin’s
`
`2
`
`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`home button—turns on the display. As explained in iOS, locking the iPhone turns
`
`off the display (Ex. 1007, 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 display. Ex. 1039 ¶¶17-19.
`
`Thus, the combination of Griffin and iOS discloses an activation button that
`
`turns on the display and is separate from the power button.2 Id. ¶20.
`
`B.
`
`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
`
`PO’s argument that none of the prior art discloses turning on the display and
`
`performing a fingerprint authentication function in response to a “one-time pressing
`
`of the activation button” (POR, 16) is based on an incorrect claim interpretation; the
`
`combination of Griffin and Davis discloses the plain language of the claim.
`
`
`
` 2
`
` PO’s assertion that Petitioner failed to perform a proper Graham analysis for this
`element (POR, 15) is incorrect. The Petition set forth the scope and content of the
`prior art and ascertained the differences between the claimed invention and the
`prior art. P1, 20-23, 30-32. It is readily apparent from Petitioner’s analysis that
`iOS discloses the separate power button missing from Griffin.
`
`3
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`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`The Claims Are Not Limited to a Single Step or a Single User
`Action for Pressing the Activation Button and Scanning a
`Fingerprint
`
`1.
`
`PO’s assertions that the claims are limited to “a single user action” and
`
`exclude “multi-step processes” (e.g., POR, 2, 16, 24) are incorrect and unsupported
`
`by the intrinsic record. The 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). PO’s interpretation, however, incorrectly reads the word
`
`“initiates” out of the claims, for example, by requiring that a single user action both
`
`press the activation button and scan a fingerprint.
`
`PO’s interpretation ignores an express limitation of the claims. All claims
`
`expressly recite that the function is “initiated” by the one-time press of the activation
`
`button:
`
`• Claim 1:
`° 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,
`• Claim 11:
`° 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,
`Thus, PO’s interpretation—which requires more than “initiat[ing]”—would
`
`4
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`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`improperly read this limitation out of the claims. Akzo Nobel Coatings, Inc. v. Dow
`
`Chemical Co., 811 F.3d 1334, 1340 (Fed. Cir. 2016) (rejecting a construction that
`
`would render a term “entirely superfluous”); Merck & Co. v. Teva Pharm. USA, Inc.,
`
`395 F.3d 1364, 1372 (Fed. Cir. 2005).
`
`PO misinterprets “one-time pressing” to require that a single user action both
`
`press the activation button and scan a fingerprint. However, consistent with the
`
`claims and specification, “one-time pressing of the activation button” refers to how
`
`many times the activation button is pressed. As the specification explains, the
`
`activation button is pressed once or multiple times:
`
`In addition, according to an embodiment of the present
`invention, an operation which differs according to the
`number of presses … 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 continuously
`pressed three times.
`Ex. 1001, 4:57-65; see also Ex. 1001, 1:17-23 (“performing various functions
`
`according to the number of presses or a press time of a button”), 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”). The term “one-time pressing of the activation button,” which
`
`5
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`initiates the fingerprint authentication function, does not preclude other inputs or
`
`user actions, such as a subsequent fingerprint scan.
`
`Moreover, the claimed apparatus/process necessarily encompasses two
`
`inputs. All claims require a one-time “press” of an activation button. This is a first
`
`input. All claims further require initiating a function (in response to the “press” of
`
`the activation button). When a fingerprint authentication function is selected as the
`
`first function and the fingerprint sensor scans a fingerprint, this is a second input.
`
`ID1, 17 (“We note that when the first function is fingerprint authentication, claim 1
`
`necessarily requires both the ‘one-time pressing of the activation button’ and the
`
`fingerprint scan.”); IPR2019-00614 (’419 Patent), Paper 10 (Institution Decision),
`
`22 (“Moreover, we are persuaded based on the current record that the user’s pressing
`
`of the activation button and the user’s fingerprint in the challenged claims can be
`
`considered multiple user inputs.”).
`
`The specification discloses separate units for detecting the activation button
`
`press and operating the user identification function. The patent describes an
`
`activation sensing unit 410, which “senses whether or not the user has pressed the
`
`activation button 120.” Ex. 1001, 7:23-25. “If the activation sensing unit 410 senses
`
`that the activation button 120 has been pressed,” then a separate user identification
`
`6
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`U.S. Patent No. 9,633,373
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`unit 420 “operates the user identification function in various methods.”3 Id., 7:26-
`
`28. Figure 4A depicts the separate units of mobile communication terminal 100:
`
`
`See also id., claim 9 (“wherein the terminal comprises a smartphone which
`
`comprises an activation sensor configured to detect pressing of the activation
`
`button and a user identification module configured to perform the fingerprint
`
`authentication function”). This confirms that the claims encompass multiple inputs
`
`and/or steps for pressing the activation button and scanning a fingerprint.
`
`There is no support in the claims, specification, or prosecution history for
`
`misinterpreting “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. Indeed, the specification includes only one sentence regarding
`
`fingerprint authentication, which says nothing about a single user action or single
`
`
`
` 3
`
` There is no disclosure in the ’373 specification of how user identification unit 420
`accomplishes fingerprint authentication or detects a fingerprint.
`
`7
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`input to both press the activation button and scan a fingerprint, let alone how to
`
`accomplish that or what type of scanner to use:
`
`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.
`Ex. 1001, 8:13-20. Thus, PO’s interpretation has no support in the intrinsic record,
`
`and should be rejected.
`
`Furthermore, PO’s
`
`incorrect
`
`interpretation would
`
`improperly
`
`read
`
`embodiments out of the claims. For example, one of the claimed functions is a
`
`“hands-free function,” which uses voice input (an additional user action that would
`
`be excluded under PO’s misinterpretation). In addition, dependent claim 9 adds 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.” One of these additional functions disclosed by the
`
`specification is “a password matching method” that “can be performed by pressing
`
`the activation button.” Ex. 1001, 8:13-20. Entering a password necessarily requires
`
`additional user inputs. 4 Thus, PO’s interpretation would improperly read these
`
`
`
` 4
`
` The specification’s disclosure that a password matching method can be
`“performed by pressing the activation button” also undercuts any argument by PO
`
`8
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`U.S. Patent No. 9,633,373
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`embodiments out of the claims. Accent Packaging, Inc. v. Leggett & Platt, Inc., 707
`
`F.3d 1318, 1325 (Fed. Cir. 2013).
`
`PO’s interpretation of the claims from the perspective of the user (POR, 26)
`
`is unsupported and contradicted by the claims. Claim 1 is an apparatus claim
`
`directed to a mobile communication terminal, its components, and how those
`
`components are configured, e.g., “an activation button…configured for pressing.”
`
`Claim 11 is a method claim directed to steps performed by a mobile computing
`
`terminal, e.g., “detecting one-time pressing,” “changing the terminal from an
`
`inactive state to an active state,” and “performing at least one of the first and second
`
`functions.”
`
`Finally, PO’s interpretation with respect to claim 11 is incorrect for all of the
`
`reasons described above. In particular, PO again ignores the word “initiate,” which
`
`appears in claim 11. The claim additional language of claim 11—“performing [at
`
`least one of the first and second functions] without additional user input”—further
`
`recites “wherein…the terminal operates such that…at least one of the first and
`
`second functions is initiated…in response to the one-time pressing of the
`
`activation button.” Thus, the term merely clarifies that no additional user input
`
`
`
`that the word “perform” in the Claims precludes additional inputs or user actions
`beyond pressing the activation button.
`
`9
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`beyond the one-time pressing is required by the device to initiate the function. In
`
`other words, “one-time pressing of the activation button” addresses how many times
`
`the activation button is pressed, and “without additional user input” addresses
`
`whether the claim is limited to a single input to “initiate” the function. As discussed
`
`above, PO’s interpretation, which requires a single user input and a single user action
`
`to both press the activation button and scan a fingerprint (when fingerprint
`
`authentication is the first function), has no support in the intrinsic record. Ex. 1039
`
`¶¶21-31.
`
`2.
`
`The Combination of Griffin and Davis Discloses the Express
`Language of the Claim
`
`PO argues that none of the prior art discloses turning on the display and
`
`performing a fingerprint authentication function in response to a “one-time pressing
`
`of the activation button” (POR, 16), but as discussed above, PO’s argument is based
`
`on an incorrect claim interpretation. Griffin in view of Davis discloses the express
`
`language of the claim: a “one-time pressing of the activation button” that turns on
`
`the touch screen display and “initiates” the fingerprint authentication function.
`
`Griffin discloses a button that is pressed to turn on the display and initiate an
`
`unlock procedure, and Davis discloses that the unlock procedure can be fingerprint
`
`authentication. P1, 13-19, 33-38. Griffin discloses that pressing an activation button
`
`(home or convenience key) turns on the touch screen display (from a sleep mode).
`
`10
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`Ex. 1027 ¶25. Additionally, Griffin discloses that this pressing of the activation
`
`button initiates an unlock procedure that detects a second input. Id. ¶86, 121. If the
`
`second input is received, the device is unlocked. Id. ¶122. Thus, in response to a
`
`one-time pressing of Griffin’s home button, (1) the display is turned on and (2) an
`
`unlock procedure is initiated. Griffin further discloses that the device includes a
`
`“fingerprint detector.” Id. ¶77.
`
`Davis teaches using fingerprint authentication in an unlock procedure (e.g., as
`
`the second input in Griffin’s unlock procedure). For example, Figure 4 of Davis
`
`shows an embodiment with (1) password authentication and (2) fingerprint
`
`authentication in response to an unlock command:
`
`
`
`11
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`
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`IPR2019-00613
`U.S. Patent No. 9,633,373
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`Ex. 1015, Fig. 4 (annotated), ¶¶46-47, 52-53. Davis further discloses that “a subset
`
`of the authentication factors” can be used. Id. ¶71; ID1, 23. Thus, the steps
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`pertaining to password authentication (steps 404-412) may be omitted. Accordingly,
`
`in Davis’s modified Figure 4, when an unlock command is received (step 402), a
`
`fingerprint dialog is presented on the screen (step 416), the device scans a fingerprint
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`(step 418), and the device is unlocked if the fingerprint is valid (steps 420-422):
`
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`P1, 17-18. As explained by Dr. Bederson, a POSITA would have been motivated to
`
`use a fingerprint function, as taught by Davis, for the second unlock input
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`mechanism of Griffin because biometric inputs provided higher levels of security
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`and user convenience. Ex. 1003 ¶¶61-63, 36-41, P1, 19-20.
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`PO incorrectly argues that “Griffin neither discloses turning on the display to
`
`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.” POR, 17. First, contrary to PO’s
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`assertion, Griffin discloses turning on the display. Griffin discloses that pushing the
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`home button initiates an unlock action and reactivates the monitor. P1, 13-14, 33;
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`12
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`U.S. Patent No. 9,633,373
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`Ex. 1027 ¶¶24-25, 29. In fact, Griffin expressly discloses that if the home button is
`
`pressed during sleep mode, “the device display would then be activated” while the
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`device awaits the second input. Ex. 1027 ¶29; Ex. 1039 ¶¶32-33. Second, with
`
`respect to the lock screen and fingerprint authentication function, PO is improperly
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`attacking Griffin individually, rather than in combination with Davis. See In re
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`Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012); In re Merck & Co., Inc., 800 F.2d
`
`1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
`
`references individually where the rejection is based upon the teachings of a
`
`combination of references.”). Petitioner explained in detail which element is taught
`
`by which reference. P1, 18-19, 33-38. As explained above, Davis discloses using
`
`fingerprint authentication in an unlock procedure, and discloses showing a lock
`
`screen (Davis’s fingerprint dialog) as part of the unlock process. P1, 17-18; Ex.
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`1015 ¶¶50-53, Fig. 4; Ex. 1039 ¶33.
`
`PO’s arguments that Griffin discloses “a multi-step process requiring multiple
`
`user actions” and Davis “requires multiple steps” (POR, 18-19, 22) are irrelevant,
`
`because the claims are not limited to a single step or single user action to both press
`
`the activation button and scan a fingerprint. See §II.B.1; Ex. 1039 ¶36.
`
`Even if the claims required a single user action to both press the activation
`
`button and scan a fingerprint (they do not), Griffin discloses turning on the display
`
`and unlocking in response to a single user action. For example, Griffin expressly
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`13
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`discloses “detecting a single continuous unlock action.” See, e.g., Ex. 1027 Abstract,
`
`¶¶30-31, 35-36, 88. This single, continuous user action includes two inputs, just like
`
`the Claims: (1) a button press, and (2) a second input (e.g., Davis’s fingerprint
`
`detection). Ex. 1039 ¶¶37-38; ID1, 15; IPR2019-00614, Paper 10 (Institution
`
`Decision), 24-25; see also Ex. 1015, claim 1.
`
`3.
`
`Petitioner’s Modification of Davis’s Figure 4 Is Expressly
`Taught by Davis
`
`PO argues that Petitioner’s modification of Figure 4 is inappropriate because
`
`“Davis never discloses that its complex authentication procedure can be reduced
`
`down to a simple fingerprint authentication” (POR, 21-22), but contrary to PO’s
`
`assertion, Petitioner’s modified Figure 4 is straightforward and expressly taught by
`
`Davis.
`
`As explained above, Figure 4 of Davis shows an embodiment with two forms
`
`of security. After receiving an unlock command, the device requires password
`
`authentication (steps 404-412) and then fingerprint authentication (steps 416-422).
`
`Davis further discloses that “a subset of the authentication factors” can be used.
`
`Ex. 1015 ¶71. Thus, instead of using both authentication factors of Figure 4—
`
`password authentication and fingerprint authentication—an alternative process
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`disclosed by Davis uses only fingerprint authentication, and the steps pertaining to
`
`the first authentication factor (steps 404-412) are omitted:
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`14
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`IPR2019-00613
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`
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`Ex. 1015, Fig. 4 (annotated); Ex. 1039 ¶34; ID1, 15. This is further confirmed by
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`claim 1 of Davis, which recites an unlock process that requires only a biometric
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`candidate (e.g., a fingerprint). Ex. 1039 ¶¶34, 37.
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`PO’s suggestion that Davis’s process is “complex” and cannot “be reduced
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`down to a simple fingerprint authentication” (POR, 22) is incorrect. As explained
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`above, Davis expressly discloses that some embodiments require “a subset of the
`
`authentication factors.” Ex. 1015 ¶71. Applied to Figure 4, this is a straightforward
`
`reduction of authentication factors by eliminating password authentication. Ex.
`
`1039 ¶35. Moreover, Figure 6 and Paragraph 79 of Davis disclose a process using
`
`a single user fingerprint input to launch an application while the device is locked. It
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`is apparent from Davis’s express statements, as well as its embodiments and overall
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`15
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`IPR2019-00613
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`disclosure, that Davis is not limited to a specific number of authentication factors.
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`Id. Moreover, Davis does not require a complex process, and even states that “three-
`
`factor authentication may be considered time consuming.” Ex. 1015 ¶12. PO’s cited
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`case is inapposite. Petitioner did not “pick and choose” from Davis “to the exclusion
`
`of other parts necessary to the full appreciation of what such reference fairly
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`suggests.” Bausch & Lomb v. Barnes-Hind/Hydrocurve, 796 F.2d 443, 448 (Fed.
`
`Cir. 1986). Davis expressly discloses using a subset of the factors, and Figure 4 has
`
`only two types of factors. Ex. 1039 ¶35.
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`C. A POSITA Would Have Been Motivated to Combine Griffin,
`Davis, and iOS
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`PO incorrectly argues that “a POSITA would not combine Griffin with Davis
`
`in the proposed manner because they each teach away from the simplicity achieved
`
`by the challenged claims.” POR, 25. As explained above, the combination uses a
`
`fingerprint authentication 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 and user convenience. P1, 19-
`
`20; Ex. 1003 ¶¶61-63, 36-41; Ex. 1039 ¶39. PO argues that Griffin teaches that a
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`complex wake-up or unlock action may be desirable to prevent accidental waking or
`
`unlocking of a device and, thus, requires two separate user inputs (POR, 25), but as
`
`discussed the claims are not limited to a single input to both press the activation
`
`16
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`IPR2019-00613
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`button and scan a fingerprint. PO argues that Davis teaches using two- or three-
`
`factor authentication (POR, 25), but Davis also expressly discloses using a subset of
`
`the authentication factors. Moreover, as explained above, Davis explains that using
`
`multiple authentication factors may be time consuming. For these same reasons, PO
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`is incorrect that the combination renders the prior art unsatisfactory for its intended
`
`purpose, and thus PO’s reliance on In re Gordon is misplaced.
`
`PO argues that “Petitioner’s proposed combination is riddled with hindsight
`
`bias because it uses the ’373 patent as a roadmap” (POR, 26), but Petitioner
`
`explained that the mobile devices of Griffin, Davis, and iOS are similar, and a
`
`POSITA would have been motivated to use Davis’s teaching of fingerprint
`
`authentication for the second unlock input mechanism of Griffin because biometric
`
`inputs provided higher levels of security and user convenience. Ex. 1003 ¶¶63-68;
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`P1, 19-20, 22-27. Petitioner also provided several reasons why a POSITA would
`
`have been motivated to add iOS’s and Davis’s mobile device functions (e.g., camera,
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`power button, long-press) and settings menu to Griffin’s mobile device, and
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`explained that a POSITA would have recognized these would have been useful
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`resources to include in any smartphone device and would have been an application
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`of known techniques to improve similar devices in the same way. Ex. 1003 ¶¶68-
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`75; P1, 22-27. Moreover, Griffin and Davis both recognize that the configuration of
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`a mobile device is highly customizable. Ex. 1039 ¶40.
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`17
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`IPR2019-00613
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`PO’s suggestion that Petitioner failed to identify motivation to co
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