Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`APPLE INC.,
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`Petitioner,
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`v.
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`FIRSTFACE CO., LTD.,
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`Patent Owner.
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`________________
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`Case IPR2019-00613
`Case IPR-2019-01011
`U.S. Patent No. 9,633,373
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`________________
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`PATENT OWNER’S SUR-REPLY TO PETITION
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`TABLE OF CONTENTS
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` 
`Introduction ...................................................................................................... 1
`I.
`II. Ground 1: The Combination of Griffin, Davis, and iOS Does Not Render
`Obvious the Challenged Claims ............................................................................... 1
`A.
`The Combination of Griffin and iOS Fails to Disclose an Activation
`Button Separate from a Power Button. ............................................................ 2
`B.
`The Combination of Griffin and Davis Fails to Disclose Turning on
`the Display and Performing a First Function in Response to a One-Time
`Pressing of the Activation Button. ................................................................... 4
`1.
`The Challenged Claims require performance, not just initiation,
`of a first function in response to a press of the activation button. ........ 4
`2.
`The combination of Griffin and Davis fails to disclose
`performing a fingerprint authentication function in response to a one-
`time pressing of the activation button. .................................................. 8
`C. A POSITA Would Not Have Been Motivated to Combine Griffin,
`Davis, and iOS. .............................................................................................. 11
`III. Ground 2: The Combination of Goertz, Davis, and iOS Does Not Render
`Obvious the Challenged Claims ............................................................................. 14
`A.
`The Combination of Goertz and iOS Fails to Disclose an Activation
`Button Separate From a Power Button. ......................................................... 14
`B.
`The Combination of Goertz and Davis Fails to Disclose Turning On
`the Display and Performing a First Function In Response to a One-Time
`Pressing of the Activation Button. ................................................................. 16
`C. A POSITA Would Not Have Been Motivated to Combine Goertz,
`Davis, and iOS. .............................................................................................. 18
`IV. Conclusion ..................................................................................................... 20
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`TABLE OF AUTHORITIES
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`Cases:
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`Graham v. John Deere Co. of Kan. City,
`383 U.S. 1 (1966) ........................................................................................... 9, 10
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`In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ............................................... 13
`
`
`In re Merck & Co.,
`800 F.2d 1091 (Fed. Cir. 1986) ..................................................................... 9, 10
`
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ..................................................................... 9, 10
`
`Intamin Ltd. v. Magnetar Techs. Corp.,
`483 F.3d 1328 (Fed. Cir. 2007) ........................................................................... 8
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ......................................................................... 19
`
`
`Princeton Biochemicals, Inc. v. Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005) ................................................................... 13, 19
`
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`Rules, Statutes, and Other Authorities:
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`M.P.E.P § 2143.01(V) ............................................................................................. 13
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`TABLE OF EXHBITS
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`Exhibit
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`Description
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`2001
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`2008
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`Declaration of Dr. Alfred C. Weaver
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`Bederson Deposition Transcript
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`Patent Owner Firstface Co., Ltd. (“Firstface” or “Patent Owner”) submits
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`this Sur-Reply to the Petitions1 of Apple Inc. (“Apple” or “Petitioner”) seeking
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`inter partes review of claims 1-2, 4-6, 10-14, and 18 of U.S. Patent No. 9,633,373
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`(Ex. 1001, the “’373 patent”).
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`I.
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`Introduction
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`Petitioner’s Reply, like its Petition, fails to show that the Challenged Claims
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`are unpatentable. None of the cited art, alone or in combination, discloses all
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`limitations of the Challenged Claims. Petitioner’s arguments otherwise rely on
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`overly generous readings of the references and an incorrect interpretation of the
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`Challenged Claims. The Board should reject Petitioner’s arguments and find all
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`Challenged Claims patentable.
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`II. Ground 1: The Combination of Griffin, Davis, and iOS Does Not
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`Render Obvious the Challenged Claims.
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`                                                            
`1 Petitioner originally filed a Petition seeking inter partes review of claims 1, 2, 4–
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`6, and 11–14 in Case IPR2019-00613. Petitioner subsequently filed a Petition
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`seeking inter partes review of claims 10 and 18 in Case IPR2019-1011. The Board
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`instituted review in both proceedings and consolidated them for trial. This Sur-
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`Reply therefore addresses the arguments made in both Petitions.
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`Petitioner makes two primary arguments in its Reply. First, it argues that
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`iOS discloses an activation button separate from a power button and, thus, the
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`combination of Griffin and iOS discloses an activation button separate from a
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`power button. Second, Petitioner argues that, contrary to the plain claim language,
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`the Challenged Claims require only initiating, not performing, a first function
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`(here, fingerprint authentication) in response to a one-time press of the activation
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`button. And, according to Petitioner, when combined with Davis, Griffin discloses
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`initiating a fingerprint authentication function in response to a one-time press of
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`the activation button. Petitioner is wrong on all fronts.
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`A. The Combination of Griffin and iOS Fails to Disclose an
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`Activation Button Separate from a Power Button.
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`Each Challenged Claim requires an activation button that is separate from
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`the power button. See POR at 14. In its Patent Owner Response, Patent Owner
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`explained that Griffin and iOS do not disclose an activation button separate from a
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`power button, because iOS, on which Petitioner relies, does not disclose an
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`activation button that is configured to turn on the display, as the Challenged
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`Claims require. POR at 14-16.
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`Petitioner makes two arguments in Reply. First, it argues that it relies on
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`Griffin, not iOS, for the claimed activation button, so it does not matter whether
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`iOS discloses an activation button that is configured to turn on the display. Reply
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`at 2. Second, it argues that iOS does disclose an activation button that turns on the
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`display. Neither of Petitioner’s arguments have merit. Reply at 2-3.
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`As to its first argument, while Petitioner pointed to Griffin for its activation
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`button, the only reference Petitioner relies upon to teach that the activation button
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`is separate from the power button is iOS. See Pet. at 31-32. But, as Patent Owner
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`explained, iOS does not teach the required activation button, and thus cannot teach
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`that the power button is separate from the activation button.
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`Regardless, Petitioner’s Reply fails to demonstrate that iOS discloses an
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`activation button configured to turn on the display. Petitioner contends that,
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`according to iOS, “locking the iPhone turns off the display (Ex. 1007, 145), and to
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`subsequently unlock the iPhone the user can press the home button and then drag a
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`slider that appears on the screen (Ex. 1007, 26-27, 23).” Reply at 3. Petitioner
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`overstates what iOS says. It is true that iOS discloses that locking the iPhone turns
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`off the display. Ex. 1007 at 145. It is also true that iOS discloses that, to unlock the
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`iPhone, a user should “press the home button” and then “drag the slider.” Id. at 27.
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`But iOS is silent as to turning on the display—there is no evidence in iOS that the
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`display was not turned on prior to the home button’s pressing. And as explained in
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`the Response, other means for turning on the display are possible (and Petitioner’s
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`U.S. Patent No. 9,633,373
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`expert does not deny this fact). iOS thus does not disclose an activation button that
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`turns on the display. Petitioner accordingly has failed to meet its burden to show
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`that the cited art discloses all limitations of the Challenged Claims.
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`B.
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`The Combination of Griffin and Davis Fails to Disclose Turning
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`on the Display and Performing a First Function in Response to a
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`One-Time Pressing of the Activation Button.
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`In its Reply, Petitioner contends that the Challenged Claims require only
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`turning on the display and initiating a first function (here, fingerprint
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`authentication) in response to a one-time pressing of the activation button. Reply at
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`3-10. And it contends that the combination of Griffin and Davis discloses as much.
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`Reply at 10-14. Petitioner misreads the Challenged Claims. The plain language of
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`the claims requires, not just initiation of the first function, but performance of the
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`first function. As Patent Owner explained in its Response, neither Griffin nor
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`Davis discloses performance of a fingerprint authentication in response to a one-
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`time pressing of the activation button. In addition, a POSITA would not combine
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`Griffin and Davis to achieve this claim limitation. The Board should thus reject
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`Petitioner’s arguments.
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`1.
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`The Challenged Claims require performance, not just initiation,
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`of a first function in response to a press of the activation button.
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`The plain language of the Challenged Claims requires turning on a display
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`and both initiating and performing a first function “upon one-time pressing of the
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`activation button.” Ex. 1001 at 13:7-12. Petitioner focuses solely on one limitation:
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`“the activation button configured for pressing to turn on the touch screen display
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`and to initiate one or more additional functions of the terminal.” Reply at 4. It is
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`true that the claims require that the activation button (rather than some other
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`button) be configured to initiate the one or more additional functions. But
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`Petitioner ignores a number of other claim limitations (discussed in Patent Owner’s
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`Response) that make clear that full performance of the function, not just initiation
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`of the function, is required in response to a press of the activation button. For
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`example, Claim 1 requires:
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` “wherein upon one-time pressing of the activation button while the
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`touch screen display is turned off, the terminal is configured to turn
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`on the touch screen display and further perform at least one of the
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`first and second functions in addition to turning on the touch screen
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`display”
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` “wherein at least one of the first and second functions is performed
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`subsequent to turning on the touch screen display and displaying the
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`lock screen in response to the one-time pressing of the activation
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`button”
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` “wherein the touch screen display displays the lock screen when at
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`least one of the first and second functions is being performed”
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`See Claim 1 (emphasis added). The other independent claim, Claim 11, contains
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`similar limitations. See Claim 11. The Challenged Claims thus require
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`performance, not just initiation, of the first function—here, fingerprint
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`authentication—in response to a one-time pressing of the activation button.
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`Petitioner argues that the Challenged Claims do not require full performance
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`of the fingerprint authentication function in response to a one-time pressing of the
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`activation button because “the claimed apparatus/process necessarily encompasses
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`two inputs.” Reply at 6. According to Petitioner, the one-time pressing is a first
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`input, and the fingerprint scan is a second input. Id. That may be true, but it is
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`irrelevant. Regardless of how many inputs are required, the Challenged Claims are
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`clear that the first function is performed in response to a singular action—a one-
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`time press of the activation button.
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`Contrary to Petitioner’s allegation, Patent Owner’s interpretation of the
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`Challenged Claims would not “improperly read out embodiments of the claims.”
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`Petitioner argues, for example, that “one of the claimed functions is a ‘hands-free
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`function,’ which uses voice input (an additional user action that would be excluded
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`under PO’s misinterpretation).” Reply at 8. But Petitioner cites nothing for the
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`proposition that performance of a hands-free function would require a voice input
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`from a user (let alone any input). For example, the hands-free function could
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`simply be the activation of a microphone.
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`Petitioner similarly argues that dependent claim 9 requires performance of a
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`third function in response to a repeated pressing of the activation button. Reply at
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`8. According to Petitioner, because one of those could be “a password matching
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`method,” the claims necessarily require more than one user input.2 To be sure,
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`claim 9 may require an additional user input in response to a repeated press of the
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`activation button. But claim 9 does not change the requirement that the first
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`function (fingerprint authentication) be performed in response to a one-time press
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`                                                            
`2 Petitioner alleges that the specification’s statement that “one or more
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`authentication methods can be performed by pressing the activation button” means
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`that “performs” means “initiates.” See Reply at 8, n.4. The cited language,
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`however, does not require that the performance occur in response to a one-time
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`pressing of the activation button, and thus is not applicable to the situation in
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`claims 1 and 11. See Ex. 1001 at 8:18-20.
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`of the activation button. And as the Federal Circuit has recognized, a claim need
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`not cover all embodiments, especially where a patentee may draft different claims
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`to cover different embodiments. Intamin Ltd. v. Magnetar Techs. Corp., 483 F.3d
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`1328, 1337 (Fed. Cir. 2007). Thus, while claim 9 may require an additional input,
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`it does not mean that the embodiments covered in claim 1 require additional inputs.
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`Petitioner finally argues that Patent Owner’s interpretation of the claims as
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`requiring performance of a first function in response to the single user action of a
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`one-time pressing of the activation button is improper because the apparatus claims
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`are directed to a mobile communication terminal and the method claims are
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`directed to steps performed by a mobile communication terminal. Reply at 9.
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`Petitioner’s point is not entirely clear. It’s true that the apparatus claims are
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`directed to a mobile communication terminal and the method claims recite steps
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`performed by a mobile communication terminal. But, as discussed above, the
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`claims make clear that the mobile communication terminal performs (not just
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`initiates) the first function in response to a one-time pressing of the activation
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`button.
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`2.
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`The combination of Griffin and Davis fails to disclose
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`performing a fingerprint authentication function in response to
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`a one-time pressing of the activation button.
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`Petitioner has failed to show that the Challenged Claims are unpatentable
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`over Griffin in view of Davis and iOS. In its Reply, Petitioner argued that “Griffin
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`in view of Davis discloses the express language of the claim: a ‘one-time pressing
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`of the activation button’ that turns on the touch screen display and ‘initiates’ the
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`fingerprint authentication function.” Reply at 10. But this argument ignores the
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`other limitations that require performance, not just initiation, of the fingerprint
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`authentication function in response to a one-time pressing of the activation button,
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`as discussed above.
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`As discussed in Patent Owner’s Response, neither Griffin nor Davis
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`discloses such limitations. See POR at 16-25. They each require instead multiple
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`user inputs. Griffin, at best, discloses turning on a display in response to a press of
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`an activation button. And performance of a “first function” in Griffin requires
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`additional user actions—operating other input mechanisms to fully unlock the
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`device. See POR at 17-19.3 Similarly, Davis at best initiates a fingerprint function
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`                                                            
`3 Petitioner cites to In re Mouttet and In re Merck to argue that it is improper to
`evaluate the individual contributions of each reference. However, a proper Graham
`analysis requires determining the scope and content of the prior art, which
`necessitates understanding what each reference discloses. Neither In re Mouttet nor
`In re Merck prohibits such an analysis. In re Mouttet simply counseled against
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`after receiving a user input by displaying a fingerprint dialog. But it requires
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`another user input to complete the fingerprint authentication function. See POR at
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`19-25. This is true regardless of whether the Board accepts Petitioner’s heavily
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`modified version Figure 4, which omits the password authentication that occurs
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`before fingerprint authentication. See POR at 22. Because neither Griffin nor Davis
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`discloses performing a fingerprint authentication function in response to a one-time
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`pressing of the activation button, the combination of the two cannot disclose it
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`either. Indeed, it is illogical that a pair of references that each require multiple user
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`actions to turn on the display and perform a first function would somehow be
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`combined such that only a single action is required.
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`As a fallback position, Petitioner argues in its Reply that “even if the claims
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`required a single user action to both press the activation button and scan a
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`                                                            
`requiring a specific finding that two references had equivalent components in order
`to make an obviousness combination. 686 F.3d 1322, 1332 (Fed. Cir. 2012). In
`fact, In re Mouttet cites to the requirements of the Graham factors in laying out the
`foundation for an obviousness finding. Id. at 1330. Meanwhile, In re Merck
`discourages picking out a single teaching from one reference to argue teaching
`away when the bulk of the other references indicate a different conclusion. In re
`Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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`fingerprint . . . , Griffin expressly discloses ‘detecting a single continuous unlock
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`action.’” Reply at 13-14 (citing Ex. 1027 at Abstract, ¶¶ 31-31, 35-36, 88). Thus,
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`according to Petitioner, “[t]his single, continuous user action includes two inputs,
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`just like the Claims: (1) a button press, and (2) a second input (e.g., Davis’s
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`fingerprint detection.” Id. Petitioner again ignores that the Challenged Claims
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`require performance of the fingerprint authentication solely in response to a one-
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`time pressing of the activation button. Petitioner’s argument replaces a “one-time
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`pressing” of the activation button with a “single continuous unlock action.” But
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`Griffin’s continuous unlock action involves engaging multiple disparate input
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`mechanisms, requiring more than a simple press of an activation button. As Griffin
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`explains: “[I]t can be seen that the foregoing methods and devices are configured
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`to permit the device 100 to transition from a locked state to an unlocked state not
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`simply on the basis of a single type of input, such as a keypress or a single touch-
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`screen gesture, but on the basis of a two-input or multiple-input action that must be
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`detected across a plurality of interfaces provided on the device 100.” Ex. 1027 at
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`[0116].
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`C. A POSITA Would Not Have Been Motivated to Combine Griffin,
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`Davis, and iOS.
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`Case IPR2019-00613
`U.S. Patent No. 9,633,373
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`In its Reply, Petitioner rehashes the same arguments it made in its Petition
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`for why a POSITA would be motivated to combine Griffin, Davis, and iOS. As
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`Patent Owner explained in its Response, both Griffin and Davis teach complex,
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`multi-step authentication systems. Petitioner argues in its Reply that it does not
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`matter that Griffin teaches a complex wake-up or unlock action because “the
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`claims are not limited to a single input to both press the activation button and scan
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`a fingerprint.” Reply at 16-17. But as discussed extensively above, Petitioner
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`misinterprets the Challenged Claims—they each require performance of fingerprint
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`authentication in response to a one-time pressing of the activation button.
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`Petitioner also argues that, while Davis teaches using two- or three-factor
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`authentication, it “also expressly discloses using a subset of the authentication
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`factors.” Reply at 17. But Petitioner ignores that Davis generally criticizes the use
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`of single-factor, password-based authentication to secure a device, and notes that
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`two-factor or three-factor authentication using a smart card and/or biometric
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`information is more secure. See POR at 10 (citing Ex. 1015 at [0002]-[0004]). And
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`while, as Petitioner argues, Davis recites one embodiment that uses single-factor
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`authentication, that embodiment is limited to use for launching applications “that
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`pose the lowest security risk to the mobile device 102,” and “the mobile device
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`remains locked while executing the application.” Ex. 1015 at [0082]. Combining
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`Griffin and Davis in a way that makes authentication easier would thus make
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`Griffin and Davis unsatisfactory for their intended purposes. See In re Gordon, 733
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`F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984); see also M.P.E.P. § 2143.01(V).
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`Furthermore, as explained in Patent Owner’s Response, the patchwork
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`reasoning and multiple alleged motivations to combine relied upon by Petitioner to
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`arrive at the invention demonstrate the problem with Petitioner’s obviousness
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`combination. Patent Owner explained in its Response that the Federal Circuit has
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`cautioned against permitting an obviousness argument that does not assess the
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`invention “as a whole.” POR at 30. This “as a whole” assessment of the invention
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`requires a showing that an artisan of ordinary skill in the art at the time of
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`invention, confronted by the same problems as the inventor and with no knowledge
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`of the claimed invention, would have selected the various elements from the prior
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`art and combined them in the claimed manner. Princeton Biochemicals, Inc. v.
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`Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005). But rather than provide a clear
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`explanation for why the invention as a whole would be rendered obvious,
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`Petitioner breaks the invention into component parts, finds a reference that
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`purportedly discloses each part, and explains why a POSITA would have a
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`motivation to add each component part to the mix. This improperly imports
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`hindsight bias into the invention. See POR at 26-30. The Board should therefore
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`Case IPR2019-00613
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`reject Petitioner’s arguments and find all Challenged Claims patentable over the
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`cited art.
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`III. Ground 2: The Combination of Goertz, Davis, and iOS Does Not
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`Render Obvious the Challenged Claims.
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`Petitioner makes the same two primary arguments for Ground 2 that it made
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`for Ground 1. First, it argues that, contrary to Patent Owner’s argument, iOS
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`discloses an activation button separate from a power button and, thus, the
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`combination of Goertz and iOS discloses an activation button separate from a
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`power button. Second, adopting the same, incorrect interpretation of the
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`Challenged Claims that it took with respect to Ground 1, Petitioner argues that
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`Goertz when combined with Davis discloses initiating a fingerprint authentication
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`function in response to a one-time press of the activation button. Petitioner is
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`wrong for the same reasons it was with respect to Ground 1. 
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`A. The Combination of Goertz and iOS Fails to Disclose an
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`Activation Button Separate From a Power Button.
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`Each Challenged Claim requires an activation button that is separate from
`
`the power button. In its Patent Owner Response, Patent Owner explained that
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`Goertz and iOS, on which Petitioner relies for disclosure of this claim limitation,
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`do not disclose an activation button separate from a power button, because neither
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`reference discloses an activation button that is configured to turn on the display
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`and is separate from the power button, as the claims require. See POR at 31-34.
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`Petitioner first contends in its Reply that Figures 12-15 of Goertz disclose
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`an activation button that turns on the display when pressed. But as Patent Owner
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`explained in its Response, nothing in Goertz says that Figure 13 shows a display
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`that is off, contrary to Petitioner’s arguments. POR at 32. Petitioner argues that
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`Figure 13 is identical to Figure 9, which itself shows a display that is off. But, as
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`Figure 9 itself indicates, it shows a device that is entirely off, so the display must
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`be off. See Ex. 1013, Figs. 9-10, ¶ [0059]. There is no similar disclosure for Figure
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`13.
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`Petitioner also contends that iOS discloses an activation button that is
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`separate from a power button.4 But Petitioner has not shown that the purported
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`activation button in iOS turns on the display in response to a press. And, contrary
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`to its argument, it must do so. While Petitioner pointed to Goertz for its activation
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`button, the only reference Petitioner relies on to teach that the activation button is
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`4 Petitioner does not appear to contend that the purported activation button in
`Goertz is separate from the power button.
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`separate from the power button is iOS. See Pet. at 67-68. The only way iOS can do
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`so is if it teaches an activation button.
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`Petitioner’s Reply fails to demonstrate that iOS discloses an activation
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`button configured to turn on the display. Petitioner contends that, according to iOS,
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`“locking the iPhone turns off the display (Ex. 1007, 145), and to subsequently
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`unlock the iPhone the user can press the home button and then drag a slider that
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`appears on the screen (Ex. 1007, 26-27, 23).” Reply at 3, 22 (citing to section II.A
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`of its Reply). As explained above, Petitioner overstates what iOS says. See supra
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`section II.A. Nowhere does iOS disclose that the home button (the purported
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`activation button) turns on the display. Petitioner accordingly has failed to meet its
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`burden to show that the cited art discloses all limitations of the Challenged Claims.
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`B.
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`The Combination of Goertz and Davis Fails to Disclose Turning
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`On the Display and Performing a First Function In Response to a
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`One-Time Pressing of the Activation Button.
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`As it did with Ground 1, Petitioner argues that the Challenged Claims
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`require only turning on the display and initiating a first function (here, fingerprint
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`authentication) in response to a one-time pressing of the activation button. Reply at
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`And it contends that the combination of Griffin and Davis discloses as much. As
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`discussed above in Ground 1, Petitioner’s interpretation of the Challenged Claims
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`is wrong—they require performance, not just initiation, of the first function (here,
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`fingerprint authentication) in response to a one-time pressing of the activation
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`button. See supra section II.B.1.
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`As discussed in Patent Owner’s Response, neither Goertz nor Davis
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`discloses such limitations. See POR at 34-37. Both instead require multiple user
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`inputs. Goertz discloses turning on the display and presenting a prompt to begin
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`“key lock high security mode,” whereby a user is presented with the need to input
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`a password prior to being prompted for a fingerprint. See POR at 36. Even if
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`Goertz were to use a subset of authentication factors, for example, to skip the need
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`to enter a key sequence and go straight to requesting a fingerprint, it would still
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`require multiple user inputs because it would require a press to turn on the display
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`and then a response to a prompt for a fingerprint. See id. Similarly, and as
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`discussed above, Davis at best initiates a fingerprint function after receiving a user
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`input by displaying a fingerprint dialog. But it requires another user input to
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`complete the fingerprint authentication function. See POR at 22. Because neither
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`Goertz nor Davis discloses performing a fingerprint authentication function in
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`response to a one-time pressing of the activation button, the combination of the
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`two cannot disclose it either. Indeed, it is illogical that a pair of references which
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`each require multiple user actions to turn on the display and perform a first
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`function would somehow be combined such that only a single action is required.
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`C. A POSITA Would Not Have Been Motivated to Combine Goertz,
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`Davis, and iOS.
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`As with Ground 1, Petitioner rehashes the same arguments in Reply that it
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`made in its Petition for why a POSITA would be motivated to combine Goertz,
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`Davis and iOS. As Patent Owner argued in its Response, a person of skill in the art
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`would not combine Davis’s method of fingerprint authentication with Goertz
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`because Goertz already implements fingerprint authentication. See POR at 38-39.
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`Petitioner argues in its Reply (as it did in its Petition) that Goertz “does not explain
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`any steps in detail, and is thus ready for improvement by known techniques.”
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`Reply at 26. Petitioner proposes to fill these purported holes with the disclosure of
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`Davis. But what Petitioner relies on Davis for is the timing of fingerprint
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`authentication in the unlocking process. See Reply at 24 (“Davis teaches that a
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`fingerprint dialog is presented on the screen and the device operates a fingerprint
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`authentication function in response to an unlock command.”). Yet as Patent
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`Owner explained in its Response, Goertz discloses a two-step process for
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`fingerprint authentication in which the device prompts the user to perform
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`authentication in response to a press of the purported activation button. Ex. 1013 at
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`[0060-61]. Patent Owner has provided a sufficient basis for its assertion that the
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`references accomplish similar functions in different means, and, thus, contrary to
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`Petitioner’s argument, Kinetic Concepts is applicable.
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` Furthermore, as explained in Patent Owner’s Response, the patchwork
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`reasoning and multiple alleged motivations to combine relied upon by Petitioner to
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`arrive at the invention demonstrate the problem with Petitioner’s obviousness
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`combination. Patent Owner explained in its Response that the Federal Circuit has
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`cautioned against permitting an obviousness argument that does not assess the
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`invention “as a whole.” This “as a whole” assessment of the invention requires a
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`showing that an artisan of ordinary skill in the art at the time of invention,
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`confronted by the same problems as the inventor and with no knowledge of the
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`claimed invention, would have selected the various elements from the prior art and
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`combined them in the claimed manner. Princeton Biochemicals, Inc. v. Coulter,
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`Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005). As it did with Ground 1, rather than
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`provide a clear explanation for why the invention as a whole would be rendered
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`obvious, Petitioner breaks the invention into component parts, finds a re