Trials@uspto.gov
`571.272.7822
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` Paper No. 10
` Entered: August 5, 2019
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`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
`Patent 9,633,373 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSEL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 10
` Entered: August 5, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`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
`Patent 9,633,373 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSEL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2019-00613
`Patent 9,633,373 B2
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`Apple Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1, 2, 4–6, and 11–14
`of U.S. Patent No. 9,633,373 B2 (“the ’373 patent”). Paper 2 (“Pet.”).
`Firstface Co., Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim, we grant
`Petitioner’s request and institute an inter partes review of all challenged
`claims.1
`
`I. BACKGROUND
`A. The ’373 Patent (Ex. 1001)
`The ’373 patent describes a method and mobile communication
`terminal for performing a specific function when a mobile communication
`terminal is activated. Ex. 1001, 1:16–18. Figure 1 of the ’373 patent is
`reproduced below.
`
`
`1 Although we granted Petitioner’s motion to seal certain exhibits filed with
`the Petition (Paper 9), we do not refer to any sealed material in this
`Decision.
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`Figure 1 illustrates an external appearance of mobile communication
`terminal 100. Id. at 3:42–44. Mobile communication terminal 100 includes
`display unit 110 and activation button 120. Id. at 3:45–47. Display unit 110
`displays various information regarding operation states of mobile
`communication terminal 100. Id. at 3:64–66. Activation button 120
`switches mobile communication terminal 100 from an inactive state (in
`which the terminal is communicable but the display screen is turned off) to
`an active state (in which the display screen is turned on). Id. at 3:21–23,
`3:32–37, 4:22–24.
`
`If the user presses activation button 120 when mobile communication
`terminal 100 is in the inactive state, mobile communication terminal 100
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`performs a predetermined operation in addition to switching to the active
`state. Id. at 4:36–40. Example operations that can be performed include
`camera activation, user authentication (e.g., fingerprint recognition), and
`operation of a music player. See id. at 5:51–63, 7:18–8:20, 10:1–8.
`
`The user can set the operation to be performed when the activation
`button is pressed. Id. at 4:51–53. Different operations can be set to be
`performed according to the number of presses or a press time of activation
`button 120; for example, a first operation can be performed if activation
`button 120 is pressed for a short time and a second operation can be set to be
`performed if activation button 120 is pressed for a long time. See id. at
`4:57–5:2.
`
`B. Illustrative Claim
`Claims 1 and 11 are independent claims. Claim 1 is illustrative of the
`subject matter at issue:2
`1. A mobile communication terminal comprising:
`a touch screen display;
`a camera;
`a power button configured to turn on and off the terminal
`by pressing; and
`an activation button separate from the power button and
`located outside the touch screen display, the activation button
`configured for pressing to turn on the touch screen display and to
`initiate one or more additional functions of the terminal,
`wherein the terminal has a first function and a second
`function to perform in response to user input via the activation
`button and is configured to provide user settings for configuring
`at least one of the first and second functions such that at least one
`of the first and second functions is set to be performed in addition
`
`2 Claims 1 and 11 were corrected in a certificate of correction dated June 27,
`2017. Ex. 1001.
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`to turning on the touch screen display upon pressing of the
`activation button while the touch screen display is turned off,
`wherein the first and second functions are different from each
`other and selected from the group consisting of fingerprint
`authentication, activating the camera, playing music and a hands-
`free function,
`wherein upon one-time pressing of the activation button
`while the touch screen display is turned off, the terminal is
`configured to turn on the touch screen display and further
`perform at least one of the first and second functions in addition
`to turning on the touch screen display such that:
`a lock screen is displayed on the touch screen
`display upon turning on the touch screen display in
`response to the one-time pressing of the activation button
`while the touch screen display is turned off,
`in response to the one-time pressing of the
`activation button, the first function is performed in
`addition to turning on the touch screen display for
`displaying the lock screen thereon, and
`the second function is performed when the one-
`time pressing is for long time longer than a reference time
`period,
`wherein at least one of the first and second
`functions is performed subsequent to turning on the touch
`screen display and displaying the lock screen in response
`to the one-time pressing of the activation button,
`wherein the touch screen display displays the lock
`screen when at least one of the first and second functions
`is being performed.
`C. References
`Petitioner relies on the following references:
`1. Apple iPhone OS 3.1 User Guide (Sept. 2009) (“iOS”) (Ex. 1007).
`2. U.S. Patent Application Pub. No. 2010/0017872, published Jan. 21,
`2010 (“Goertz”) (Ex. 1013).
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`3. U.S. Patent Application Pub. No. 2010/0138914, published June 3,
`2010 (“Davis”) (Ex. 1015).
`4. U.S. Patent Application Pub. No. 2012/0133484, published May
`31, 2012 (“Griffin”) (Ex. 1027).
`Petitioner further relies on testimony of its declarant, Benjamin B.
`Bederson, Ph.D. (Ex. 1003).
`D. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’373 patent
`under 35 U.S.C. § 103(a) over the following combinations of references:
`References
`Claims
`Griffin, Davis, and iOS
`1, 2, 4–6, 11–14
`Goertz, Davis, and iOS
`1, 2, 4–6, 11–14
`
`
`E. Related Proceedings
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’373 patent: Firstface Co., Ltd. v. Apple Inc., Case
`No. 3-18-cv-02245 (N.D. Cal.). Pet. 2–3; Paper 3, 2.
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, claims of a patent shall be construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims 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) (2018); see Changes to the
`Claim Construction Standard for Interpreting Claims in Trial Proceedings
`Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11,
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`2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018); see
`also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`Neither party propose constructions for any of the claim terms.
`Pet. 12; Prelim. Resp. 6. For purposes of this Decision, we do not find it
`necessary to construe any terms. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that
`“we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy,’” (citation omitted)).
`B. Obviousness over Griffin, Davis, and iOS
`Petitioner contends that claims 1, 2, 4–6, and 11–14 are unpatentable
`as obvious under 35 U.S.C. § 103(a) over Griffin, Davis, and iOS. Pet. 13–
`52.
`
`1. Overview of Griffin
`Griffin describes an electronic device configured to transition between
`a locked and unlocked state in response to a detected action. Ex. 1027,
`Abstract. A locked state includes a “sleep” mode in which certain functions
`of the device (such as a display) are halted, and a secure or “screen lock”
`mode in which a user interface for a user to enter credentials is displayed to
`allow a user to transition to an unlocked state. Id. ¶¶ 25–27. An unlocked
`state includes an awake mode (or insecure mode) where the user input
`interfaces, stored data, and other functionality of the device are generally all
`available. Id. ¶ 27.
`The device is unlocked in response to a single, continuous unlock
`action applied to at least two input mechanisms on the electronic device. Id.
`¶ 31. In response to activation of a first user input, which remains active
`during the locked state, a second user input interface is activated and a timer
`is started. Id. ¶ 121. The device then awaits input at the second input
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`mechanism. Id. If the correct input is received within the predetermined
`period, the device is unlocked. Id. ¶ 122.
`Figures 5A, 5B, and 5C of Griffin are depicted below.
`
`
`Figures 5A, 5B, and 5C illustrate a single-gesture or continuous-action input
`as it is implemented on a handheld mobile device, such as a smartphone
`equipped with touchscreen display 510. Id. ¶ 86. Device 100 has a single
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`“home” button or convenience button 520, positioned at the center along an
`edge of display 510. Id. As illustrated in Figure 5A, user’s thumb 500
`depresses convenience button 520, which initiates an unlock action. Id.
`Upon detection of the input at convenience button 520, the device activates
`the second input, in this case touchscreen display 110, so that display 110 is
`capable of detecting further input from the user. Id. ¶ 87. Figures 5B and
`5C illustrate user’s thumb 500 travelling in an arcuate path 550 along
`touchscreen display 510. Id. Arc 550 traced along touchscreen display 510
`completes the unlock action, upon which device 100 enters the unlocked
`state. Id. Thus, the unlock action comprises detecting two distinct user
`inputs applied to two components (initiation at convenience button 520 and
`arc 550 traced on touchscreen display 510), which is carried out as a
`substantially continuous action by the user. Id.
`2. Overview of Davis
`Davis describes a system and method of launching applications on a
`device using biometric authentication. Ex. 1015 ¶ 1. Davis explains that a
`mobile device may automatically enter into a user-inactive mode after a
`period of inactivity, or a user may specifically select a menu item on the
`device to enter into the user-inactive mode (i.e., to lock the device). Id. ¶ 45.
`Various security measures may be required to unlock the mobile device,
`such as passwords, a smart card, or biometric authentication. See id. ¶¶ 46–
`47.
`
`Figure 4 of Davis is depicted below.
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`Figure 4 illustrates steps in an example method of maintaining secure access
`to a mobile device. Id. ¶ 47. The mobile device first receives an “unlock”
`command (step 402). Id. ¶ 48. Next, the mobile device presents an unlock
`dialog on a display to prompt the user to enter authentication factors, such as
`a device password and/or smart card password (step 404). Id. The mobile
`device then receives and verifies the device and smart code passwords (steps
`406–412). Id. ¶ 49–50. At step 416, the mobile device presents a dialog on
`the display to prompt the user to provide a fingerprint candidate or other
`type of biometric data. Id. ¶ 52. The mobile device then receives and
`verifies the fingerprint candidate or other biometric data (steps 418–420).
`Id. ¶ 53. If the fingerprint candidate matches a stored fingerprint template,
`the mobile device unlocks itself; if the fingerprint candidate does not match,
`the mobile device presents a fingerprint verification failure dialog and
`returns to step 416 to present the prompt to the user to provide a fingerprint
`(steps 422–424). Id.
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`3. Overview of iOS
`iOS is a user guide for iPhone OS 3.1 software. Ex. 1007, 1. iOS
`includes a diagram of an iPhone, which is reproduced below.
`
`
`The reproduced diagram above depicts an iPhone. Id. at 20. The iPhone
`includes a home button that, when pressed, causes the iPhone to display a
`home screen that contains the iPhone applications. Id. at 23. The iPhone
`also includes a sleep/wake button that allows the user to lock the iPhone. Id.
`at 26. When the iPhone is locked, nothing happens if the user touches the
`screen. Id. The iPhone can be unlocked by pressing the home button or the
`sleep/wake button, in combination with dragging a slider. Id. at 27.
`4. Claim 1
`Petitioner asserts the combination of Griffin, Davis, and iOS teaches
`
`the limitations recited in claim 1. Pet. 13–43. In particular, Petitioner relies
`on Griffin to disclose most of the limitations of claim 1. See generally id.
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`Petitioner relies on the combination of Griffin and Davis to disclose the
`display and timing requirements and on the combination of Griffin, Davis
`and iOS to teach the mobile device functions. See id. at 16–27. A more
`detailed analysis of Petitioner’s assertions for specific limitations, and Patent
`Owner’s response, is set forth below.
`a. “an activation button separate from the power button and
`located outside the touch screen display, the activation
`button configured for pressing to turn on the touch screen
`display and to initiate one or more additional functions of
`the terminal”
` “wherein the terminal has a first function and a second
`function to perform in response to user input via the
`activation button . . . wherein the first and second functions
`are different from each other and selected from the group
`consisting of fingerprint authentication, activating the
`camera, and fingerprint authentication, activating the
`camera, playing music and a hands-free function”
`Petitioner asserts Griffin discloses an activation button (home or
`
`convenience button) located outside the touch screen display. Pet. 31–32.
`Petitioner asserts iOS teaches a power button (sleep/wake) separate from an
`activation button (home button). Id. at 32. Petitioner further asserts Griffin
`discloses the activation button configured for pressing to turn on the touch
`screen display and to initiate one or more additional functions of the
`terminal. Id. at 33–34. Additionally, Petitioner asserts that Griffin discloses
`that after user input via the activation button to initiate the unlock action, a
`first function is performed (a second user input interface is activated). Id. at
`34. Petitioner asserts Davis teaches performing a first function (fingerprint
`authentication) in response to an unlock command. Id. at 35–37. Thus,
`Petitioner asserts Griffin, as modified by the teachings of Davis, teaches a
`user presses the home/convenience button (activation button), which initiates
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`an unlock command and wakes the screen to display a fingerprint dialog
`(lock screen) and the second input mechanism is activated (fingerprint
`unlock function, including scanning a fingerprint). Id. at 18. Petitioner
`asserts iOS teaches a “second function” (voice control of the device) is
`performed in response to a long-press of the home (activation) button and
`that this function is different from the first function. Id. at 38.
`
`Patent Owner asserts that claim 1 requires that turning on the display
`and performing a first function be two different things. Prelim. Resp. 13.
`Patent Owner asserts that claim 1 requires display of a lock screen and that
`the first function (performed in response to one-time pressing of the
`activation button) be one of “fingerprint authentication, activating the
`camera, playing music, and a hands-free function.” Id. Patent Owner argues
`Griffin “neither discloses turning on the display to display a lock screen nor
`the performance of any separate (enumerated) function in response to a
`single press of an activation button.” Id. at 13–14.
`
`We determine, for purposes of this Decision and on the current record,
`that Petitioner makes a sufficient showing that the Griffin-Davis-iOS
`combination discloses the recited activation button and first and second
`functions. Patent Owner’s argument that Griffin does not teach these
`limitations is not persuasive because Petitioner relies on the combined
`teachings of the references to teach the disputed limitations. See In re
`Keller, 642 F.2d 413, 425 (CCPA 1981) (“[O]ne cannot show non-
`obviousness by attacking references individually.”). Petitioner adequately
`supports its contention that the combination of Griffin and Davis discloses
`an activation button to turn on the display (fingerprint dialog lock screen)
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`and initiate a first function (fingerprint authentication).3 See Pet. 18–19, 31–
`40; see also Ex. 1027 ¶¶ 24, 86–87, 121–122 (describing reactivating the
`screen upon detection of an input, such as a convenience key, and that upon
`detection of input at the convenience button, the device activates a second
`input mechanism); Ex. 1015, Fig. 4, ¶¶ 46–50 (describing presenting a
`fingerprint dialog and unlocking a device with fingerprint authentication).
`
`Patent Owner further argues that even if Petitioner could show that the
`combination yields the claimed invention, Petitioner has failed to
`demonstrate that Griffin and Davis are properly combined. Prelim. Resp.
`18. Patent Owner argues that a person of ordinary skill in the art would not
`have combined Griffin with Davis in the proposed manner because both
`references teach away from the simplicity achieved by the claims. Id.
`Patent Owner asserts Griffin and Davis each recognize that unlocking a
`device should be a complex process and that Davis “explicitly criticizes
`single-factor, password-based authentication while arguing in favor of two-
`or three-factor authentication.” Id. at 19.
`
`At this stage of the proceeding, we determine Petitioner makes a
`sufficient showing to support combining the references in the proposed
`manner. See Pet. 19–20, 22–26. Petitioner asserts it would have been
`obvious to a person of ordinary skill in the art to user a fingerprint function,
`as taught by Davis, because biometric inputs provided higher levels of
`security against authorized users and increased user convenience. Id. at 19.
`Petitioner further asserts that because Griffin discloses a fingerprint detector
`
`
`3 Although claim 1 sets forth the first function could instead be a different
`function selected from the specified group (e.g., activating the camera), we
`focus our analysis on the “fingerprint authentication” because all of the
`dependent challenged claims require this function.
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`and that a variety of inputs may be used for the multiple-input unlock
`procedures, the use of the fingerprint detector as one of the inputs in
`Griffin’s unlock routine would have been a design decision. Id. at 19–20.
`
`On the current record, we are not persuaded either reference teaches
`away from the recited combination. To teach away, a reference must
`actually “criticize, discredit, or otherwise discourage” investigation into a
`claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). A
`reference does not teach away “if it merely expresses a general preference
`for an alternative invention.” DuPuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). We do not find anything
`in Griffin or Davis that requires that the unlock function must be complex.
`Rather, Griffin teaches a single-gesture or continuous-action unlock that can
`easily be carried out. See Ex. 1027 ¶¶ 86–88. Furthermore, although Davis
`describes that some computers have been configured to implement
`additional authentication to increase security, Davis states explicitly that
`“many embodiments will only require a subset of the authentication factors
`discussed.” See Ex. 1015 ¶¶ 3–4, 71.
`b. “wherein upon one-time pressing of the activation button
`while the touch screen display is turned off, the terminal is
`configured to turn on the touch screen display and further
`perform at least one of the first and second functions in
`addition to turning on the touch screen display”
`Petitioner asserts that the combination of Griffin and Davis discloses
`
`turning on the touch screen to display a lock screen (fingerprint dialog for
`fingerprint unlock) upon waking the device from sleep by pressing the
`home/convenience button. Pet. 40–41; see also id. at 18–19, 33–38
`(additional analysis cited by Petitioner in support of its contentions for this
`limitation).
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`Patent Owner argues that Griffin only discloses a multi-step process
`
`requiring multiple user inputs to activate the display and perform a device
`function and does not disclose the one-step process of the challenged claims.
`Prelim. Resp. 14–15. Patent Owner argues that Davis does not cure
`Griffin’s deficiencies, but instead discloses a multi-stage authentication
`system requiring multiple inputs. Id. at 15. In particular, Patent Owner
`asserts Davis discloses a combination of procedures to unlock a device
`(multiple steps with various dialogs) and Davis does not awaken the device
`and perform user authentication in response to a one-time pressing of an
`activation button. Id. at 15–16. Patent Owner argues that Petitioner’s
`proposed modification, in which all methods of authentication are omitted
`except for fingerprint authentication, is inappropriate. Id. at 16–17. Patent
`Owner also argues that even Petitioner’s proposed modification requires
`multiple steps/inputs (unlock command is received, fingerprint dialog is
`presented to use, and user provides a fingerprint in response). Id. at 17–18.
`
`On the current record, we are persuaded that Petitioner supports
`sufficiently its contentions that the combination of Griffin and Davis
`discloses performing a first function (fingerprint authentication) in addition
`to turning on a touch screen display in response to a one-timer pressing of
`the activation button. See Pet. 13–19, 33–38, 40–41. As discussed above,
`Petitioner adequately supports its contentions that the Griffin-Davis
`combination discloses that upon activation (depressing) of an activation
`(convenience) button, the display is turned on and fingerprint authentication
`is performed. See Pet. 13–19, 33–38, 40–41; Ex. 1027 ¶¶ 86, 121; Ex. 1015
`Fig. 4, ¶¶ 46–50. At this stage of the proceeding, we are unpersuaded by
`Patent Owner’s argument that Petitioner’s elimination of other methods of
`authentication from Davis is inappropriate. Davis itself states explicitly that
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`“many embodiments will require only a subset of the authentication factors
`discussed.” Ex. 1015 ¶ 71.
`For purposes of this Decision, we also are unpersuaded by Patent
`Owner’s contention that Petitioner’s mapping requires multiple steps/inputs
`that differ from those recited in claim 1. Petitioner asserts that a person of
`ordinary skill in the art would have understood the combination of Griffin
`and Davis to teach “an unlocking procedure that included an unlock
`command followed by a fingerprint dialog and a fingerprint unlock function,
`but without any intervening input mechanisms.” See Pet. 17–18 (emphasis
`added) (citations omitted). Petitioner asserts that “[i]n this way, a single
`biometric input mechanism may have been used to unlock a device and
`launch an application.” Id. at 18; see also Ex. 1015, claim 1 (setting forth
`that in response to receipt of a biometric candidate and a determination the
`biometric candidate matches a stored template associated with unlocking the
`computing apparatus, unlocking the computing apparatus). Petitioner’s
`assertions are supported by the testimony of Dr. Bederson, which we credit.
`See Ex. 1003 ¶ 60–61. 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. At this stage of the
`proceeding, Petitioner makes a sufficient showing that the proposed Griffin-
`Davis combination of a single biometric input to turn on the display and
`perform fingerprint authentication meets the “one-time pressing of the
`activation button” limitation. The parties are encouraged to further address
`this issue in their papers during trial.
`c. Remaining limitations
`We determine that Petitioner makes a sufficient showing to support its
`
`contentions that the Griffin-Davis-iOS combination discloses the remaining
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`limitations of claim 1. See Pet. 13–42. For example, Petitioner adequately
`supports its contention that Griffin, Davis, and iOS teach the terminal “is
`configured to provide user settings for configuring at least one of the first
`and second functions” through Griffin’s disclosure that the user may
`configure criteria for detecting an unlock action and the inputs to be detected
`for the unlock action combined with Davis’ disclosure that the user may
`configure the mobile device to require different levels of security and iOS’s
`description of user settings to set security features that are performed when
`the activation button is pressed. See id. at 39–40. At this stage of the
`proceeding, Petitioner also provides sufficient persuasive reasoning to
`support combining the references in the proposed manner. See id. at 19–20,
`22–26.
`
`d. Conclusion
`For the foregoing reasons, we conclude Petitioner has demonstrated a
`reasonable likelihood of prevailing in establishing that claim 1 would have
`been obvious over the combination of Griffin, Davis, and iOS.
`5. Claims 2, 4–6, and 11–14
`Independent claim 11 is a method claim that recites limitations
`
`similar to claim 1. Claims 2, 4–6, and 10–14 depend from claim 1 or 11.
`We have reviewed Petitioner’s analysis and determine, for purposes of this
`Decision and on the current record, that Petitioner has made a sufficient
`showing that the combination of Griffin, Davis, and iOS teaches the
`limitations recited in these claims. See Pet. 43–52. Patent Owner does not
`present separate arguments for these claims. See Prelim. Resp. 13–19.
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`C. Obviousness over Goertz, Davis, and iOS
`Petitioner contends that claims 1, 2, 4–6, and 11–14 are unpatentable
`as obvious under 35 U.S.C. § 103(a) over Goertz, Davis, and iOS. Pet. 53–
`86.
`
`1. Overview of Goertz
`Goertz describes touch screen user interfaces for electronic devices.
`Ex. 1013 ¶ 2. Figures 9, 10, and 11 of Goertz are depicted below.
`
`
`Figures 9, 10, and 11 illustrate turning a phone on and off. Id. ¶ 23. Figure
`9 displays a first phone with a blank screen indicating that power is off. Id.
`¶ 59. Figure 10 displays a second phone with gadgets displayed thereon,
`indicating that power is on. Id. A “home key” is displayed at the bottom of
`the phones, where activating the home key (e.g., touching the key) causes
`the power to be turned on. Id. Figure 11 displays a single phone, where
`touching the home key for an extended period of time (e.g., 5 seconds)
`causes the phone to power off. Id.
`Goertz further describes touch screens for phones with key lock. Id.
`¶ 60. Figures, 12, 13, 14, and 15 of Goertz are depicted below.
`
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`Figures 12, 13, 14, and 15 illustrate locking and unlocking a phone. Id. ¶ 24.
`In Figure 12, a lock gadget is displayed in a lower right corner of the screen.
`Id. ¶ 60. Activating the lock gadget (e.g., pressing on it) causes the phone to
`lock, and when the phone is locked, activation of the phone is restricted in
`some manner. Id. As shown in Figure 13, the user activates a home key,
`located at bottom center of device, to unlock the phone. Id. Figure 14
`shows the phone after it has been unlocked; gadgets are now displayed on
`screen and are activated in response to user input. Id. Figure 15 shows the
`phone displaying a keypad when the home key is activated (e.g., by touching
`the home key), and prompting a user to enter a security code. Id. ¶ 61. As
`Goertz describes, the phone cannot be unlocked unless the security code is
`entered. Id. Goertz further describes that optional additional security is
`implemented by use of fingerprint identification, wherein the phone cannot
`be unlocked unless the fingerprint is authenticated. Id.
`2. Claim 1
`Petitioner asserts the combination of Goertz, Davis, and iOS teaches
`the limitations recited in claim 1. Pet. 53–77. Petitioner relies primarily on
`Goertz to disclose most of the limitations and relies on Davis and iOS in a
`similar manner as in its challenge based on Griffin. See generally id.
`
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`Patent Owner argues Goertz does not disclose “an activation button
`configured for pressing to turn on the touch screen display.” Prelim. Resp.
`20. Patent Owner asserts the disclosure of Goertz never states or confirms
`the display is off in Figure 13, but rather Goertz discloses that the device
`shown in Figure 13 is “locked.” Id. Patent Owner argues it is equally
`plausible that Figure 13 only emphasizes the action of pressing the home
`button. Id. at 20–21. Additionally, Patent Owner argues that Figures 9 and
`10 of Goertz do not show this claim limitation because they show using the
`home button to power on the device, but the claims differentiate between a
`power button and an activation button that is separate from the power button.
`Id. at 21–22. Patent Owner asserts that if the home key in Figures 9–10 of
`Goertz is a power button used to turn the device on and off, it cannot be an
`activation button that turns on the display. Id.
`We determine, for purposes of this Decision and on the current record,
`that Petitioner makes a sufficient showing that the combination of Goertz
`and iOS discloses the claimed “power button configured to turn on and off
`the terminal by pressing” and the “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.” Petitioner
`adequately supports its contention through its assertion iOS discloses a
`power button (sleep/wake button), separate from a home button (activation
`button), and Goertz discloses an activation button (home key) located
`outside the touch screen display that unlocks the phone. See Pet. 66–69; see
`also Pet. 53 (asserting Goertz discloses activating a home key to switch the
`display to an active state). The cited sections of Goertz disclose that “[i]n
`order to unlock the phone, the user activates the home key” as shown in
`Figure 13 and that Figure 14 “shows the phone after it has been unlocked:
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`gadgets are now displayed on screen and are activated in response to user
`input.” Ex. 1013 ¶ 60, Figs. 13, 14. Based on the current record, we are not
`persuaded by Patent Owner’s argument that Figure 13 does not show the
`display is off before the button is pressed. Goertz explicitly states gadgets
`are now displayed after the phone is unlocked, which corresponds to the
`change in illustrations of Figure 13 (depicting a blank screen for when the
`phone is locked) and Figure 14 (illustrating gadgets displayed on the screen
`after the phone has been unlocked). See id.
`P
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