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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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`Case IPR2019-006131
`Patent 9,633,373 B2
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`PETITIONER’S NOTICE OF APPEAL
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`1 Case IPR2019-01011 has been consolidated with this proceeding.
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`IPR2019-00613
`IPR2019-01011
`Patent No. 9,633,373 B2
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
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`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2-90.3,
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`notice is hereby given that Petitioner Apple Inc. appeals to the United States Court
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`of Appeals for the Federal Circuit from the Final Written Decision of the Patent Trial
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`and Appeal Board (“Board”) entered on July 31, 2020 in IPR2019-00613 (Paper 27)
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`and IPR2019-01011 (Paper 10), and from all underlying orders, decisions, rulings,
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`and opinions regarding these inter partes reviews of U.S. Patent No. 9,633,373
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`(“’373 patent”). A copy of the Final Written Decision is attached.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that
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`the issues on appeal include, but are not limited to, the following: (1) the Board’s
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`determination that claims 11-14 and 18 of U.S. Patent No. 9,633,373 have not been
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`shown to be unpatentable; (2) the Board’s determination that Petitioner has not
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`demonstrated by a preponderance of the evidence that claims 11-14 and 18 of
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`the ’373 patent are unpatentable under 35 U.S.C. § 103 as obvious over (i) Griffin,
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`Davis, and iOS and (ii) Goertz, Davis, and iOS; (3) the Board’s construction and
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`application of the claim language; (4) the Board’s consideration of the expert
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`testimony, prior art, and other evidence in the record; (5) the Board’s factual findings,
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`conclusions of law or other determinations supporting or related to those issues; as
`1
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`IPR2019-00613
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`Patent No. 9,633,373 B2
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`well as (6) all other issues decided adversely to Petitioner in any orders, decisions,
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`rulings, and opinions.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the PTAB through the E2E System. In addition, copies of the Notice of
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`Appeal, along with the required docketing fee, are being filed with the Clerk’s office
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`for the United States Court of Appeals for the Federal Circuit.
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`Dated: September 29, 2020
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`Respectfully submitted,
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`By: /Gabrielle E. Higgins
`
`Gabrielle E. Higgins (Lead Counsel)
`Reg. No. 38,916
`Christopher Bonny (Backup Counsel)
`Reg. No. 63,307
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA
`Phone: +1-202-508-4740
`Fax: +1-617-235-9492
`gabrielle.higgins@ropesgray.com
`christopher.bonny@ropesgray.com
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`Counsel for Petitioner Apple Inc.
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`2
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that, on September 29, 2020, the foregoing
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`PETITIONER’S NOTICE OF APPEAL was:
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`(1) electronically filed through PTAB E2E
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`(2) filed by Federal Express with the Director of the United States Patent and
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`Trademark Office, at the following address:
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`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`(3) filed in the U.S. Court of Appeals for the Federal Circuit using the
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`Court’s CM/ECF filing system and pay.gov to pay the filing fee electronically
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`(4) provided as a courtesy copy via electronic mail to the following attorneys
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`of record for the Patent Owner listed below:
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`Barry J. Bumgardner (barry@nbafirm.com)
`Matthew C. Juren (matthew@nbafirm.com)
`Thomas C. Cecil (tom@nbafirm.com)
`NELSON BUMGARDNER ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, TX 76107
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`Dated: September 29, 2020
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`Respectfully submitted,
`By: /Gabrielle E. Higgins
`Gabrielle E. Higgins
`Reg. No. 38,916
`Counsel for Petitioner Apple Inc.
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`
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`Trials@uspto.gov
`571.272.7822
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` Paper 27
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` Date: July 31, 2020
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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.,
`Petitioner,
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`v.
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`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`IPR2019-00613,
`IPR2019-010111
`Patent 9,633,373 B2
`____________
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`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`
`
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Case IPR2019-01011 was consolidated with IPR2019-00613.
`Accordingly, we issue a consolidated Final Written Decision, and all
`citations are to IPR2019-00613 unless otherwise indicated.
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`
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`
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`IPR2019-00613
`IPR2019-01011
`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.”).
`Petitioner later filed a Petition in IPR2019-01011 to institute an inter partes
`review of claims 10 and 18 of the ’373 patent. IPR2019-01011, Paper 1
`(“1011 Pet.”). Firstface Co., Ltd. (“Patent Owner”) filed a Preliminary
`Response in IPR2019-00613 (Paper 8) and waived the filing of a preliminary
`response in IPR2019-01011 (IPR2019-01011, Paper 7). Applying the
`standard set forth in 35 U.S.C. § 314(a), we granted Petitioner’s requests and
`instituted an inter partes review of all challenged claims based on all
`grounds presented in both Petitions. Paper 10 (“Dec.”); Paper 14 (“1011
`Dec.”).2 We further consolidated both proceedings and ordered all further
`filings in the consolidated proceeding to be made in IPR2019-00613. 1011
`Dec. 23.
`During the trial, Patent Owner timely filed a Response (Paper 16,
`“PO Resp.”), to which Petitioner timely filed a Reply (Paper 18, “Reply”).
`Patent Owner further submitted a Sur-Reply (Paper 21, “Sur-Reply”) to
`Petitioner’s Reply. An oral hearing was held on May 5, 2020, and a copy of
`the transcript was entered into the record. Paper 26 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`
`
`2 Although we granted Petitioner’s motions to seal certain exhibits filed with
`its Petitions (Paper 9; IPR2019-01011, Paper 8), we do not refer to any
`sealed material in either Decision Granting Institution or in this Decision.
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`2
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`evidence that claims 1, 2, 4–6, and 10 are unpatentable. Petitioner has not
`shown by a preponderance of the evidence that claims 11–14 and 18 are
`unpatentable.
`
`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.
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`3
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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.
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`If the user presses activation button 120 when mobile communication
`terminal 100 is in the inactive state, mobile communication terminal 100
`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.
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`4
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`B. Illustrative Claim
`Claims 1 and 11 are independent claims. Claim 1 is illustrative of the
`subject matter at issue:3
`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
`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
`
`
`3 Claims 1 and 11 were corrected in a certificate of correction dated June 27,
`2017. Ex. 1001.
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`5
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`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 a 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. Instituted Grounds of Unpatentability
`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).
`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).
`We instituted trial on the following grounds:
`Basis
`Claims
`References
`35 U.S.C. § 103(a) 1, 2, 4–6, 10–14, 18
`Griffin, Davis, and iOS
`35 U.S.C. § 103(a) 1, 2, 4–6, 10–14, 18
`Goertz, Davis, and iOS
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`6
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` In support of its contentions, Petitioner submitted declarations by its
`witness, Benjamin B. Bederson, Ph.D. Exs. 1003, 1039. In response, Patent
`Owner submitted a declaration by its witness, Alfred C. Weaver, Ph.D.
`Ex. 2001. Petitioner’s expert was cross-examined during the trial, and a
`transcript of the deposition is in the record. Ex. 2008.
`D. Related Proceedings
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’373 patent: Firstface Co. v. Apple Inc., Case No. 3-
`18-cv-02245 (N.D. Cal.). Pet. 2–3; Paper 3, 2.
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable under § 103(a) if the differences between the
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`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of non-obviousness, i.e., secondary
`considerations such as commercial success, long felt but unsolved needs,
`and failure of others.4 Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). The obviousness inquiry further requires an analysis of “whether
`there was an apparent reason to combine the known elements in the fashion
`
`4 The record does not include arguments or evidence regarding objective
`indicia of non-obviousness.
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`7
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`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with
`some rational underpinning to support the legal conclusion of
`obviousness”)).
`
`B. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’373 patent “would have been a person with [a] bachelor’s degree in
`Computer Science, Computer Engineering, or equivalent and have at least
`two years of relevant experience in the fields of user interface design and
`mobile devices, or otherwise equivalent industry experience in the relevant
`field.” Pet. 11–12 (citing Ex. 1003 ¶¶ 29–30). Patent Owner does not
`dispute Petitioner’s proposed definition of the person of ordinary skill for
`purposes of this trial. PO Resp. 7. Based on our review of the record, we
`accept the level of skill advocated by Petitioner as it is consistent with the
`description of the art in the ’373 patent and the prior art of record. See, e.g.,
`Ex. 1001, 1:13–49.
`
`C. Claim Construction
`In an inter partes review, 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); 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; PO Resp. 6. We determine we need not explicitly construe any
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`terms to resolve the issues before us. 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)).
`D. Obviousness over Griffin, Davis, and iOS
`Petitioner challenges claims 1, 2, 4–6, and 10–14 as obvious under 35
`U.S.C. § 103(a) over Griffin, Davis, and iOS. Pet. 13–52; 1011 Pet. 26–29,
`44–46, 51–52.5
`
`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, code
`(57). 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
`
`
`5 As noted in our Decision Granting Institution for IPR2019-01011,
`Petitioner’s contentions for independent claims 1 and 11 in that proceeding
`present substantially the same contentions that are present in the Petition in
`IPR2019-00613. See 1011 Dec. 13, 19. Therefore, our citations to the
`IPR2019-01011 Petition are limited to Petitioner’s challenges of dependent
`claims 10 and 18.
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`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
`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.
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`10
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`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
`“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.
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`11
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`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. ¶ 50, 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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`12
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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 contends the combination of Griffin, Davis, and iOS
`
`teaches the limitations recited in claim 1. Pet. 13–43. A more detailed
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`13
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`analysis of Petitioner’s assertions, and Patent Owner’s response, is set forth
`below.
`
`a. A mobile communication terminal comprising:
`Petitioner asserts that Griffin discloses the preamble of claim 1
`
`through its description of a user device 100 that “may be a mobile device
`with two-way communication and advanced data communication
`capabilities.” Pet. 28 (citing Ex. 1027 ¶ 59). To the extent the preamble is
`limiting, we agree with Petitioner that Griffin discloses a mobile
`communication terminal. See Ex. 1027 ¶ 59. Patent Owner has not raised
`arguments against this limitation in its Patent Owner Response; therefore
`any such arguments are waived. See Novartis AG v. Torrent Pharms. Ltd.,
`853 F.3d 1316, 1330 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1381
`(Fed. Cir. 2016).6
`b. “a touch screen display”
` “a camera”
` Petitioner asserts Griffin teaches “a touch screen display” through its
`description that the device’s “auxiliary subsystem 112 can include devices
`such as: a touchscreen,” as well as a “smartphone equipped with a
`touchscreen display 510.” Pet. 29 (citing Ex. 1027 ¶¶ 77, 86). Petitioner
`further asserts that both Davis and Griffin teach a camera. Id. at 29–30
`(citing Ex. 1015 ¶ 78; Ex. 1007, 20). Patent Owner does not present
`separate arguments for these limitations. Based on the evidence of record,
`we find that Petitioner has shown that Griffin teaches these limitations.
`
`
`6 As in NuVasive, the Scheduling Order in this proceeding cautioned Patent
`Owner that “any arguments for patentability not raised in the response may
`be deemed waived.” Paper 11, 6.
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`c. “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”
`Petitioner asserts that iOS teaches a power button (the “Sleep/Wake
`button”), separate from a Home button, and that the power button is
`configured to turn the terminal on and off when pressed. Pet. 30–31 (citing
`Ex. 1007, 20, 27). Petitioner submits an annotated figure of an iPhone from
`iOS, which is depicted below:
`
`
`Id. at 31 (citing Ex. 1007, 20). The annotated iPhone diagram above shows
`a “Sleep/Wake button” located on the top of the device, and a “Home
`button” on the front of the device below the touch screen. Id.
`Petitioner also points to the following disclosure in iOS:
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`Turn iPhone completely off: Press and hold the
`Sleep/Wake button for a few seconds until the red slider
`appears, then drag the slider. . . .
`Turn iPhone on: Press and hold the Sleep/Wake button
`until the Apple logo appears.
`Id. (citing Ex. 1007, 27).
`Turning to Griffin, Petitioner argues that Griffin shows an activation
`button (home button or convenience button 520) located outside the touch
`screen display (touchscreen display 510). Id. at 31. To illustrate, Petitioner
`provides an annotated version of Griffin’s Figure 5B, reproduced below:
`
`
`Id. at 32 (citing Ex. 1027, Fig. 5B). As shown in Petitioner’s annotated
`Figure 5B above,
`device 100 . . . is also provided with a single ‘home’ button or
`convenience button 520, positioned at the center along an edge
`of the display 510. [A]n adult user’s thumb is 500 is capable of
`depressing the convenience button 520 while the device 100 is
`held in the same hand, if the button 520 must be pressed in
`order to be actuated. The depression of the convenience button
`520 . . . constitutes the initiation of an unlock action.
`Id. at 31 (citing Ex. 1027 ¶ 86).
`
`16
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`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 (an unlock action). Id. at 33. In
`particular, Petitioner points to Griffin’s disclosure that the “screen may be
`reactivated upon detection of an input 212 received via a user input
`interface,” such as a keypress, and that “depression of the convenience
`button 520, in this example, constitutes the initiation of an unlock action.”
`Id. (citing Ex. 1027 ¶¶ 25, 86). Petitioner asserts that Griffin’s disclosure of
`the activation button conforms to conventional device operations, such as the
`description in iOS that unlocking the phone can be accomplished by pressing
`the Home button and dragging a slider, which necessarily requires that the
`touchscreen be turned back on. Id. at 33–34 (citing Ex. 1007, 27, 145).
`Patent Owner argues that the references do not disclose an activation
`button separate from a power button. PO Resp. 14–16; Sur-Reply 2–4.
`According to Patent Owner, iOS’s “home button” is not an “activation
`button” because it unlocks the device but does not turn on the touch screen
`display. PO Resp. 14. Patent Owner further argues that iOS does not teach
`the required activation button, and thus cannot teach that the power button is
`separate from the activation button. Sur-Reply 3.
`We find that Petitioner has sufficiently demonstrated that the
`combination of Griffin and iOS teaches these limitations. Griffin discloses a
`smartphone with an activation button outside the touch screen display in the
`form of home button 820 which, when pressed, turns on the touch screen
`display. Ex. 1027 ¶¶ 25, 86, Fig. 5B. iOS discloses a similar smartphone
`that includes a home button that looks virtually identical to Griffin’s home
`button, as well as an additional “Sleep/Wake” button that turns the power on
`
`17
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`and off. Ex. 1007, 20. iOS further discloses that its home button, when
`pressed, turns on the display (to show a slider that can be dragged to unlock
`the phone). Id. at 26–27. Thus, the Griffin/iOS combination includes a
`home button that turns on the display, and a separate power button that turns
`the power on and off, as in claim 1. We further agree with Petitioner that
`Griffin discloses its activation button initiates one or more additional
`functions through its description that depression of the convenience button
`constitutes the initiation of an unlock action. See Pet. 33 (citing Ex. 1027
`¶ 86).
`Consequently, we find that Petitioner has shown that these limitations
`of claim 1 are met by the combination of Griffin and iOS.
`d. “wherein the terminal has a first function and a second
`function to perform in response to user input via the
`activation button and is configured to provide user settings
`for configuring at least one of the first and second functions
`such that at least one of the first and second functions is set
`to be performed in addition to turning on the touch screen
`display upon pressing of the activation button while the
`touch screen 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”
`Petitioner asserts the combination of Griffin and Davis discloses these
`limitations. Pet. 34–40. In particular, Petitioner asserts Griffin discloses
`user input via the activation button turning on the touch screen display, and
`that after user input via the activation button, a first function is performed (a
`second user input interface is activated). Id. at 34–35 (citing Ex. 1027 ¶¶ 25,
`86, 121–122, Fig. 11). Petitioner further asserts Davis teaches performing a
`first function (fingerprint authentication) in response to an unlock command
`
`18
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`(Griffin’s unlock second input mechanism). Id. at 35–37 (citing Ex. 1015
`¶¶ 46–48, 52–53, Fig. 4). Thus, Petitioner asserts Griffin, as modified by
`Davis, teaches a user presses the home/convenience button (activation
`button), which initiates 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 (citing Ex. 1027, Fig. 11, ¶¶ 24–25, 29; Ex. 1015, Fig. 4).
`With respect to the claimed “second function” different from the first
`function, Petitioner asserts iOS teaches detecting a long-press of the home
`button (activation button) to perform a hands-free function (voice control of
`the device). Id. at 38 (citing Ex. 1007, 38, 48, 77).
`With respect to the “user settings for configuring at least one of the
`first and second functions” limitation, Petitioner asserts Griffin and Davis
`disclose the user configures security on the device, and iOS teaches user
`settings for configuring the first and second functions through its description
`of setting securing features that are performed each time the device is turned
`on or woken by pressing the activation button. Id. at 39–40 (citing Ex. 1027
`¶ 119; Ex. 1015 ¶¶ 46–47; Ex. 1007, 39, 45, 145).
`Patent Owner does not present separate arguments for these
`limitations.7
`We have reviewed the evidence of record and find that Petitioner has
`shown that the combination of Griffin, Davis, and iOS teaches these
`limitations. We further address Petitioner’s assertions regarding
`
`
`7 We address Patent Owner’s arguments that the cited art does not disclose
`turning on the display and performing a first function in response to a
`one-time pressing of the activation button in Section II.D.4.e below.
`
`19
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`performance of the first and second functions in addition to turning on the
`touch screen with respect to the “wherein” limitation discussed in Section
`II.D.4.e below.
`e. “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 tou
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