UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-006141
`
`U.S. Patent No. 9,779,419
`
`____________
`
`DECLARATION OF BENJAMIN B. BEDERSON IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`1 Case IPR2019-01012 has been consolidated with this proceeding.
`
`Apple Ex. 1039
`Apple Inc. v. Firstface Co., Ltd.
`IPR2019-00614
`Page 00001
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`PRIOR TESTIMONY ..................................................................................... 1
`
`II. MATERIALS REVIEWED ............................................................................ 2
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`IN THE RELEVANT TIMEFRAME .............................................................. 2
`
`IV. CLAIM INTERPRETATION.......................................................................... 2
`
`V.
`
`SUMMARY OF THE RELEVANT PRIOR ART ........................................... 3
`
`A. Griffin (Ex. 1027) ................................................................................. 3
`
`B.
`
`C.
`
`Goertz (Ex. 1013) ................................................................................. 3
`
`Davis (Ex. 1015) ................................................................................... 4
`
`D.
`
`iOS (Ex. 1007) ...................................................................................... 5
`
`VI. CLAIMS 1-4, 6-7, 9-13, and 15-17 OF THE ’419 PATENT ARE
`UNPATENTABLE .......................................................................................... 6
`
`A. Ground 1: Griffin in View of Davis and iOS Renders Obvious
`Claims 1-4, 6-7, 9-13, and 15-17 of the ’419 Patent ............................ 6
`
`1.
`
`2.
`
`The Combination of Griffin and iOS Discloses an
`Activation Button Separate From a Power Button ..................... 7
`
`The Combination of Griffin and Davis Discloses Turning
`on the Display and Initiating a Fingerprint Authentication
`Function in Response to a One-Time Pressing of the
`Activation Button ....................................................................... 9
`
`a.
`
`b.
`
`The Claims Are Not Limited to a Single Step or a
`Single User Action for Pressing the Activation
`Button and Scanning a Fingerprint .................................. 9
`
`The Combination of Griffin and Davis Discloses a
`“One-Time Pressing of the Activation Button”
`That Turns on the Touch Screen Display and
`“Initiates” the Fingerprint Authentication Function ....... 18
`
`
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`IPR2019-00614 Page 00002
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`

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`
`
`3.
`
`A POSITA Would Have Been Motivated to Combine
`Griffin, Davis, and iOS ............................................................. 24
`
`B.
`
`Ground 2: Goertz in View of Davis and iOS Renders Obvious
`Claims 1-4, 6-7, 9-13, and 15-17 of the ’419 Patent .......................... 28
`
`1.
`
`2.
`
`The Combination of Goertz and iOS Discloses an
`Activation Button Separate From a Power Button ................... 29
`
`The Combination of Goertz and Davis Discloses Turning
`on the Display and Initiating a Fingerprint Authentication
`Function in Response to a One-Time Pressing of the
`Activation Button ..................................................................... 33
`
`a.
`
`b.
`
`The Claims Are Not Limited to a Single Step or a
`Single User Action for Pressing the Activation
`Button and Scanning a Fingerprint ................................ 34
`
`The Combination of Goertz and Davis Discloses a
`“One-Time Pressing of the Activation Button”
`That Turns on the Touch Screen Display and
`“Initiates” the Fingerprint Authentication Function ....... 34
`
`3.
`
`A POSITA Would Have Been Motivated to Combine
`Goertz with the Teachings of Davis ......................................... 35
`
`VII. CONCLUSION ............................................................................................. 40
`
`
`
`ii
`
`
`IPR2019-00614 Page 00003
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`
`
`I, Benjamin B. Bederson, have previously been asked to testify as an expert
`
`witness in this action. As part of my work in this action, I have been asked by Apple,
`
`Inc. (“Petitioner”) to respond to certain assertions offered by Firstface Co., Ltd.
`
`(“Patent Owner”) in connection with U.S. Patent No. 9,779,419 (“’419 patent”) in
`
`IPR2019-00614 and IPR2019-01012. I hereby declare:
`
`I.
`
`1.
`
`PRIOR TESTIMONY
`
`I am the same Benjamin B. Bederson who provided Declarations in this
`
`consolidated proceeding, executed on January 23, 2019, as Exhibit 1003 in IPR2019-
`
`00614 (“First Declaration”) and executed on April 24, 2019, as Exhibit 1003 in
`
`IPR2019-01012 (“Second Declaration”), which, including their appendices, are
`
`incorporated by reference herein in their entirety.2 My qualifications and the
`
`circumstances of my engagement were detailed in ¶¶2-15 and Appendix A of my
`
`First Declaration.
`
`2.
`
`I offer statements and opinions on behalf of Petitioner, generally regarding the
`
`validity, prior art, and obviousness considerations, and understanding of a person of
`
`ordinary skill in the art (“POSITA”) as it relates to the ’419 patent.
`
`
`2 IPR2019-01012 specifically addressed the invalidity of the limitations of
`dependent claim 9 of the ’419 patent. Since those arguments and analyses do not
`appear to be in dispute at this stage of this consolidated proceeding, except by
`virtue of being dependent on the disputed independent claim, references to my
`prior statements will reference my IPR2019-00614 First Declaration unless stated
`otherwise.
`
`
`
`IPR2019-00614 Page 00004
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`
`
`3.
`
`I offer this declaration in rebuttal to the arguments raised by the Declaration
`
`of Dr. Alfred C. Weaver (Ex. 2001).
`
`II. MATERIALS REVIEWED
`
`4.
`
`In connection with my study of the POR and supporting declarations and
`
`reaching the conclusions stated herein, I have reviewed a number of additional
`
`documents. In addition to those mentioned in my previous declaration, I have
`
`reviewed the following additional documents:
`
`• Declaration of Dr. Alfred C. Weaver and its accompanying exhibits; and
`
`• All other documents referenced herein (see Appendix A).
`
`5. My opinions are also based upon my education, training, research, knowledge,
`
`and personal and professional experience.
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME
`
`6. My opinion regarding a person of ordinary skill in the art is discussed in my
`
`First Declaration, and my opinions are the same. Ex. 1003 ¶¶25-30.
`
`IV. CLAIM INTERPRETATION
`
`7.
`
`As stated in my First Declaration, I understand the claims under their ordinary
`
`and customary meaning as would be understood by a POSITA. Ex. 1003 ¶49.
`
`2
`
`
`IPR2019-00614 Page 00005
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`
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`V.
`
`8.
`
`SUMMARY OF THE RELEVANT PRIOR ART
`
`In my First Declaration, I summarized the disclosures and teachings of the
`
`prior art, including Griffin (Ex. 1027), Davis (Ex. 1015), iOS (Ex. 1007), and
`
`Goertz (Ex. 1013). Ex. 1003 ¶¶50-97.
`
`A. Griffin (Ex. 1027)
`
`9.
`
`Dr. Weaver is incorrect in stating that “Griffin…generally describes unlocking
`
`a device…in response to two different actions by the user” and “makes clear that a
`
`single action, such as a button press, is not enough to unlock the device.” Ex. 2001
`
`¶78. As I explained in my First Declaration and further in rebuttal below, Griffin
`
`explicitly discloses its system as “detecting a single continuous unlock action.” Ex.
`
`1027 ¶¶30-31, 35-36, Abstract. The single continuous unlock action of Griffin may
`
`involve multiple inputs such as a button press and a fingerprint scan (in combination
`
`with Davis, for example). Moreover, as I explain further below, the ’419 patent
`
`claims are directed to a “one-time pressing of the activation button” that turns on the
`
`touch screen display and initiates a fingerprint authentication function. They are not
`
`limited to a single step or user action to both press the activation button and scan a
`
`fingerprint.
`
`B. Goertz (Ex. 1013)
`
`10. Dr. Weaver incorrectly characterizes my opinion by focusing on what Goertz
`
`alone teaches and further is incorrect in stating that Goertz “is limited to a multi-
`
`3
`
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`IPR2019-00614 Page 00006
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`
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`step process, requiring multiple user actions to unlock the device.” Ex. 2001 ¶¶81-
`
`82. My opinion has never been that Goertz alone discloses all of the steps required
`
`to implement its security via fingerprint identification. Rather, my analysis is based
`
`on the combined teachings of Goertz, Davis, and iOS. Moreover, as I explain
`
`further below, the ’419 patent claims are directed to a “one-time pressing of the
`
`activation button” that turns on the touch screen display and initiates a fingerprint
`
`authentication function. They are not limited to a single step or user action to both
`
`press the activation button and scan a fingerprint.
`
`C. Davis (Ex. 1015)
`
`11. Dr. Weaver is incorrect in stating that Davis “criticizes the use of single-factor,
`
`password-based authentication to secure a device.” Ex. 2001 ¶83. Davis’s
`
`Background section describes examples of one-factor, two-factor, and three-factor
`
`authentication schemes and properly notes that as the number of factors increases,
`
`security is also increased. Ex. 1015 ¶93. Davis does not, however, indicate that
`
`single-factor authentication should be avoided. Davis discloses embodiments with
`
`one, two, and three-factor authentication. Id. ¶¶46-47. Davis further discloses that
`
`“a subset of the authentication factors” can be used. Ex. 1015 ¶71.
`
`12. Dr. Weaver is incorrect in stating that “nothing in Davis discusses the use of a
`
`button to turn on a display screen, let alone use that button to turn on the display
`
`screen and perform another function, like fingerprint authentication.” Ex. 2001 ¶83.
`
`4
`
`
`IPR2019-00614 Page 00007
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`

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`
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`Davis states that “[t]hrough the use of convenience keys, execution of specific
`
`applications can be launched by a single action, e.g., a key press on a convenience
`
`key, rather than a series of actions, e.g., an actuation to bring up the display of a
`
`menu, an actuation to scroll through the menu to find a menu item associated with
`
`the desired application and a further actuation to select the desired application.” Ex.
`
`1015 ¶41. For example, Davis discloses that from a locked/inactive state in which
`
`the display is disabled, “[u]nlocking the mobile device 102 may be as
`
`straightforward as using one of the auxiliary I/O devices 206 [e.g., a convenience
`
`key] to cause a dialog to be shown on the display 226.” Id. ¶40, 43, 45, 46. Pressing
`
`a button while a device is inactive/locked and causing a dialog to be displayed and
`
`launch a specific application is disclosure of a button that turns on the display screen
`
`and performs another function. Nevertheless, my analysis was and is based on the
`
`combined teachings of Griffin, Davis, and iOS (Ground 1) and Goertz, Davis, and
`
`iOS (Ground 2), not Davis alone.
`
`D.
`
`iOS (Ex. 1007)
`
`13. Dr. Weaver is incorrect in stating that the iOS “home button…is not an
`
`‘activation button’ within the meaning of the claims of the ’419 patent” because iOS
`
`“never discloses that the home button can be used to activate a display.” Ex. 2001
`
`¶84. As explained in further detail below, iOS discloses that locking the iPhone turns
`
`off the display (Ex. 1007 at 145), and to unlock from that locked state, the user can
`
`5
`
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`IPR2019-00614 Page 00008
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`
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`press the home button and then drag the slider (id. at 27, 23). The fact that the screen
`
`was (1) off in the locked state and then (2) a slider is displayed after pressing the
`
`home button means that the touchscreen had been turned on in response to pressing
`
`the home button. Thus, the iPhone home button is an activation button within the
`
`meaning of the claims of the ’419 patent. Nevertheless, my analysis was and is based
`
`on Griffin’s or Goertz’s disclosure of an activation button (home button) in
`
`combination with iOS’s teaching of a separate power button.
`
`VI. CLAIMS 1-4, 6-7, 9-13, and 15-17 OF THE ’419 PATENT ARE
`UNPATENTABLE
`
`A. Ground 1: Griffin in View of Davis and iOS Renders Obvious
`Claims 1-4, 6-7, 9-13, and 15-17 of the ’419 Patent
`
`14.
`
`In my First Declaration, I provided an analysis of the limitations of claims 1-
`
`4, 6-7, 10-13, and 15-17 of the ’419 patent with respect to the combined disclosures
`
`and teachings of Griffin in view of Davis and iOS. Ex. 1003 ¶¶50-76. In my Second
`
`Declaration, I provided an analysis of the limitations of claim 9 of the ’419 patent
`
`with respect to the combined disclosures and teachings of Griffin in view of Davis
`
`and iOS. IPR2019-01012, Ex. 1003 ¶¶50-79. My opinion that the challenged claims
`
`of the ’419 patent are unpatentable over Griffin in view of Davis and iOS remains
`
`the same and is incorporated by reference herein.
`
`6
`
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`IPR2019-00614 Page 00009
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`
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`15. For the reasons discussed below, I disagree with Dr. Weaver’s opinion that the
`
`Petition fails to demonstrate that any challenged claim is rendered obvious under
`
`Ground 1. Ex. 2001 ¶¶85-112.
`
`1. The Combination of Griffin and iOS Discloses an Activation
`Button Separate From a Power Button
`
`16. Dr. Weaver opines that the Petition is unclear regarding which prior art
`
`references satisfy the limitation of an activation button separate from a power button.
`
`Ex. 2001 ¶86. I disagree. Griffin was relied on for disclosing a home button
`
`(activation button) configured for pressing to turn on the touch screen display. For
`
`example, Griffin discloses “a single ‘home’ button or convenience button 520,
`
`positioned at
`
`the center along an edge of
`
`the display 510” whose
`
`“depression…constitutes the initiation of an unlock action.” Ex. 1027 ¶¶86, 25. This
`
`was explained in the claim charts of the relevant “activation button” limitations,
`
`claims [1d] and [1e]. Ex. 1003 ¶76. iOS was relied on for disclosing a separate
`
`Sleep/Wake button (power button) configured to turn on and off the terminal by
`
`pressing. This was explained in the claim chart of the relevant “power button”
`
`limitation, claim [1c]. Ex. 1003 ¶76. Dr. Weaver does not appear to dispute that iOS
`
`teaches a power button.
`
`17. Dr. Weaver opines that “Griffin fails to disclose a power button.” Ex. 2001
`
`¶87. However, I relied on iOS for its disclosure of a power button, not Griffin. iOS
`
`discloses the separate power button missing from Griffin.
`
`7
`
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`IPR2019-00614 Page 00010
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`

`

`
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`18. Dr. Weaver opines that “the ‘home button’ in iOS is not an ‘activation button’
`
`within the meaning of the claims because it does not “turn on the touch screen
`
`display.” Ex. 2001 ¶¶87-88. I disagree. As an initial matter, Dr. Weaver
`
`misunderstands the proposed combination of Griffin and iOS. I relied on Griffin for
`
`the activation button (home button) configured for pressing to turn on the touch
`
`screen display (element [1.e]). Dr. Weaver does not appear to dispute that Griffin’s
`
`activation button turns on the display. iOS further teaches providing a power button
`
`that is separate from a “home” button, as discussed above.
`
`19. Nevertheless, iOS’s home button, just like Griffin’s home button, turns on the
`
`display. As explained in iOS, locking the iPhone turns off the display (Ex. 1007 at
`
`145), and to subsequently unlock the iPhone, the user can press the home button and
`
`then drag a slider that appears on the screen (Ex. 1007, 26-27, 23). The fact that (1)
`
`the screen was off in the locked state and (2) then a slider is displayed on the screen
`
`after pressing the home button means that pressing the home button turns on the
`
`display. Thus, contrary to Dr. Weaver’s assessment, the iPhone home button is an
`
`activation button within the meaning of the claims of the ’419 patent.
`
`20. Dr. Weaver’s suggestion that there may be other ways to turn on the display
`
`screen in iOS is unsupported and irrelevant. Ex. 2001 ¶88. Dr. Weaver does not cite
`
`any support for the contention that the iPhone described by iOS actually turns on its
`
`display using an accelerometer or hall effect sensor, but even if it did, the existence
`
`8
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`IPR2019-00614 Page 00011
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`

`

`
`
`of alternative methods of turning on the display would not negate the functionality
`
`of the home button that is disclosed.
`
`21. Accordingly, Griffin in view of iOS discloses an activation button that turns
`
`on the display and is separate from the power button.
`
`2. The Combination of Griffin and Davis Discloses Turning on
`the Display and Initiating a Fingerprint Authentication Function
`in Response to a One-Time Pressing of the Activation Button
`
`22. Dr. Weaver opines that the “none of the prior art discloses turning on the
`
`display and performing a fingerprint authentication in response to a one-time
`
`pressing of the activation button” because Griffin discloses a “multi-step process
`
`requiring multiple user actions to perform fingerprint authentication,” and Davis
`
`“also discloses a multi-step process requiring multiple user actions.” Ex. 2001 ¶¶89-
`
`107. For the reasons stated below, I disagree. The combination of Griffin and Davis
`
`discloses turning on the display and initiating a fingerprint function in response to a
`
`one-time pressing of the activation button.
`
`a.
`
`The Claims Are Not Limited to a Single Step or a Single
`User Action for Pressing the Activation Button and
`Scanning a Fingerprint
`
`23. Dr. Weaver opines that the claims “require turning on the display and
`
`performing fingerprint authentication in response to a single user action—a one-time
`
`pressing of the activation button.” Ex. 2001 ¶¶105-107. I disagree. The plain
`
`language of the claims requires that a “one-time pressing of the activation button”
`
`9
`
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`IPR2019-00614 Page 00012
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`

`

`
`
`does two things: (1) turns on the touch screen display and (2) “initiates” a fingerprint
`
`authentication function. By requiring that a single user action both press the
`
`activation button and scan a fingerprint, Dr. Weaver fails to give meaning to the word
`
`“initiates” in the claims.
`
`24. All claims recite that the fingerprint authentication function is “initiated” by
`
`the one-time press of the activation button. For example, claim 1 of the ’419 patent
`
`recites:
`
`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 perform
`a fingerprint authentication function in addition to turning
`on the touch screen display such that:
`
`…
`
`in addition to turning on the touch screen display
`and displaying the lock screen, the one-time
`pressing while the touch screen display being
`turned off initiates the fingerprint authentication
`function,
`
`the lock screen is displayed on the touch screen
`display when
`the
`fingerprint authentication
`function initiated by the one-time pressing is being
`performed,
`
`Ex. 1001, 12:61-13:9 (emphasis added). Claim 10 recites similar language:
`
`detecting one-time pressing of the activation button while
`the terminal is in an inactive state in which the touch
`screen display is turned off;
`
`10
`
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`IPR2019-00614 Page 00013
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`

`

`
`
`in response to the one-time pressing, changing the terminal
`from the inactive state to an active state in which the touch
`screen display is turned on; and
`
`in addition to changing to the active state, further
`performing a fingerprint authentication function using
`fingerprint recognition without additional user input,
`
`wherein in changing to the active state and performing the
`fingerprint authentication function, the terminal operates
`such that:
`
`…
`
`in addition to changing the terminal to the active
`state, the one-time pressing while the terminal
`being in the inactive state initiates the fingerprint
`authentication function,
`
`the lock screen is displayed on the touch screen
`display when
`the
`fingerprint authentication
`function initiated by the one-time pressing is being
`performed,
`
`Id., 14:26-46 (emphasis added). This claim language makes clear that claims are
`
`directed to a system and method that “initiates” a fingerprint authentication function
`
`in response to the pressing of the activation button. Dr. Weaver does not address this
`
`claim language.
`
`25. Dr. Weaver appears to rely on the phrase “one-time press” term to support his
`
`opinion. Ex. 2001 ¶106. However, as set forth in the claims and the patent, “one-
`
`time pressing of the activation button” refers to how many times the activation
`
`button is pressed. As the specification explains, the activation button is pressed once
`
`or multiple times:
`
`11
`
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`IPR2019-00614 Page 00014
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`
`
`In addition, according to an embodiment of the present
`invention, an operation which differs according to the
`number of presses or a press time of the activation button
`120 can be performed when the mobile communication
`terminal 100 is in the inactive state. For example, a first
`operation can be set to be performed if the activation
`button 120 is pressed once, and a second operation can be
`set to be performed if the activation button 120 is
`times…. The mobile
`continuously pressed
`three
`communication terminal 120 can include a predetermined
`clock circuit or timer to calculate the cumulative number
`of continuous presses of the activation button 120 and
`measure a period of time for which the activation button
`120 is pressed. For example, the number of presses is
`determined to be two if the activation button 120 is re-
`pressed within a threshold time after one press. If the
`activation button 120 is pressed for the threshold time or
`more, a long press of the activation button 120 can be
`determined. Operations capable of being performed by
`pressing the activation button 120 in the inactive state will
`be described later.”
`
`Ex. 1001, 4:57-5:13 (emphasis added); see also Ex. 1001, 1:17-23 (“performing
`
`various functions according to the number of presses or a press time of a button”),
`
`8:47-61 (“this operation may differ according to the number of presses or a press
`
`time of the activation button”), 4:65-5:13; IPR2019-00613, Ex. 1001 (’373 Patent),
`
`claim 17 (“detecting repeated pressing of the activation button”). Therefore, the term
`
`“one-time pressing of the activation button,” which initiates the fingerprint
`
`authentication function, does not preclude other inputs or user actions, such as a
`
`subsequent fingerprint scan.
`
`12
`
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`IPR2019-00614 Page 00015
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`

`

`
`
`26. The claims necessarily encompass two inputs. All claims require a one-time
`
`“press” of an activation button. A POSITA would have understood that this is a first
`
`input. All claims further require initiating a fingerprint authentication function (in
`
`response to the “press” of the activation button). A POSITA would have understood
`
`that when the fingerprint sensor scans a fingerprint, this is a second input.
`
`27. The ’419 patent specification also discloses separate units for detecting the
`
`activation button press and operating the user identification function. The
`
`specification includes a section “3. User Identification Function” that describes
`
`“[w]hen the mobile communication terminal 100 is in the inactive state, a user
`
`authentication process can be performed for security by pressing the activation
`
`button 120.” Id., 7:14-17. The patent describes an activation sensing unit 410, which
`
`“senses whether or not the user has pressed the activation button 120.” Ex. 1001,
`
`7:23-25. “If the activation sensing unit 410 senses that the activation button 120 has
`
`been pressed,” then a separate user identification unit 420 “operates the user
`
`identification function in various methods.” Id., 7:26-28. Figure 4A depicts the
`
`separate units of mobile communication terminal 100:
`
`13
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`IPR2019-00614 Page 00016
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`

`
`
`
`
`This confirms my understanding that the claims encompass multiple inputs and/or
`
`steps for pressing the activation button and scanning a fingerprint.
`
`28. There is no support in the claims, specification, or prosecution history for
`
`interpreting “one-time pressing of the activation button” as limiting the claims to a
`
`single user action or single input to both press the activation button and scan a
`
`fingerprint. The specification includes only one sentence regarding fingerprint
`
`authentication, which says nothing about a single user action or single input to both
`
`press the activation button and scan a fingerprint:
`
`Although an example of an authentication method through
`iris recognition has been described above, other
`authentication methods, for example, an authentication
`key matching method, a password matching method, a
`face recognition method, a fingerprint recognition method,
`and the like, can be used.
`
`This sentence also does not explain how to accomplish what Dr. Weaver suggests
`
`the claims require, or what type of scanner to use. Moreover, the ’419 patent does
`
`14
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`IPR2019-00614 Page 00017
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`

`

`
`
`not disclose that the authentication process is any different when fingerprint
`
`authentication is used.
`
`29. Moreover, dependent claim 2 adds a requirement that the terminal “perform[s]
`
`at least one additional function in addition to the fingerprint authentication
`
`function…when the one-time pressing of the activation button is detected.” The
`
`’419 patent specification discloses a number of “operations of the mobile
`
`communication terminal 100 capable of being performed by pressing the activation
`
`button 120” (Ex. 1001, 5:47-57) including operations under the headings “Camera
`
`Activation Function,” “Health Sensing and Health Information Transmission
`
`Functions,” “User Identification Function,” “Location Information Transmission
`
`Function,” and “File Transmission Function.” (Ex. 1001, 5:58-20). In describing
`
`the User Identification Function, the ’419 patent specification discloses that “a
`
`password matching method” that “can be performed by pressing the activation
`
`button.” Ex. 1001, 8:13-20. A POSITA would have understood that these disclosed
`
`operations including the password matching method were all examples of the
`
`claimed “additional functions”, and that entering a password necessarily requires
`
`additional user inputs. Dr. Weaver’s interpretation would read this password
`
`matching method out of the claim, even though the specification discloses that it can
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`be “performed by pressing the activation button.”
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`30. Dr. Weaver opines that the claims “focus on user action.” Ex. 2001 ¶¶106-
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`107. I disagree. For example, this is incorrect as to both of the asserted independent
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`claims. Claim 1 is an apparatus claim directed to a mobile communication terminal,
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`its components, and how those components are configured, e.g., “an activation
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`button…configured for pressing.” Claim 10 is a method claim directed to steps
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`performed by a mobile computing terminal, e.g., “detecting one-time pressing,”
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`“changing the terminal to the active state,” and “performing a fingerprint
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`authentication function.”
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`31. Dr. Weaver opines that claim 10 is even clearer on this point because it recites
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`“performing a fingerprint authentication function using fingerprint recognition
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`without additional user input.” Ex. 2001 ¶106. I disagree. As explained above, Dr.
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`Weaver fails to address the word “initiate,” which appears twice in claim 10. A
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`POSITA would have understood that the claim element cited by Dr. Weaver merely
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`clarifies that no additional user input beyond the one-time pressing is required by
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`the device to initiate the fingerprint authentication function:
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`in addition to changing to the active state, further
`performing a fingerprint authentication function using
`fingerprint recognition without additional user input,
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`wherein in changing to the active state and performing the
`fingerprint authentication function, the terminal operates
`such that:
`
`…
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`in addition to changing the terminal to the active
`state, the one-time pressing while the terminal
`being in the inactive state initiates the fingerprint
`authentication function,
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`the lock screen is displayed on the touch screen
`display when
`the
`fingerprint authentication
`function initiated by the one-time pressing is being
`performed,
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`Ex. 1001, claim 10 (emphasis added). It is clear from the language of the claims and
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`the specification that “one-time pressing of the activation button” addresses how
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`many times the activation button is pressed, and “without additional user input”
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`addresses whether the claim is limited to a single input to “initiate” the fingerprint
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`authentication function. Dr. Weaver’s interpretation, which requires a single user
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`input and a single user action to both press the activation button and scan a
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`fingerprint, has no support in the claims and specification.
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`32. Accordingly, in my opinion, the one-time pressing of the activation button,
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`consistent with the plain language of the ’419 patent and in light of the specification,
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`requires that the one-time pressing of the activation button turns on the display and
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`initiates a fingerprint authentication function. The claims do not require a single
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`user input and a single user action to both press the activation button and scan a
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`fingerprint.
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`b.
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`The Combination of Griffin and Davis Discloses a
`“One-Time Pressing of the Activation Button” That
`Turns on the Touch Screen Display and “Initiates” the
`Fingerprint Authentication Function
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`33. Dr. Weaver opines that the “none of the prior art discloses turning on the
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`display and performing a fingerprint authentication in response to a one-time
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`pressing of the activation button” because Griffin discloses a “multi-step process
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`requiring multiple user actions to perform fingerprint authentication,” and Davis
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`“also discloses a multi-step process requiring multiple user actions.” Ex. 2001 ¶¶89-
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`97. I disagree. As explained above, Dr. Weaver’s argument is based on an incorrect
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`interpretation of the claims and an incorrect understanding of the disclosures of the
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`prior art. The claims do not require a single user input or a single user action to both
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`press the activation button and scan a fingerprint. Griffin in view of Davis discloses
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`a “one-time pressing of the activation button” that turns on the touch screen display
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`and “initiates” the fingerprint authentication function, as required by the claims. Ex.
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`1003 ¶¶50-76. Moreover, Griffin discloses interaction through a single, continuous
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`user action.
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`34. Dr. Weaver opines that “Griffin fails to disclose two key requirements of the
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`challenged claims—turning on the display to show a lock screen and performing a
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`fingerprint authentication function (let alone releasing a lock state if the user is
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`authenticated), both in response to a one-time pressing of the activation button.” Ex.
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`2001 ¶90. However, contrary to Dr. Weaver’s assertion, Griffin discloses turning
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`on the display. Griffin discloses that pushing the home button initiates an unlock
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`action and reactivates the monitor. Ex. 1027 ¶¶24-25, 29. Griffin further discloses
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`that if the home button is pressed during sleep mode, “the device display would then
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`be activated” while the device awaits the second input. Ex. 1027 ¶29. With respect
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`to the lock screen and fingerprint authentication function, I relied on Davis’s
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`teachings in combination with Griffin. As explained in my First Declaration, Davis
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`discloses using fingerprint authentication in an unlock procedure, and discloses
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`showing a lock screen (Davis’s fingerprint dialog) as part of the unlock process. Ex.
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`1015 ¶¶50-53, Fig. 4; Ex. 1003 ¶¶53-62.
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`35. With respect to Davis, Dr. Weaver opines that Davis “never discloses that its
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`complex authentication procedure can be reduced down to a simple fingerprint
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`authentication.” Ex. 2001 ¶¶96-99. I disagree. For example, Figure 4 of Davis
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`shows an embodiment with (1) password authentication and (2) fingerprint
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`authentication in response to an unlock command:
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`Ex. 1015, Fig. 4 (annotated), ¶¶46-47, 52-53. Davis further discloses that “a subset
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`of the authentication factors” can be used. Ex. 1015 ¶71. Thus, as I explained in
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`detail in my First Declaration, the steps pertaining to password authentication
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`(steps 404-412) may be omitted. Accordingly, in Davis’s modified Figure 4, when
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`an unlock command is received