Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`APPLE INC.,
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`Petitioner,
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`v.
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`FIRSTFACE CO., LTD.,
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`Patent Owner.
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`________________
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`Case IPR2019-00614
`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`________________
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`PATENT OWNER’S SUR-REPLY TO PETITION
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`II. Ground 1: The Combination of Griffin, Davis, and iOS Does Not Render
`Obvious the Challenged Claims ............................................................................... 1
`A.
`The Combination of Griffin and iOS Fails to Disclose an Activation
`Button Separate from a Power Button. ............................................................ 2
`B.
`The Combination of Griffin and Davis Fails to Disclose Turning on
`the Display and Performing a Fingerprint Authentication Function in
`Response to a One-Time Pressing of the Activation Button. .......................... 4
`1.
`The Challenged Claims require performance, not just initiation,
`of a fingerprint authentication function in response to a one-time
`pressing of the activation button. .......................................................... 5
`2.
`The combination of Griffin and Davis fails to disclose
`performing a fingerprint authentication function in response to a one-
`time pressing of the activation button. .................................................. 8
`C. A POSITA Would Not Have Been Motivated to Combine Griffin,
`Davis, and iOS. .............................................................................................. 11
`III. Ground 2: The Combination of Goertz, Davis, and iOS Does Not Render
`Obvious the Challenged Claims. .............................................................................. 13
`A.
`The Combination of Goertz and iOS Fails to Disclose an Activation
`Button Separate from a Power Button. .......................................................... 14
`B.
`The Combination of Goertz and Davis Fails to Disclose Turning On
`the Display and Performing a Fingerprint Authentication In Response to a
`One-Time Pressing of the Activation Button. ............................................... 16
`C. A POSITA Would Not Have Been Motivated to Combine Goertz,
`Davis, and iOS. .............................................................................................. 17
`IV. Conclusion ..................................................................................................... 19
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`TABLE OF AUTHORITIES
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`Cases:
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`Graham v. John Deere Co. of Kan. City,
`383 U.S. 1 (1966) ................................................................................................. 9
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`
`In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ............................................... 12
`
`
`In re Merck & Co.,
`800 F.2d 1091 (Fed. Cir. 1986) ..................................................................... 9, 10
`
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ........................................................................... 9
`
`Intamin Ltd. v. Magnetar Techs. Corp.,
`483 F.3d 1328 (Fed. Cir. 2007) ........................................................................... 7
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ......................................................................... 18
`
`
`Princeton Biochemicals, Inc. v. Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005) ................................................................... 13, 19
`
`
`Rules, Statutes, and Other Authorities:
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`M.P.E.P § 2143.01(V) ............................................................................................. 12
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`TABLE OF EXHBITS
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`Exhibit
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`Description
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`2001
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`2008
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`Declaration of Dr. Alfred C. Weaver
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`Bederson Deposition Transcript
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`Patent Owner Firstface Co., Ltd. (“Firstface” or “Patent Owner”) submits
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`this Sur-Reply to the Petitions1 of Apple Inc. (“Apple” or “Petitioner”) seeking
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`inter partes review of claims 1-4, 6-7, 9-13, and 15-17 of U.S. Patent No.
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`9,779,419 (Ex. 1001, the “’419 patent”).
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`I.
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`Introduction
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`Petitioner’s Reply, like its Petition, fails to show that the Challenged Claims
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`are unpatentable. None of the cited art, alone or in combination, discloses all
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`limitations of the Challenged Claims. Petitioner’s arguments otherwise rely on
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`overly generous readings of the references and an incorrect interpretation of the
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`Challenged Claims. The Board should reject Petitioner’s arguments and find all
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`Challenged Claims patentable.
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`II. Ground 1: The Combination of Griffin, Davis, and iOS Does Not
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`Render Obvious the Challenged Claims.
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`                                                            
`1 Petitioner originally filed a Petition seeking inter partes review of claims 1-4, 6-
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`7, 10-13, and 15-17 in Case IPR2019-00614. Petitioner subsequently filed a
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`Petition seeking inter partes review of claim 9 in Case IPR2019-1012. The Board
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`instituted review in both proceedings and consolidated them for trial. This Sur-
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`Reply therefore addresses the arguments made in both Petitions. 
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`Petitioner makes two primary arguments in its Reply. First, it argues that
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`iOS discloses an activation button separate from a power button and, thus, the
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`combination of Griffin and iOS discloses an activation button separate from a
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`power button. Second, Petitioner argues that, contrary to the plain claim language,
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`the Challenged Claims require only initiating, not performing, a fingerprint
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`authentication function in response to a one-time press of the activation button.
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`And, according to Petitioner, when combined with Davis, Griffin discloses
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`initiating a fingerprint authentication function in response to a one-time press of
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`the activation button. Petitioner is wrong on all fronts.
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`A. The Combination of Griffin and iOS Fails to Disclose an
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`Activation Button Separate from a Power Button.
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`Each Challenged Claim requires an activation button that is separate from
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`the power button. See POR at 14. In its Patent Owner Response, Patent Owner
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`explained that Griffin and iOS do not disclose an activation button separate from a
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`power button, because iOS, on which Petitioner relies, does not disclose an
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`activation button that is configured to turn on the display, as the Challenged
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`Claims require. POR at 14-16.
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`Petitioner makes two arguments in Reply. First, it argues that it relies on
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`Griffin, not iOS, for the claimed activation button, so it does not matter whether
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`iOS discloses an activation button that is configured to turn on the display. Reply
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`at 2-3. Second, it argues that iOS does disclose an activation button that turns on
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`the display. Id. Neither of Petitioner’s arguments have merit.
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`As to its first argument, while Petitioner pointed to Griffin for its activation
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`button, the only reference Petitioner relies upon to teach that the activation button
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`is separate from the power button is iOS. See Pet. at 29. But, as Patent Owner
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`explained, iOS does not teach the required activation button, and thus cannot teach
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`that the power button is separate from the activation button.
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`Regardless, Petitioner’s Reply fails to demonstrate that iOS discloses an
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`activation button configured to turn on the display. Petitioner contends that,
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`according to iOS, “locking the iPhone turns off the display (Ex. 1007, 145), and to
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`subsequently unlock the iPhone the user can press the home button and then drag a
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`slider that appears on the screen (Ex. 1007, 26-27, 23).” Reply at 3. Petitioner
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`overstates what iOS says. It is true that iOS discloses that locking the iPhone turns
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`off the display. Ex. 1007 at 145. It is also true that iOS discloses that, to unlock the
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`iPhone, a user should “press the home button” and then “drag the slider.” Id. at 27.
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`But iOS is silent as to turning on the display—there is no evidence in iOS that the
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`display was not turned on prior to the home button’s pressing. And as explained in
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`the Response, other means for turning on the display are possible (and Petitioner’s
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`expert does not deny this fact). iOS thus does not disclose an activation button that
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`turns on the display. Petitioner accordingly has failed to meet its burden to show
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`that the cited art discloses all limitations of the Challenged Claims.
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`B.
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`The Combination of Griffin and Davis Fails to Disclose Turning
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`on the Display and Performing a Fingerprint Authentication
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`Function in Response to a One-Time Pressing of the Activation
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`Button.
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`In its Reply, Petitioner contends that the Challenged Claims require only
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`turning on the display and initiating a fingerprint authentication function in
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`response to a one-time pressing of the activation button. Reply at 4-10. And it
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`contends that the combination of Griffin and Davis discloses as much. Reply at 10-
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`14. Petitioner misreads the Challenged Claims. The plain language of the claims
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`requires, not just initiation of the first function, but performance of the fingerprint
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`authentication function. As Patent Owner explained in its Response, neither Griffin
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`nor Davis discloses performance of a fingerprint authentication function in
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`response to a one-time pressing of the activation button. In addition, a POSITA
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`would not combine Griffin and Davis to achieve this claim limitation. The Board
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`should thus reject Petitioner’s arguments.
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`1.
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`The Challenged Claims require performance, not just initiation,
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`of a fingerprint authentication function in response to a one-
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`time pressing of the activation button.
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`The plain language of the Challenged Claims requires turning on a display
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`and both initiating and performing a fingerprint authentication function “upon one-
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`time pressing of the activation button.” Ex. 1001 at 13:7-12. Petitioner focuses
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`only on two related limitations: “the one time pressing while the touch screen
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`display being turned off initiates the fingerprint authentication function” and “the
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`lock screen is displayed on the touch screen when the fingerprint authentication
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`function initiated by the one-time pressing is being performed.” Reply at 5. It is
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`true that the claims require that the activation button (rather than some other
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`button) be configured to initiate the fingerprint authentication function. But
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`Petitioner ignores that even the claim limitation it cites requires that the lock screen
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`be displayed for the duration of the performance of the fingerprint authentication
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`function (“when the fingerprint authentication function . . . is being performed”)
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`and further ignores that the claim states “wherein upon one-time pressing of the
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`activation button while the touch screen display is turned off, the terminal is
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`configured to turn on the touch screen display and perform a fingerprint
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`authentication function in addition to turning on the touch screen display.” See
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`U.S. Patent No. 9,779,419
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`Claim 1 (emphasis added). The other independent claim, Claim 10 contains similar
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`limitations. See Claim 10. The Challenged Claims thus require performance, not
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`just initiation, of the fingerprint authentication function in response to a one-time
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`pressing of the activation button.
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`Petitioner argues that the Challenged Claims do not require full performance
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`of the fingerprint authentication function in response to a one-time pressing of the
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`activation button because “the claimed apparatus/process necessarily encompasses
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`two inputs.” Reply at 6. According to Petitioner, the one-time pressing is a first
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`input, and the fingerprint scan is a second input. Id. That may be true, but it is
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`irrelevant. Regardless of how many inputs are required, the Challenged Claims are
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`clear that the first function is in response to a singular action—a one-time pressing
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`of the activation button.
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`Contrary to Petitioner’s allegation, Patent Owner’s interpretation of the
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`Challenged Claims would not “improperly read out embodiments of the claims.”
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`Reply at 8. Petitioner argues, for example, that dependent claim 2 requires
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`performance of an additional function in response to a one-time pressing. Reply at
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`8-9. According to Petitioner, because one of those could be “a password matching
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`method,”2 the claims necessarily require more than one user input. Id. Petitioner is
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`wrong to suggest that claim 2 requires performance of an additional function. The
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`language of claim 2 requires the performance of an additional function when the
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`one-time pressing of the activation button is detected. Thus, like claim 1, it
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`requires performance, not just initiation, of the additional function when the one-
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`time pressing is detected. And no principle of claim construction requires
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`interpreting the claims otherwise. As the Federal Circuit has recognized, a claim
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`need not cover all embodiments, especially where a patentee may draft different
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`claims to cover different embodiments. Intamin Ltd. v. Magnetar Techs. Corp., 483
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`F.3d 1328, 1337 (Fed. Cir. 2007). Thus, other claims, such as claim 8, may
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`capture the password matching method, meaning that claim 2 may cover
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`embodiments in which no additional input is needed to complete performance.
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`                                                            
`2 Petitioner alleges that the specification’s statement that “one or more
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`authentication methods can be performed by pressing the activation button” means
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`that “performs” means “initiates.” See Reply at 9, n.4. The cited language,
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`however, does not require that the performance occur in response to a one-time
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`pressing of the activation button, and thus is not applicable to the situation in
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`claims 1 and 10. See Ex. 1001 at 8:18-20. 
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`U.S. Patent No. 9,779,419
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`Petitioner finally argues that Patent Owner’s interpretation of the claims as
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`requiring performance of a fingerprint authentication function in response to the
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`single user action of a one-time pressing of the activation button is improper
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`because the apparatus claims are directed to a mobile communication terminal and
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`the method claims are directed to steps performed by a mobile communication
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`terminal. Reply at 9. Petitioner’s point is not entirely clear. It’s true that the
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`apparatus claims are directed to a mobile communication terminal and the method
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`claims recite steps performed by a mobile communication terminal. But, as
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`discussed above, the claims make clear that the mobile communication terminal
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`performs (not just initiates) the fingerprint authentication function in response to a
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`one-time pressing of the activation button.
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`2.
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`The combination of Griffin and Davis fails to disclose
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`performing a fingerprint authentication function in response to
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`a one-time pressing of the activation button.
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`Petitioner has failed to show that the Challenged Claims are unpatentable
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`over Griffin in view of Davis and iOS. In its Reply, Petitioner argued that “Griffin
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`in view of Davis discloses the express language of the claim: a ‘one-time pressing
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`of the activation button’ that turns on the touch screen display and ‘initiates’ the
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`fingerprint authentication function.” Reply at 10. But this argument ignores the
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`other limitations that require performance, not just initiation, of the fingerprint
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`authentication function in response to a one-time pressing of the activation button,
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`as discussed above.
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`As discussed in Patent Owner’s Response, neither Griffin nor Davis
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`discloses such limitations. See POR at 16-27. They each require instead multiple
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`user inputs. Griffin, at best, discloses turning on a display in response to a press of
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`an activation button. And performance of a “first function” in Griffin requires
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`additional user actions—operating other input mechanisms to fully unlock the
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`device. See POR at 17-19.3 Similarly, Davis at best initiates a fingerprint function
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`                                                            
`3 Petitioner cites to In re Mouttet and In re Merck to argue that it is improper to
`evaluate the individual contributions of each reference. However, a proper Graham
`analysis requires determining the scope and content of the prior art, which
`necessitates understanding what each reference discloses. Neither In re Mouttet nor
`In re Merck prohibits such an analysis. In re Mouttet simply counseled against
`requiring a specific finding that two references had equivalent components in order
`to make an obviousness combination. 686 F.3d 1322, 1332 (Fed. Cir. 2012). In
`fact, In re Mouttet cites to the requirements of the Graham factors in laying out the
`foundation for an obviousness finding. Id. at 1330. Meanwhile, In re Merck
`discourages picking out a single teaching from one reference to argue teaching
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`after receiving a user input by displaying a fingerprint dialog. But it requires
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`another user input to complete the fingerprint authentication function. See POR at
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`19-27. This is true regardless of whether the Board accepts Petitioner’s heavily
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`modified version Figure 4, which omits the password authentication that occurs
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`before fingerprint authentication. See POR at 22-23 Because neither Griffin nor
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`Davis discloses performing a fingerprint authentication function in response to a
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`one-time pressing of the activation button, the combination of the two cannot
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`disclose it either. Indeed, it is illogical that a pair of references that each require
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`multiple user actions to turn on the display and perform a first function would
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`somehow be combined such that only a single action is required.
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`As a fallback position, Petitioner argues in its Reply that “even if the claims
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`required a single user action to both press the activation button and scan a
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`fingerprint . . . , Griffin expressly discloses ‘detecting a single continuous unlock
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`action.’” Reply at 14 (citing Ex. 1027 Abstract, ¶¶ 31-31, 35-36, 88). Thus,
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`according to Petitioner, “[t]his single, continuous user action includes two inputs,
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`just like the Claims: (1) a button press, and (2) a second input (e.g., Davis’s
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`                                                            
`away when the bulk of the other references indicate a different conclusion. In re
`Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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`fingerprint detection.” Id. Petitioner again ignores that the Challenged Claims
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`require performance of the fingerprint authentication solely in response to a one-
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`time pressing of the activation button. Petitioner’s argument replaces a “one-time
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`pressing” of the activation button with a “single continuous unlock action.” But
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`Griffin’s continuous unlock action involves engaging multiple disparate input
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`mechanisms, requiring more than a simple press of an activation button. As Griffin
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`explains: “[I]t can be seen that the foregoing methods and devices are configured
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`to permit the device 100 to transition from a locked state to an unlocked state not
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`simply on the basis of a single type of input, such as a keypress or a single touch-
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`screen gesture, but on the basis of a two-input or multiple-input action that must be
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`detected across a plurality of interfaces provided on the device 100.” Ex. 1027 at
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`[0116].
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`C. A POSITA Would Not Have Been Motivated to Combine Griffin,
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`Davis, and iOS.
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`In its Reply, Petitioner rehashes the same arguments it made in its Petition
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`for why a POSITA would be motivated to combine Griffin, Davis, and iOS. As
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`Patent Owner explained in its Response, both Griffin and Davis teach complex,
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`multi-step authentication systems. Petitioner argues in its Reply that it does not
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`matter that Griffin teaches a complex wake-up or unlock action because “the
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`claims are not limited to a single input to both press the activation button and scan
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`a fingerprint.” Reply at 17. But as discussed extensively above, Petitioner
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`misinterprets the Challenged Claims—they each require performance of fingerprint
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`authentication in response to a one-time pressing of the activation button. See
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`supra section II.B.1. Petitioner also argues that, while Davis teaches using two- or
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`three-factor authentication, it “also expressly discloses using a subset of the
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`authentication factors.” Reply at 17. But Petitioner ignores that Davis generally
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`criticizes the use of single-factor, password-based authentication to secure a
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`device, and notes that two-factor or three-factor authentication using a smart card
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`and/or biometric information is more secure. See POR at 10 (citing Ex. 1015 at
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`[0002]-[0004]). And while, as Petitioner argues, Davis recites one embodiment that
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`uses single-factor authentication, that embodiment is limited to use for launching
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`applications “that pose the lowest security risk to the mobile device 102,” and “the
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`mobile device remains locked while executing the application.” Ex. 1015 at
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`[0082]. Combining Griffin and Davis in a way that makes authentication easier
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`would thus make Griffin and Davis unsatisfactory for their intended purposes. See
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`In re Gordon, 733 F.2d 900; see also M.P.E.P. § 2143.01(V).
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`Furthermore, as explained in Patent Owner’s Response, the patchwork
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`reasoning and multiple alleged motivations to combine relied upon by Petitioner to
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`arrive at the invention demonstrates the problem with Petitioner’s obviousness
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`combination. Patent Owner explained in its Response that the Federal Circuit has
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`cautioned against permitting an obviousness argument that does not assess the
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`invention “as a whole.” POR at 31. This “as a whole” assessment of the invention
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`requires a showing that an artisan of ordinary skill in the art at the time of
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`invention, confronted by the same problems as the inventor and with no knowledge
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`of the claimed invention, would have selected the various elements from the prior
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`art and combined them in the claimed manner. Princeton Biochemicals, Inc. v.
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`Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005). But rather than provide a clear
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`explanation for why the invention as a whole would be rendered obvious,
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`Petitioner breaks the invention into component parts, finds a reference that
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`purportedly discloses each part, and explains why a POSITA would have a
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`motivation to add each component part to the mix. This improperly imports
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`hindsight bias into the invention. See POR at 27-31. The Board should therefore
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`reject Petitioner’s arguments and find all Challenged Claims patentable over the
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`cited art.
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`III. Ground 2: The Combination of Goertz, Davis, and iOS Does Not
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`Render Obvious the Challenged Claims.
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`Petitioner makes the same two primary arguments for Ground 2 that it made
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`for Ground 1. First, it argues that, contrary to Patent Owner’s argument, iOS
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`discloses an activation button separate from a power button and, thus, the
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`combination of Goertz and iOS discloses an activation button separate from a
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`power button. Second, adopting the same, incorrect interpretation of the
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`Challenged Claims that it took with respect to Ground 1, Petitioner argues that
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`Goertz when combined with Davis discloses initiating a fingerprint authentication
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`function in response to a one-time press of the activation button. Petitioner is
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`wrong for the same reasons it was with respect to Ground 1. 
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`A. The Combination of Goertz and iOS Fails to Disclose an
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`Activation Button Separate from a Power Button.
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`Each Challenged Claim requires an activation button that is separate from
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`the power button. In its Patent Owner Response, Patent Owner explained that
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`Goertz and iOS, on which Petitioner relies for disclosure of this claim limitation,
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`do not disclose an activation button separate from a power button, because neither
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`reference discloses an activation button that is configured to turn on the display
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`and is separate from the power button, as the claims require. See POR at 32-35.
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`Petitioner first contends in its Reply that Figures 12-15 of Goertz disclose an
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`activation button that turns on the display when pressed. But as Patent Owner
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`explained in its Response, nothing in Goertz says that Figure 13 shows a display
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`that is off, contrary to Petitioner’s arguments. POR at 32-33. Petitioner argues that
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`Figure 13 is identical to Figure 9, which itself shows a display that is off. But, as
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`Figure 9 itself indicates, it shows a device that is entirely off, so the display must
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`be off. See Ex. 1013, Figs. 9-10, ¶ [0059]. There is no similar disclosure for Figure
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`13.
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`Petitioner also contends that iOS discloses an activation button that is
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`separate from a power button.4 But Petitioner has not shown that the purported
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`activation button in iOS turns on the display in response to a press. And, contrary
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`to its argument, it must do so. While Petitioner pointed to Goertz for its activation
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`button, the only reference Petitioner relies on to teach that the activation button is
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`separate from the power button is iOS. See Pet. at 66-67. The only way iOS can do
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`so is if it teaches an activation button.
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`Petitioner’s Reply fails to demonstrate that iOS disclose an activation button
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`configured to turn on the display. Petitioner contends that, according to iOS,
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`“locking the iPhone turns off the display (Ex. 1007, 145), and to subsequently
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`unlock the iPhone the user can press the home button and then drag a slider that
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`                                                            
`4 Petitioner does not appear to contend that the purported activation button in
`Goertz is separate from the power button.
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`U.S. Patent No. 9,779,419
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`appears on the screen (Ex. 1007, 26-27, 23).” Reply at 3, 22 (citing to section II.A
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`of its Reply). As explained above, Petitioner overstates what iOS says. See supra
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`section II.A. Nowhere does iOS disclose that the home button (the purported
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`activation button) turns on the display. Petitioner accordingly has failed to meet its
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`burden to show that the cited art discloses all limitations of the Challenged Claims.
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`B.
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`The Combination of Goertz and Davis Fails to Disclose Turning
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`On the Display and Performing a Fingerprint Authentication In
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`Response to a One-Time Pressing of the Activation Button.
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`As it did with Ground 1, Petitioner argues that the Challenged Claims
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`require only turning on the display and initiating a first function (here, fingerprint
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`authentication) in response to a one-time pressing of the activation button. Reply at
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`23-25. And it contends that the combination of Griffin and Davis discloses as
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`much. Id. As discussed above in Ground 1, Petitioner’s interpretation of the
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`Challenged Claims is wrong—they require performance, not just initiation, of the
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`fingerprint authentication function in response to a one-time pressing of the
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`activation button. See supra Section II.B.1.
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`As discussed in Patent Owner’s Response, neither Goertz nor Davis
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`discloses such limitations. See POR at 35-39. Both instead require multiple user
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`inputs. Goertz discloses turning on the display and presenting a prompt to begin
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`“key lock high security mode,” whereby a user is presented with the need to input
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`a password prior to being prompted for a fingerprint. See POR at 37. Even if
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`Goertz were to skip the need to enter a key sequence and go straight to requesting a
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`fingerprint, it would still require multiple user inputs because it would require a
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`press to turn on the display and then a response to a prompt for a fingerprint. See
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`id. Similarly, and as discussed above, Davis at best initiates a fingerprint function
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`after receiving a user input by displaying a fingerprint dialog. But it requires
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`another user input to complete the fingerprint authentication function. See POR at
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`22. Because neither Goertz nor Davis discloses performing a fingerprint
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`authentication function in response to a one-time pressing of the activation button,
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`the combination of the two cannot disclose it either. Indeed, it is illogical that a
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`pair of references which each require multiple user actions to turn on the display
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`and perform a first function would somehow be combined such that only a single
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`action is required.
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`C. A POSITA Would Not Have Been Motivated to Combine Goertz,
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`Davis, and iOS.
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`As with Ground 1, Petitioner rehashes the same arguments in Reply that it
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`made in its Petition for why a POSITA would be motivated to combine Goertz,
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`Davis, and iOS. As Patent Owner argued in its Response, a person of skill in the art
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`would not combine Davis’s method of fingerprint authentication with Goertz
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`because Goertz already implements fingerprint authentication. See POR at 39-40.
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`Petitioner argues in its Reply (as it did in its Petition) that Goertz “does not explain
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`any steps in detail, and is thus ready for improvement by known techniques.”
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`Reply at 26. Petitioner proposes to fill these purported holes with the disclosure of
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`Davis. But what Petitioner relies on Davis for is the timing of fingerprint
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`authentication in the unlocking process. See Reply at 24 (“Davis teaches that a
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`fingerprint dialog is presented on the screen and the device operates a fingerprint
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`authentication function in response to an unlock command.”). Yet as Patent
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`Owner explained in its Response, Goertz discloses a two-step process for
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`fingerprint authentication in which the device prompts the user to perform
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`authentication in response to a press of the purported activation button. Ex. 1013 at
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`[0060-61]. Patent Owner has provided a sufficient basis for its assertion that the
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`references accomplish similar functions using different means, and, thus, contrary
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`to Petitioner’s argument, Kintetic Concepts is applicable.
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` Furthermore, as explained in Patent Owner’s Response, the patchwork
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`reasoning and multiple alleged motivations to combine relied upon by Petitioner to
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`arrive at the invention demonstrates the problem with Petitioner’s obviousness
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`combination. Patent Owner explained in its Response that the Federal Circuit has
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`cautioned against permitting an obviousness argument that does not assess the
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`invention “as a whole.” This “as a whole” assessment of the invention requires a
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`showing that an artisan of ordinary skill in the art at the time of invention,
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`confronted by the same problems as the inventor and with no knowledge of the
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`claimed invention, would have selected the various elements from the prior art and
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`combined them in the claimed manner. Princeton Biochemicals, Inc. v. Coulter,
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`Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005). As it did with Ground 1, rather than
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`provide a clear explanation for why the invention as a whole would be rendered
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`obvious, Petitioner breaks the invention into component parts, finds a reference
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`that purportedly discloses each part, and explains why a POSITA would have a
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`motivation to add each component part to the mix. This improperly imports
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`hindsight bias into the invention. See POR at 39-44. The Board should therefore
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`reject Petitioner’s arguments and find all Challenged Claims patentable over the
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`cited art.
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`IV. Conclusion
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`For