Trials@uspto.gov
`571-272-7822
`
`Paper No. 26
`Entered: May 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`____________
`
`Record of Oral Hearing
`Held: May 5, 2020
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`
`
`

`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, May 5,
`
`2020, commencing at 1:00 p.m. EDT, by video/by telephone.
`
`
`
`
`
`
`
`
`
`
`
`
`
`GABRIELLE E. HIGGINS, ESQUIRE
`CHRISTOPHER M. BONNY, ESQUIRE
`Ropes & Gray LLP
`1900 University Avenue
`6th Floor East
`Palo Alto, California 94303
`
`THOMAS CECIL, ESQUIRE
`Nelson Bumgardner Albritton PC
`3131 West 7th Street
`Fort Worth, Texas 76107
`
`
`
`2
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`

`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE CASS: Good afternoon, everybody. As before, I’m Judge
`
`Cass and I have with me Judge Haapala and Judge Arbes. This is the
`consolidated oral hearing for cases IPR 2019-613 and 1011 involving Patent
`9,633,373, and also cases IPR 2019-614 and 1012 involving Patent
`9,779,419.
`
`Can counsel please state their names for the record?
`
`MS. HIGGINS: Good afternoon, Your Honors. This is Gabrielle
`Higgins and my colleague Christopher Bonny from Ropes & Gray on behalf
`of Petitioner Apple, Inc. And we have with us today by phone
`representative Benjamin Huh from Apple.
`
`JUDGE CASS: Thank you.
`
`MR. CECIL: Good afternoon, Your Honors. This is Tom Cecil from
`the law firm of Nelson Bumgardner Albritton representing the Patent Owner
`Firstface Co., Ltd. I believe on the phone today to listen in on the hearing
`are representatives from Firstface Daniel Bae and Jake Jung.
`
`JUDGE CASS: Thank you, Counsel. Per the trial hearing order, each
`party will have 60 minutes to present its arguments. As before, the order of
`presentation will be that Petitioner will go first, Patent Owner will then
`respond, Petitioner may then use any remaining time to respond to Patent
`Owner’s presentation, and then Patent Owner may use any of its remaining
`time for a brief surrebuttal responding to Petitioner’s rebuttal arguments
`only.
`The same reminders as for the previous hearing apply to this one, as
`
`well. Please do not discuss any information filed under seal. Please keep
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`your microphones muted when not speaking. I will keep time and can give
`you warning when you have gone into your rebuttal time, if you’d like. And
`please refer to your demonstratives by slide number to make it easier for the
`court reporter.
`
`Any questions from the parties?
`
`MS. HIGGINS: No, Your Honor.
`
`JUDGE CASS: Counsel for Petitioner?
`
`MR. CECIL: No, Your Honor.
`
`JUDGE CASS: Would you like to reserve any time for rebuttal?
`
`MS. HIGGINS: May it please the Board, at the outset we’d like to
`reserve 20 minutes of our time for rebuttal.
`
`JUDGE CASS: Thank you. Counsel for Petitioner, you may proceed.
`
`MS. HIGGINS: Thank you, Your Honor. May it please the Board,
`please turn to slide 4 of Petitioner’s demonstratives. That’s Exhibit 1040 in
`both of the proceedings.
`
`Petitioner has provided our petitions and our evidence in our briefing,
`but to assist the Board in considering the record we plan to address today in
`our opening discussion the six topics shown here on slide 4 along with any
`questions, of course, the Board may have. I will address for both grounds 1
`and 2, the first issue, whether the combinations disclose “turning on the
`display and performing a fingerprint authentication function in response to a
`one-time pressing of the activation button.” Then my colleague Mr. Bonny
`will address for both grounds 1 and 2 whether the combinations disclose “an
`activation button separate from a power button and configured to turn on the
`display,” as well as motivations to combine for both grounds.
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`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`Now, before we jump in, I’d like to make two brief observations about
`
`the kinds of arguments and evidence that Patent Owner has put before this
`Board. First, Patent Owner merely rehashes several arguments already
`rejected by the Board at institution; and second, Patent Owner repeatedly
`applies a claim interpretation that improperly requires a single user action
`and excludes from the claims another user input to complete the
`authentication function. And even under this incorrect interpretation, the
`claims are still met by the combination of references. We ask that the Board
`bear these issues in mind, as well as the principle that any argument not
`raised in Patent Owner’s response has been waived.
`
`Turning to slide 5, first I will address the claim limitations shown here
`in view of this dispute over whether the combination of references in
`grounds 1 and 2 disclose that “in response to the one-time pressing of the
`activation button, the first function is performed.”
`
`Turning to slide 6, independent claim 1 of the 373 patent recites that
`“in response to the one-time pressing of the activation button, the first
`function is performed.” The 373 claim 11 and 419 claims 1 and 10, the
`other independent claims at issue in these proceedings, include similar
`limitations. Petitioner --
`
`JUDGE HAAPALA: Let me stop you right there because I think
`there is a limitation in claim 11 of the 373 patent that’s not in claim 1. And
`in particular, I’m referring to the limitation, “in addition to changing to the
`active state, further performing at least one of the first and second functions
`without additional user input other than the one-time pressing.”
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`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`So, if at some point, either now or later, if you could address that
`
`particular limitation in claim 11 that I think differs from claim 1, that would
`be helpful.
`
`MS. HIGGINS: Judge Haapala, I most certainly will. And for the
`Board’s convenience I will point out that in our slides we have the full
`claims. So, 373 claim 11 that Judge Haapala was just referring to is on slide
`40. And, Judge Haapala, I believe the limitation that you were just referring
`to is 11e, which has that language about “without additional user input other
`than the one-time pressing.” Is that correct?
`
`JUDGE HAAPALA: Yes, that’s right.
`
`MS. HIGGINS: Thank you, Your Honor. Let’s start, though, with
`independent claim 1 and then I will move to claim 11.
`
`Independent claim 1 of the 373 patent recites that “in response to the
`one-time pressing of the activation button, the first function is performed.”
`Petitioner’s position here across all claims is that no construction is
`necessary as the references disclose this limitation under the plain language
`of the claims.
`
`Patent Owner, on the other hand, purports that it seeks no construction
`of any term. That’s at Patent Owner response 6. But it refuses to apply the
`plain and ordinary meaning of the claims.
`
`Focusing on the language in red, Patent Owner argues that the cited
`references do not meet this limitation because they require another user input
`or action to complete the fingerprint authentication function, but the claims
`necessarily require two inputs. A one-time press of the activation button,
`this is the first input, and when the first function is the fingerprint
`authentication function, the fingerprint sensor scans the fingerprint. This is
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`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`the second input. Patent Owner’s attempt to exclude another user input or
`action from completing the fingerprint authentication function should be
`rejected because it improperly narrows the claims and contradicts the
`Specification.
`
`Now, turning to 373 claim 1 and using it as a representative, the plain
`language of the claim recites, and this language is in all of those, the
`independent claims, similar language, while the activation button is
`configured for pressing “to initiate one or more additional functions of the
`terminal.” It goes on to say that the terminal is configured to perform at
`least one of the first and second functions such that in response to the one-
`time pressing of the activation button, the first function is performed.
`
`Now, Patent Owner put at issue here claim element 1j. And Patent
`Owner would improperly narrow claim element 1j to further require without
`another user input to complete the fingerprint authentication function. And
`Patent Owner also fails to read the claim as a whole. We have the word
`“initiate” and the word “performs” in the claims.
`
`The plain language of the claim requires that the function is initiated
`by pressing of the activation button, which configures the terminal to
`perform the function. Once the function is initiated, the one-time pressing
`language does not limit in any way how the function is performed and
`certainly doesn’t exclude that the fingerprint would be presented for
`scanning in connection with performing the function.
`
`Now, looking to the Specification, the Specification confirms that
`performing a function in response to the press of the activation button does
`not preclude any input or user action necessary to complete the
`authentication function. The Specification states, as I’ve shown here at
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`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`column 8, lines 2 to 20, that other authentication methods, for example, a
`password-matching method, a face-recognition method, a fingerprint-
`recognition method, and the like, can be used. And importantly, each of
`these authentication methods requires an additional input besides the
`pressing of the activation button, i.e., a password input, a face input, or a
`fingerprint input.
`
`Moreover, password-matching indisputably requires an additional
`user action. Yet all of these other authentication methods, including
`password-matching, can be performed by pressing the activation button as it
`expressly says in column 8 of the Specification. Thus, performing a
`function by pressing the activation button does not preclude the function
`itself from having a user input or action. The second input, such as the
`password, the face, or the fingerprint or the retina, and even in claims we
`have hands-free function, we have a voice input, as well, all of these things
`are part of the performance -- these are inputs that are part of the
`performance of the function. And that performance happens in response to
`the pressing of the activation button.
`
`Now, Patent Owner argued in its surreply 7, footnote 2, that this
`Specification cite here on slide 7 is not applicable to the claims. But this is
`the only disclosure in the fingerprint authentication -- of fingerprint
`authentication in the Specification and it supports a plain reading of the
`claims. There is no support for single user action or single input to both
`press the activation button and scan a fingerprint. And thus, Patent Owner’s
`construction should be rejected.
`
`If we turn to slide 8 --
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`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`JUDGE HAAPALA: I’m sorry, let me interrupt you for one minute,
`
`please. Your contention that there’s no support for a single press, if we were
`to decide that either the claims 1 or 11 required just the one press, your
`argument is that there’s no written support seems to be more of a written
`description issue under 35 USC 112 and not an issue that we can address.
`Do you agree or could you explain to me, if you disagree, why it’s not?
`
`MS. HIGGINS: Okay. So, Your Honor, let’s turn to independent
`claim 12. And in response to your question about a written description issue
`it’s our position that under the plain reading of the claims, the claims should
`be read consistent with the Specification. And so if Your Honors read the
`claims consistent with the Specification, then there is no 112 written
`description issue.
`
`However, if I understand your question, if Your Honor was to read the
`claims as Patent Owner purports to do here, to say that we can only have a
`button press and we can never have another input, including -- and the thing
`that I want to emphasize here is the inputs that are part of the function itself
`and I want to explain that. And you need to read the claims consistent with
`the Specification, which every one of these authentication functions has
`inputs that are part of the function itself.
`
`However, what Patent Owner is trying to do here is limit the claim to
`a single button press that would include both a press of a button and a
`fingerprint scan; in other words, an integrated fingerprint scan in a sensor.
`And that narrow reading of the claim isn’t supported by the Specification
`and we don’t think that would be a proper reading of the claim if that is what
`Patent Owner is trying to do here.
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`

`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`The words of the claim that Patent Owner is challenging is that I have
`
`-- I perform a function in response to the button press. And the button press
`includes the fingerprint scan.
`
`Should I go on? I would like to address claim 11 for you.
`
`JUDGE HAAPALA: Yes, thank you.
`
`MS. HIGGINS: Okay. So, turning to independent claim 11e
`specifically, “in addition to changing to active state, further performing at
`least one of the first and second functions without additional user input other
`than the one-time pressing.” First and foremost, that claim element, Your
`Honor, needs to be read in the context of the entire claim. And Dr. Bederson
`explained this in his rebuttal declaration.
`
`Specifically, I have to read that in connection with the language in 11f
`and g that states that the terminal operates such that in response to the one-
`time pressing of the activation button, the first function is performed. And it
`goes on to say that at least one of the first functions is initiated in response to
`the one-time pressing of the activation button.
`
`So you have the press of the button and that does two things: it turns
`on the display and it initiates the first function, which here is fingerprint
`authentication. And then in response to that button press, the first function is
`performed.
`
`Now, the challenged claims do not preclude a user input as a part of
`the performance of the function.
`
`JUDGE HAAPALA: Counsel, let me just read to you again that
`limitation, specifically in claim 11. I understand that the claim later uses
`initiation, but the specific limitation I’m looking at is that the function is
`performed, paraphrasing, performing at least the function without additional
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`user input. So, I understand your contention that that may not be supported
`in the Specification. I do think that is possibly going more towards a 112
`argument. But the plain language of the claim here says, “without additional
`user input” performing the function. And --
`
`MS. HIGGINS: And so --
`
`JUDGE HAAPALA: And I guess I would like some further
`explanation as to why we shouldn’t read it exactly as it says, that the
`function’s performed without additional input, which is distinguished, by the
`way, from claim 1, which does not have this limitation.
`
`MS. HIGGINS: Because -- let me start by saying that that limitation
`has to be read in the context of the whole claim. It also has to be read in the
`context of the Specification itself. And there is a way to look to the
`Specification at column 8 that I -- at column 8, lines 2 to 20, that I pointed
`where it is talking there at column 8 about these functions that are performed
`by pressing the activation button. And so, every one of the functions set
`forth in the Specification is performed by pressing the activation button.
`
`And so, to make a reading of this claim element that would contradict
`the only disclosure in the Specification with respect to fingerprint
`authentication would not be correct. And therefore, this limitation, “without
`additional input,” requires that no further input other than the one-time
`pressing is provided to initiate the performance of that function. In other
`words, pressing the activation button once without any other inputs initiates
`the function, which is performed.
`
`And I think it’s also important, Your Honor, to also look at the
`Specification about what it says this activation button is that is pressed.
`Specifically, if you go to slide 8. So, on slide 8 the claims require only that
`11
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`the function is performed in response to the one-time pressing of the
`activation button. And the function that’s performed in response, it doesn’t
`say there, the claims don’t require that the function is performed in response
`to a press and a scan. The activation button in the claims is just a button for
`activating functions. And this is consistent with the disclosures, both are
`consistent.
`
`That reading is also consistent with the disclosure of separate units for
`detecting the button press and performing the identification function. The
`Specification discloses, as I have here on slide 8, that the activation button
`senses that the activation button has been pressed and there’s no disclosure
`that the activation sensing unit 410 also detects a fingerprint. Rather control
`passes from the user identification unit to perform a user identification
`function in various methods, for example, fingerprint authentication. And as
`disclosed in the Specification, that fingerprint authentication includes an
`additional user input for fingerprint scanning.
`
`And I’d like, Your Honor, it would be helpful if I addressed your
`question regarding claim 11e in the context of Davis itself because I think
`that could help. So, I’m going to skip ahead to address Your Honor’s
`question here. If I can direct the Board to slide 18, please. Or actually, let’s
`go to 13 first.
`
`Okay. So, slide 13 is in the context of the combination of Griffin and
`Davis. And as explained by Petitioner, the combination of Griffin and Davis
`teaches performing a function in response to the one-time pressing of the
`activation button. We first have Griffin. And on slide 12, Griffin first
`discloses a single, continuous unlock action with two input mechanisms.
`And in Griffin on slide 12, by pressing the activation button, that turns on
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`the touch screen display from sleep mode. And then pressing that activation
`button is the first input mechanism for step 1100 in Figure 11. And then
`Griffin’s activation button then initiates an unlock procedure that detects a
`second input, which is step 1120 in Figure 11.
`
`Now, turning to Davis then, Davis teaches performing a function in
`response to the unlock command. And so, the unlock command is the -- is,
`for example, Griffin’s pressing of the home/convenience button. In Davis’s
`Figure 4, which has been modified to use a subset of authentication factors,
`i.e., just fingerprint authentication, Davis receives that unlock command,
`step 402, and then fingerprint authentication is then performed, Your Honor.
`And in Davis, I think it’s important to note that in Davis we go directly from
`receipt of that unlock command, that is box 402, which, for example, is
`Griffin pressing of the home button or convenience key. We go directly to
`the single authentication factor in Davis modified Figure 4. And that single
`authentication factor, the fingerprint authentication is steps 416 to 422.
`
`And that’s important, Your Honor, because as Dr. Bederson opines, as
`it states on this page, it’s Dr. Bederson declaration exhibit 1003 at paragraph
`60, a person of ordinary skill “would have implemented an unlock procedure
`that included an unlock command followed by a fingerprint dialogue and a
`fingerprint unlock function,” and that fingerprint unlock function is step 416
`to 422, “but without any intervening input mechanisms.”
`
`JUDGE HAAPALA: Counsel, let me ask a question about that. I
`think that specific paragraph goes on to say, which is also in your petition on
`page 18, that the combination -- Griffin has the, let’s see, step 1, user presses
`the home/convenience button, the first input mechanism, which is the
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`initiation of an unlock command of Griffin, which wakes the screen. And
`then step 2, the second input mechanism is activated.
`
`So, I understand your argument is that the claims are -- do not
`preclude that second input mechanism from being activated and the
`fingerprint scan from being performed, though as I understand it in both
`Davis -- in Davis, the fingerprint authentication module is a different device.
`So, basically, if we were to read claim 11 as only requiring the one-time
`pressing, how would this mapping work on that claim?
`
`MS. HIGGINS: Okay. So, first of all, we have to read the references
`in combination, so I also want to point the Board to slide -- to the fact that if
`we go back to slide 12, we have the fact that “Griffin discloses a single,
`continuous unlock action with two input mechanisms.” And there are
`specific cites to this single, continuous unlock action on slide 14. For
`example, that’s Griffin Exhibit 1027 at paragraph 30, there are multiple
`references to this single gesture or continuous action input. And so --
`
`JUDGE HAAPALA: Counsel, Griffin does disclose that it’s two
`different input mechanisms, correct? So there’s a button and then there’s an
`activation on the display. So, it’s not one pressing. It’s a pressing and then
`a sliding on the display, which is a different input mechanism.
`
`MS. HIGGINS: So, you are correct, Your Honor, that Griffin does
`disclose that there are two input mechanisms, but, as Dr. Bederson explained
`in his declaration, Griffin is open-ended and -- as to what that second input
`mechanism can be and Griffin provides examples and as explained. So,
`Griffin’s disclosure of a single, continuous unlock action is not limited to
`what you just said, I believe a press and a slide, if you will.
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`In the combination of Griffin and Davis, we have -- if we look back to
`
`slide 13, we have 402, which is Receive Unlock Command, and so, you can
`think of that, Your Honor, as your first input mechanism of Griffin 1100.
`That (inaudible) detecting actuation of the first input mechanism. And, Your
`Honor, this one-time button press, the press of the button, that’s simply --
`you’re simply detecting that actuation of the button press. You cannot limit
`the claim to require that the button press includes the fingerprint scan
`because there’s no disclosure of that anywhere in the Specification. I
`pointed you to the one place in the Specification that points to fingerprint
`authentication.
`
`And so, if you’re going to read the claims consistent with the
`Specification and not run afoul of 112’s written description, then the claim
`should be read to account for this “initiate the function” language and
`“performing the function in response to” the one-time press of the activation
`button, which is just that actuation. And it’s entirely consistent then that
`performing the function includes the fingerprint scan and so that the
`scanning is not an intermediate input, but rather it is part of the performance
`of the function.
`
`So if we return to slide 13, just to go through it again, and this applies
`whether we’re talking about Griffin and Davis or Goertz and Davis. In both
`cases, the unlock action is simply the press of a button in Griffin or Davis.
`And then that then initiates the function. And Davis has nothing intervening
`between the Receive Unlock Command and the fingerprint authentication
`function, which includes the fingerprint scanning step 418.
`
`And so, to read the claim -- to give the claim meaning consistent with
`the Specification in a way that does not contradict the Specification, that
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`user input that you’re talking about, the additional user input that you’re
`talking about in 11e would be something other than the one-time button
`press that’s happening between pressing the button and performing the
`function. And I submit to you that in the Griffin-Davis combination and the
`Goertz-Davis combination there is no additional user input that is
`intervening.
`
`And so, you are performing that function without additional input
`other than the one-time pressing because there is no additional input between
`the press and performing the function. And you can’t read the function --
`the input of the function itself to be that additional input. That would be
`going back to the disclosure (inaudible), and I’m going back to slide 7. That
`would be inconsistent -- the disclosure at column 8, lines 2 to 20, on slide 7
`is using those words of the claim, “can be performed by pressing the
`activation button.”
`
`And as I already explained, each of these authentication methods has
`an input. We have a password input and that password input is an additional
`user action; a fingerprint input; a face input. And so the claims are talking
`about another input that would be between the press of the button and the
`performance of the function itself.
`
`JUDGE HAAPALA: No, I do see a difference between the cited
`portion of the Specification and the claim in that the Specification here
`doesn’t say the function’s performed without additional user input. And I
`think what you’re asking us to do is read claim 11 “perform without
`additional user input” to be the function’s initiated without additional user
`input. Do you think there’s a difference between the words “perform a
`function” and “initiate a function?”
`
`
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`MS. HIGGINS: Those words are both in the claim and both words in
`
`the claim have to have meaning, but I -- the claim needs to be read as a
`whole. And it talks about performing the function without additional user
`input other than the one-time pressing, but then the rest of the claim goes on
`to explain how it does that. And the how that it does that is the terminal
`operates such that.
`
`So, we have the one-time button, that’s the button configured for
`pressing, and then everything else here is what the terminal is doing. And
`the terminal says that the functions are initiated, right? You perform the
`function and that function is initiated in response to the one-time pressing of
`the activation button.
`
`And in order to give meaning to every word in the claim here and
`what’s happening, the claim is telling you that I press the button, that
`initiates the function, and then the terminal is configured to perform that
`function. And the language there, “without additional user input,” cannot be
`talking about the inputs themselves because that would be completely
`contrary to the entire disclosure of the specification.
`
`JUDGE CASS: Counsel, suppose, and I’m not sure if I’m
`understanding your arguments, but suppose we were to determine that claim
`11 of the 373 patent and claim 10 of the other patent do, in fact, require that
`the single press of the activation button changes the terminal from the
`inactive state to an active state and turns the display on and also performs
`the fingerprint function without any additional user input. In other words,
`without the user presenting their fingerprint for scan or doing something like
`that. Suppose we were to read the claims in that way. Do you still have an
`argument that the claims are met by the references here?
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`Case IPR2019-00613 (Patent 9,633,373 B2)
`Case IPR2019-00614 (Patent 9,779,419 B2)
`2019-01011 and 2019-01012
`
`MS. HIGGINS: Yes, Your Honor. And I would say once again that
`
`the claims are referring to the one-time press of the button and then
`performing the function in response to that one-time press of the button. So,
`the intervening -- there’s an input --
`
`JUDGE CASS: Yeah, I understand you disagree with the
`interpretation I (inaudible), but if that is adopted.
`
`MS. HIGGINS: If that is adopted and it would be incorrect, Your
`Honor, because there’s no support in the claims, the Specification, or the file
`history of that reading. And it would be impermissibly narrowing the claim
`in a way that the Spec doesn’t support. The Spec, as I explained, supports a
`broader reading, which would allow you still to read that plain language of
`the claim to be that I press the button and I perform the function and there
`are no intervening inputs. And part of the performance of the function is the
`fingerprint scan. You can’t go away from the fact that every one of these
`functions has an input, including the fingerprint scan, including the voice
`input of the functions that are set forth in the claims.
`
`But be that as it may, I would point to Griffin’s disclosure that even if
`the claims did require a single user action to both press the activation button
`and scan the fingerprint, Griffin discloses, in combination with Davis,
`discloses that limitation because there is no intervening input there. For
`example, Griffin discloses, “detecting a single, continuous unlock action
`applied to at least two input mechanisms on the locked electronic device;
`and unlocking the electronic device in response to said detecting.” So
`there’s no intervening input there. You go straight from the button press to
`the fingerprint scan, which is part of the (inaudible) no intervening input.
`
`JUDGE ARBES: But in different areas, as I understand it, right?
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