Trials@uspto.gov
`571-272-7822
`
` Paper 10
` Entered: August 19, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00614
`Patent 9,779,419 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
` Paper 10
` Entered: August 19, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00614
`Patent 9,779,419 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2019-00614
`Patent 9,779,419 B2
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`Apple Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–4, 6, 7, 10–13,
`and 15–17 of U.S. Patent No. 9,779,419 B2 (“the ’419 patent”). Paper 2
`(“Pet.”). Firstface Co., Ltd. (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C.
`§ 314(a), which requires demonstration of a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`grant Petitioner’s request to institute an inter partes review of claims 1–4, 6,
`7, 10–13, and 15–17.1
`
`
`
`
`I. BACKGROUND
`A. The ’419 Patent (Ex. 1001)
`The ’419 patent describes a method and mobile communication
`terminal for performing a specific function when a mobile communication
`terminal is activated. Ex. 1001, 1:16–18. Figure 1 of the ’419 patent is
`reproduced below.
`
`
`1 Although we granted Petitioner’s motion to seal certain exhibits filed with
`the Petition (Paper 9), we do not refer to any sealed material in this
`Decision.
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`Figure 1 illustrates the external appearance of mobile communication
`terminal 100. Id. at 3:42–44. Mobile communication terminal 100 includes
`display unit 110 and activation button 120. Id. at 3:45–47. Display unit 110
`displays various information regarding operation states of mobile
`communication terminal 100. Id. at 3:64–66. When the user presses the
`activation button, the terminal switches from the inactive state (in which the
`terminal is communicable but the display screen is turned off) to the active
`state (in which the display screen is turned on). Id. at 3:21–34; 4:22–27.
`If the user presses activation button 120 when mobile communication
`terminal 100 is in the inactive state, mobile communication terminal 100
`may perform a predetermined operation in addition to switching to the active
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`state. Id. at 4:36–40. The terminal may also perform different operations
`according to the number of presses or the press time of the activation button.
`Id. at 4:58–61. For example, the terminal may perform a first operation if
`activation button 120 is pressed once for a short time, and a second
`operation if activation button 120 is pressed once for a longer time. Id. at
`4:65–5:2.
`The ’419 patent describes a number of operations that can be
`performed when the activation button is pressed. Id. at 5:51–57. One of
`those functions is a user identification function, which performs a security
`authentication process. Id. at 7:14–17. According to this process, when
`mobile communication terminal 100 is in the inactive state, it senses that the
`user has pressed the activation button, and then operates the user
`identification function. Id. at 7:22–28. The ’419 patent describes an
`example user identification unit 420 that uses camera activation element
`421, iris detection element 422, and user identification element 423 for
`sensing and recognizing the iris of a user’s eye. Id. at 7:28–8:6. The patent
`explains that “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” instead
`of the iris recognition method. Id. at 8:13–20. Mobile communication
`terminal 100 may also be switched to a hands-free function by pressing
`activation button 120. Id. at 9:22–24.
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`B. Illustrative Claim
`Claims 1 and 10 are independent claims. Claim 1 is illustrative of the
`subject matter at issue:2
`1. A mobile communication terminal comprising:
`a touch screen display;
`a power button configured to turn on and off the
`terminal by pressing; and
`an activation button separate from the power button
`and located outside the touch screen display, the activation
`button configured for pressing to turn on the touch screen
`display,
`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:
`a lock screen is displayed on the touch screen
`display upon turning on the touch screen display in
`response to the one-time pressing of the activation
`button while the touch screen display being turned
`off,
`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,
`
`
`2 Claims 1, 3, 4, 7, 10, 12, 13, and 17 were corrected in a certificate of
`correction dated March 20, 2018. Ex. 1001.
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`a lock state of the terminal continues when the
`fingerprint authentication function fails to authenticate a
`user, and
`the lock state is released for enabling other
`functions of
`the
`terminal when
`the
`fingerprint
`authentication function authenticates a user in response to
`the one-time pressing of the activation button while the
`touch screen display being turned off, wherein the terminal
`is further configured to perform at least one function other
`than the fingerprint authentication function in addition to
`turning on the touch screen display for displaying the lock
`screen in response to the one-time pressing of the
`activation button when the one-time pressing is for a long
`time, longer than a reference time period, wherein the at
`least one function to perform in addition to turning on the
`touch screen display for displaying the lock screen in
`response to the one-time pressing for the long time is
`associated with initiating a hands-free operation of the
`terminal.
`C. The Prior Art
`Petitioner relies on the following prior art:
`1. Apple iPhone OS 3.1 User Guide (Sept. 2009) (“iOS”) (Ex. 1007).
`2. U.S. Patent Application Pub. No. 2010/0017872, published Jan. 21,
`2010 (“Goertz”) (Ex. 1013).
`3. U.S. Patent Application Pub. No. 2010/0138914, published June 3,
`2010 (“Davis”) (Ex. 1015).
`4. U.S. Patent Application Pub. No. 2012/0133484, published May
`31, 2012 (“Griffin”) (Ex. 1027).
`Petitioner further relies on testimony of its declarant, Benjamin B.
`Bederson, Ph.D. (Ex. 1003).
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`D. The Asserted Grounds
`Petitioner challenges the patentability of claims 1–4, 6, 7, 10–13, and
`15–17 of the ’419 patent on the following grounds:
`References
`Basis
`Griffin, Davis, and iOS
`35 U.S.C. § 103(a)3
`
`Claims
`1–4, 6, 7, 10–13,
`15–17
`1–4, 6, 7, 10–13,
`15–17
`
`Goertz, Davis, and iOS
`
`35 U.S.C. § 103(a)
`
`
`
`
`E. Related Proceeding
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’419 patent: Firstface Co. v. Apple Inc., Case No. 3-
`18-cv-02245 (N.D. Cal.). Pet. 2; Paper 3, 2.
`
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, “[claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. § 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b); see Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’419 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of
`35 U.S.C. § 103.
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`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(codified at 37 C.F.R. § 42.100(b) (2019)) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018); see also Phillips v. AWH Corp., 415 F.3d
`1303, 1312–14 (Fed. Cir. 2005).
`Neither Petitioner nor Patent Owner proposes constructions for any of
`the claim terms. Pet. 11; Prelim. Resp. 6. We do not find it necessary to
`construe any terms for purposes of this Decision. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“Because we need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy,’ we need not construe [a
`particular claim limitation] where the construction is not ‘material to the . . .
`dispute.’” (citations omitted)).
`
`B. Principles of Law
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”4 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`
`4 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
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`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”). Further,
`an assertion of obviousness “cannot be sustained by mere conclusory
`statements; instead, there must be some articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness.” KSR,
`550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In
`re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a
`motivation to combine “must be supported by a ‘reasoned explanation’”
`(citation omitted)).
`C. Level of Ordinary Skill in the Art
`
`Section 103(a) forbids issuance of a patent when
`“the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter
`pertains.”
`KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)).
`
`
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence at this stage of the proceeding.
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`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’419 patent “would have been a person with [a] bachelor’s degree in
`Computer Science, Computer Engineering, or equivalent and have at least
`two years of relevant experience in the fields of user interface design and
`mobile devices, or otherwise equivalent industry experience in the relevant
`field.” Pet. 11 (citing Ex. 1003 ¶¶ 29–30). Patent Owner does not set forth a
`proposed definition of the person of ordinary skill. Based on the current
`record, including our review of the ’419 patent and the types of problems
`and solutions described in the ’419 patent and cited prior art, we agree with
`Petitioner’s assessment of the level of ordinary skill in the art and apply it
`for purposes of this Decision.
`
`D. Obviousness over Griffin, Davis, and iOS
`Petitioner contends that claims 1–4, 6, 7, 10–13, and 15–17 are
`unpatentable as obvious under 35 U.S.C. § 103(a) over Griffin, Davis, and
`iOS. Pet. 12–54. For the reasons that follow, Petitioner demonstrates a
`reasonable likelihood of prevailing on this ground.
`1. Overview of Griffin
`Griffin describes an electronic device configured to transition between
`a locked and unlocked state in response to a detected action that is
`interpreted as a continuous or single action. Ex. 1027, Abstract. This
`continuous action can consist of two inputs, “a first input [that] is detected at
`a first input mechanism of the device when the device is locked,” and a
`“second input [that] is detected at the second input.” Id. If “the inputs are
`determined to be continuous, for example if the second input is detected
`within a predetermined period after the completion of the first input, the
`device is unlocked.” Id. As to the second input, Griffin states that the
`device may include an “auxiliary input/output (I/O) subsystem” which “can
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`include devices such as: a touchscreen, mouse, track ball, infrared
`fingerprint detector, or a roller wheel with dynamic button pressing
`capability.” Id. ¶¶ 62, 77.
`A locked state in Griffin includes a “sleep” mode in which certain
`functions of the device (such as a display) are halted, and a secure or “screen
`lock” mode where a user interface for a user to enter credentials is displayed
`to allow the user to transition to an unlocked state. Id. ¶¶ 25–27. After the
`device is unlocked, it enters an awake mode in which the user interfaces, as
`well as the stored data and other functionality of the device, are generally all
`available. Id. ¶ 27.
`Griffin discloses one embodiment of an unlock procedure in Figures
`5A, 5B, and 5C, which are depicted below.
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`Figures 5A, 5B, and 5C of Griffin illustrate a single-gesture or
`
`continuous-action input as it is implemented on a handheld mobile device,
`such as a smartphone equipped with touchscreen display 510. Id. ¶ 86.
`Device 100 has a single “home” button or convenience button 520,
`positioned at the center along an edge of display 510. Id. As illustrated in
`Figure 5A, user’s thumb 500 depresses convenience button 520, which
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`initiates an unlock action. Id. After detecting the press of the convenience
`button, the device then activates the second input mechanism, in this case
`touchscreen display 100, so that the display is capable of detecting further
`input from the user. Id. ¶ 87. Figures 5B and 5C illustrate this second input
`by showing user’s thumb 500 travelling in upward and rightward arcuate
`path 550 along touchscreen display 510 towards right edge of the display
`510. Id. Arc 550 traced along touchscreen display 510 completes the
`unlock action, after which device 100 enters the unlocked state. Id.
`2. Overview of Davis
`Davis describes a system and method of launching applications on a
`mobile device using biometric authentication. Ex. 1015 ¶ 1. Davis explains
`that a mobile device may automatically enter into a user-inactive mode after
`a period of inactivity or after the user selects a menu item to lock the device.
`Id. ¶ 45. Davis describes various security measures that can be used to
`unlock the mobile device, such as passwords, a smart card, or biometric
`authentication, which may be required to gain access to the mobile device.
`Id. ¶¶ 46–47.
`One of the security measures disclosed by Davis is authentication
`using biometric information, such as a fingerprint. Id., Abstract, ¶¶ 13–14.
`Davis explains that “[b]y providing a biometric candidate to a biometric
`input device, a user may cause a computing device to be unlocked and cause
`a specific application to be launched on the computing device.” Id. ¶ 13.
`The biometric input device may be located on the device itself. Id. Davis
`teaches that the use of biometric information for authentication provides
`advantages over passwords and smart cards because it relies on “something
`that is unique to the user,” so that “even if the smart card falls into the hands
`of a nefarious person who also gains knowledge of the device password and
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`the smart card password, the lack of the correct biometric data should keep
`the nefarious person from gaining access to the computer of interest.” Id.
`¶ 4.
`
`In Figure 4, Davis discloses an example method of securely unlocking
`a device and launching an application. Id. ¶ 9. Figure 4 is depicted below.
`
`
`Figure 4 illustrates steps in a method of maintaining secure access to
`
`Davis’ mobile communication device. The mobile device first receives an
`“unlock” command (step 402). Id. ¶ 48. The mobile device then presents an
`unlock dialog on a display to prompt the user to enter authentication factors,
`such as a device password and/or smart card password, after which the
`device receives and verifies the password(s) (steps 404–412). Id. ¶¶ 48–50.
`The mobile device then presents a dialog on the display to prompt the user to
`provide a fingerprint candidate or other type of biometric data (step 416).
`Id. ¶ 52. The mobile device then receives and verifies the fingerprint
`candidate or other biometric data (steps 418–420). Id. ¶ 53. If the
`fingerprint candidate matches a stored fingerprint template, the mobile
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`device unlocks itself; if the fingerprint candidate does not match, the mobile
`device presents a fingerprint verification failure device dialog and returns to
`step 416 to present the prompt to the user to provide a fingerprint (steps
`422–424). Id.
`Davis explains that “there may be security configurations for which
`
`smart card-based authentication is unnecessary and wherein a fingerprint
`sensor . . . is integral to the mobile device.” Id. ¶ 52. Davis further teaches
`that “the order in which various authentication factors are provided by the
`user” are not limited to the order in the example embodiments, and that
`“many embodiments will only require a subset of the authentication factors
`discussed in [Davis].” Id. ¶ 71.
`3. Overview of iOS
`iOS is a user guide for iPhone OS 3.1 software. Ex. 1007, 1. iOS
`includes a diagram of an iPhone on page 20, which is reproduced below.
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`The iOS diagram reproduced above depicts an iPhone. Id. at 20. The
`iPhone includes a home button that, when pressed, causes the device to
`display a home screen that includes applications that can be launched. Id. at
`23. The iPhone also includes a sleep/wake button that allows the user to
`lock the device or turn it off. Id. at 26–27. When the iPhone is locked,
`nothing happens if the user touches the screen. Id. at 26.
`A user may activate the iPhone’s voice control feature by pressing the
`home button and holding it for a period of time until a screen for voice
`control appears and the device beeps. Id. at 38, 48, 77. The user can then
`use voice control to make calls. Id. at 48. A user also can configure the
`iPhone to prevent voice dialing when the iPhone is locked by changing the
`settings. Id. at 39, 48.
`
`
`4. Analysis
`Petitioner asserts the combination of Griffin, Davis, and iOS teaches
`the limitations recited in claim 1. Pet. 12–54. In particular, Petitioner relies
`on Griffin to disclose most of the limitations of claim 1. See generally id.
`Petitioner relies on the combination of Griffin and Davis to disclose the
`display and timing requirements and on the combination of Griffin, Davis
`and iOS to teach the mobile device functions. See id. at 12–26. A more
`detailed analysis of Petitioner’s assertions for specific limitations, and Patent
`Owner’s response, is set forth below.
`a. “A mobile communication terminal comprising:”
`
`“an activation button … located outside the touch
`screen display . . .”
`
`“the activation button configured for pressing to turn
`on the touch screen display,”
`“wherein upon one-time pressing of the activation
`button while the touch screen display is turned off,
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`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:”
`“a lock screen is displayed on the touch screen
`display upon turning on the touch screen display in
`response to the one-time pressing of the activation
`button while the touch screen display being turned
`off,”
`“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,”
`“a lock state of the terminal continues when the
`fingerprint authentication function fails to
`authenticate a user, and the lock state is released for
`enabling other functions of the terminal when the
`fingerprint authentication function authenticates a
`user in response to the one-time pressing of the
`activation button while the touch screen display
`being turned off”
`Petitioner argues that Griffin discloses a “mobile communication
`terminal” including a “touch screen display” and an “activation button”
`(home or convenience button 20) “located outside the touch screen display”
`that is “configured for pressing to turn on the touch screen display,” as
`recited in claim 1. Pet. 13, 26–30. Petitioner relies on a combination of
`Griffin and Davis to disclose that “upon one-time pressing of the activation
`button while the touch screen display is turned off, the terminal is configured
`to turn on the touch screen display and further perform a fingerprint
`authentication function in addition to turning on the touch screen display,”
`
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`as recited in claim 1. Id. at 30–35. Petitioner argues that Griffin discloses
`configuring unlock procedures to use two or more input mechanisms. Id. at
`13. More specifically, according to Petitioner, the system can detect
`actuation of a first input mechanism, and then activate a second input
`mechanism to detect a second input, and then unlock the device after the
`proper inputs are received. Id. at 14. Petitioner argues that the first input
`mechanism can be an unlock action initiated by pressing the activation
`button, which turns on the touch screen display. Id. at 30–31 (citing
`Ex. 1027 ¶¶ 25, 86). Petitioner further contends that after pressing the
`activation button to initiate the unlock action, the second user input interface
`(the touchscreen) is activated to receive a second input (a swiping motion).
`Id. at 31–32 (citing Ex. 1027 ¶¶ 121–22).
`Petitioner argues that Griffin provides an open-ended system for
`choosing the “first” and “second” input mechanisms, and that the use of the
`home button and the touchscreen are only examples. Id. at 15 (citing
`Ex. 1027 ¶¶ 85–88, 103). Petitioner asserts that Griffin discloses that the
`mobile communication terminal includes a fingerprint detector, but does not
`explicitly disclose using the fingerprint detector as the second input
`mechanism for unlocking the device. Id. (citing Ex. 1027 ¶ 77).
`Petitioner relies on Davis to teach using biometric inputs to unlock a
`device and launch applications. Id. Petitioner argues that Davis teaches
`performing a “fingerprint authentication” function in response to an unlock
`command, such as Griffin’s unlock action which turns on the touch screen
`display. Id. at 33–34 (citing Ex. 1015 ¶¶ 46–47). Petitioner asserts Davis
`explains using biometric authentication, such as fingerprint activation, to
`unlock a device provides higher security. Id. Petitioner argues that the
`fingerprint authentication function may be presented to the user as a
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`fingerprint dialog screen, and that this dialog screen is a “lock screen” as
`required by the claims. Id. at 34–36 (citing Ex. 1015, Fig. 4, ¶¶ 52–53).
`Petitioner also relies on Davis’s disclosure that the device may receive “the
`fingerprint candidate from a fingerprint sensor . . . on the mobile device.”
`Id. at 34 (quoting Ex. 1015 ¶¶ 52–53). Petitioner further contends that Davis
`teaches that the “lock state of the terminal continues when the fingerprint
`unlock fails,” and that other functions are available (such as the launching of
`an application) “when the fingerprint authentication function authenticates a
`user.” Id. at 37 (citing Ex. 1015 ¶¶ 13, 53).
`Petitioner further argues that Davis teaches customizing
`authentication factors by changing their order or using only a subset of
`factors. Id. at 35. Petitioner points to Davis’s teaching that “the order in
`which various authentication factors are provided by the users should not be
`considered to be limited to the order” in the embodiments described, and that
`“many embodiments will only require a subset of the authentication factors
`discussed in [Davis].” Id. (citing Ex. 1015 ¶ 71) (emphases omitted). Thus,
`Petitioner argues, the combination of Davis and Griffin teaches
`implementing an unlocking procedure that includes an unlock command
`followed by a fingerprint dialog and a fingerprint unlock function, without
`intervening input mechanisms. Id. at 16–17.
`Specifically, Petitioner argues that Griffin as modified by the teaching
`of Davis would have been implemented by a person of ordinary skill as
`follows:
`(1) User presses the home/convenience button, a first input
`mechanism (Griffin, Fig. 11 step 1100),
`(1a) which is the initiation of an unlock command (Griffin
`¶ 86), and
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`(1b) which wakes the screen (Griffin ¶¶ 24–25, 29) to
`display a fingerprint dialog (i.e., a lock screen) (as taught
`by Davis, modified Fig. 4 steps 402 and 416);
`(2) the second input mechanism is activated (Griffin Fig. 11 step
`1105);
`(2a) Davis teaches that the second input is a fingerprint
`unlock function, including scanning a fingerprint and
`unlocking the device if the fingerprint is valid (Davis,
`modified Fig. 4 steps 418-422), wherein
`(2b) the fingerprint dialog (lock screen) is displayed while
`the fingerprint function is performed, such that, for
`example, a message is displayed if the fingerprint is not
`valid (Davis, modified Fig. 4 step 424).
`Id. at 17–18 (emphases omitted).
`As to motivation to combine, Petitioner argues that a person of
`ordinary skill would have been motivated to use a fingerprint detector, as
`taught by Davis, for the second unlock input mechanism of Griffin because
`biometric inputs provided higher levels of security and user convenience.
`Id. at 18 (citing Ex. 1014, 1:24–37). Petitioner argues that because Griffin
`discloses a fingerprint detector in its device and discloses that a variety of
`inputs may be used for the multiple-input unlock procedures, the use of a
`fingerprint detector, as taught by Davis, would have required “little more
`than a design decision.” Id. at 18–19. According to Petitioner, one of
`ordinary skill would have had a reasonable expectation of success in
`achieving the mobile communication terminal of claim 1 using a fingerprint
`detector for Griffin’s unlock routine, because Griffin’s “first” and “second”
`input mechanisms were designed to be chosen from available input
`mechanisms, and Davis shows that fingerprint authentication was an existing
`and well-known unlock input at the time of the ’419 patent. Id.
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`Patent Owner makes four arguments in its Preliminary Response.
`First, Patent Owner argues that Griffin fails to disclose “turning on the
`display to show a lock screen and performing a fingerprint authentication
`function . . . both in response to a one-time pressing of the activation
`button.” Prelim. Resp. 13. Petitioner, however, does not rely on Griffin to
`teach these limitations but instead relies on Davis to teach presenting a
`fingerprint dialog as a lock screen and then performing a fingerprint
`authentication function after the fingerprint dialog (lock screen) is displayed.
`Pet. 16, 17, 18, 35–36. Therefore, this argument by Patent Owner does not
`address the combination put forward by Petitioner.
`Second, Patent Owner argues that even if Griffin did disclose these
`limitations, “it discloses only a multi-step process requiring multiple user
`inputs to activate the display . . . and perform the authentication,” which is
`different from “the one-step process of the challenged claims.” Prelim.
`Resp. 13–14. Patent Owner argues that this multi-step process includes
`using a first unlock input, such as a key press, to move the device from a
`locked state to an input enabled state, in which the device activates a further
`input interface and awaits further input. Id. at 14 (citing Ex. 1027 ¶ 117,
`Fig. 10). Patent Owner argues that the device moves to the unlocked state
`only after it receives a second unlock input while in the input enabled state.
`Id. Thus, Patent Owner argues, Griffin requires at least two user inputs to
`turn on the display, perform fingerprint authentication, and, if the user is
`authenticated, release the lock state, while the claims require a single user
`input (one-time pressing of the activation button). Id. at 14–15.
`On the current record, we determine Petitioner shows sufficiently that
`the combination of Griffin and Davis teaches that “upon one-time pressing
`of the activation button while the touch screen display is turned off, the
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`terminal is configured to turn on the touch screen display and further
`perform a fingerprint authentication function in addition to turning on the
`touch screen display.” As noted above, Petitioner is not relying on Griffin
`for the limitation of turning on the display and performing fingerprint
`authentication. Petitioner is relying on Davis for those limitations. Pet. 5–
`17. Moreover, we are persuaded based on the current record that the user’s
`pressing of the activation button and the user’s fingerprint in the challenged
`claims can be considered multiple user inputs. Similarly, the sensing that
`the activation button has been pressed and the sensing of the user’s
`fingerprint in the challenged claims can be considered to be multiple steps.
`For example, claim 1 recites that the one-time pressing of the activation
`button performs the steps of “turning on the touch screen display” and
`“initiat[ing] the fingerprint authentication fun
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