Trials@uspto.gov
`571.272.7822
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` Paper 13
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` Entered: October 28, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-01012
`Patent 9,779,419 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper 13
`
`
` Entered: October 28, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-01012
`Patent 9,779,419 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01012
`Patent 9,779,419 B2
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`Apple Inc. (“Petitioner”) previously 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”),
`which we instituted for trial on August 19, 2019. IPR2019-00614, Paper 10.
`Petitioner filed this Petition seeking inter partes review of claim 9 of the
`’419 patent. Paper 1 (“Pet”). Petitioner states claim 9 was inadvertently
`overlooked in its earlier petition. Paper 1, 11. Firstface Co., Ltd. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“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 claim 9 of the ‘419 patent.1
`To administer this proceeding more efficiently, we also exercise our
`authority under 35 U.S.C. § 315(d) to consolidate it with IPR2019-00614
`and conduct the proceedings as one trial. See also 37 C.F.R. § 42.122(a)
`(“Where another matter involving the patent is before the Office, the Board
`may during the pendency of the inter partes review enter any appropriate
`order regarding the additional matter including providing for the stay,
`transfer, consolidation, or termination of any such matter.”).
`
`
`
`
`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
`
`1 Although we granted Petitioner’s motion to seal certain exhibits filed with
`the Petition (Paper 8), we do not refer to any sealed material in this
`Decision.
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`terminal is activated. Ex. 1001, 1:16–18. Figure 1 of the ’419 patent is
`reproduced below.
`
`
`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.
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`If the user presses activation button 120 when mobile communication
`terminal 100 is in the inactive state, mobile communication terminal 100
`may perform a predetermined operation in addition to switching to the active
`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 7:29–8:6. 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 9:22–28.
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`B. Claim 9 of the ’419 Patent
`At issue in this proceeding is claim 9, which is dependent on claim 1.
`Claims 1 and 9 are reproduced below: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 Claim 1 was 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.
`9. The terminal of claim 1, wherein the terminal comprises
`a smartphone which comprises an activation sensor configured
`to detect pressing of the activation button and a user
`identification module configured to perform the fingerprint
`authentication function.
`
`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).
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`Petitioner further relies on testimony of its declarant, Benjamin B.
`Bederson, Ph.D. (Ex. 1003).
`
`
`D. The Asserted Grounds
`Petitioner challenges the patentability of claim 9 of the ’419 patent on
`the following grounds:
`Claims Challenged
`
`
`
`9
`9
`
`35 U.S.C. §
`103(a)3
`103(a)
`
`
`Reference(s)/Basis
`Griffin, Davis, and iOS
`Goertz, Davis, and iOS
`
`
`
`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 4, 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
`
`
`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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`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
`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. 9–10; Prelim. Resp. 7. 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
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`ordinary skill in the pertinent art.”4 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`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
`
`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
`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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`“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)).
`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. 9 (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 claim 9 is unpatentable as obvious under 35
`U.S.C. § 103(a) over Griffin, Davis, and iOS. Pet. 12–41. 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
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`“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
`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, a 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 that runs iOS 3.1
`software. 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
`a. The Limitations of Independent Claim 1
`Petitioner states in its Petition that “the discussions of independent
`claim 1” in the Petition “mirror[] those presented in IPR2019-00614.” Pet.
`11–12. Patent Owner also states that its Preliminary Response in this
`proceeding “is substantially the same as the Preliminary Response in [Case
`IPR2019-00614]” as to claim 1. Prelim. Resp. 1. We have reviewed the
`relevant portions of the Petition and Preliminary Response in this proceeding
`and agree that they present substantially the same arguments as to claim 1
`that were presented in the Petition and Preliminary Response in IPR2019-
`00614. Therefore, we incorporate by reference here the analysis in our
`institution decision in IPR2019-00614 relating to claim 1 and find, at this
`stage of the proceeding, that Petitioner has made a sufficient showing that
`the limitations of claim 1 are taught by the combination of Griffin, Davis,
`and iOS and that a person of ordinary skill in the art would have had a
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`reason to combine the references’ teachings in the manner asserted in the
`Petition. See IPR2019-00614, Paper 10, 16–28.
`b. Claim 9
`(i) “The terminal of claim 1, wherein the terminal
`comprises a smartphone which comprises”
`Petitioner argues that Griffin discloses a terminal that comprises a
`smartphone, pointing to Griffin’s disclosure that “an example of the single-
`gesture or continuous-action input is illustrated as it may be implemented
`on a handheld mobile device 100, such as a smartphone equipped with a
`touchscreen display 510.” Pet. 40 (citing Ex. 1027 ¶ 86). Patent Owner
`does not dispute in its Preliminary Response that Griffin discloses this
`limitation of claim 9. We are persuaded, based on the current record, that
`Petitioner has made a sufficient showing that the combination of Griffin,
`Davis, and iOS teaches the use of a smartphone.
`(ii) “an activation sensor configured to detect
`pressing of the activation button”
`In connection with claim 1, Petitioner argues that Griffin discloses
`depressing a “home button” or “convenience button” to initiate an unlock
`action and reactivate the device, its monitor, and other processes. Pet. 25.
`With respect to the “activation sensor” in claim 9, Petitioner argues that
`Griffin discloses an “‘actuation’ of a user input mechanism . . . by pressing a
`button,” and that “[w]hen one of those active input mechanisms detects a
`user input, such as a keypress, the processor can then be signaled to . . .
`return the device to an awake and operative state.” Id. at 25–26 (citing
`Ex. 1027 ¶¶ 25, 58). Petitioner also points to Griffin’s disclosure in Figure
`11 of the step of “[d]etect[ing] actuation of first input mechanism 1100.”
`Id. at 26 (citing Ex. 1027, Fig. 11). Petitioner argues that a person of
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`ordinary skill in the art would have understood that Griffin’s disclosure of an
`“input mechanism” that “detects” a user input to wake the device is a
`disclosure of “an activation sensor configured to detect pressing of the
`activation button.” Id. According to Petitioner, Griffin uses the term “input
`mechanism” broadly to encompass both the physical “home button” that the
`user presses as well as the sensor that detects the press of the home button
`and translates it into a signal. Id. Thus, Petitioner argues, a person of
`ordinary skill would have understood that Griffin discloses both an
`activation button and an activation sensor. Id.
` Petitioner further argues that even if Griffin does not expressly
`disclose an activation sensor, a person of ordinary skill would have
`understood from Griffin’s disclosure of an “input mechanism,” which
`detects an input and signals a processor to change states, that Griffin
`inherently discloses an activation sensor. Id. Otherwise, Petitioner argues,
`there would be no way for the phone to make use of the user’s input, and the
`home button would not be able to function as described. Id. at 26–27.
`Patent Owner does not address the “activation sensor” limitation in its
`Preliminary Response or attempt to refute Petitioner’s arguments concerning
`the “activation sensor.” Instead, Patent Owner relies on its arguments for
`claim 1, arguing that “trial should not be instituted for dependent claim 9
`because it depends from claim 1, which itself does not merit trial
`institution.” Prelim. Resp. 1.
`We are persuaded, based on the current record, that Petitioner has
`made a sufficient showing that the “activation sensor” limitation of claim 9
`is taught by the combination of Griffin, Davis, and iOS. We are persuaded
`on this record that Griffin’s disclosure of a “home button” along with the
`disclosure of detecting a user input from an input mechanism in the form of
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`a button is sufficient to disclose the claimed activation sensor that is
`configured to detect pressing of the activation button. See Ex. 1027, Fig. 11,
`¶¶ 25, 58.
`
`(iii) “a user identification module configured to
`perform the fingerprint authentication
`function”
`In connection with claim 1, Petitioner argues that Griffin in view of
`Davis discloses fingerprint authentication for unlocking the phone. Pet. 12–
`18, 27. With respect to the “user identification module” in claim 9,
`Petitioner argues that Davis discloses that the authentication functions are
`implemented via security module 230C installed on the phone, and that this
`security module interfaces the fingerprint sensor into the phone. Id. at 27
`(citing Ex. 1015 ¶¶ 21, 30, 47, 50–53, 72, Figs. 2–3). Therefore, Petitioner
`argues, Griffin in view of Davis discloses “a user identification module
`configured to perform the fingerprint authentication.” Id. Petitioner further
`argues that a person of ordinary skill in the art would have been motivated
`and found it obvious and straightforward to employ Davis’s teachings of a
`security module that interfaces with the fingerprint sensor in implementing
`Griffin’s unlock routine for its higher levels of security and user
`convenience. Id. at 27–28. Patent Owner does not specifically address the
`“user identification module” limitation or refute Petitioner’s arguments
`about the “user identification module” in its Preliminary Response.
`We are persuaded, based on the current record, that Petitioner has
`made a sufficient showing that the “user identification module” in claim 9 is
`taught by the combination of Griffin, Davis, and iOS. At this stage of the
`proceeding, Petitioner has demonstrated sufficiently that a person of
`ordinary skill would have understood that Davis’s security module 230C in
`
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`IPR2019-01012
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`Figure 2 performs the user identification functions of Davis. See Ex. 1015,
`Fig. 2, ¶ 21. Davis discloses that security module 230C is a “software
`application[]” that may “be installed on the mobile communication device
`102 during manufacture, to implement aspects of the present application.”
`Id. ¶ 21. Davis further discloses that the invention may include a “security
`configuration[]” in which “the user will provide a fingerprint to a fingerprint
`sensor on the mobile device 102,” and the mobile device will “verif[y] the
`fingerprint candidate” by determining “if the fingerprint candidate matches a
`stored fingerprint template associated with unlocking the mobile device
`102.” Id. ¶¶ 51–53.
`We are persuaded based on the current record that a person of
`ordinary skill would have understood Davis to disclose that security module
`230C may perform the fingerprint identification and authentication functions
`of the mobile device, and therefore is “a user identification module
`configured to perform the fingerprint authentication function” as claimed in
`claim 9. We also are persuaded, based on the current record, that a person of
`ordinary skill would have been motivated to use a software-based security
`module, as disclosed in Davis, in conjunction with the fingerprint detector of
`Griffin, because doing so would have been a logical and straightforward way
`to implement fingerprint authentication. See Pet. 27–28.
`
`
`c. Conclusion
`For the foregoing reasons, we conclude Petitioner has demonstrated a
`reasonable likelihood of prevailing in establishing that claim 9 would have
`been obvious over the combination of Griffin, Davis, and iOS.
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`IPR2019-01012
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`E. Obviousness over Goertz, Davis, and iOS
`Petitioner contends that claim 9 is unpatentable as obvious under
`35 U.S.C. § 103(a) over Goertz, Davis, and iOS. Pet. 42–64. For the
`reasons that follow, Petitioner has demonstrated a reasonable likelihood of
`prevailing on its challenge as to claim 9.
`
`
`1. Overview of Goertz
`Goertz describes a mobile device having a home button and a touch
`screen user interface. Ex. 1013 ¶¶ 2, 8, 59. Figures 9, 10, and 11 of Goertz,
`depicting turning the device on and off, are reproduced below.
`
`
`Figure 9 displays a first phone with a blank screen indicating that power is
`off. Id. ¶ 59. Figure 10 displays a second phone with gadgets displayed
`thereon, indicating that power is on. Id. A “home key” is displayed at the
`bottom of the phones and can be activated, such as by touching the key, in
`order to turn the power on. Id. Figure 11 depicts a phone that is turned on
`and indicates that touching the home key for an extended period of time
`(e.g., 5 seconds) causes the phone to power off. Id.
`
`21
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`Figures 12, 13, 14, and 15 of Goertz illustrate the locking and
`unlocking of the device, and are reproduced below.
`
`
`Figure 12, illustrates a phone displaying a lock gadget in the lower right
`corner of the screen that, when pressed, locks the phone and restricts its
`access in some manner. Id. ¶ 60. Figure 13 shows a locked phone, in which
`the user can activate a home key, located at the bottom center of the device,
`to unlock the phone. Id. Figure 14 “shows the phone after it has been
`unlocked; gadgets are now displayed on screen and are activated in response
`to user input.” Id.
`
`In Figure 15, the phone displays a keypad after the home key is
`activated that prompts the user to enter a security code to unlock the phone.
`Id. ¶ 61. Goertz discloses that “[o]ptionally, additional security is
`implemented by use of fingerprint identification, wherein the phone cannot
`be unlocked unless a fingerprint is authenticated.” Id.
`
`
`2. Analysis
`a. The Limitations of Independent Claim 1
`Petitioner states
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