Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`APPLE INC.,
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`Petitioner,
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`v.
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`FIRSTFACE CO., LTD.,
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`Patent Owner.
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`________________
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`Case IPR2019-00614
`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`________________
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`PATENT OWNER’S RESPONSE TO PETITION
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`TABLE OF CONTENTS
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`I.
`II.
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`INTRODUCTION ............................................................................................ 1
`THE ’419 PATENT AND THE CHALLENGED CLAIMS ........................... 3
`A.
`Problem Presented .................................................................................. 3
`III. CLAIM CONSTRUCTION ............................................................................. 6
`IV. LEVEL OF SKILL IN THE ART .................................................................... 7
`V.
`SUMMARY OF THE REFERENCES ............................................................ 7
`A. Griffin ..................................................................................................... 7
`B. Goertz ..................................................................................................... 8
`C. Davis ....................................................................................................... 9
`D.
`iOS ........................................................................................................ 10
`VI. APPLICABLE LEGAL STANDARDS ......................................................... 11
`VII. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE UNDER GROUND 1. ......... 13
`A.
`The cited references do not disclose an activation button separate from
`a power button. ............................................................................................... 14
`B.
`The cited art does not disclose turning on the display (displaying a lock
`screen) and performing a fingerprint authentication function in response to a
`one-time pressing of the activation button. .................................................... 16
`1.
`Griffin does not disclose turning on the display and performing a
`fingerprint authentication function in response to a one-time pressing
`of the activation button. ........................................................................ 17
`2.
`The Deficiencies of Griffin are not resolved by Davis. ............. 20
`C. A POSITA would not combine Griffin with Davis to arrive at the
`claimed invention. ........................................................................................... 27
`VIII. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE UNDER GROUND 2. ......... 32
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`The cited references do not disclose an activation button separate from
`A.
`a power button. ............................................................................................... 32
`B.
`The cited art does not disclose turning on the display and performing a
`fingerprint authentication in response to a one-time pressing of the activation
`button. ............................................................................................................. 35
`1.
`Goertz does not disclose turning on the display and performing a
`fingerprint authentication in response to a one-time pressing of the
`activation button. .................................................................................. 36
`2.
`The Deficiencies of Goertz Are Not Resolved by Davis. .......... 38
`C. A person of skill in the art would not combine Goertz with Davis to
`arrive at the claimed invention. ...................................................................... 39
`IX. CONCLUSION ............................................................................................... 44
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`U.S. Patent No. 9,779,419
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`TABLE OF AUTHORITIES
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`Cases:
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`Bausch & Lomb v. Barnes-Hind/Hydrocurve,
`796 F.2d 443 (Fed. Cir. 1986) ........................................................................... 22
`
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ......................................................................... 11
`
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC,
`Case No. IPR2012-00001, Paper 15 (PTAB Jan. 9, 2013) ................................ 12
`
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ......................................................................................... 14, 15
`
`
`Grain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ........................................................................... 13
`
`
`In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ......................................... 12, 28
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................... 15
`
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ............................................................................. 12
`
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ........................................................................... 11
`
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ......................................................................... 40
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ..................................................................................... 12, 15
`
`
`Orthopedic Equip. Co. v. United States,
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`702 F.2d 1005 (Fed. Cir. 1983) ......................................................................... 13
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`Princeton Biochemicals, Inc. v. Coulter, Inc.,
`411 F.3d 1332 (Fed. Cir. 2005) ................................................................... 31, 44
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`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ......................................................................... 12
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`Rules and Statutes:
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`35 U.S.C. § 103 ........................................................................................... 11, 12, 22
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`35 U.S.C. § 103(a) .................................................................................................. 11
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`35 U.S.C. § 282(b) .................................................................................................... 6
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`37 C.F.R. § 42.100(b) ............................................................................................... 6
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`37 C.F.R. § 42.107 .................................................................................................... 1
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`M.P.E.P § 2143.01(V) ....................................................................................... 12, 28
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`Exhibit
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`Description
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`TABLE OF EXHIBITS
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`2001
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`2008
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`Declaration of Dr. Alfred C. Weaver
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`Bederson Deposition Transcript
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`U.S. Patent No. 9,779,419
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Firstface Co., Ltd. (“Firstface”
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`or “Patent Owner”) submits this Response to the Petitions1 of Apple Inc. ( “Apple”
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`or “Petitioner”) seeking inter partes review of claims 1-4, 6-7, 9-13, and 15-17 of
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`U.S. Patent No. 9,779,419 (Ex. 1001, the “’419 patent”).
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`I.
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` INTRODUCTION
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` The ’419 patent claims an elegant solution to the problem of incorporating
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`new functionalities, such as fingerprint authentication, into mobile devices while
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`maintaining simplicity. According to the challenged claims, a single, one-time
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`pressing of an activation button when a device display is off causes the device to
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`turn on the display (actively displaying the lock screen), perform a fingerprint
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`authentication function, and, if the user is authenticated, release a lock state of the
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`terminal. Further, when the activation button is pressed for longer than a threshold
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`time period, the device initiates a hands-free operation. The claimed inventions thus
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`                                                            
`1 Petitioner originally filed a Petition seeking inter partes review of claims 1-4, 6-7,
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`10-13, and 15-17 in Case IPR2019-00614. Petitioner subsequently filed a Petition
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`seeking inter partes review of claim 9 in Case IPR2019-1012. The Board instituted
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`review in both proceedings and consolidated them for trial. This Response therefore
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`addresses the arguments made in both Petitions. 
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`increase the usefulness of a device without complicating the user interface because
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`the new functionalities (fingerprint authentication and a hands-free operation) do
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`not require additional buttons or other hardware; nor do they require the user to
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`perform additional steps to access these functionalities. A single press of the
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`activation button will turn on the display (as the user would expect), show a lock
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`screen, and perform the additional functions. See Ex. 2001, ¶ 72.
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`No prior art reference cited by Petitioner discloses activating a device display
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`(displaying the lock screen) and performing a fingerprint authentication function,
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`each in response to a one-time pressing of the activation button. The primary
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`references, Griffin and Goertz, disclose, instead, multi-step processes requiring
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`multiple user actions. And Davis, the secondary reference that Petitioner combines
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`with Griffin or Goertz, does not fill the void. It also discloses a multi-step process
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`requiring multiple user actions to authenticate the user that can only be initiated
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`after the display has been turned on. Thus, Petitioner’s proposed combinations do
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`not disclose the claimed invention. Because the prior art does not disclose all
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`limitations of the challenged claims, Petitioner has failed to show by a
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`preponderance of the evidence that any challenged claim is obvious.
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`II. THE ’419 PATENT AND THE CHALLENGED CLAIMS
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`A.
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`Problem Presented
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`The ’419 patent explains that, as mobile communications devices have
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`proliferated, their capabilities have expanded from simple communication to
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`include innumerable other features and functions. See, e.g., Ex. 1001 (’419 patent),
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`1:25-33. Indeed, while early mobile communications devices were largely used
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`only as telephones, they now have cameras, web browsers, games, word-processing
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`and messaging applications, e-mail software, and numerous other applications and
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`features. As developers added functionality to these devices, they also added
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`complexity. For example, historically, newly-added functions required that a device
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`display be turned on before functions could be accessed or executed, requiring a
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`user to perform multiple initiating steps. Id., 1:34-45. Moreover, many functions
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`required new buttons, convoluting and congesting the user interface. Id.; see also
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`Ex. 2001, ¶ 73.
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`The inventors of the ’419 patent, including Firstface’s co-CEO, Jae Lark
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`Jung, developed innovative solutions for improving the user experience with these
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`increasingly complex devices. The inventors recognized that users habitually turn
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`on the display of their devices while on the move. Id., 1:45-49. Accordingly, the
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`inventors developed technologies involving use of an activation button to perform
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`predetermined functions at the same time as turning on the display. Id., 1:52-2:18.
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`The activation button can be used, for instance, to turn on the display and perform a
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`user identification process, such as fingerprint, facial, or iris recognition. Id., 8:7-
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`20. To further enhance user experience, the inventors also recognized that the user
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`would prefer that the display turn on while authentication is being performed. See
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`Ex. 1001, claim 1. This configuration gives the user assurance that the terminal is
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`operating normally and, as such, successfully received the user’s identifying
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`biometrics (despite authentication being in process). In addition, the function(s)
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`performed may differ based on how the user presses the activation button. For
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`example, a single press of the button can turn on the display and initiate one
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`function, while a double or long press can turn on the display and initiate yet
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`another function. Id., 4:51-5:13; see also Ex. 2001, ¶ 74.
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`The claims of the ’419 patent are directed to using the activation button to
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`turn on a touch screen display and to perform fingerprint authentication in response
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`to a one-time pressing of the activation button. See, e.g., id., claim 1; see also Ex.
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`2001, ¶ 75. Claim 1 (as corrected in the certificates of correction) is representative:
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`1. A mobile communication terminal comprising:
`a touch screen display;
`a power button configured to turn on and off the terminal by pressing;
`and
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`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,
`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
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`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.
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`Independent claim 10 is substantively similar.
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`III. CLAIM CONSTRUCTION
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`Claim terms subject to inter partes review are to be “construed using the
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`same claim construction standard that would be used to construe the claim in a civil
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`action under 35 U.S.C. 282(b), including construing the claim in accordance with
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`the ordinary and customary meaning of such claim as understood by one of ordinary
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`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
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`42.100(b). Petitioner has not argued for any claim elements to be construed and, for
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`the purposes of this Response, Patent Owner does not seek the construction of any
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`term.
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`IV. LEVEL OF SKILL IN THE ART
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`Petitioner argues that a person of ordinary skill in the art at the time of the
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`’419 patent would have had a “bachelor’s degree in Computer Science, Computer
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`Engineering, or equivalent, and at least two years of relevant experience in the
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`fields of user interface design and mobile devices, or otherwise equivalent industry
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`experience in the relevant field.” See Pet. at 11-12. For the purposes of this trial,
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`Patent Owner does not dispute Petitioner’s proposal for level of ordinary skill in the
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`art.
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`V.
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`SUMMARY OF THE REFERENCES
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`A. Griffin
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`Griffin (Ex. 1027) is a United States Patent Application dated May 31, 2012,
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`with a filing date of November 29, 2010. It was considered by the examiner during
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`prosecution and is listed as a reference cited in the ’419 patent. Griffin is titled
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`“Multiple Input Device Lock and Unlock” and generally describes unlocking a
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`device, which can refer either to waking the device or moving the device from a
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`secure mode to an unsecure mode, in response to two different actions by the user.
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`Ex. 1027 at [0024]-[0025]. For example, Griffin discloses that a user may unlock a
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`device by pressing a button and then swiping in a specific way across the screen.
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`See Ex. 1027, Figs. 5A-5C. Griffin makes clear that a single action, such as a button
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`press, is not enough to unlock a device: “[I]t can be seen that the foregoing methods
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`and devices are configured to permit the device 100 to transition from a locked to
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`an unlocked state not simply on the basis of a single type of input, such as a
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`keypress or a single touch-screen gesture, but on the basis of a two-input or
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`multiple-input action that must be detected across a plurality of user input interfaces
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`provided on the device 100.” Ex. 1027 at [0116]; see also Ex. 2001 ¶ 78.
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`B. Goertz
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`Goertz (Ex. 1013) is a U.S. Patent Application Publication dated January 21,
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`2010, bearing a filing date of June 17, 2009. Goertz is titled “User Interface for
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`Mobile Computer Unit,” and its Abstract explains that the invention relates to
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`providing a touch screen interface that presents keys in a way that facilitates entry
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`of Chinese characters using stroke and Pinyin input. Ex. 1013 at Abstract; see also
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`Ex. 2001 ¶ 79.
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`Figures 12-15 show various “Key lock” functions of the device. Figure 12
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`depicts, for instance, the device with a lock gadget and explains that by pressing the
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`lock gadget, the phone is then locked. The specification explains that when the
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`phone is locked, activation of the phone is restricted in some manner, “e.g., when
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`the phone is locked, touching the screen in a way that would activate a gadget when
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`the phone is unlocked, does not activate the gadget when the phone is locked.” Ex.
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`1013 at [0060]. Goertz explains that unlocking the phone is achieved by activating a
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`home key. Id.; see also Ex. 2001 ¶ 80.
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`Goertz further discloses a device mode called “Key lock high security mode,”
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`in which the device sequentially turns on the screen and then prompts the user to
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`authenticate. For example, as depicted in Figure 15, a keypad is displayed and a
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`user is prompted to enter a security code after the home key is activated (such as by
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`touching the home key). Once the proper code is entered, the phone is unlocked.
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`See Ex. 2001 ¶ 81.
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`Goertz also discloses that “[o]ptionally, additional security is implemented by
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`use of fingerprint identification, wherein the phone cannot be unlocked unless a
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`fingerprint is authenticated.” Id. at [0061]. Notably, Goertz does not disclose that
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`the authentication process is any different when fingerprint recognition is used.
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`Thus, Goertz is limited to a multi-step process, requiring multiple user actions to
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`unlock the device. Goertz never presents an embodiment in which a one-time
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`pressing of a button will both unlock a device and perform an authentication
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`function. See Ex. 2001 ¶ 82.
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`C. Davis
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`Davis (Ex. 1015) is the secondary reference that Petitioner includes in
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`separate combinations with Griffin and Goertz. Davis is a U.S. Patent Application
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`Publication dated June 3, 2010, with a filing date of December 1, 2008. It is titled
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`“System and Method of Providing Biometric Quick Launch” and relates to easing
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`the burden of multi-factor authentication by causing a device to both unlock and
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`launch a specific application once the biometric portion of the multi-step
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`authentication procedure is complete. Ex. 1015 at Abstract, Figure 5, [0077]. In its
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`background, Davis criticizes the use of single-factor, password-based authentication
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`to secure a device, and notes that two-factor or three-factor authentication using a
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`smart card and/or biometric information is more secure. Ex. 1015 at [0002]-[0004].
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`Davis recognizes that three-factor authentication, in particular, can be cumbersome.
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`It thus proposes that “a user may associate a specific application with a stored
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`fingerprint template such that the specific application may be launched, if not
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`already executing, on the mobile device 102 responsive to provision of [a]
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`fingerprint to the fingerprint sensor 325.” Ex. 1015 at [0054]. Notably, nothing in
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`Davis discusses the use of a button to turn on a display screen, let alone use that
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`button to turn on the display screen and perform another function, like fingerprint
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`authentication. See Ex. 2001 ¶ 83.
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`D.
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`iOS
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`iOS (Ex. 1007) is a User Guide for the iPhone OS 3.1 software that, like
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`Davis, Petitioner includes in the combinations with Griffin and Goertz. Petitioner
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`refers to the manual for the presence of an iPhone home button that is separate from
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`a power button and that has certain software settings functions. According to
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`Petitioner, the home button is an activation button that is separate from the power
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`button because it can be used to turn on the display. Pet. at 29-32. Patent Owner
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`disputes that the iOS manual actually supports the proposition that the home button
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`turns on the device display. While iOS discloses a “home button” that is separate
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`from the power button, it only discloses that the home button can be used to unlock
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`a device. See Ex. 1007 at 27. It never discloses that the home button can be used to
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`activate a display. The home button accordingly is not an “activation button” within
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`the meaning of the claims of the ’419 patent. See Ex. 2001 ¶ 84.
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`VI. APPLICABLE LEGAL STANDARDS
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`Section 103 of the Patent Act provides that “[a] patent may not be
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`obtained . . . if the differences between the subject matter sought to be patented and
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`the prior art are such that the subject matter as a whole would have been obvious at
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`the time the invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains.” 35 U.S.C. § 103(a). If a single element of the claim is
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`absent from the prior art, the claims cannot be considered obvious. See CFMT, Inc.
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`v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“[O]bviousness
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`requires a suggestion of all limitations in a claim.”) (citing In re Royka, 490 F.2d
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`981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)
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`(reversing obviousness rejection where prior art did not teach or suggest all claim
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`limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case No.
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`IPR2012-00001, Paper 15 at 15 (PTAB Jan. 9, 2013) (refusing to institute an inter
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`partes review under 35 U.S.C. § 103 where prior art did not disclose all claim
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`limitations).
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`Further, “[o]bviousness requires more than a mere showing that the prior art
`
`includes separate references covering each separate limitation in a claim under
`
`examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
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`2011) (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). “Rather,
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`obviousness requires the additional showing that a person of ordinary skill at the
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`time of the invention would have selected and combined those prior art elements in
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`the normal course of research and development to yield the claimed invention.” Id.
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`If a proposed modification or enhancement of a first prior art reference through the
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`combination of a second prior art reference would result in the first reference being
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`rendered unsuitable for its intended purpose, then there is no suggestion or
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`motivation to make the proposed modification or enhancement. In re Gordon, 733
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`F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984); see also M.P.E.P § 2143.01(V). In
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`addition, it is impermissible to “us[e] ‘the patent in suit as a guide through the maze
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`of prior art references, combining the right references in the right way so as to
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`achieve the results of the claims in suit.’” See Grain Processing Corp. v. American
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`Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip.
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`Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)).
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`VII. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE UNDER GROUND
`1.
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`The Petition fails to demonstrate by a preponderance that any challenged
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`claim is unpatentable under Ground 1. Ground 1 is a three-reference obviousness
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`combination comprised of Griffin, Davis, and iOS. The suggested combination does
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`not disclose an activation button, separate from the power button, where the
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`activation button is configured to turn on the touch screen display. Nor does the
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`suggested combination disclose turning on the touch screen display (displaying a
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`lock screen), performing a fingerprint authentication function, and, if the user is
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`authenticated, releasing the lock state, all in response to a one-time pressing of the
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`activation button—elements common to all challenged claims. See Pet. at 30-31,
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`35-37 (claim elements labeled [1f], [1g], and [1h]); see also Pet. at 45-48 (claim
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`elements labeled [10d], [10e], [10g], and [10h]). The absence of these elements
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`ends the inquiry. Nevertheless, the included references are not properly combined in
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`the first place, and thus cannot invalidate the challenged claims. See Ex. 2001 ¶ 85.
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`U.S. Patent No. 9,779,419
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`A. The cited references do not disclose an activation button separate
`from a power button.
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`All challenged claims require an activation button that is configured to turn
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`on the display in response to a press that is separate from the power button. See
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`claim elements [1c], [1d], 1[e] (“a power button configured to turn on and off the
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`terminal by pressing; and an activation button separate from the power button and
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`located outside the touch screen display, the activation button configured for
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`pressing to turn on the touch screen display”), [10b] (“providing a mobile
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`computing terminal which comprises a touch screen display, a camera, a power
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`button for pressing to turn on/off the terminal, and an activation button for pressing
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`to turn on the touch screen display, the activation button located outside the touch
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`screen display”). It is unclear whether Petitioner contends that this requirement is
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`satisfied by Griffin, iOS, or both. In charting element [1d] Petitioner includes
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`citations to both Griffin and iOS. Pet. at 29-30; see also Ex. 2001, ¶ 86. But
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`Petitioner fails to state what is missing from Griffin in order to necessitate reliance
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`on iOS, as a proper Graham analysis requires. A proper obviousness analysis
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`requires several threshold inquiries: the level of ordinary skill in the art must be
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`established; the scope and content of the prior art must be determined; and any
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`differences between the prior art and the claims at issue must be ascertained.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The conclusion of
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`U.S. Patent No. 9,779,419
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`obviousness based on a combination of references must also be supported with
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`explicit analysis of a reason to combine those references. KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 418 (2007). The Federal Circuit has stated that such reasons
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`must include “articulated reasoning with some rational underpinning to support the
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`legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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`Putting aside Petitioner’s failure to perform a proper Graham analysis,
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`Petitioner has failed to show that this limitation is satisfied because neither Griffin
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`nor iOS discloses it. Griffin fails to disclose a power button and thus cannot teach
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`an activation button that is separate from the power button. Petitioner argues that
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`iOS discloses an “activation button” that is separate from the power button. But the
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`“home button” in iOS is not an “activation button” within the meaning of the claims
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`because it does not “turn on the touch screen display.” iOS only discloses that the
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`home button can be used to unlock a device. Ex. 1007 at 27 (“Unlock iPhone: Press
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`the Home button or the Sleep/Wake button, then drag the slider.”). It does not
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`disclose that the home button is used to turn on the touch screen display, and
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`Petitioner’s expert has not indicated that the turning on of the display is inherent in
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`iOS. See Ex. 2001, ¶ 87
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`Indeed, he cannot make such an argument because there are other ways in
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`which the display could be activated. See Ex. 2001, ¶ 88. For example, the display
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`could be activated in response to an accelerometer detecting that the user had
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`picked up the device. Id.
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`Thus, the cited art does not disclose all claim elements of the challenged
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`claims. The challenged claims accordingly are valid over the art cited in Ground 1.
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`B.
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`The cited art does not disclose turning on the display (displaying a
`lock screen) and performing a fingerprint authentication function
`in response to a one-time pressing of the activation button.
`Petitioner has also failed to meet its burden of showing that the challenged
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`claims are invalid under Ground 1 because none of the prior art discloses turning on
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`the display and performing a fingerprint authentication in response to a one-time
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`pressing of the activation button. Griffin does not disclose turning on the display
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`and performing a fingerprint authentication function in response to a one-time
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`pressing of the activation button. It instead discloses a multi-step process requiring
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`multiple user actions to perform fingerprint authentication. Davis does not cure
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`Griffin’s shortcomings—it also discloses a multi-step process requiring multiple
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`user actions. The combination of Griffin and Davis accordingly cannot disclose
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`turning on the display and performing a fingerprint authentication function in
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`response to a one-time pressing of the activation button. Griffin in view of Davis
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`and iOS accordingly does not render the challenged claims invalid. See Ex. 2001,
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`¶ 89. 
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`Case IPR2019-00614
`U.S. Patent No. 9,779,419
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`1.
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`Griffin does not disclose turning on the display and performing a
`fingerprint authentication function in response to a one-time
`pressing of the activation button.
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`Griffin does not disclose turning on a display (displaying a lock screen) and
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`performing a fingerprint authentication function in response to a one-time pressing
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`of the activation button. Indeed, Petitioner merely argues that Griffin discloses that,
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`upon receiving a first user input (a press of a button), a second user input interface
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`is activated (which accepts a swipe of a finger or other user input). Pet. at 31. These
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`“user inputs” are separate and distinct user actions, compared to the singular action
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`of a “one-time pressing” as required by the challenged claims. Petitioner does not
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`contend that anything is displayed on the screen upon receiving a first user action
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`Petitioner only alleges that the touch screen is “reactivated,” which could merely be
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`allowing for the touchscreen to accept gestures from the user. Nor does Petitioner
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`contend that Griffin ever performs fingerprint authentication. It instead relies on
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`Davis to satisfy both of those elements. Thus, despite being Petitioner’s primary
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`reference, Griffin fails to disclose two key requirements of