Trials@uspto.gov
`571.272.7822
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` Paper 10
` Date: July 31, 2020
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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.
`____________
`
`IPR2019-00614,
`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.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper 10
` Date: July 31, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`IPR2019-00614,
`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.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00614
`Patent 9,779,419 B2
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`
`Apple Inc. (“Petitioner”) filed a Petition in IPR2019-00614 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”).
`IPR2019-00614, Paper 2 (“Pet.”). Petitioner later filed a Petition in
`IPR2019-01012 to institute inter partes review of claim 9 of the ’419 patent.
`IPR2019-01012, Paper 1 (“-1012 Pet.”). Firstface Co., Ltd. (“Patent
`Owner”) filed a Preliminary Response in both cases. IPR2019-00614, Paper
`8 (“Prelim. Resp.”); IPR2019-01012, Paper 7. Pursuant to 35 U.S.C. § 314,
`we instituted inter partes review of all of the challenged claims based on all
`the grounds presented in both Petitions. IPR2019-00614, Paper 10 (“Inst.
`Dec.”); IPR2019-01012, Paper 9. We further consolidated both proceedings
`and ordered all further filings in the consolidated proceeding to be made in
`IPR2019-00614. IPR2019-01012, Paper 9 at 27.
`In the consolidated proceedings, Patent Owner filed a Response
`(Paper 16,1 “PO Resp.”), Petitioner filed a Reply (Paper 18, “Pet. Reply”),
`and Patent Owner filed a Sur-reply (Paper 21, “PO Sur-reply”). On May 5,
`2020, we conducted an oral hearing. A copy of the transcript of the oral
`hearing (Paper 26, “Tr.”) is included in the record.
`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–4, 6, 7, and 9 of the ’419 patent are unpatentable, and
`that Petitioner has not shown by a preponderance of the evidence that claims
`
`
`1 Unless otherwise specified with the prefix “-1012,” we refer herein to
`papers and exhibits filed in IPR2019-00614.
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`2
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`IPR2019-00614
`Patent 9,779,419 B2
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`10–13 and 15–17 of the ’419 patent are unpatentable.2 This final written
`decision is issued pursuant to 35 U.S.C. § 318(a).
`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.
`
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`2 Although we granted Petitioner’s motions to seal certain exhibits filed with
`the Petitions, we do not refer to any sealed material in this Decision. See
`Paper 9; -1012 Paper 8.
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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
`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
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`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.
`
`
`
`B. Illustrative Claims
`Claims 1 and 10 are independent claims, and are illustrative of the
`subject matter at issue:3
`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,
`
`
`3 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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`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 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.
`10. A method of operating a mobile computing terminal,
`the method comprising:
`providing a mobile computing terminal which
`comprises a touch screen display, a camera, a power
`button for pressing to tum on/off the terminal, and an
`activation button for pressing to turn on the touch screen
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`display, the activation button located outside the touch
`screen display;
`detecting one-time pressing of the activation
`button while the terminal is in an inactive state in which
`the touch screen display is turned off;
`in response to the one-time pressing, changing the
`terminal from the inactive state to an active state in
`which the touch screen display is turned on; and
`in addition to changing to the active state, further
`performing a fingerprint authentication function using
`fingerprint recognition without additional user input,
`wherein in changing to the active state and
`performing the fingerprint authentication function, the
`terminal operates such that:
`a lock screen is displayed on the touch
`screen display upon changing the terminal from
`the inactive state to the active state in response to
`the one-time pressing of the activation button
`while the terminal being in the inactive state,
`in addition to changing the terminal to the
`active state, the one-time pressing while the
`terminal being in the inactive state 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
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`response to the one-time pressing of the activation
`button while the terminal being in the inactive
`state, wherein the method further comprises
`performing at least one function other than the
`fingerprint authentication function in addition to
`changing to the active state in response to the one-
`time pressing during the terminal’s inactive state
`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 onetime pressing for the
`long time is associated with initiating a hands-free
`operation of the terminal.
`Ex. 1001, 12:53–13:30, 14:15–65.
`
`
`
`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 A1, published Jan.
`21, 2010 (“Goertz”) (Ex. 1013).
`3. U.S. Patent Application Pub. No. 2010/0138914 A1, published
`June 3, 2010 (“Davis”) (Ex. 1015).
`4. U.S. Patent Application Pub. No. 2012/0133484 A1, published
`May 31, 2012 (“Griffin”) (Ex. 1027).
`Petitioner further relies on testimony of its declarant, Benjamin B.
`Bederson, Ph.D. (Ex. 1003, -1012 Ex. 1003).
`
`
`
`D. The Asserted Grounds
`Petitioner challenges the patentability of claims 1–4, 6, 7, 9–13, and
`15–17 of the ’419 patent on the following grounds:
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`Claims Challenged
`1–4, 6, 7, 9–13, 15–17
`1–4, 6, 7, 9–13, 15–17
`Pet. 7; -1012 Pet. 6.
`
`
`35 U.S.C. §
`103(a)4
`103(a)
`
`Reference(s)/Basis
` Griffin, Davis, iOS
` Goertz, Davis, 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 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.
`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) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see
`also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`
`
`4 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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`Neither Petitioner nor Patent Owner proposes constructions for any of
`the claim terms. Pet. 11; PO Resp. 6. We do not find it necessary to
`expressly 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) (“we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (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.”5 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
`
`5 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,
`did not present any such evidence during trial.
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`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)).
`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 dispute
`Petitioner’s proposed definition of the person of ordinary skill for purposes
`
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`of this trial. PO Resp. 7. Based on the full record developed during trial,
`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, 9–13, and 15–17 are
`unpatentable as obvious under 35 U.S.C. § 103(a) over Griffin, Davis, and
`iOS. Pet. 12–54; -1012 Pet. 25–41. For the reasons that follow, Petitioner
`has demonstrated by a preponderance of the evidence that claims 1–4, 6, 7,
`and 9 are unpatentable on this ground, but has not demonstrated by a
`preponderance of the evidence that claims 10–13 and 15–17 are
`unpatentable 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, code (57). 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
`include devices such as: a touchscreen, mouse, track ball, infrared
`fingerprint detector, or a roller wheel with dynamic button pressing
`capability.” Id. ¶¶ 62, 77.
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`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
`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 an upward and rightward arcuate
`path 550 along touchscreen display 510 towards the 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
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`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
`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’s 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
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`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
`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.” 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. As shown
`in the diagram, 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.
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`4. Claim 1
`Petitioner asserts that the combination of Griffin, Davis, and iOS
`teaches the limitations recited in claim 1. Pet. 12–54. A detailed analysis of
`Petitioner’s assertions, and Patent Owner’s responses, is set forth below for
`each limitation of claim 1.
`
`a. “A mobile communication terminal comprising:”
`Petitioner argues that Griffin discloses “a mobile communication
`terminal,” as recited in the preamble of claim 1, in the form of user device
`100, which “may be a mobile device with two-way communication and
`advanced data communication capabilities.” Pet. 26 (citing Ex. 1027 ¶ 59).
`Patent Owner does not address this claim language; therefore any such
`arguments are waived. See Novartis AG v. Torrent Pharms. Ltd., 853 F.3d
`1316, 1330 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1381 (Fed. Cir.
`2016).6 Based on the entirety of the record, we find that Petitioner has
`shown that Griffin teaches the language in the preamble of claim 1.7
`
`b. “a touch screen display”
`For this limitation, Petitioner points to Griffin’s statement that the
`device’s “auxiliary subsystem 112 can include devices such as: a
`touchscreen,” as well as a “smartphone equipped with a touchscreen display
`510.” Pet. 28 (citing Ex. 1027 ¶¶ 77, 86). Patent Owner does not
`specifically address this claim language. Based on the entirety of the record,
`
`
`6 As in NuVasive, the Scheduling Order in this proceeding cautioned Patent
`Owner that “any arguments for patentability not raised in the response may
`be deemed waived.” Paper 11, 6.
`7 Because Petitioner has sufficiently demonstrated that Griffin discloses the
`preamble, we need not and do not decide whether the preamble is limiting
`for purposes of this Decision.
`
`18
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`IPR2019-00614
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`
`we find that Petitioner has shown, by a preponderance of the evidence, that
`Griffin teaches this limitation.
`
`c. “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”
`Petitioner argues that iOS teaches a power button (the “Sleep/Wake
`button”), separate from a Home button, and that the power button is
`configured to turn the terminal on and off when pressed. Pet. 28 (citing Ex.
`1007, 20, 27). Petitioner submits an annotated figure of an iPhone from iOS,
`which is depicted below:
`
`
`Pet. 28 (citing Ex. 1007, 20). The annotated iPhone diagram above shows a
`“Sleep/Wake button” located on the bottom of the device, and a “Home
`button” on the front of the device below the touch screen. Id.
`
`19
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`IPR2019-00614
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`
`Petitioner also points to the following disclosure in iOS:
`Turn iPhone completely off: Press and hold the
`Sleep/Wake button for a few seconds until the red slider
`appears, then drag the slider. . . .
`Turn iPhone on: Press and hold the Sleep/Wake button
`until the Apple logo appears.
`Id. (citing Ex. 1007, 27).
`Turning to Griffin, Petitioner argues that Griffin shows an activation
`button (home button or convenience button 520) located outside the touch
`screen display (touchscreen display 510). Pet. 29. To illustrate, Petitioner
`provides an annotated version of Griffin’s Figure 5B, reproduced below:
`
`
`Pet. 29 (citing Ex. 1027, Fig. 5B). As shown in Petitioner’s annotated
`Figure 5B above,
`device 100 . . . is also provided with a single ‘home’ button or
`convenience button 520, positioned at the center along an edge
`of the display 510. [A]n adult user’s thumb is 500 is capable of
`depressing the convenience button 520 while the device 100 is
`held in the same hand, if the button 520 must be pressed in
`order to be actuated. The depression of the convenience button
`520 . . . constitutes the initiation of an unlock action.
`Id. (citing Ex. 1027 ¶ 86).
`
`20
`
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`IPR2019-00614
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`
`Petitioner points to the following disclosure of Griffin for claim 1’s
`requirement that the activation button is “configured for pressing to turn on
`the touch screen display” from a sleep mode:
`[W]ith reference to FIG. 2, . . . to conserve the battery the
`device may be configured to enter a sleep mode 210 in which
`the screen is blanked . . . from an initial active state 200. The
`screen may be reactivated upon detection of an input 212
`received via a user input interface that may also be integrated
`into the device, such as the keypad or a convenience key.
`Pet. 30 (citing Ex. 1027 ¶ 25).
`Patent Owner argues that neither Griffin nor iOS discloses this
`limitation. PO Resp. 15. Patent Owner argues that Griffin fails to disclose a
`power button, and thus cannot teach an activation button separate from the
`power button. Id. According to Patent Owner, iOS’s “home button” is not
`an “activation button” because it unlocks the device but does not turn on the
`touch screen display. Id.
`We find that Petitioner has sufficiently demonstrated that the
`combination of Griffin and iOS teaches these limitations. Griffin discloses a
`smartphone with an activation button outside the touch screen display in the
`form of home button 820 which, when pressed, turns on the touch screen
`display. Ex. 1027 ¶¶ 25, 86, Fig. 5B. iOS discloses a similar smartphone
`that includes a home button that looks virtually identical to Griffin’s home
`button, as well as an additional “Sleep/Wake” button that turns the power on
`and off. Ex. 1007, 20. iOS further discloses that its home button, when
`pressed, turns on the display (to show a slider that can be dragged to unlock
`the phone). Id. at 26–27. Thus, the Griffin/iOS combination includes a
`home button that turns on the display, and a separate power button that turns
`the power on and off, as in claim 1. Patent Owner’s arguments that Griffin
`
`21
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`
`alone does not teach an activation button separate from the power button,
`and that iOS alone does not teach an activation button that can be pressed to
`turn on the touch screen display, improperly attack the references
`individually rather than the combination relied on by Petitioner. See
`Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) (“A
`finding of obviousness . . . cannot be overcome ‘by attacking references
`individually where the rejection is based upon the teachings of a
`combination of references.’” (quoting In re Merck & Co., 800 F.2d 1091,
`1097 (Fed. Cir. 1986))); In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir.
`2012) (holding that the test for obviousness is “what the combined teachings
`of the references would have suggested to those having ordinary skill in the
`art”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006)
`(explaining that in an obviousness analysis, “the prior art must be considered
`as a whole for what it teaches”).
`Consequently, we find that Petitioner has shown that these limitations
`of claim 1 are met by the combination of Griffin and iOS.
`
`d. “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 sc
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