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
`U.S. Patent No. 9,779,419
`
`________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`

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`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................ 1
`I.
`II. THE ’419 PATENT AND THE CHALLENGED CLAIM ................................. 3
`A. Problem Presented ............................................................................................. 3
`III. Claim Construction ............................................................................................ 6
`IV. SUMMARY OF THE REFERENCES ............................................................. 7
`A. Griffin ................................................................................................................ 7
`B. Goertz ................................................................................................................ 8
`C. Davis .................................................................................................................. 9
`D. iOS ................................................................................................................... 10
`V. APPLICABLE LEGAL STANDARDS ............................................................. 11
`A. Standard for Institution .................................................................................... 11
`B. Obviousness ..................................................................................................... 11
`VI. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIM IS UNPATENTABLE UNDER GROUND 1. ............... 13
`A. Griffin 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. ......................................................................... 13
`B. The Deficiencies of Griffin Are Not Resolved by Davis. ............................... 16
`C. A POSITA Would Not Combine Griffin With Davis to Arrive at the Claimed
`Invention. ............................................................................................................... 19
`VII. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIM IS UNPATENTABLE UNDER GROUND 2. ............... 20
`A. Goertz Does Not Disclose an Activation Button Configured for Pressing to
`Turn On the Touch Screen Display. ...................................................................... 21
`B. Goertz Does Not Disclose Turning On the Display and Performing a
`Fingerprint Authentication Function in Response to a One-Time Pressing of the
`Activation Button. .................................................................................................. 23
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`‐ ii -
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`C. The Deficiencies of Goertz Are Not Resolved by Davis. ............................... 25
`VIII. CONCLUSION ............................................................................................... 25
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`‐ iii -
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`TABLE OF AUTHORITIES
`
`Cases:
`
`Bausch & Lomb v. Barnes-Hind/Hydrocurve,
`796 F.2d 443 (Fed. Cir. 1986) ........................................................................... 18
`
`
`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
`
`
`In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ......................................... 12, 20
`
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ............................................................................. 12
`
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ........................................................................... 11
`
`
`KSR Int’l. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................... 12
`
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ......................................................................... 12
`
`
`Rules and Statutes:
`
`35 U.S.C. § 103 ........................................................................................... 11, 12, 18
`
`35 U.S.C. § 103(a) .................................................................................................. 11
`
`35 U.S.C. § 282(b) .................................................................................................... 6
`
`35 U.S.C. § 314(a) .................................................................................................. 11
`
`37 C.F.R § 42.100(b) ................................................................................................ 7
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`‐ iv -
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`37 C.F.R. § 42.107 .................................................................................................... 1
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`37 C.F.R. § 42.108(c) .............................................................................................. 11
`
`Other Authorities:
`
`M.P.E.P § 2143.01(V) ....................................................................................... 12, 20
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) 11
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner Firstface Co., Ltd.
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`(“Firstface” or “Patent Owner”) submits this Preliminary Response to the Petition
`
`of Apple Inc. ( “Apple” or “Petitioner”) seeking inter partes review of claim 9 of
`
`U.S. Patent No. 9,779,419 (Ex. 1001, the “’419 patent”).1
`
`I.
`
` 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 claim, 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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`                                                            
`1 Apple previously filed an IPR Petition in IPR2019-00614 which challenged
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`claims 1-4, 6-7, 10-13, and 15-17 of the ’419 Patent. Patent Owner filed a
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`Preliminary Response in that proceeding. The Petition in that proceeding is
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`substantially similar to the Petition for the present case, except for the addition of
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`dependent claim 9. Patent Owner’s Preliminary Response in this proceeding is
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`substantially the same as the Preliminary Response in the -614 proceeding, except
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`that it argues that trial should not be instituted for dependent claim 9 because it
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`depends from claim 1, which itself does not merit trial institution.
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`

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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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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
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`thus increase the usefulness of a device without complicating the user interface
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`because the new functionalities (fingerprint authentication and a hands-free
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`operation) do not require additional buttons or other hardware; nor do they require
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`the user to perform additional steps to access these functionalities. A single press
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`of the activation button will turn on the display (as the user would expect), show a
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`lock screen, and perform the additional functions.
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`No prior art reference cited by Petitioner discloses activating a device
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`display (displaying the lock screen) and performing a fingerprint authentication
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`function, each in response to a one-time pressing of the activation button. The
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`primary references, Griffin and Goertz, disclose, instead, multi-step processes
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`requiring multiple user inputs. And Davis, the secondary reference that Petitioner
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`combines with Griffin or Goertz, does not fill the void. It also discloses a multi-
`
`step process requiring multiple user inputs. Thus, Petitioner’s proposed
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`combinations do not disclose the claimed invention. Because the prior art does not
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`disclose all limitations of the challenged claim, Petitioner has failed to show a
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`reasonable likelihood that challenged claim 9 is obvious.
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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`II. THE ’419 PATENT AND THE CHALLENGED CLAIM
`
`
`
`Problem Presented
`
`A.
`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-
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`processing and messaging applications, e-mail software, and numerous other
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`applications and features. As developers added functionality to these devices, they
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`also added complexity. For example, historically, newly-added functions required
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`that a device display be turned on before functions could be accessed or executed,
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`requiring a user to perform multiple initiating steps. Id., 1:34-45. Moreover, many
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`functions required new buttons, convoluting and congesting the user interface. Id.
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`The inventors of the asserted 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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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`The activation button can be used, for instance, to turn on the display and perform
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`a 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.
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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 initiate fingerprint authentication in response
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`to a one-time pressing of the activation button. See, e.g., id., claim 1. Claim 1 (as
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`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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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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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
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`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.
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`Dependent claim 9 adds the following:
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`9. The terminal of claim 1, wherein the terminal comprises a
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`smartphone which comprises an activation sensor configured to
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`detect pressing of the activation button and a user identification
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`module configured to perform the fingerprint authentication
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`function.
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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
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`civil action under 35 U.S.C. 282(b), including construing the claim in accordance
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`with the ordinary and customary meaning of such claim as understood by one of
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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`ordinary skill in the art and the prosecution history pertaining to the patent.” 37
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`C.F.R. § 42.100(b). Petitioner has not argued for any claim elements to be
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`construed and, for the purposes of this preliminary response, Patent Owner does
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`not seek the construction of any term.
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`IV. SUMMARY OF THE REFERENCES
`
`A. Griffin
`
`Griffin (Ex. 1027) is a United States Patent Application dated May 31, 2012,
`
`with a filing date of November 29, 2010. It was considered by the examiner during
`
`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, via two different inputs from the user. Ex. 1027
`
`at [0024]-[0025]. For example, Griffin discloses that a user may unlock a device by
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`pressing a button and then swiping in a specific way across the screen. See Ex.
`
`1027, Figs. 5A-5C. Griffin makes clear that a single input, such as a button press,
`
`is not enough to unlock a device: “[I]t can be seen that the foregoing methods and
`
`devices are configured to permit the device 100 to transition from a locked to an
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`unlocked state not simply on the basis of a single type of input, such as a keypress
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`or a single touch-screen gesture, but on the basis of a two-input or multiple-input
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`action that must be detected across a plurality of user input interfaces provided on
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`the device 100.” Ex. 1027 at [0116].
`
`B. Goertz
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`Goertz (Ex. 1013) is a U.S. Patent Application Publication dated January 21,
`
`2010, bearing a filing date of June 17, 2009. Goertz is titled “User Interface for
`
`Mobile Computer Unit,” and its Abstract explains that the invention relates to
`
`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.
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`Figures 12-15 show various “Key lock” functions of the phone. Figure 12
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`depicts, for instance, the device with a lock gadget and explains that by pressing
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`the 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
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`when the phone is unlocked, does not activate the gadget when the phone is
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`locked.” Ex. 1013 at [0060]. Goertz explains that unlocking the phone is achieved
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`by activating a home key. Id. Goertz further explains that in a “Key lock high
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`security mode,” as depicted in Figure 15, a keypad is displayed and a user is
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`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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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`And 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
`
`fingerprint is authenticated.” Id. at [0061]. Notably, Goertz does not disclose that
`
`the authentication process is any different when fingerprint recognition is used
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`instead of a security code. In other words, Goertz is limited to a multi-step process,
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`requiring multiple user inputs to unlock the device. Goertz never presents an
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`embodiment in which a one-time pressing of a button will both unlock a device
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`and perform an authentication function.
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`C. Davis
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`Davis (Ex. 1015) is the secondary reference that Petitioner includes in
`
`separate combinations with Griffin and Goertz. Davis is a U.S. Patent Application
`
`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
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`authentication to secure a device, and notes that two-factor or three-factor
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`authentication using a smart card and/or biometric information is more secure. Ex.
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`1015 at [0002]-[0004]. Davis recognizes that three-factor authentication, in
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`particular, can be cumbersome. It thus proposes that “a user may associate a
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`specific application with a stored fingerprint template such that the specific
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`application may be launched, if not already executing, on the mobile device 102
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`responsive to provision of [a] fingerprint to the fingerprint sensor 325.” Ex. 1015 at
`
`[0054]. Notably, nothing in Davis discusses the use of a button to turn on a display
`
`screen, let alone use that button to turn on the display screen and perform another
`
`function, like fingerprint authentication.
`
`D.
`
`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 a power button and that has certain software settings functions. According to
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`Petitioner, the home button depicted in the manual is used to turn on the device
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`display, and, according to Petitioner, iOS 3.1 was the operating system deployed in
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`iPhones as of September 9, 2009. For the purposes of this Response, Patent Owner
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`does not contest either point as immaterial to the denial of institution; though
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`whether the manual actually supports the proposition that the home button
`
`activates the display is, at best, unclear.
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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`V. APPLICABLE LEGAL STANDARDS
`
`A.
`
`Standard for Institution
`
`The Board may only grant a petition for inter partes review where “the
`
`information presented in the petition . . . shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). Petitioner bears the
`
`burden of showing that this statutory threshold has been met. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) (“The
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`Board . . . may institute a trial where the petitioner establishes that the standards
`
`for instituting the requested trial are met . . . .”).
`
`B. Obviousness
`
`Section 103 of the Patent Act provides that “[a] patent may not be
`
`obtained . . . if 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.” 35 U.S.C. § 103(a). If a single element of the
`
`claim is absent from the prior art, the claims cannot be considered obvious. See
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`CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(“[O]bviousness requires a suggestion of all limitations in a claim.”) (citing In re
`
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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`Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d 1531, 1534
`
`(Fed. Cir. 1993) (reversing obviousness rejection where prior art did not teach or
`
`suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs.
`
`LLC, Case No. IPR2012-00001, Paper 15 at 15 (PTAB Jan. 9, 2013) (refusing to
`
`institute an inter partes review under 35 U.S.C. § 103 where prior art did not
`
`disclose all claim limitations).
`
`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.
`
`2011) (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). “Rather,
`
`obviousness requires the additional showing that a person of ordinary skill at the
`
`time of the invention would have selected and combined those prior art elements in
`
`the normal course of research and development to yield the claimed invention.” Id.
`
`In other words, if a proposed modification or enhancement of a first prior art
`
`reference through the combination of a second prior art reference would result in
`
`the first reference being rendered unsuitable for its intended purpose, then there is
`
`no suggestion or motivation to make the proposed modification or enhancement. In
`
`re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984); see also M.P.E.P §
`
`2143.01(V).
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`As explained below, Petitioner has not established a reasonable likelihood
`
`that the challenged claim is unpatentable as obvious.
`
`VI. THE PETITION DOES NOT DEMONSTRATE THAT THE
`CHALLENGED CLAIM IS UNPATENTABLE UNDER GROUND 1.
`
`The Petition fails to demonstrate a reasonable likelihood that the challenged
`
`claim is unpatentable under Ground 1 because it has not Shown that independent
`
`claim 1, upon which the challenged claim is based, is unpatentable. Ground 1 is a
`
`three-reference obviousness combination comprised of Griffin, Davis, and iOS.
`
`The suggested combination does not disclose turning on the touch screen display
`
`(displaying a lock screen), performing a fingerprint authentication function, and, if
`
`the user is authenticated, releasing the lock state, all in response to a one-time
`
`pressing of the activation button—elements required for the independent claim
`
`upon which challenged claim 9 depends. See Pet. at 32-38 (claim elements labeled
`
`[1f], [1g], and [1h]). This ends the inquiry. Nevertheless, the included references
`
`are not properly combined in the first place, and thus cannot invalidate the
`
`challenged claim.
`
`A. Griffin 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.
`
`Griffin does not disclose turning on a display (displaying a lock screen) and
`
`
`
`performing a fingerprint authentication function in response to a one-time pressing
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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`of the activation button. Indeed, Petitioner merely argues that Griffin discloses
`
`that, upon receiving a first user input (a press of a button), a second user input
`
`interface is activated (which accepts a swipe of a finger or other user input). Pet. at
`
`33. Petitioner does not contend that anything is displayed on the screen upon
`
`receiving a first user input. Nor does Petitioner contend that Griffin ever performs
`
`fingerprint authentication. It instead relies on Davis to satisfy both elements. Thus,
`
`despite being Petitioner’s primary reference, Griffin fails to disclose two key
`
`requirements of the challenged claim—turning on the display to show a lock
`
`screen and performing a fingerprint authentication function (let alone releasing a
`
`lock state if the user is authenticated), both in response to a one-time pressing of
`
`the activation button.
`
`Even if Griffin could be said to disclose turning on the display to show a
`
`lock screen and performing a fingerprint authentication function, it discloses only a
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`multi-step process requiring multiple user inputs to activate the display (thus
`
`displaying a lock screen) and perform the authentication. Such is not the one-step
`
`process of the challenged claim.
`
`Griffin’s multi-step process is diagrammed in Figure 10 (reproduced and
`
`annotated below):
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`
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`The device begins in locked state 1000, in which “only minimal user input
`
`interfaces may be activated to receive a user input.” Ex. 1027 at [0117]. In
`
`response to a first unlock input, such as a key press, the device moves to an input
`
`enabled state 1010. “While in the input enabled state 1010, the device activates a
`
`further input interface, and awaits further input.” Id. (emphasis added). It is only
`
`after the device receives a second unlock input while in the input enabled state
`
`does the device move to unlocked state 1020. Thus, Griffin requires at least two
`
`user inputs to turn on the display, perform fingerprint authentication, and, if the
`
`user is authenticated, release the lock state, not the single user input (one-time
`
`pressing of the activation button) as required by the challenged claim.
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`The Deficiencies of Griffin Are Not Resolved by Davis.
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`B.
`Davis does not cure Griffin’s deficiencies. Like Griffin, Davis does not
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`disclose a one-time pressing of the activation button that both turns on the display
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`and performs a fingerprint authentication function. Davis instead discloses a multi-
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`stage authentication system requiring multiple user inputs.
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`Petitioner’s argument focuses on Figure 4 (reproduced and annotated
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`below):
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`As Petitioner recognizes, Figure 4 discloses “a combination of procedures to
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`unlock a device.” Pet. at 15. Specifically, the device initially receives an unlock
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`command when the user makes a selection from a dialog displayed on a mobile
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`device (highlighted in blue). Ex. 1015 at [0048]. In response, the device “arranges
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`for the presentation of an unlock dialog (step 404) to prompt the user to enter
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`authentication factors, such as a device and/or a smart card password.” Id. The
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`password entry steps are highlighted in red and purple in the annotated Figure 4.
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`The system then continues to verify the information. If a match is found, as shown
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`highlighted in yellow, the system “presents a dialog on the display to prompt the
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`user to provide a fingerprint candidate.” Id. at [0049]. “Responsive to being
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`prompted (step 416) to provide a fingerprint, it is expected that the user will
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`provide a fingerprint to the fingerprint sensor . . . .” Id. at [0051].
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`In essence, there are multiple steps involved in the authentication process of
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`Davis. Various dialogs are presented, and, in no way, is a device awakened and a
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`user authenticated in response to a one-time pressing of an activation button. Thus,
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`Davis lacks this crucial element of the challenged claim.
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`Petitioner presents a heavily-modified version of Figure 4 in its Petition
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`(reproduced below), in which all methods of authentication are omitted, except for
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`fingerprint authentication:
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`This is inappropriate. “It is impermissible within the framework of section 103 to
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`pick and choose from any one reference only so much of it as will support a given
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`position to the exclusion of other parts necessary to the full appreciation of what
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`such reference fairly suggests.” Bausch & Lomb v. Barnes-Hind/Hydrocurve, 796
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`F.2d 443, 448 (Fed. Cir. 1986). Nevertheless, Petitioner argues that “a single
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`biometric input mechanism may have been used to unlock a device and launch an
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`application.” Pet. at 17 (emphasis added). Petitioner argues that this alteration is
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`appropriate because Davis discloses that “many embodiments will only require a
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`subset of the authentication factors discussed in this application.” Ex. 1015 at
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`[0071]. But even Petitioner’s modified Figure 4 requires multiple steps. First, the
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`unlock command is received at step 402 (in blue). Then, a fingerprint dialog is
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`presented to the user (shown in yellow), and the user provides a fingerprint in
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`response. Ex. 1015 at [0052]. Thus, even in the scenario presented by Petitioner,
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`the reference requires more than a one-time pressing to unlock the device—it
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`requires multiple user inputs. Given that neither Griffin nor Davis can satisfy this
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`limitation (and Petitioner does not assert that iOS satisfies this claim limitation2),
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`the combination cannot satisfy the claim.
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`C. A POSITA Would Not Combine Griffin With Davis to Arrive at
`the Claimed Invention.
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`Finally, even if Petitioner could show that a Griffin / Davis combination3
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`yields the claimed invention, Petitioner has failed to demonstrate that Griffin and
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`Davis are properly combined. Indeed, a POSITA would not combine Griffin with
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`2 Petitioner argues that iOS satisfies the limitation of performing a “second
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`function” based upon a long press of the activation button. Patent Owner does not
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`address the sufficiency of iOS’s disclosure in this response, but only notes that
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`Petitioner has not pointed to iOS for satisfaction of the “fingerprint authentication
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`function” claim element. See Pet. at 32-36.
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`3 Recall that Ground 1 is a three-reference combination that includes iOS. As
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`discussed in Section IV.D., above, Petitioner relies on iOS for the presence of other
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`elements, including a “initiating a hands-free operation of the terminal.” Thus, its
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`inclusion in the combination as a secondary reference is immaterial to this
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`Preliminary Response.
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`Case IPR2019-01012
`U.S. Patent No. 9,779,419
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`Davis in the proposed manner because they each teach away from the simplicity
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`achieved by the challenged claim.
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`Griffin and Davis each recognize that unlocking a device should be a
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`complex process. Griffin teaches that a complex wake-up or unlock action may be
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`desirable to prevent accidental waking or unlocking of a device and, thus, requires
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`two separate user inputs. Similarly, Davis teaches that a multi-step authentication
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`process is desirable so that security is maximized. It explicitly criticizes single-
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`factor, password-based authentication while arguing in favor of two- or three-
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`factor authentication. Ex. 1015 at [0002]-[0004]. Thus, combining Griffin and
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`Davis in an effort to inval