Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 1 of 14
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`FIRSTFACE CO., LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE, INC.,
`
`Defendant.
`
`Case No. 3:18-cv-02245-JD
`
`
`CLAIM CONSTRUCTION ORDER
`
`Re: Dkt. No. 61
`
`
`
`
`
`
`
`The parties in this patent infringement action seek construction of eight phrases from the
`
`asserted claims in U.S. Patent No. 9,633,373 (the ’373 patent) and U.S. Patent No. 9,779,419
`
`(the ’419 patent).1 The Court received full briefing from the parties and held a technology tutorial.
`
`During the technology tutorial, defendant Apple made a comment to the effect that plaintiff
`
`Firstface had asserted inconsistent construction positions before the Patent Trial and Appeal
`
`Board. The Court invited each side to file a ten-page supplemental brief on the issue. Dkt. No.
`
`118. Apple chose to file almost 900 pages of materials that ranged far beyond PTAB proceedings.
`
`Dkt. No. 123. The Court ordered this improper and massively oversized filing to be stricken from
`
`the docket, and allowed the parties to file the ten-page submissions as originally contemplated.
`
`See Dkt. Nos. 192 (strike order), 130 (Apple), 131 (Firstface).
`
`
`1 The parties’ briefing on claim construction also included terms from U.S. Patent No. 8,831,557
`(the ’557 patent). See, e.g., Dkt. No. 61. All asserted claims of the ’557 patent, and some of the
`asserted claims of the ’373 and ’419 patents were found unpatentable in inter partes review (IPR)
`proceedings before the Patent Trial and Appeal Board (PTAB). Dkt. No. 106. The final written
`decisions of PTAB were all affirmed by the Federal Circuit. Id. Only claims 11-14 and 18 of the
`’373 patent and claims 10-13 and 15-17 of the ’419 patent remain in this suit. Id.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 2 of 14
`
`
`
`BACKGROUND
`
`Firstface asserts claims 11-14 and 18 of the ’373 patent and claims 10-13 and 15-17 of the
`
`’419 patent against Apple. Dkt. No. 1 at ¶¶24, 37; Dkt. No. 106 at 2. The ’373 patent and ’419
`
`patent are both continuations of the same application and share a common specification. See Dkt.
`
`No. 61-3; Dkt. No. 61-4. The patents describe a mobile communication terminal and method for
`
`operating the mobile communication terminal that allows for simultaneous activation of the
`
`display screen and user authentication. Dkt. No. 61-3 at 1:17-23. The prior art required a
`
`separation of these functions, requiring that the device be activated first and then requiring a
`
`second input to authenticate the user. Id. at 25-49. The activation button may also be used to
`
`perform multiple functions if the button is pressed multiple times or for a longer period of time.
`
`Id. at 4:51-5:2. The ’373 patent and ’419 patent primarily differ in the specificity of their claims;
`
`the ’373 patent’s claims are more general with regard to their claiming of the functions of the
`
`activation button while the ’419 patent claims the use of fingerprint recognition and authentication
`
`specifically as a function of the activation button. Compare Dkt. No. 61-3 at 14:14-57 with Dkt.
`
`No. 61-4 at 14:15-65.
`
`I.
`
`LEGAL STANDARD
`
`DISCUSSION
`
`Claim construction analysis “‘must begin and remain centered on the claim language itself,
`
`for that is the language the patentee has chosen to particularly point[] out and distinctly claim[] the
`
`subject matter which the patentee regards as his invention.’” Source Vagabond Sys. Ltd. v.
`
`Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (quoting Innova/Pure Water, Inc. v. Safari
`
`Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). Claim terms are given their
`
`“ordinary and customary meaning,” which is “the meaning that the term would have to a person of
`
`ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal quotation omitted). “The subjective intent of
`
`the inventor when he used a particular term is of little or no probative weight in determining the
`
`scope of a claim (except as documented in the prosecution history).” Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 985 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 3 of 14
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`“Rather the focus is on the objective test of what one of ordinary skill in the art at the time of the
`
`invention would have understood the term to mean.” Markman, 52 F.3d at 986. The parties do
`
`not dispute the definition of a person of ordinary skill in the art.
`
`As the Federal Circuit has underscored, the “only meaning that matters in claim
`
`construction is the meaning in the context of the patent.” Trustees of Columbia Univ. v. Symantec
`
`Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). The presumption that plain and ordinary meaning
`
`can be overcome only by a patentee’s express definition of a term or express disavowal of the
`
`scope of the claim has been clarified. Id. at 1364. A term may be redefined “by implication”
`
`when given a meaning that is ascertainable from a reading of the specification or the patent
`
`documents. Id. Redefinition and disavowal need not be expressly stated or called out in haec
`
`verba. Id. at 1363. “The ordinary meaning of a claim term is not the meaning of the term in the
`
`abstract,” but the term’s “meaning to the ordinary artisan after reading the entire patent.” Astra
`
`Zeneca AB v. Mylan Pharm. Inc., 19 F.4th 1325, 1330 (Fed. Cir. 2021) (quotations omitted)
`
`(quoting Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1320 (Fed. Cir. 2016)).
`
`With this teaching, the rule that a claim and its constituent words and phrases are
`
`interpreted in light of the intrinsic evidence flourishes anew. The touchstones are the claims
`
`themselves, the specification and, if in evidence, the prosecution history. Phillips, 415 F.3d at
`
`1312-17. This intrinsic evidence is the most significant source of the legally operative meaning of
`
`disputed claim language. Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir.
`
`2019). The claim language can “provide substantial guidance as to the meaning of particular
`
`claim terms,” both through the context in which the claim terms are used and by considering other
`
`claims in the same patent. Phillips, 415 F.3d at 1314. The specification is also a crucial source of
`
`information: although it is improper to read limitations from the specification into the claims, the
`
`specification is “the single best guide to the meaning of a disputed term.” Id. at 1315 (“[T]he
`
`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
`
`dispositive . . .’”) (internal quotations omitted); see also Merck & Co., Inc. v. Teva Pharms. USA,
`
`Inc., 347 F.3d 1367, 1370 (Fed. Cir. 2003) (“[C]laims must be construed so as to be consistent
`
`with the specification . . .”). But courts may also use extrinsic evidence (e.g., dictionaries,
`
`3
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 4 of 14
`
`
`
`treatises) to resolve the scope and meaning of a claim when circumstances warrant that. Phillips,
`
`415 F.3d at 1317.
`
`II.
`
`CLAIM CONSTRUCTION
`
`A.
`
`“inactive state”/ “while the touch screen display is turned off” (’373 patent
`claims 11-12; ’419 patent claims 10, 12, 16-17)
`
`Firstface’s Proposed
`Construction
`“a state in which the display is
`turned off yet the device itself
`is turned on”
`
`Apple’s Proposed
`Construction
`“state in which the display is
`not receiving power”
`
`Court’s Construction
`
`“a state in which the device is
`communicable but a display
`screen is turned off”
`
`The term “inactive state” is expressly defined in the shared specification of the ’373 and
`
`’419 patents. “The term ‘inactive state’ used herein refers to a state in which the mobile
`
`communication terminal is communicable but a display screen is turned off.” Dkt. No. 61-32 at
`
`3:21-23. It is a core principle of claim construction that the patentee may act as his own
`
`lexicographer if the specification defines a term “with reasonably clarity, deliberateness, and
`
`precision.” Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1354 (Fed. Cir. 2003); see
`
`also Level Sleep LLC v. Sleep Number Corp., 2021 WL 2934816, at *4 (Fed. Cir. Jul. 13, 2021)
`
`(unpublished) (“[W]here a patent applicant has elected to be a lexicographer by providing an
`
`explicit definition in the specification for a claim term, the definition selected by the applicant
`
`controls.”) (internal quotes omitted) (cleaned up). Despite this definition of the term in the
`
`specification, both parties offer a different proposed construction.
`
`Firstface acknowledges the definition of “inactive state” in the specification, but relies on
`
`additional teachings from the specification to say that the inactive state requires that a state where
`
`the device is completely turned off is excluded. Dkt. No. 61 at 12. Apple says that Firstface is
`
`attempting to read-in a requirement that the device must be turned on while the display is in an
`
`inactive state. Dkt. No. 69 at 10. The specification explains that “a state in which the mobile
`
`
`2 The ’373 patent and ’419 patent share a specification. Consequently, the Court cites to just the
`specification of the ’373 patent for claim terms and disclosures found in both the ’373 and ’419
`patents.
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 5 of 14
`
`
`
`communication terminal is completely turned off is excluded.” Dkt. No. 61-3 at 3:29-31. This
`
`teaching in the specification completely contradicts Apple’s position.
`
`Even so, the Court declines to adopt Firstface’s construction, which also is different from
`
`the definition provided by the specification. In Abbott, the Federal Circuit found that the
`
`specification’s definition was not sufficiently clear because portions of the passage defining a
`
`claim term provided two alternative definitions. Abbott, 334 F.3d at 1355. That is not the case
`
`with “inactive state.” There is nothing inconsistent between the definition that explains that “the
`
`mobile communication is communicable but a display screen is turned off,” and the further
`
`clarification that excludes a state where “the mobile communication terminal is completely turned
`
`off.” Dkt. No. 61-3 at 3:21-23, 3:29-31.
`
`Apple suggests that its construction is proper based on a proposed construction of “an OFF
`
`state of the display unit,” which it says should have the same construction as “inactive state.”
`
`First, “OFF state” is not a claim term in the ’373 and ’419 patents, but a term that appeared in the
`
`’557 patent, which is no longer in this case. Apple points to statements in the prosecution history
`
`of the ’557 patent, where Firstface distinguished a piece of prior art that described “switching from
`
`the OFF state of the power of the device to the ON state of the power of the device.” Dkt. No. 69-
`
`10 at 8. Firstface stated to the examiner that activation related to the OFF and ON states of the
`
`display screen, not the power of the device. Id. This does not change the Court’s view that the
`
`definition contained in the specification is the correct definition for “inactive state.” The
`
`specification makes clear that while the inactive state is a reference to the state of the display
`
`screen, the mobile communication terminal is still communicable, and that the mobile
`
`communication terminal is turned on. Dkt. No. 61-3 at 3:23-31.
`
`Consequently, the Court construes the term “inactive state” as it is defined in the
`
`specification, to mean “a state in which the device is communicable but a display screen is turned
`
`off.”
`
`5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 6 of 14
`
`
`
`B.
`
`“active state” (’373 patent claims 11-12; ’419 patent claims 10, 12-13, 16-17)
`
`Firstface’s Proposed
`Construction
`“a state in which the display is
`turned on”
`
`Apple’s Proposed
`Construction
`“state in which the display is
`receiving power”
`
`Court’s Construction
`
`“a state in which the display
`screen of the device is turned
`on”
`
`As with the term “inactive state,” the term “active state” is expressly defined in the shared
`
`specification of the ’373 and ’419 patents. “The term ‘active state’ used herein refers to a state in
`
`which the display screen of the mobile communication terminal is turned on.” Dkt. No. 61-3 at
`
`3:32-34.
`
`Firstface and Apple view the “active state” as the opposite of the “inactive state.” Dkt. No.
`
`61 at 12; Dkt. No. 69 at 12. The definition of “active state” in the specification is consistent with
`
`the parties’ view that it is the opposite of the “inactive state” as defined in the specification. The
`
`“active state” is defined as the state in which the display screen is turned on, while the “inactive
`
`state” was the state in which the display screen is turned off. Dkt. No. 61-3 at 3:21-40. Aside
`
`from the parties’ constructions mirroring their proposals for “inactive state,” which the Court has
`
`already declined, the parties offer no reason to depart from the explicit definition in the
`
`specification for “active state.” Consequently, the Court construes the term “active state” to be “a
`
`state in which the display screen of the device is turned on.”
`
`C.
`
`“activation button” (’373 patent claims 11-12, 18; ’419 patent claims 10, 16)
`
`Firstface’s Proposed
`Construction
`“button that, while the device
`is on, switches the display
`from a state in which the
`display is turned off to a state
`in which the display is turned
`on.”
`
`Apple’s Proposed
`Construction
`“depressible component that
`activates”
`
`Court’s Construction
`
`“a means for switching the
`device from the inactive state
`to the active state”
`
`The term “activation button” is defined in the specification as a “means for switching the
`
`mobile communication terminal from the inactive state to the active state.” Dkt. No. 61-3 at 4:22-
`
`24. The parties nevertheless dispute the construction of “activation button,” focusing primarily on
`
`whether or not the activation button is required to be a mechanical button, or is broad enough to
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 7 of 14
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`also encompass “software-based buttons” that appear on a touch screen. See Dkt. No. 61 at 7-10;
`
`Dkt. No. 69 at 3-7.
`
`Apple believes that the activation button must be a “depressible component” because the
`
`specification and claims require that the button be pressed, separate from the display, and
`
`operational while not receiving power. Dkt. No. 69 at 5. Apple says that these constraints on the
`
`activation button mean that the button must be a mechanical button, rather than a software-based
`
`button. Id.
`
`The point is not well taken. Although the specification and claims make clear that the
`
`activation button is “required to be formed on a part different from that of the display unit,” Dkt.
`
`No. 61-3 at 3:58-60, that requirement does not mean that the activation button can only be a
`
`mechanical button. For example, the specification explains that the activation button may include
`
`a sub-display unit, id. at 4:14-16, that would allow the activation button to be a software-based
`
`button. Further, to the extent that the button must be pressed, nothing in the specification suggests
`
`that only a mechanical button may be “pressed.”
`
`Apple’s suggestion that the button must be operational while the mobile communication
`
`terminal is not receiving power is unsupported. Apple relies on the specification’s discussion of
`
`an “ON/OFF button” to say that the activation button must be operational even when the mobile
`
`communication terminal is not receiving power. Dkt. No. 69 at 5; Dkt. No. 61-3 at 4:11-21. But
`
`the ON/OFF button described in the specification is distinct from the activation button. The
`
`ON/OFF button is described as a button that can be used to completely turn on and off the mobile
`
`communication terminal or switch it to the inactive state. Dkt. No. 61-3 at 4:11-21. While this
`
`ON/OFF button would need to be operational even when the mobile communication terminal is
`
`not receiving power, this button is also distinct from the activation button. Id. In contrast to the
`
`ON/OFF button, the activation button switches the mobile communication terminal from the
`
`inactive state to the active state. Id. at 4:22-24. Because the inactive state, as construed by the
`
`Court above, is a state when the mobile communication terminal is communicable but the display
`
`is turned off, the activation button does not need to be operational while the terminal is turned off,
`
`as Apple says.
`
`7
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 8 of 14
`
`
`
`Apple says that the Court should adopt its proposed construction because the claim will
`
`otherwise lack written description. Dkt. No. 69 at 5-6. But “[w]here the meaning of a claim term
`
`is clear,” the Court will “not rewrite the claim to preserve its validity.” Hill-Rom Servs., Inc. v.
`
`Stryker Corp., 755 F. 3d 1367, 1374 (Fed. Cir. 2014). The term “activation button” is clear from
`
`the specification. There is no reason to depart from these clear disclosures to preserve the claim’s
`
`validity.
`
`Consequently, the Court construes the term “activation button” to mean “a means for
`
`switching the device from the inactive state to the active state.”
`
`D.
`
`“pressing of the activation button”/ “an activation button for pressing” (’373
`patent claims 11-12, 18; ’419 patent claims 10, 16)
`
`Firstface’s Proposed
`Construction
`Plain and ordinary meaning
`
`Apple’s Proposed
`Construction
`“moving the activation button
`in response to pressure”/ “an
`activation button for moving
`in response to pressure”
`
`Court’s Construction
`
`Plain and ordinary meaning
`
`Apple’s construction of “pressing of the activation button” is part and parcel of the effort
`
`to require that the activation button be a mechanical button. Apple’s primary concern is that the
`
`claims “recite pressing -- not just touching -- the button.” Dkt. No. 69 at 4. Apple points to no
`
`evidence from the specification to support its proposed construction that “pressing” requires
`
`“moving in response to pressure,” instead relying on dictionary definitions. Id. at 5. “In the
`
`absence of an express intent to impart a novel meaning to claim terms, an inventor’s claim terms
`
`take on their ordinary meaning.” Starhome GmbH v. AT & T Mobility LLC, 743 F.3d 849, 857
`
`(Fed. Cir. 2014) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
`
`2002)).
`
`Nothing in the specification suggests that the patentee intended to impart a special meaning
`
`to “pressing” or that the term is not readily understood by a person of ordinary skill in the art.
`
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1367-68 (Fed. Cir. 2012). The Court
`
`concludes that “pressing” should be given its plain and ordinary meaning.
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 9 of 14
`
`
`
`E.
`
`“fingerprint recognition” (’419 patent claim 10)
`
`Firstface’s Proposed
`Construction
`Plain and ordinary meaning
`
`Apple’s Proposed
`Construction
`“process whereby a detected
`fingerprint is compared with a
`pre-stored fingerprint”
`
`Court’s Construction
`
`“process whereby a detected
`fingerprint is compared with a
`pre-stored fingerprint,
`including detecting and
`extracting a fingerprint”
`
`The parties’ dispute over the term “fingerprint recognition” focuses on whether the term is
`
`limited to comparing a detected fingerprint with a pre-stored fingerprint, or whether it also
`
`encapsulates the detection and extraction of the fingerprint. Apple says that “fingerprint
`
`recognition” is a single step of comparing a detected fingerprint to a pre-stored fingerprint, Dkt.
`
`No. 69 at 16-17, while Firstface says that fingerprint recognition includes not just this comparison
`
`step but also the steps of detecting and extracting a fingerprint, Dkt. No. 76 at 10-11. Within the
`
`context of the specification, the Court finds fingerprint recognition is not limited to solely the
`
`comparison of a detected fingerprint to a pre-stored fingerprint.
`
`To start, common sense indicates that fingerprint recognition must include the steps of
`
`detecting and extracting a fingerprint. To compare a detected fingerprint to a pre-stored
`
`fingerprint, the device must have some means for detecting and extracting the fingerprint. This
`
`common-sense understanding is confirmed by the specification. While the specification does not
`
`describe fingerprint recognition in any detail, it does describe iris recognition and states that
`
`fingerprint recognition may be a substitute for iris recognition. Dkt. No. 61-4 at 7:14-8:20. The
`
`description of iris recognition makes clear that before the a detected iris can be compared to pre-
`
`stored iris information, the user’s iris must first be detected and extracted. Id. at 7:38-46. This is
`
`equally true for fingerprint recognition.
`
`The language of the claims provide additional support for this understanding of
`
`“fingerprint recognition.” The claims recite fingerprint recognition, but not separate fingerprint
`
`detection and extraction steps. See, e.g., id. at 14:15-65. In the absence of recited detection and
`
`extraction steps, and because the comparison of a detected fingerprint to a pre-stored fingerprint
`
`necessarily requires that a fingerprint first be detected and extracted, those steps must be included
`
`in the meaning of the term “fingerprint recognition.”
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 10 of 14
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`In the supplemental briefing, Apple says that Firstface distinguished the prior art before the
`
`PTAB as involving a multi-step process as opposed to the one-step process in the challenged
`
`claims. Dkt. No. 130 at 4. The record, however, indicates that Firstface’s position before the
`
`PTAB was that the prior art required multiple inputs to both activate the device and perform
`
`fingerprint recognition, while Firstface’s invention required only one input. Id. at 4; see also Dkt.
`
`No. 131 at 3.
`
`Consequently, the Court construes “fingerprint recognition” to mean “process whereby a
`
`detected fingerprint is compared with a pre-stored fingerprint, including the steps of detecting and
`
`extracting a fingerprint.”
`
`F.
`
`“fingerprint authentication” (’373 patent claims 11, 13-14, 18; ’419 patent
`claims 10, 12, 15, 17)
`
`Firstface’s Proposed
`Construction
`Plain and ordinary meaning
`
`Apple’s Proposed
`Construction
`“process whereby current user
`is authenticated as a true user
`if the two fingerprints match”
`
`Court’s Construction
`
`“process whereby current user
`is authenticated as a true user
`if the two fingerprints match”
`
`As with “fingerprint recognition,” the dispute over the term “fingerprint authentication” is
`
`centered on whether “fingerprint authentication” is limited to just authenticating a current user as a
`
`true user if two fingerprints match, Dkt. No. 69 at16-17, or if it also encompasses the steps of
`
`detecting and extracting a fingerprint, and then comparing that fingerprint to pre-stored fingerprint
`
`information, Dkt. No. 76 at 10-11. Although the Court agrees with Apple that “fingerprint
`
`authentication” is limited to authenticating a current user as a true user if two fingerprints match,
`
`the Court observes that fingerprint recognition is a necessary predicate for “fingerprint
`
`authentication.”
`
`The shared specification of the ’373 and ’419 patents explains that the user authentication
`
`process is performed upon pressing the activation button. Dkt. No. 61-3 at 7:15-17. The
`
`specification continues by describing the process that occurs after the activation button is pressed
`
`(again using iris recognition, rather than fingerprint recognition). Id. at 7:34-46. This process
`
`includes detection of the iris, extraction of the iris, comparison of the user’s iris to pre-stored iris
`
`information, and finally authentication of the current user as the true user based on a match
`
`10
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 11 of 14
`
`
`
`between the user’s iris and pre-stored iris information. Id. This entire process is described as the
`
`“user authentication process,” Id. at 7:16, but the final step of the process is also called
`
`“authentication.” Id. at 7:45-46.
`
`The claim language is also instructive on the meaning of “fingerprint authentication.”
`
`Claim 10 of the ’419 patent recites that the device performs “a fingerprint authentication function
`
`using fingerprint recognition without additional user input.” Dkt. No. 61-4 at 14:30-31. This
`
`suggests that while fingerprint recognition is not a part of the fingerprint authentication process,
`
`fingerprint recognition necessarily is performed before fingerprint authentication and its outputs
`
`are used in fingerprint authentication. Consequently, the Court construes “fingerprint
`
`authentication” to mean “process whereby current user is authenticated as a true user if the two
`
`fingerprints match.”
`
`G.
`
`“in response to the one-time pressing of the activation button, the first
`function is performed . . ., and . . . the second function is performed when the
`one-time pressing is for a long time longer than a reference time period” (’373
`patent claim 11)
`
`Firstface’s Proposed
`Construction
`Plain and ordinary meaning
`
`Court’s Construction
`
`Plain and ordinary meaning
`
`Apple’s Proposed
`Construction
`“in response to the one-time
`pressing of the activation
`button, the first function is
`performed . . ., and . . . the
`second function is performed
`instead when the one-time
`pressing is for a long time
`longer than a reference time
`period”
`
`The parties’ dispute over this claim stems from Apple’s insertion of “instead” into the
`
`claim term. Dkt. No. 61 at 18. Firstface says that the claim term is readily understandable and
`
`requires no construction. Dkt. No. 61 at 18-19. Apple says that the claim language sets up two
`
`alternatives between a function performed with a one-time press and a function performed with a
`
`long press. Dkt. No. 69 at 22. Apple’s reading of the claim would foreclose the possibility that
`
`when the activation button is pressed initially the first function occurs and as the activation
`
`continues to be pressed as a long press, the second function also occurs. Id. at 22.
`
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 12 of 14
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Apple’s proposed construction is based on a set of particular functions that Apple says
`
`would not logically make sense if both functions were performed on a long press. In Apple’s
`
`hypothetical, the first function is activation of the hands free mode and the second function is
`
`playing music. Id. at 22-23. Apple’s expert, Dr. Nieh, says that these two functions would be
`
`contradictory because music is typically paused while voice command functionality is initiated.
`
`Dkt. No. 69-1 at ¶ 47. Apple also points to several examples in the specification that set up
`
`alternative functions that are not both performed upon a long press. See Dkt. No. 69 at 22-23;
`
`Dkt. No. 61-3 at 8:41-61.
`
`There is no good reason to limit the claims as Apple urges. Apple references cases where
`
`the Federal Circuit limited claims as a result of the examples in the specification even though the
`
`claim language could be read broadly, Dkt. No. 69 at 23, but those cases are readily
`
`distinguishable from the facts here. In Biogen, Inc. v. Berlex Laboratories, Inc., the specification
`
`contained express language limiting the definition of the claim term. Biogen, 318 F.3d 1132,
`
`1139-40 (Fed. Cir. 2003); see also Liebel-Flarsheim Co v. Medrad, Inc., 358 F.3d 898, 907 (Fed.
`
`Cir. 2004) (distinguishing Biogen on the basis that there was no express narrowing in the
`
`specification). In Wang Laboratories, Inc. v. America Online, Inc., a claim term was limited
`
`because there was evidence that the patentee was unable to implement the broader scope that
`
`would have been captured by a broader reading of the claim term. Wang, 197 F.3d 1377, 1382-83
`
`(Fed. Cir. 1999). And in O.I. Corp. v. Tekmar Co., the specification expressly disclaimed the
`
`scope that the patentee was trying to capture during claim construction when the specification
`
`distinguished itself from the prior art. O.I. Corp, 115 F.3d 1576, 1581 (Fed. Cir. 1997).
`
`In contrast, while the specification of the ’373 patent does not provide a specific example
`
`where a long press results in both the first and second function being performed, the specification
`
`also fails to provide any reason for narrowing the claim to preclude that. This is more similar to
`
`the facts of Liebel-Flarsheim Co. v. Medrad, Inc., than any of the cases that Apple has cited. In
`
`Liebel-Flarsheim, all of the embodiments described in the specification included “pressure
`
`jackets,” but the Federal Circuit nevertheless found that “the written description [did] not contain a
`
`clear disavowal of embodiments lacking a pressure jacket.” Liebel-Flarsheim, 358 F.3d at 908.
`
`12
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:18-cv-02245-JD Document 137 Filed 06/15/22 Page 13 of 14
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`So too here. Although Apple has pointed to examples in the specification where a long press of
`
`the activation button does not result in both the first and second functions being performed, Apple
`
`has not pointed to any disavowal of that possibility.
`
`Apple’s reliance on the examiner’s remarks in the notice of allowance for the ’373 patent
`
`is equally unavailing. Although Apple contends that the examiner’s remarks show that the
`
`examiner understood the first and second functions were not both performed during a long press,
`
`Dkt. No. 69 at 24, the examiner’s remarks actually show that the examiner understood the
`
`invention to be non-obvious over the prior art bec