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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
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`v.
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`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
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`Case IPR2019-00612
`Patent 8,831,557 B2
`____________
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`Record of Oral Hearing
`Held: May 5, 2020
`____________
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`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
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`571-272-7822
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`Paper No. 25
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00612
`Patent 8,831,557 B2
`____________
`
`Record of Oral Hearing
`Held: May 5, 2020
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
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`Case IPR2019-00612
`Patent 8,831,557 B2
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`GABRIELLE E. HIGGINS, ESQUIRE
`CHRISTOPHER M. BONNY, ESQUIRE
`Ropes & Gray LLP
`1900 University Avenue
`6th Floor East
`Palo Alto, California 94303
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`THOMAS CECIL, ESQUIRE
`Nelson Bumgardner Albritton PC
`3131 West 7th Street
`Fort Worth, Texas 76107
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, May 5,
`2020, commencing at 10:00 a.m. EDT, by video/by telephone.
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`Case IPR2019-00612
`Patent 8,831,557 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE ARBES: Good morning, everyone. This is Judge Arbes of
`
`the Patent Trial and Appeal Board. I have with me Judge Haapala and Judge
`Cass. This is the oral hearing in Case IPR2019-00612 involving Patent
`8,831,557. Can counsel please state your names for the record? Counsel for
`Petitioner?
`
`MS. HIGGINS: Good morning, Your Honors. This is Gabrielle
`Higgins and with me is Christopher Bonny of Ropes & Gray for Petitioners
`Apple and Samsung.
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`JUDGE ARBES: Okay, thank you. And, counsel --
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`MS. HIGGINS: And -- sorry, Your Honors, and we have with us
`today, by phone, representative Benjamin Huh from Apple, and Meghana
`RaoRane from Samsung.
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`JUDGE ARBES: Great. Thank you. And counsel for Patent Owner?
`
`MR. CECIL: Good morning, Your Honors. This is Tom Cecil from
`the law firm of Nelson Bumgardner Albritton. I’m here on behalf of the
`Patent Owner Firstface Co., Ltd. Also appearing, or not appearing, but with
`me, via phone, for Firstface are the individuals Jake Jung and Daniel Bae.
`
`JUDGE ARBES: Thank you. Per the Trial Hearing Order in this
`case, each party will have 60 minutes of time to present arguments. The
`order of presentation is, first, Petitioner will present its case regarding the
`challenged claims and may reserve time for rebuttal. Patent Owner then will
`respond to Petitioner’s presentation and may reserve time for surrebuttal.
`Petitioner then may use any remaining time to respond to Patent Owner’s
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`presentation, and finally, Patent Owner may use any of its remaining time
`for a brief surrebuttal responding to Petitioner’s rebuttal arguments only.
`
`A few reminders before we begin: There was a motion to seal granted
`as to two exhibits in this proceeding. The parties are reminded that this is a
`public hearing, so the parties should not discuss any of the confidential
`information that was filed under seal. We’ve also received the parties’
`demonstratives exhibits and are able to view them on our screens. To ensure
`that the transcript is clear and so that everyone can follow along, please refer
`to your demonstratives by slide number. Also please keep your
`microphones muted when you’re not speaking. When it is your turn to
`argue, please speak slowly, and if you hear another voice, please stop so that
`we do not talk over each other.
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`Also if either party believes that the other party is presenting an
`improper argument, we would ask you to please raise that during your own
`presentation rather than objecting at the time and interrupting the other
`party’s presentation. Obviously, we don’t have a clock in the hearing room
`here. I can keep time for the parties. I can give you a warning when you’ve
`gone into your rebuttal time if you’d like. And I believe we are ready to go.
`Any questions from the parties before we begin?
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`MR. CECIL: None from Patent Owner, Your Honor.
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`MS. HIGGINS: None here, Your Honor.
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`JUDGE ARBES: Thank you. Counsel for Petitioner, you may
`proceed, and would you like to reserve time for rebuttal?
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`MS. HIGGINS: May it please the Board at the outset, we would like
`to reserve 20 minutes of our time for rebuttal.
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`JUDGE ARBES: Okay. You may begin.
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`MS. HIGGINS: Thank you, Your Honor. If Your Honors would
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`please turn to slide 4 of Petitioner’s demonstratives; that’s Exhibit 1144.
`The Petitioners have provided our positions and our evidence in our briefing,
`but to assist the Board in considering the record, we plan to address today in
`our opening discussion the five topics here on slide 4 along with any
`questions, of course, the Board may have.
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`First, I will address for both grounds 1 and 2 the first issue, whether
`the combinations disclose the simultaneously limitations. Then my
`colleague Mr. Bonny will address for ground 2 whether Goertz discloses an
`activation button that switches the display from an inactive to an active state
`as well as motivation to combine for both grounds. But before we jump in, I
`would like to make two brief observations about the kinds of arguments and
`evidence that Patent Owner has put before this Board.
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`First, Patent Owner merely rehashes arguments already rejected by the
`Board at institution, and second, Patent Owner purports to agree with the
`Board’s construction of simultaneously, yet repeatedly applies a claim
`construction that is not the Board’s construction, and even under Patent
`Owner’s interpretation, the simultaneously limitations are still met. We ask
`the Board to bear these issues in mind as well as the principle that any
`argument not raised in Patent Owner’s response has been waived. That’s
`made clear in the Board’s Scheduling Order, Paper 12 at 6.
`
`Please turn to slide 5. Now, in its Institution Decision, the Board
`addressed claim construction for three terms, “simultaneously,” “inactive-
`active state,” and “user identification unit.” For each term, the parties have
`adopted the Board’s construction. The invalidity of the claims does not turn
`on any of the Board’s claim constructions, however before getting into the
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`disclosure of the references, I will briefly discuss a few points regarding the
`Board’s construction of “simultaneously” and Patent Owner’s construction
`of that application.
`
`Turning to slide 6. We see here on slide 6, claim 1 of the 557 patent.
`Claim element 1(e) recites, “wherein the user identification’s function is
`performed simultaneously with switching from the inactive state of the
`display to the active state of the display unit by pressing the activation
`button.” Claim 9, the other independent claim at issue in this proceeding
`includes a similar claim limitation.
`The Board in its Institution Decision construed “simultaneously” as
`when a user just presses the activation button, both the user identification
`function and switching from the inactive state of the display unit to the
`active state of the display unit are performed without additional steps. All
`parties have now adopted the Board’s construction of “simultaneously.”
`
`Turning to slide 7, the Board’s construction of “simultaneously” was
`based on statements made by applicants during prosecution to distinguish
`the Murakami reference. During prosecution, applicants stated that it is
`clear that the term “simultaneously” means that when a user just presses the
`activation button, both the user identification function and switching from
`the inactive state of the display unit to the active state of the display unit are
`performed without additional steps.
`
`Now, Patent Owner purports to agree with this definition that the
`Patent Owner responds to page 7, but throughout its response, Patent Owner
`attempts to add to this definition, “not sequential.” That’s, for example,
`Patent Owner Response 26, 31. The Board should reject Patent Owner’s
`attempt to add “not sequential” to the construction because it appears
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`nowhere in the claims or specification and is not part of applicant’s own
`prosecution history definition which the Board adopted for this proceeding.
`But regardless, as I will discuss, even under Patent Owner’s interpretation,
`the simultaneously limitation of the claims are still met.
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`Before I move into the grounds, do you Honors have any questions
`with respect to claim construction?
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`JUDGE ARBES: Counsel, just one question regarding the
`“simultaneously” language. It was my understanding, and perhaps Patent
`Owner can clarify this in their presentation, but they were not arguing
`sequential in terms of timing but more in terms of multiple steps taking
`place, and therefore that that would not meet the “without additional steps”
`language. That was not your reading, I take it?
`
`MS. HIGGINS: Your Honor, our reading means that it appears that
`they may be attempting -- and Patent Owner can clarify, but that they may
`be attempting to further construe the Board’s construction, so the Board
`adopted the express definition as set forth in the prosecution history and that
`is the definition that should be applied here. To the extent that Patent Owner
`is trying to further add limitations to that definition, we would object, but as
`I said, under any construction here, the references still meet the claim.
`
`JUDGE ARBES: Thank you.
`
`MS. HIGGINS: Does that answer your questions? Thank you. Okay,
`let’s move then to the grounds. So first is ground 1, the combination of
`Fadell, iOS, and Gagneraud discloses performing the user identification
`function simultaneously with switching the display from an inactive state to
`an active state by pressing the activation button, and would Your Honors
`please turn to slide 10.
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`Fadell discloses an electronic device 800 such as a cellular telephone
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`shown in figure 8b with a display 800 and a home button 812. Fadell
`expressly discloses that it would be desirable to implement a biometric
`authentication mechanism such as a fingerprint scanner in the device such
`that the device authenticates the user quickly and seamlessly, for example, as
`the user turns on, unlocks, or wakes the device. This is Fadell Exhibit 1105
`at paragraph 4. To provide a seamless user experience, Fadell goes on to
`explain that the sensor 720, may be placed behind the home button 812 that
`a user may press. This is Fadell paragraph 64.
`
`Now, while Fadell states the goal of authenticating the user quickly
`and seamlessly as the user wakes the device, a person of ordinary skill
`would have looked to Gagneraud’s teaching of simultaneous performance to
`fulfill that goal.
`
`And turning to slide 12, with respect to Gagneraud, Gagneraud
`discloses that the authentication application 170 scans the stored fingerprints
`190 for fingerprints that matches the user fingerprint image 180 while the
`machine 100 is pairing on. Indeed, Patent Owner admits Gagneraud
`discloses simultaneous performance; for example, see the Patent Owner’s
`response at page 36. And as the Board correctly found at institution,
`applying Gagneraud’s teaching of simultaneous performance to Fadell and
`iOS would have resulted in a device that performed user authentication and
`activating the display simultaneously, i.e., without additional steps. And
`even under Patent Owner’s interpretation, the combination of Fadell, iOS,
`and Gagneraud performs user authentication in activating the display
`simultaneously, not sequentially.
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`Now, turning to slide 13, Patent Owner argues that Fadell and
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`Gagneraud each fail to teach simultaneously performing the claim functions,
`but as the Board recognized at institution, Patent Owner’s improperly
`attacking the references alone, not in combination. The combination is
`based on applying Gagneraud’s teachings of simultaneous performance, the
`timing implementations which are directed to a power-on process to Fadell’s
`wake process.
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`Turning to slide 14, Patent Owner also argues that Fadell is merely
`about where to place a sensor, not when a user identification occurs relative
`to activating the display. But this is incorrect and mischaracterizes Fadell.
`Fadell discloses a fingerprint sensor behind a home button such that the
`device authenticates the user quickly and seamlessly, for example, as the
`user wakes the device. Moreover in distinguishing the prior art, Fadell
`explains that its teaching avoids additional time stating that, and I quote, “It
`was time consuming and bothersome for the user requiring an additional step
`before the user could access the device.” These statements in Fadell are
`expressly about when the user identification occurs relative to activating the
`display. Moreover --
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`JUDGE ARBES: Counsel, can we talk a bit about the specific
`language in paragraph 4, the last sentence in particular? It does say: “It
`would be desirable therefore, to provide an electronic device by which
`biometric and other authentication mechanisms are implemented in the
`device.” And I believe Patent Owner has pointed to that language as
`indicating that the solution here was the integration of that mechanism into
`the device itself, not the timing of the authentication, but the integration of
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`that into the device. And that is what made it quick and seamless. Can you
`respond to that argument?
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`MS. HIGGINS: Sure. Your Honor, what you just said, and that is in
`Fadell, that is about the where. It is correct that Fadell talks about
`incorporating the sensor into the device, but Patent Owner studiously avoids
`that that statement that you just read, the device authenticates the user
`quickly and seamlessly, says, for example, as the user turns on, unlocks, or
`wakes the device, and so that sentence there is talking about simultaneously
`authenticating and waking the device, and Fadell does talk about time. It
`doesn’t just talk about moving the sensor from the accessory device over to
`the terminal.
`It is also in that sentence talking about the timing of it, and
`importantly, Patent Owner is repeatedly attacking Fadell, and, you know,
`that’s a red herring here because Petitioners are relying on Gagneraud for its
`teachings of simultaneous operations, and Patent Owner has admitted that
`Gagneraud teaches simultaneous performance of fingerprint recognition and
`pairing on the device. And so we presented to the Board the combination of
`Fadell, iOS, and Gagneraud, and the language that you pointed to in that
`sentence about user quickly and seamlessly, that is also express motivation
`to combine Fadell with Gagneraud such that we have the details of the
`timing implementation, and we see from the combination that the claim
`language is met and there are no additional steps here, Your Honor.
`JUDGE ARBES: Counsel, well, what are we to make of the fact that
`Fadell never refers to waking the device again? I don’t believe it ever uses
`that language again, and figure 15 does seem to indicate a sequential
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`process, I believe. Is paragraph 4 just a bit too ambiguous then, because it
`never explains what is meant by waking the device?
`MS. HIGGINS: Your Honor, I would say no. I don’t think it’s
`ambiguous at all, and with respect to paragraph 15, if you look at what
`Fadell says about paragraph 15, it is entirely consistent to have the user do
`the authentication as the user is waking the device. And my point, Your
`Honor, paragraph 95 of Fadell which states that step 1508 of figure 15
`determines whether the user has provided suitable authentication. The
`electronic device may receive suitable authentication information without
`the user’s knowledge, for example, by embedding an authentication sensor
`in the device such that the authentication information is received during
`normal use.
`So I would submit, Your Honor, that that paragraph 95 of Fadell
`consistent with the flow diagram in figure 15, it’s consistent with that figure
`that authentication could have occurred during waking as taught by Fadell’s
`paragraph 4. But in any event, Petitioner did not rely on figure 15 which is
`merely one embodiment that pertains to authenticating a user to provide
`access to specific --
`JUDGE ARBES: But, counsel, if we were to find that figure 15 does
`have a sequential process, and you say that that’s only one embodiment; that
`is the only embodiment, right? There is no other embodiment that you
`would point to that’s a simultaneous process.
`MS. HIGGINS: Your Honor, you have Fadell’s disclosure, Fadell’s
`express disclosure that the device authenticates the user quickly and
`seamlessly, for example, as the user wakes the device. And we submit that
`user --
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`JUDGE ARBES: But, counsel, that’s only in paragraph 4 in the
`Background of the Invention. Correct me if I’m wrong, but there’s no
`specific embodiment that’s described, in reference to a figure, for example,
`that has a process different than figure 15, right?
`MS. HIGGINS: But, Your Honor, the specification of Fadell as I just
`explained with respect to figure 4 as well as other embodiments, the
`statement of Fadell that the device authenticates the user quickly and
`seamlessly, for example, as the user turns on, unlocks, and wakes the device,
`that statement is consistent with Fadell, but importantly here, Petitioners are
`relying on the combination of Fadell, iOS, and Gagneraud, and that
`statement in Fadell about authenticating the user quickly and seamlessly, for
`example, as we use the “wakes the device,” provides the express motivation
`to combine with Gagneraud that provides the explicit disclosure of teachings
`of timing implementations, so in the combination you have all of the claim
`limitations met here.
`Well, I’m going to move, then, Your Honor, to make a few more
`points about figure 15, and I’m on slide 15. Patent Owner argues that figure
`15 shows that Fadell contemplates providing access to a restricted resource
`of the device only after authentication, and that figure 15 applies to access
`the display just like it applies to any other resource. But Fadell discloses
`Patent Owner is wrong that the display itself is a restricted resource.
`Patent Owner discloses that the -- excuse me -- Fadell disclosures that
`figure 15 restricted resources are data, for example, a contact list or other
`personal information, and a restricted application, not turning on the display
`itself, and as I said, figure 15 is merely one embodiment of Fadell not relied
`on by Petitioner, and Patent Owner is ignoring Fadell’s disclosure that the
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`device authenticates the user quickly and seamlessly as the user wakes the
`device.
`Turning to slide --
`JUDGE HAAPALA: Counselor, can you -- so your contention is that
`figure 15 -- request to access restricted resources is not for an access to a
`display?
`MS. HIGGINS: That’s correct, Judge Haapala. That is correct, and in
`fact, on slide 16, what you see is Patent Owner in an attempt to support its
`argument, that the display itself is a restricted resource, cites to several other
`portions of Fadell, but none of the cited disclosures support Patent Owner’s
`argument, and in fact, they instead confirm that the display is not a restricted
`resource. Paragraphs 24 and 41 refer to restricted resources as files or data,
`applications, personal settings, and information stored in memory or storage,
`not the display itself, and paragraph 46 relates only to some embodiments
`and discusses figure 4, which we see on the left, and figure 4 actually shows
`that the display is not a restricted resource because in this particular
`embodiment, the display is already on to present authentication instructions.
`And finally, paragraph 42 relates to specific icons or screens, not to
`turning on the display itself, and in paragraph 42, we have an example where
`you can have a basic default icon showing up on the screen and, once again,
`that still is consistent with Fadell’s disclosure that you can authenticate as
`the user wakes the device.
`JUDGE HAAPALA: So I’m just going to look at figure 4 for just a
`minute, it does say: Please authenticate -- so similar to figure 15, it’s
`showing a message that says, please authenticate to access the springboard.
`So it looks like the display was woken up somehow and that then there is a
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`message displayed to the user to authenticate, which seems similar to the
`flow in figure 15, and I know that you said before that you were relying on
`Gagneraud for the timing. But I want to ask you, do you think in your mind
`in figure 4 -- and I don’t like sequential because that’s not what we said, we
`said without additional steps, so in your mind is figure 4 --simultaneously as
`we’ve construed the term?
`MS. HIGGINS: Your Honor, we did not rely on figure 4. Fadell has
`several embodiments, and the language that we relied on in Fadell is the
`language in paragraph 4, and that language which I’ll read again one more
`time: The device authenticates the user quickly and seamlessly, for
`example, as the user wakes the device. So it’s entirely consistent that when
`the user -- we have a sensor embedded in the button, and so it’s entirely
`consistent that when the user pressed the button, the user was authenticated
`as the user wakes the device at a standby mode. And then later, when the
`user wants to access these restricted resources as figure 15 shows, that at that
`time you may look to see whether the user has already been authenticated,
`and that’s the language that I read from Fadell regarding figure 15. And as I
`said, and as Your Honor pointed out, we are relying on Gagneraud for
`Gagneraud’s disclosure with teachings of simultaneous operations. If Your
`Honors --
`JUDGE ARBES: Counsel, one last question regarding Fadell. Can
`you respond to Patent Owner’s points regarding Dr. Bederson’s testimony
`where he seemed to indicate that resource as it is used in Fadell is used
`expansively and could encompass a display, and where he was asked
`specifically whether a display can be a resource as that’s used in Fadell?
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`Patent 8,831,557 B2
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`MS. HIGGINS: Sure, Your Honor, and I have a slide on that, that’s
`slide 17, and so Patent Owner is misinterpreting Dr. Bederson’s testimony,
`and if you look at the transcript you will see that Patent Owner’s first
`(inaudible) Dr. Bederson generally, you know, could have displayed a mere
`resource, and he said, yes, was the cite -- it could be a resource, but the point
`here is what does Fadell mean by restricted resources, and that is not how
`Patent Owner framed the question to Bederson.
`And what Dr. Bederson did was, he was merely confirming that the
`display generally can be a resource. He did not agree that Fadell teaches
`restricting access to display hardware or that the display is a resource as that
`term is used in Fadell, so it’s important here that we’re looking at what
`restricted resource means in the context of Fadell, and nowhere in Fadell
`does it talk about the restricted resource turning on the display because that
`is not what the restricted resource is in Fadell. As Fadell states, we’re
`talking about if you want to access some specific personal information like a
`contact list, and Patent Owner ignores Dr. Bederson’s testimony that figure
`15 does not relate to waking the device and does not apply to all
`embodiments.
`If you read through his full testimony, Your Honor, you’ll see that Dr.
`Bederson merely confirmed that a display generally can be a resource.
`That’s his transcript, page 15 to 21. He did not agree that Fadell teaches
`restricting access to display hardware or that the display is a restricted
`resource as that term is used in Fadell. Moreover Dr. Bederson testified that
`figure 15 does not relate to waking the device and does not apply to all
`embodiments.
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`Case IPR2019-00612
`Patent 8,831,557 B2
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`JUDGE ARBES: And can I ask why not? The description of figure
`15, in particular paragraph 94 where it’s talking about data like a contact list
`or a restricted application, that those are the kinds of things that can be
`restricted, but those are merely exemplary. It’s not confining what can be a
`restricted resource there, right? So it could be a display.
`MS. HIGGINS: So we see, for example, in figure 4, it’s talking about
`restricted resources, but the display is already on there, and so the restricted
`resource is not the display. The display is already on, and as I’ve pointed
`out in paragraph 95, in that paragraph where it’s talking about step 1508, it’s
`talking there about whether the user has provided, past tense, suitable
`authentication information for accessing the restricted resources. As I said,
`the electronic device in paragraph 95 may receive suitable authentication
`services without the user’s knowledge, for example, by inventing the
`authentication sensor in the device, but so the authentication information is
`received during normal use.
`So it is entirely consistent with paragraph 4 that you can be waking
`the device and authenticating, and then later in figure 15 at steps 1508
`checking to see whether the user has been authenticated to get access to
`those specific restricted resources such as personal contact information. So
`1508 and figure 15 is not talking about the display and turning on the
`display, it’s talking about access to specific resources, Your Honor.
`If there’s no further questions with respect to ground 1, I’m going to
`turn to ground 2. The combination of Goertz and Herfet that discloses
`performing users identification function simultaneously with switching the
`display from an inactive state to an active state by pressing the activation
`button. On slide 19, Goertz discloses a mobile device with a touchscreen
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`Patent 8,831,557 B2
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`and a home button, for example, as shown in figures 9 to 14 on the left, and
`as my colleague Mr. Bonny will explain Goertz further discloses switching
`the display from an inactive state to an active state by pressing the activation
`button, the home button in Goertz.
`While Goertz discloses that fingerprint identification is part of the
`high security initiated by the home button, Goertz is silent on the details
`involved in performing fingerprint authentication.
`So turning to slide 30, Herfet teaches performing the user
`identification function simultaneously with pressing an on-off button
`without additional steps. Herfet figure 3 shows the mobile telephone with an
`on-off switch 13 behind which is a fingerprint recording unit. Specifically,
`as we see on the right in the middle of the page, Herfet teaches that at the
`moment when the set is switched on, the fingerprint 6 of the user is recorded
`and subsequently compared to the database and that’s Herfet 1114, column
`2, lines 60 through column 3, line 12.
`Herfet further teaches that this results in an automatic activation of
`services with access authorization with respect to the on-off switch of the
`terminal is actuated with no additional effort of the user. As the Board
`correctly found in institution, applying Herfet’s teachings of simultaneous
`performance to Goertz would have resulted in a device that performs user
`authentication and activating the display simultaneously, i.e., without
`additional steps. And even under Patent Owner’s interpretation, the
`combination of Goertz and Herfet performed user authentication in
`activating the display simultaneously, not sequentially.
`Now, turning to slide 21, as with ground 1, here with respect to
`ground 2, Patent Owner again is improperly attacking the references in
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`isolation. Patent Owner argues that Goertz does not disclose the
`simultaneously limitation, but Petitioners relied on the combination of
`Goertz and Herfet for this limitation, and Patent Owner argues that Herfet
`does not disclose an activation button that switches the display from an
`inactive state to an active state, but Petitioner has relied on Goertz for this
`limitation.
`Turning to slide 22, Patent Owner argues Herfet’s authentication is
`one that occurs only during the switch-on process when the device itself is
`powered on, but this ignores Herfet’s express disclosure of standby mode.
`Herfet discloses that when the terminal is not in use for an extended period
`of time, e.g., in standby mode, the authentication can be reset automatically.
`To bring the device out of standby mode, the user again presses the on-off
`switch with its embedded fingerprint sensor. This is the renewed switch-on
`process of Herfet.
`Patent Owner’s interpretation that despite using the express word
`“standby,” the user cannot access services without turning off the device
`would defeat the entire purpose of standby mode, and as Dr. Bederson
`explained, is not a reasonable interpretation of Herfet’s disclosure. And
`regardless, it would have been obvious to apply Herfet’s teachings of
`simultaneous performance to Goertz’s activation button that turns on the
`display and initiates a high-security function. As Dr. Bederson explained,
`the concept of fingerprint authentication identification would have been
`needed for and applicable to any process in which the device had been in
`active use, and that’s the Bederson declaration, Exhibit 1103, paragraph 116.
`If Your Honors have no questions with respect to the Goertz-Herfet
`combination, I will turn the presentation over to Mr. Bonny.
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`JUDGE ARBES: Thank you.
`MR. BONNY: Your Honors, the first issue I will address is Goertz’s
`disclosure of an activation button that switches the display from an inactive
`to an active state. Turning to slide 24, Goertz discloses a home button that is
`pressed to unlock the phone and turn on the display, and that’s shown in
`figures 12 through 14 and described in paragraph 60 of Goertz. What Patent
`Owner argues here is that in the unlocked contact shown in figures 12
`through 14, Goertz never states or confirms that the display is off.
`Patent Owner’s argument here is incorrect and inconsistent with
`Goertz’s disclosure of 22, figure 13 in the unlock context which uses the
`same display-off images used in figure 9 from the power-off context, and
`there’s a bit of a dispute by Patent Owner that in the power-on context
`shown in figure 9, the blank screen indicates a phone with a display that is
`off.
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