Trials@uspto.gov
`571-272-7822
`
`Paper: 14
`Date: October 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-01011
`Patent 9,633,373 B2
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`Paper: 14
`Date: October 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-01011
`Patent 9,633,373 B2
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2019-01011
`Patent 9,633,373 B2
`Apple Inc. (“Petitioner”) filed a previous Petition pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1, 2, 4–6,
`and 11–14 of U.S. Patent No. 9,633,373 B2 (“the ’373 patent”), which we
`instituted for trial on August 5, 2019. IPR2019-00613, Paper 10. Petitioner
`filed this Petition seeking inter partes review of claims 10 and 18 of the ’373
`patent. Paper 1 (“Pet.”). Firstface Co., Ltd. (“Patent Owner”) waived the
`filing of a Preliminary Response. Paper 7. Applying the standard set forth
`in 35 U.S.C. § 314(a), which requires demonstration of a reasonable
`likelihood that Petitioner would prevail with respect to at least one
`challenged claim, we grant Petitioner’s request to institute an inter partes
`review of claims 10 and 18.1
`To administer this proceeding more efficiently, we also exercise our
`authority under 35 U.S.C. § 315(d) to consolidate it with IPR2019-00613
`and conduct the proceedings as one trial. See also 37 C.F.R. § 42.122(a)
`(“Where another matter involving the patent is before the Office, the Board
`may during the pendency of the inter partes review enter any appropriate
`order regarding the additional matter including providing for the stay,
`transfer, consolidation, or termination of any such matter.”).
`I. BACKGROUND
`A. The ’373 Patent (Ex. 1001)
`The ’373 patent describes a method and mobile communication
`terminal for performing a specific function when a mobile communication
`terminal is activated. Ex. 1001, 1:16–18. Figure 1 of the ’373 patent is
`reproduced below:
`
`1 Although we granted Petitioner’s motion to seal certain exhibits filed with
`the Petition (Paper 8), we do not refer to any sealed material in this
`Decision.
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`IPR2019-01011
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`Figure 1 illustrates an external appearance of mobile communication
`terminal 100. Id. at 3:42–44. Mobile communication terminal 100 includes
`display unit 110 and activation button 120. Id. at 3:45–47. Display unit 110
`displays various information regarding operation states of mobile
`communication terminal 100. Id. at 3:64–66. Activation button 120
`switches mobile communication terminal 100 from an inactive state (in
`which the terminal is communicable but the display screen is turned off) to
`an active state (in which the display screen is turned on). Id. at 3:21–23,
`3:32–37, 4:22–24.
`If the user presses activation button 120 when mobile communication
`terminal 100 is in the inactive state, mobile communication terminal 100
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`performs a predetermined operation in addition to switching to the active
`state. Id. at 4:36–40. Example operations that can be performed include
`camera activation, user authentication (e.g., fingerprint recognition), and
`operation of a music player. See id. at 5:51–63, 7:18–8:20, 10:1–8.
`The user can set the operation to be performed when the activation
`button is pressed. Id. at 4:51–53. Different operations can be set to be
`performed according to the number of presses or a press time of activation
`button 120; for example, a first operation can be performed if activation
`button 120 is pressed for a short time and a second operation can be set to be
`performed if activation button 120 is pressed for a long time. See id. at
`4:57–5:2.
`
`B. Illustrative Claims
`Claims 10 and 18 depend upon independent claims 1 and 11,
`respectively.2 Claims 1 and 10 are illustrative of the subject matter at issue:
`1. A mobile communication terminal comprising:
`a touch screen display;
`a camera;
`a power button configured to turn on and off the terminal
`by pressing; and
`an activation button separate from the power button and
`located outside the touch screen display, the activation button
`configured for pressing to turn on the touch screen display and to
`initiate one or more additional functions of the terminal,
`wherein the terminal has a first function and a second
`function to perform in response to user input via the activation
`button and is configured to provide user settings for configuring
`at least one of the first and second functions such that at least one
`of the first and second functions is set to be performed in addition
`
`2 Claims 1 and 11 were corrected in a certificate of correction dated June 27,
`2017. Ex. 1001.
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`to turning on the touch screen display upon pressing of the
`activation button while the touch screen display is turned off,
`wherein the first and second functions are different from each
`other and selected from the group consisting of fingerprint
`authentication, activating the camera, playing music and a hands-
`free function,
`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 further
`perform at least one of the first and second functions 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 is turned off,
`in response to the one-time pressing of the
`activation button, the first function is performed in
`addition to turning on the touch screen display for
`displaying the lock screen thereon, and
`the second function is performed when the one-
`time pressing is for long time longer than a reference time
`period,
`wherein at least one of the first and second
`functions is performed subsequent to turning on the touch
`screen display and displaying the lock screen in response
`to the one-time pressing of the activation button,
`wherein the touch screen display displays the lock
`screen when at least one of the first and second functions
`is being performed.
`
`10. The terminal of claim 1, wherein the terminal
`comprises a smartphone which comprises an activation sensor
`configured to detect pressing of the activation button and a user
`identification module configured to perform the fingerprint
`authentication.
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`C. References
`Petitioner relies on the following references:
`1. Apple iPhone OS 3.1 User Guide (Sept. 2009) (“iOS”) (Ex. 1007).
`2. U.S. Patent Application Pub. No. 2010/0017872, published Jan. 21,
`2010 (“Goertz”) (Ex. 1013).
`3. U.S. Patent Application Pub. No. 2010/0138914, published June 3,
`2010 (“Davis”) (Ex. 1015).
`4. U.S. Patent Application Pub. No. 2012/0133484, published May
`31, 2012 (“Griffin”) (Ex. 1027).
`Petitioner further relies on testimony of its declarant, Benjamin B.
`Bederson, Ph.D. (Ex. 1003).
`D. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’373 patent
`over the following combinations of references:
`Claims Challenged
`35 U.S.C. §
`10, 18
`103(a)
`10, 18
`103 (a)
`
`E. Related Proceedings
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’373 patent: Firstface Co., Ltd. v. Apple Inc., Case
`No. 3-18-cv-02245 (N.D. Cal.). Pet. 2; Paper 4, 2. Petitioner and Patent
`Owner also identify the following inter partes proceeding involving the ’373
`patent: Apple Inc. v. Firstface Co., Ltd., IPR2019-00613 (PTAB). Pet. 2;
`Paper 4, 2. Patent Owner also identifies the following district court
`litigation involving the ’373 patent: Firstface Co., Ltd. v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case
`No. 3-18-cv-02243 (N.D. Cal.). Paper 4, 2.
`
`References
`Griffin, Davis, and iOS
`Goertz, Davis, and iOS
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, claims of a patent shall be construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see Changes to the
`Claim Construction Standard for Interpreting Claims in Trial Proceedings
`Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11,
`2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018); see
`also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`Petitioner does not propose constructions for any of the claim terms.
`Pet. 8–9. For purposes of this Decision, we do not find it necessary to
`construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that “we need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy’” (citation omitted)).
`B. Obviousness over Griffin, Davis, and iOS
`Petitioner contends that claims 10 and 18 are unpatentable as obvious
`under 35 U.S.C. § 103(a) over Griffin, Davis, and iOS. Pet. 11–52.
`1. Overview of Griffin
`Griffin describes an electronic device configured to transition between
`a locked and unlocked state in response to a detected action that is
`interpreted as a continuous or single action. Ex. 1027, Abstract. A locked
`state includes a “sleep” mode in which certain functions of the device (such
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`as a display) are halted, and a secure or “screen lock” mode in which a user
`interface for a user to enter credentials is displayed to allow a user to
`transition to an unlocked state. Id. ¶¶ 25–27. An unlocked state includes an
`awake mode (or insecure mode) where the user input interfaces, stored data,
`and other functionality of the device, are generally all available. Id. ¶ 27.
`The device is unlocked in response to a single, continuous unlock
`action applied to at least two input mechanisms on the electronic device. Id.
`¶ 31. In response to activation of a first user input, which remains active
`during the locked state, a second user input interface is activated and a timer
`is started. Id. ¶ 121. The device then awaits input at the second input
`mechanism. Id. If the correct input is received within the predetermined
`period, the device is unlocked. Id. ¶ 122.
`Figures 5A, 5B, and 5C of Griffin are depicted below:
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`Figures 5A, 5B, and 5C illustrate a single-gesture or continuous-action input
`as it is implemented on a handheld mobile device, such as a smartphone
`equipped with a touchscreen display 510. Id. ¶ 86. Device 100 has a single
`“home” button or convenience button 520, positioned at the center along an
`edge of display 510. Id. As illustrated in Figure 5A, user’s thumb 500
`depresses convenience button 520, which initiates an unlock action. Id.
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`Upon detection of the input at convenience button 520, the device activates
`the second input, in this case touchscreen display 110, so that display 110 is
`capable of detecting further input from the user. Id. ¶ 87. Figures 5B and
`5C illustrate user’s thumb 500 travelling in an arcuate path 550 along
`touchscreen display 510. Id. Arc 550 traced along touchscreen display 510
`completes the unlock action, upon which device 100 enters the unlocked
`state. Id. Thus, the unlock action comprises detecting two distinct user
`inputs applied to two components (initiation at convenience button 520 and
`arc 550 traced on touchscreen display 510), which is carried out as a
`substantially continuous action by the user. Id.
`2. Overview of Davis
`Davis describes a system and method of launching applications on a
`device using biometric authentication. Ex. 1015 ¶ 1. Davis explains that a
`mobile device may automatically enter into a user-inactive mode after a
`period of inactivity, or a user may specifically select a menu item on the
`device to enter into the user-inactive mode (i.e., to lock the device). Id. ¶ 45.
`Various security measures may be required to unlock the mobile device,
`such as passwords, a smart card, or biometric authentication. See id. ¶¶ 46–
`47.
`
`Figure 4 of Davis is depicted below.
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`Figure 4 illustrates steps in an example method of maintaining secure access
`to a mobile device. Id. ¶ 47. The mobile device first receives an “unlock”
`command (step 402). Id. ¶ 48. Next, the mobile device presents an unlock
`dialog on a display to prompt the user to enter authentication factors, such as
`a device password and/or smart card password (step 404). Id. The mobile
`device then receives and verifies the device and smart code passwords (steps
`406–412). Id. ¶ 49–50. At step 416, the mobile device presents a dialog on
`the display to prompt the user to provide a fingerprint candidate or other
`type of biometric data. Id. ¶¶ 50, 52. The mobile device then receives and
`verifies the fingerprint candidate or other biometric data (steps 418–420).
`Id. ¶ 53. If the fingerprint candidate matches a stored fingerprint template,
`the mobile device unlocks itself; if the fingerprint candidate does not match,
`the mobile device presents a fingerprint verification failure dialog and
`returns to step 416 to present the prompt to the user to provide a fingerprint
`(steps 422–424). Id.
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`3. Overview of iOS
`iOS is a user guide for iPhone OS 3.1 software. Ex. 1007, 1. iOS
`includes a diagram of an iPhone, which is reproduced below.
`
`
`The reproduced diagram above depicts an iPhone. Id. at 20. The iPhone
`includes a home button that, when pressed, causes the iPhone to display a
`home screen that contains the iPhone applications. Id. at 23. The iPhone
`also includes a sleep/wake button that allows the user to lock the iPhone. Id.
`at 26. When the iPhone is locked, nothing happens if the user touches the
`screen. Id. The iPhone can be unlocked by pressing the home button or the
`sleep/wake button, in combination with dragging a slider. Id. at 27.
`4. Claims 10 and 18
`Petitioner asserts the combination of Griffin, Davis, and iOS teaches
`
`the limitations recited in claims 10 and 18. Pet. 11–52.
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`a. The Limitations of Claims 1 and 11
` Claim 10 depends from claim 1 and claim 18 depends from claim 11.
`Because the challenged claims incorporate the limitations from their
`independent claims, Petitioner must address these limitations. Petitioner
`states in its Petition that the discussions of independent claims 1 and 11
`mirror those presented in IPR2019-00613. Pet. 10–11. We have reviewed
`the relevant portions of the Petition in this proceeding and agree that they
`present substantially the same contentions as to claims 1 and 11 that were
`presented in the Petition in IPR2019-00613. Compare Pet. 11–26, 30–44,
`46–51 with IPR2019-00613, Paper 2, 13–43, 45–51. Therefore, we
`incorporate by reference here the analysis in our institution decision in
`IPR2019-00613 relating to claims 1 and 11 and find, at this stage of the
`proceeding, that Petitioner has made a sufficient showing that the limitations
`of claims 1 and 11 are taught by the combination of Griffin, Davis, and iOS
`and that a person of ordinary skill in the art would have had a reason to
`combine the references’ teachings in the manner asserted in the Petition. See
`IPR2019-00613, Paper 10, 11–18.
`b. ”wherein the terminal comprises
` a smartphone which comprises”
` Petitioner argues that Griffin discloses a terminal that comprises a
`smartphone, as set forth in claims 10 and 18. Pet. 44–45. Petitioner points
`to Griffin’s disclosure that “an example of the single-gesture or
`continuous-action input is illustrated as it may be implemented on a
`handheld mobile device 100, such as a smartphone equipped with a
`touchscreen display 510.” Id. (citing Ex. 1027 ¶ 86). We are persuaded,
`based on the current record, that Petitioner has made a sufficient showing
`that the combination of Griffin, Davis, and iOS teaches this limitation.
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`c. “an activation sensor configured to detect
`pressing of the activation button”
`Petitioner asserts Griffin discloses depressing a “home button” or
`“convenience button” to initiate an unlock action and reactivate the device,
`its monitor, and other processes. Pet. 26. With respect to the “activation
`sensor” recited in claims 10 and 18, Petitioner argues that Griffin discloses
`an “‘actuation’ of a user input mechanism . . . by pressing a button,” and that
`“[w]hen one of those active input mechanisms detects a user input, such as a
`keypress, the processor can then be signaled to . . . return the device to an
`awake and operative state.” Id. at 27 (citing Ex. 1027 ¶¶ 25, 58). Petitioner
`also points to Griffin’s disclosure in Figure 11 of the step of “[d]etect[ing]
`actuation of first input mechanism 1100.” Id. (citing Ex. 1027, Fig. 11).
`Petitioner argues that a person of ordinary skill in the art would have
`understood that Griffin’s disclosure of an “input mechanism” that “detects”
`a user input to wake the device is a disclosure of “an activation sensor
`configured to detect pressing of the activation button.” Id. According to
`Petitioner, Griffin uses the term “input mechanism” broadly to encompass
`both the physical “home button” that the user presses as well as the sensor
`that detects the press of the home button and translates it into a signal. Id. at
`27–28. Thus, Petitioner argues, a person of ordinary skill would have
`understood that Griffin discloses both an activation button and an activation
`sensor. Id. at 28.
` Petitioner further argues that even if Griffin does not expressly
`disclose an activation sensor, a person of ordinary skill would have
`understood from Griffin’s disclosure of an “input mechanism,” which
`detects an input and signals a processor to change states, that Griffin
`inherently discloses an activation sensor. Id. Otherwise, Petitioner argues,
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`there would be no way for the phone to make use of the user’s input, and the
`home button would not be able to function as described. Id.
`We are persuaded, based on the current record, that Petitioner has
`made a sufficient showing that the “activation sensor” limitation of claims
`10 and 18 is taught by the combination of Griffin, Davis, and iOS.
`Petitioner shows sufficiently that Griffin’s disclosure of a “home button,”
`along with the disclosure of detecting a user input from an input mechanism
`in the form of a button, discloses the claimed activation sensor that is
`configured to detect pressing of the activation button. See Ex. 1027, Fig. 11,
`¶¶ 25, 58.
`
`d. “a user identification module configured to perform
` the fingerprint authentication function”
`Petitioner asserts that Griffin in view of Davis discloses fingerprint
`authentication for unlocking the phone. Pet. 29. With respect to the “user
`identification module” recited in claims 10 and 18, Petitioner asserts that
`Davis discloses the authentication functions are implemented via security
`module 230C installed on the phone, and that this security module interfaces
`with the fingerprint sensor into the phone. Id. (citing Ex. 1015 ¶¶ 21, 30, 47,
`50–53, 72, Figs. 2–3). Therefore, Petitioner contends that Griffin in view of
`Davis discloses “a user identification module configured to perform the
`fingerprint authentication.” Id. Petitioner further argues that a person of
`ordinary skill in the art would have been motivated and found it obvious and
`straightforward to employ Davis’s teachings of a security module that
`interfaces with the fingerprint sensor in implementing Griffin’s unlock
`routine for its higher levels of security and user convenience. Id.
`We are persuaded, based on the current record, that Petitioner has
`made a sufficient showing that the “user identification module” limitation
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`recited in claims 10 and 18 is taught by the combination of Griffin, Davis,
`and iOS. At this stage of the proceeding, Petitioner has demonstrated
`sufficiently that a person of ordinary skill would have understood that
`Davis’s security module 230C in Figure 2 performs the user identification
`functions of Davis. See Ex. 1015, Fig. 2, ¶ 21. Davis discloses that security
`module 230C is a software application that may be installed on the mobile
`communication device 102 during manufacture, to implement aspects of the
`present application. Id. ¶ 21. Davis further discloses that the invention may
`include a security configuration in which the user will provide a fingerprint
`to a fingerprint sensor on mobile device 102, and the mobile device will
`verify the fingerprint candidate by determining “if the fingerprint candidate
`matches a stored fingerprint template associated with unlocking the mobile
`device 102.” Id. ¶¶ 51–53.
`We are persuaded based on the current record that a person of
`ordinary skill would have understood Davis to disclose that security module
`230C may perform the fingerprint identification and authentication functions
`of the mobile device, and therefore is “a user identification module
`configured to perform the fingerprint authentication function.” We also are
`persuaded, based on the current record, that a person of ordinary skill would
`have been motivated to use a software-based security module, as disclosed
`in Davis, in conjunction with the fingerprint detector of Griffin, because
`doing so would have been a straightforward way to implement fingerprint
`authentication. See Pet. 29.
`
`e. Conclusion
`For the foregoing reasons, we conclude Petitioner has demonstrated a
`reasonable likelihood of prevailing in establishing that claim 10 and 18
`would have been obvious over the combination of Griffin, Davis, and iOS.
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`C. Obviousness over Goertz, Davis, and iOS
`Petitioner contends that claims 10 and 18 are unpatentable as obvious
`under 35 U.S.C. § 103(a) over Goertz, Davis, and iOS. Pet. 52–85.
`1. Overview of Goertz
`Goertz describes touch screen user interfaces for electronic devices.
`Ex. 1013 ¶ 2. Figures 9, 10, and 11 of Goertz are depicted below.
`
`Figures 9, 10, and 11 illustrate turning a phone on and off. Id. ¶ 23. Figure
`9 displays a first phone with a blank screen indicating that power is off. Id.
`¶ 59. Figure 10 displays a second phone with gadgets displayed thereon,
`indicating that power is on. Id. A “home key” is displayed at the bottom of
`the phones, where activating the home key (e.g., touching the key) causes
`the power to be turned on. Id. Figure 11 displays a single phone, where
`touching the home key for an extended period of time (e.g., 5 seconds)
`causes the phone to power off. Id.
`Goertz further describes touch screens for phones with key lock. Id.
`¶ 60. Figures, 12, 13, 14, and 15 of Goertz are depicted below.
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`Figures 12, 13, 14, and 15 illustrate locking and unlocking a phone. Id. ¶ 24.
`In Figure 12, a lock gadget is displayed in a lower right corner of the screen.
`Id. ¶ 60. Activating the lock gadget (e.g., pressing on it) causes the phone to
`lock, and when the phone is locked, activation of the phone is restricted in
`some manner. Id. As shown in Figure 13, the user activates a home key,
`located at bottom center of device, to unlock the phone. Id. Figure 14
`shows the phone after it has been unlocked; gadgets are now displayed on
`screen and are activated in response to user input. Id. Figure 15 shows the
`phone displaying a keypad when the home key is activated (e.g., by touching
`the home key), and prompting a user to enter a security code. Id. ¶ 61. As
`Goertz describes, the phone cannot be unlocked unless the security code is
`entered. Id. Goertz further describes that optional additional security is
`implemented by use of fingerprint identification, wherein the phone cannot
`be unlocked unless the fingerprint is authenticated. Id.
`2. Claims 10 and 18
`Petitioner asserts the combination of Goertz, Davis, and iOS teaches
`the limitations recited in claims 10 and 18. Pet. 52–85.
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`a. The Limitations of Claims 1 and 11
`As noted above, Petitioner states in its Petition that the discussions of
`independent claims 1 and 11 (from which claims 10 and 18 depend) mirror
`those presented in IPR2019-00613. Pet. 10–11. We have reviewed the
`relevant portions of the Petition in this proceeding and agree that they
`present substantially the same contentions as to claims 1 and 11 that were
`presented in the Petition in IPR2019-00613. Compare Pet. 52–63, 66–78,
`80–84 with IPR2019-00613, Paper 2, 53–77, 79–83. Therefore, we
`incorporate by reference here the analysis in our institution decision in
`IPR2019-00613 relating to claims 1 and 11 and find, at this stage of the
`proceeding, that Petitioner has made a sufficient showing that the limitations
`of claims 1 and 11 are taught by the combination of Goertz, Davis, and iOS
`and that a person of ordinary skill in the art would have had a reason to
`combine the references’ teachings in the manner asserted in the Petition. See
`IPR2019-00613, Paper 10, 20–24.
`b. “wherein the terminal comprises
`a smartphone which comprises”
`Petitioner argues that Goertz discloses a terminal that comprises a
`smartphone, as set forth in claims 10 and 18. Pet. 78–79. Petitioner points
`to Figure 3 of Goertz, which shows a smartphone terminal with functions
`including a streaming radio, web mail, a phone application, and a camera.
`Id. (citing Ex. 1013 Fig. 3, ¶¶ 56, 62). We are persuaded, based on the
`current record, that Petitioner has made a sufficient showing that the
`combination of Goertz, Davis, and iOS teaches the use of a smartphone.
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`c. “an activation sensor configured to detect
`pressing of the activation button”
`Petitioner asserts Goertz discloses the use of a “home button” that is
`pressed and activated to turn on, turn off, or unlock a phone, or to load
`security functions such as fingerprint authentication. Pet. 63 (citing Ex.
`1013 ¶¶ 23–24, 59–61. Figs. 9–15). With respect to the “activation sensor,”
`Petitioner points to Goertz’s disclosure of pressing the home button on a
`locked phone to unlock the phone and that “[i]n order to unlock the phone,
`the user activates the home key.” Id. at 64 (citing Ex. 1013 ¶¶ 24, 60).
`Citing testimony of Dr. Bederson, Petitioner further asserts that Goertz’s
`mechanism senses whether or not the user has pressed the activation button.
`Id. (citing Ex. 1003 ¶ 98). Petitioner argues that a person of ordinary skill in
`the art would have understood that Goertz’s disclosure of activating the
`home button to cause the performance of a function (e.g., to “unlock the
`phone”) is a disclosure of “an activation sensor configured to detect pressing
`of the activation button.” Id.
`Petitioner further argues that, to the extent Goertz does not disclose
`the limitation expressly, a person of ordinary skill would have understood
`from Goertz’s disclosure of detecting an input that Goertz inherently
`discloses an “activation sensor” that functions as described in claims 10 and
`18. Id. at 64–65. Otherwise, Petitioner argues, there would be no way for
`the phone to make use of the user’s input, and the home button would not be
`able to function as described. Id. at 65.
`We are persuaded, based on the current record, that Petitioner has
`made a sufficient showing that the “activation sensor” limitation of claims
`10 and 18 is taught by the combination of Goertz, Davis, and iOS. Goertz
`discloses “pressing the home button on a locked phone to unlock the phone.”
`
`20
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`IPR2019-01011
`Patent 9,633,373 B2
`Ex. 1013 ¶¶ 23–24. Goertz further states that “[i]n order to unlock the
`phone, the user activates the home key, located at the bottom center of the
`device” and, after the home key has been activated, the phone is “unlocked”
`and “gadgets are now displayed on screen and are activated in response to
`user input.” Id. ¶ 60. Based on these disclosures, we are persuaded that a
`person of ordinary skill would have understood Goertz to disclose the use of
`the claimed “activation sensor” that is configured to detect pressing of the
`activation button.
`d. “a user identification module configured to perform
` the fingerprint authentication function”
`Petitioner asserts that Goertz in view of Davis discloses fingerprint
`authentication for unlocking the phone. Pet. 65. With respect to the “user
`identification module” recited in claims 10 and 18, Petitioner asserts Davis
`discloses that the authentication functions are implemented via security
`module 230C installed on the phone, and that this security module interfaces
`the fingerprint sensor into the phone. Id. (citing Ex. 1015 ¶¶ 21, 30, 47, 50–
`53, 72, Figs. 2–3). Therefore, Petitioner contends Goertz in view of Davis
`discloses “a user identification module configured to perform the fingerprint
`authentication.” Id. Petitioner further argues that a person of ordinary skill
`in the art would have been motivated and found it obvious and
`straightforward to employ Davis’s teachings of a security module that
`interfaces with the fingerprint sensor in implementing Goertz’s unlock
`routine for its higher levels of security and user convenience. Id. at 65–66.
`We are persuaded, based on the current record, that Petitioner has
`made a sufficient showing that the “user identification module” recited in
`claims 10 and 18 is taught by the combination of Goertz, Davis, and iOS. At
`this stage of the proceeding, for the reasons discussed above in reference to
`
`21
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`IPR2019-01011
`Patent 9,633,373 B2
`the challenge based on the Griffin-Davis-iOS combination, Petitioner has
`demonstrated sufficiently that a person of ordinary skill would have
`understood that Davis’s security module 230C in Figure 2 performs the user
`identification functions of Davis, including the fingerprint identification and
`authentication functions of the mobile device, and is therefore a “user
`identification module configured to perform the fingerprint authentication
`function.” See Ex. 1015, Fig. 2, ¶¶ 21, 51–53. We also are persuaded, based
`on the current record, that a person of ordinary skill would have been
`motivated to use a software-based security module, as disclosed in Davis, to
`carry out the fingerprint authentication function of Goertz, because doing so
`would have been a straightforward way to implement fingerprint
`authentication. See Pet. 65–66.
`e. Conclusion
`For the foregoing reasons, we are persuaded Petitioner has
`demonstrated a reasonable likelihood of prevailing in establishing that
`claims 10 and 18 would have been obvious over the combination of Goertz,
`Davis, and iOS.
`
`III. CONCLUSION
`Petitioner has demonstrated a reasonable likelihood of prevailing on
`its challenges to claims 10 and 18 of the ’373 patent as set forth above.
`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any of these challenged claims or the
`construction of any claim term.
`
`
`22
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`IPR2019-01011
`Patent 9,633,373 B2
`
`IV. ORDER
`
`It is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted on all grounds set forth in the Petition:
`(1) Obviousness of claims 10 and 18 over Griffin, Davis, and iOS;
`(2) Obviousness of claims 10 and 18 over Goertz, Davis, and iOS;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this Decision;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(d), Cases
`IPR2019-00613 and IPR2019-01011 are consolid
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