Firstface Co., Ltd.

Patent Trials and Appeals Board

Jul 31, 2020

IPR2019-00612 (P.T.A.B. Jul. 31, 2020)

Trials@uspto.gov Paper 26
571-272-7822 Date: July 31, 2020

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.

IPR2019-00612
Patent 8,831,557 B2

Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
RUSSELL E. CASS, Administrative Patent Judges.
ARBES, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
I. INTRODUCTION
A. Background and Summary
Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
America, Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”)
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requesting inter partes review of claims 1, 8, 9, and 15 of U.S. Patent
No. 8,831,557 B2 (Ex. 1101, “the ’557 patent”) pursuant to 35 U.S.C.
§ 311(a). On August 5, 2019, we instituted an inter partes review as to all
challenged claims on all grounds of unpatentability asserted in the Petition.
Paper 11 (“Decision on Institution” or “Dec. on Inst.”). Patent Owner
Firstface Co., Ltd. subsequently filed a Patent Owner Response (Paper 15,
“PO Resp.”), Petitioner filed a Reply (Paper 17, “Reply”), and Patent Owner
filed a Sur-Reply (Paper 20, “Sur-Reply”). An oral hearing was held on
May 5, 2020, and a transcript of the hearing is included in the record
(Paper 25, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that claims 1, 8, 9, and 15 are unpatentable.

B. Related Matters
The parties indicate that the ’557 patent is the subject of the following
district court cases: Firstface Co., Ltd. v. Samsung Electronics Co., Ltd.,
Case No. 18-cv-02243 (N.D. Cal.), and Firstface Co., Ltd. v. Apple Inc.,
Case No. 18-cv-02245 (N.D. Cal.). See Pet. 3; Paper 22, 2. Petitioner filed
a second petition challenging claims 1, 8, 9, and 15 of the ’557 patent,
premised on a different interpretation of the claim term “simultaneously”
than the one asserted in this proceeding, which was denied. See Apple Inc.
v. Firstface Co., Ltd., IPR2019-00611, Paper 11 (PTAB Aug. 5, 2019).

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C. The ’557 Patent
The ’557 patent discloses a mobile communication terminal with
“an activation button configured to switch from an inactive state . . . to an
active state,” where “a predetermined operation is performed simultaneously
with switching to the active state by pressing the activation button.”
Ex. 1101, Abstract. According to the ’557 patent, adding functionality to a
mobile communication terminal, to be performed when the terminal is in an
active state, typically required adding an “interface or button for performing
the function.” Id. at col. 1, ll. 34–40. At the same time, terminal users often
perform the actions of “habitually taking out and activating the terminal[] on
the move or in a standby state while carrying the terminal[].” Id. at col. 1,
ll. 45–48. The ’557 patent seeks to take advantage of that habitual use by
“connecting various operations to the activation button provided in a
terminal” and performing a predetermined function whenever the user
presses the activation button. Id. at col. 1, ll. 52–56.

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Figure 1 of the ’557 patent is reproduced below.

Figure 1 depicts mobile communication terminal 100 comprising camera
130, display unit 110, activation button 120, and sub-display unit 121.
Id. at col. 3, ll. 51–55, col. 5, ll. 7–9. “[D]isplay unit 110 displays various
information regarding operation states of the mobile communication
terminal 100, and also displays an interface for a user’s input if the mobile
communication terminal 100 drives a touch screen.” Id. at col. 4, ll. 3–6.
When the user presses activation button 120, mobile communication
terminal 100 switches from the inactive state (in which the terminal is
communicable but the display screen is turned off) to the active state
(in which the display screen is turned on). Id. at col. 3, ll. 28–46, col. 4,
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ll. 27–35. Figure 1 above, for example, “illustrates a state in which a lock
screen is displayed on the display unit 110 after pressing the activation
button 120 when the mobile communication terminal 100 is in the inactive
state.” Id. at col. 4, ll. 32–35. If the user presses activation button 120 when
mobile communication terminal 100 is in the inactive state, mobile
communication terminal 100 may perform a “predetermined operation” (set
in advance by the user) “simultaneously with switching to the active state.”
Id. at col. 2, ll. 1–17, col. 4, ll. 40–50. Mobile communication terminal 100
also may perform different operations depending on either the number of
presses or the press time of activation button 120. Id. at col. 4, l. 50–col. 5,
l. 6.
The ’557 patent describes a number of operations that can be
performed when activation button 120 is pressed. Id. at col. 5, ll. 44–49.
For example, a “user authentication process can be performed for security by
pressing the activation button 120.” Id. at col. 7, ll. 4–7. When in the
inactive state, mobile communication terminal 100 “senses whether or not
the user has pressed the activation button” and, if so, performs a “user
identification function.” Id. at col. 7, ll. 14–19. User identification unit 420
of mobile communication terminal 100 may use camera activation element
421, iris detection element 422, and user identification element 423 to sense
and recognize the iris of a user’s eye. Id. at col. 7, ll. 20–50. The
’557 patent explains that “other authentication methods, for example, an
authentication key matching method, a password matching method, a face
recognition method, a fingerprint recognition method, and the like, can be
used” instead of the iris recognition method. Id. at col. 8, ll. 3–8.

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D. Illustrative Claim
Claims 1 and 9 of the ’557 patent are independent. Claim 8 depends
from claim 1, and claim 15 depends from claim 9. Claim 1 recites:
1. A mobile communication terminal comprising:
a display unit; and
an activation button configured to switch from an inactive
state, which is an OFF state of the display unit, to an active state,
which is an ON state of the display unit; and
a user identification unit configured to operate a user
identification function,
wherein the user identification function is performed
simultaneously with switching from the inactive state of the
display unit to the active state of the display unit by pressing the
activation button,
wherein the user identification function includes a
fingerprint recognition.

E. Evidence
The pending grounds of unpatentability in the instant inter partes
review are based on the following prior art:
U.S. Patent Application Publication No. 2010/0017872
A1, published Jan. 21, 2010 (Ex. 1113, “Goertz”);
U.S. Patent Application Publication No. 2009/0083850
A1, published Mar. 26, 2009 (Ex. 1105, “Fadell”);
International Patent Application Publication
No. WO 2010/126504 A1, published Nov. 4, 2010 (Ex. 1106,
“Gagneraud”);
German Patent Application Publication No. DE 19710546
A1, published Sept. 17, 1998 (Ex. 1114, “Herfet”);1 and

1 We refer to “Herfet” as the English translation of the original reference
(both provided as Exhibit 1114). Petitioner includes a declaration in Exhibit
1114 attesting to the accuracy of the translation. See 37 C.F.R. § 42.63(b).
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IPHONE USER GUIDE FOR IPHONE OS 3.1 SOFTWARE
(2009) (Ex. 1107, “iOS”).
Petitioner filed declarations from Benjamin B. Bederson, Ph.D. (Ex. 1103),
Michael Hulse (Ex. 1104), and Yosh Moriarty (Ex. 1131) with its Petition
and a reply declaration from Dr. Bederson (Ex. 1139) with its Reply. Patent
Owner filed a declaration from Alfred C. Weaver, Ph.D. (Ex. 2001), with its
Response.

F. Asserted Grounds
The instant inter partes review involves the following grounds of
unpatentability:
Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1, 8, 9, 15 103(a)2 Fadell, iOS, Gagneraud
1, 8, 9, 15 103(a) Goertz, Herfet

II. ANALYSIS
A. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art for a challenged
patent, we look to “1) the types of problems encountered in the art; 2) the
prior art solutions to those problems; 3) the rapidity with which innovations
are made; 4) the sophistication of the technology; and 5) the educational

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 103 and 112. Because the
challenged claims of the ’557 patent have an effective filing date before the
effective date of the applicable AIA amendments, we refer to the pre-AIA
versions of 35 U.S.C. §§ 103 and 112.
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level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654,
666–667 (Fed. Cir. 2000). “Not all such factors may be present in every
case, and one or more of them may predominate.” Id.
Petitioner argues that a person of ordinary skill in the art at the time of
the ’557 patent would have had “a bachelor’s degree in Computer Science,
Computer Engineering, or equivalent and at least two years of relevant
experience in the fields of user interface design and mobile devices, or
otherwise equivalent industry experience in the relevant field.” Pet. 13–14
(citing Ex. 1103 ¶¶ 29–30). Patent Owner does not dispute Petitioner’s
proposed level of ordinary skill in the art. PO Resp. 15 (citing Ex. 2001
¶¶ 34–36). Based on the full record developed during trial, including our
review of the ’557 patent and the types of problems and prior art solutions
described in the ’557 patent, we agree with Petitioner’s assessment of the
level of ordinary skill in the art and apply it for purposes of this Decision.

B. Claim Interpretation
In an inter partes review based on a petition filed on or after
November 13, 2018, we interpret the claims of the challenged patent
using the same claim construction standard that would be used to
construe the [claims] in a civil action under 35 U.S.C. 282(b),
including construing the [claims] in accordance with the ordinary
and customary meaning of such [claims] as understood by one of
ordinary skill in the art and the prosecution history pertaining to
the patent.
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
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“In determining the meaning of [a] disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006). Claim terms are given their plain and ordinary meaning as
would be understood by a person of ordinary skill in the art at the time of the
invention and in the context of the entire patent disclosure. Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
exceptions to this general rule: 1) when a patentee sets out a definition and
acts as his own lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during prosecution.”
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012).
In the Decision on Institution, based on the parties’ arguments, see
Pet. 14–17; Paper 9, 5–13, and the record at the time, we preliminarily
interpreted the following limitations of claims 1 and 9:
Limitation Interpretation
“simultaneously” when a user just presses the activation
button, both the user identification function
and the switching from the inactive state of
the display unit to the active state of the
display unit are performed, without
additional steps
“inactive state” a state in which the mobile communication
terminal is communicable but a display
screen is turned off, regardless of whether
or not the mobile communication terminal
performs a predetermined operation, and
the mobile communication terminal is not
completely turned off
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Limitation Interpretation
“active state” a state in which the display screen of the
mobile communication terminal is turned
on
“user identification unit” (not a means-plus-function limitation
under 35 U.S.C. § 112, sixth paragraph,
and no further interpretation is necessary)
Dec. on Inst. 8–17. We specifically “encouraged [the parties] to address”
the interpretation of “simultaneously” and “user identification unit” in their
papers during trial. Id. at 15, 17.
The parties agree with our preliminary interpretations. See PO Resp.
5–15; Reply 1–3; Sur-Reply 1–3; Ex. 2001 ¶¶ 80–82 (Dr. Weaver testifying
that a person of ordinary skill in the art would understand “user
identification unit” to recite sufficiently definite structure and that the term
should not be interpreted as a means-plus-function limitation); Ex. 1139 ¶ 15
(Dr. Bederson agreeing with Dr. Weaver’s analysis of “user identification
unit”). The parties, however, disagree as to how our preliminary
interpretation of “simultaneously” applies to the asserted prior art. See
PO Resp. 7–10; Reply 1–2; Sur-Reply 1–2. We resolve those issues below.
See infra Sections II.D.4.b.(1), II.E.3.b.(2). Based on the full record
developed during trial, we do not perceive any reason or evidence that
compels any deviation from the preliminary interpretations above. We adopt
the previous analysis for purposes of this Decision, and conclude that no
further claim interpretation is necessary. See Dec. on Inst. 8–17; Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (“Because we need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy,’
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we need not construe [a particular claim limitation] where the construction is
not ‘material to the . . . dispute.’” (citations omitted)).

C. Legal Standards
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
question of obviousness is resolved on the basis of underlying factual
determinations, including “the scope and content of the prior art”;
“differences between the prior art and the claims at issue”; and “the level of
ordinary skill in the pertinent art.”3 Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
A patent claim “is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.” KSR,
550 U.S. at 418. An obviousness determination requires finding “both ‘that
a skilled artisan would have been motivated to combine the teachings of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so.’”
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,

3 Additionally, secondary considerations, such as “commercial success, long
felt but unsolved needs, failure of others, etc., might be utilized to give light
to the circumstances surrounding the origin of the subject matter sought to
be patented. As indicia of obviousness or nonobviousness, these inquiries
may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner has not
presented any evidence of secondary considerations of nonobviousness in
this proceeding.
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1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
(for an obviousness analysis, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does”).
“Although the KSR test is flexible, the Board ‘must still be careful not to
allow hindsight reconstruction of references . . . without any explanation as
to how or why the references would be combined to produce the claimed
invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
2016) (citation omitted). Further, an assertion of obviousness “cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d
1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount
to an “insufficient articulation[] of motivation to combine”; “instead, the
finding must be supported by a ‘reasoned explanation’” (citation omitted));
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
(“To satisfy its burden of proving obviousness, a petitioner cannot employ
mere conclusory statements. The petitioner must instead articulate specific
reasoning, based on evidence of record, to support the legal conclusion of
obviousness.”).

D. Obviousness Ground Based on Fadell, iOS, and Gagneraud
1. Fadell
Fadell describes “an electronic device with an embedded
authentication system for restricting access to device resources” including
sensors that “detect appropriate biometric information as the user operates
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the device, without requiring the user to perform a step for providing the
biometric information (e.g., embedding a fingerprint sensor in an input
mechanism instead of providing a fingerprint sensor in a separate part of the
device housing).” Ex. 1105, Abstract, ¶ 5. Fadell recognizes that previous
systems restricting access via passwords or pass codes were “effective only
so long as no other user knows the password or pass code,” and fingerprint
or retina scan systems, while more secure, were “time consuming and
bothersome for the user, requiring an additional step before the user can
access the device.” Id. ¶ 4. Fadell discloses that “[i]t would be desirable
therefore, to provide an electronic device by which biometric and other
authentication mechanisms are implemented 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.” Id.
Figure 8B of Fadell is reproduced below.

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Figure 8B depicts electronic device 800, held in user’s hand 830, comprising
display 810, home button 812, and sensor 720 “placed behind” home button
812 and “operative to detect features of a user’s fingerprint to identify the
user.” Id. ¶¶ 64–67. Sensor 720 can “generate an image or a representation
of the skin placed over the sensor that can be compared to a library of
images or representations available to the electronic device.” Id. ¶ 56.
Fadell requires the user to be authenticated (e.g., by fingerprint
recognition) before providing access to data and resources on the electronic
device. Id. ¶¶ 43, 46–48. Figure 15 of Fadell is reproduced below.

Figure 15 depicts a flow chart for authenticating a user. Id. ¶ 93. At step
1504, the electronic device identifies the user of the device by receiving a
username or password or “seamlessly captur[ing] authentication information
as the user operates the device” via a fingerprint sensor. Id. At step 1506,
the electronic device “determine[s] whether a request to access restricted
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resources was received.” Id. ¶ 94. For example, the request may be to
access “data associated with a particular user,” such as a contact list, or a
“restricted application,” such as an application restricted to particular users.
Id. If so, the electronic device “determine[s] whether the identified user is
authorized to access the resources” at step 1508. Id. ¶ 95. “For example, the
electronic device may determine whether the user has provided suitable
authentication information for accessing the restricted resources,” or “[t]he
electronic device may receive suitable authentication information without
the user’s knowledge . . . by embedding an authentication sensor in the
device such that authentication information is received during normal use.”
Id. Once it is determined that the user is authorized to access the requested
restricted resource, the electronic device provides access at step 1512.
Id. ¶ 96.

2. iOS
iOS is a user guide for iPhone OS 3.1 software. Ex. 1107, 1. iOS
includes a diagram of an iPhone on page 20, which is reproduced below.

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The reproduced diagram above depicts an iPhone. Id. at 20. The iPhone
includes a home button that, when pressed, causes the device to display a
home screen that includes applications that can be launched. Id. at 23. The
iPhone also includes a sleep/wake button that allows the user to lock the
device or turn it off. Id. at 26–27. When the iPhone is locked, nothing
happens if the user touches the screen. Id. at 26.

3. Gagneraud
Gagneraud describes a device comprising a power button, “fingerprint
scanner coupled on the power button,” and “authentication application” that
“compar[es] a user fingerprint image with a stored fingerprint image.”
Ex. 1106, Abstract. Gagneraud discloses that “[b]y utilizing a fingerprint
scanner coupled on a power button, when the fingerprint scanner detects a
user, the single act of the fingerprint scanner detecting the user results in the
fingerprint scanner beginning to scan and store a user’s fingerprint image
while a machine concurrently begins powering on.” Id. ¶ 58. “As a result,
time is saved and user friendliness is increased by automatically
authenticating the user’s fingerprint image with stored fingerprints once the
machine has powered on.” Id. “Additionally, by configuring a locking
mechanism on the machine to unlock after the user fingerprint image has
been authenticated, security for the machine and a user’s account is further
increased.” Id.

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Figure 8 of Gagneraud is reproduced below.

Figure 8 depicts a flow chart for authenticating a user using “a fingerprint
scanner on a power button.” Id. ¶ 53. The fingerprint scanner detects a user
touch at step 800. Id. ¶ 54. “Once a user is detected, the machine
concurrently begins powering on 810 and scans a user fingerprint with the
fingerprint scanner 820.” Id. Specifically, “[w]hile the machine is powering
on, the fingerprint scanner concurrently scans the user fingerprint with the
fingerprint scanner 850 and stores the user fingerprint image in a memory
coupled to the fingerprint scanner 860.” Id. ¶ 55. “Once the user fingerprint
has been stored and the operating system on the machine has been loaded, an
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authentication application determines whether the user fingerprint matches
a stored fingerprint image or data (stored fingerprints) on the machine 865.”
Id. If a match is detected, “the operating system will authenticate the user
and log the user into the operating system 870,” the authentication
application “access[es] a locking mechanism 880,” and “the machine
configures [the] locking mechanism on the machine to release and grant the
user access to the machine 890.” Id. ¶¶ 56–57.

4. Claim 1
Petitioner argues that claim 1 is unpatentable over Fadell, iOS,4 and
Gagneraud under 35 U.S.C. § 103(a), relying on the testimony of
Dr. Bederson as support. Pet. 17–38 (citing Ex. 1103). Patent Owner makes
various arguments in response, relying on the testimony of Dr. Weaver.
PO Resp. 25–40, 50–51 (citing Ex. 2001); Sur-Reply 3–15, 23–24.

a) Undisputed Issues
Petitioner relies on Fadell for the majority of the limitations of
claim 1. Pet. 25–38. For example, Petitioner argues that Fadell teaches a
“mobile communication terminal” (i.e., electronic device 800) comprising a
“display unit” (i.e., display 810), “activation button” (i.e., home button 812),

4 Petitioner provides evidence supporting its contention that iOS is a prior art
printed publication under 35 U.S.C. § 102(b). See Pet. 7 (citing Exs. 1104,
1131). Patent Owner does not assert otherwise in its Response, and we
agree that the reference is prior art for the reasons stated by Petitioner. Also,
we previously granted Petitioner’s motion to seal certain exhibits pertaining
to the alleged printed publication status of iOS. Paper 10 (granting motion
to seal portions of Exhibits 1104 and 1131, where Petitioner filed unredacted
and redacted versions of each exhibit). We do not refer to any sealed
material in this Decision.
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and “user identification unit configured to operate a user identification
function” including “fingerprint recognition” (i.e., “authentication system
112 for identifying users based on biometric features, controlled by
processing circuitry 102” shown in Figure 1 of Fadell). Id.
Petitioner relies on a combination of Fadell with iOS for the limitation
of claim 1 that the activation button be “configured to switch from an
inactive state, which is an OFF state of the display unit, to an active state,
which is an ON state of the display unit.” Id. at 27–28. Petitioner contends
that Fadell’s electronic device 800 (shown in Figure 8B above) can be an
iPhone that would use the operating system described in iOS, given that
Fadell is assigned to Apple Inc. and purports to incorporate in its entirety
U.S. Provisional Patent Application No. 60/995,200 (Ex. 1128, “the
’200 application”). Pet. 22, 24, 28; see Ex. 1105, code (73), ¶ 1. The
’200 application states that “[e]lectronic device 100 may be any suitable
electronic device, including for example an iPod or iPhone from Apple,
Inc.” Ex. 1128, 5. Petitioner argues that iOS describes an iPhone home
button pressed to wake the device from a sleep state. Pet. 28 (citing
Ex. 1107, 20, 27, 145). According to Petitioner, iOS shows how a person of
ordinary skill in the art would have understood the functionality of Fadell’s
iPhone, and even if not directly applicable, a person of ordinary skill in the
art would have been motivated to apply the teachings of iOS as a
“well-known interface implementation[]” for devices like the one described
in Fadell. Id. at 24.
Patent Owner does not dispute that Fadell and iOS teach the above
limitations of claim 1 or that a person of ordinary skill in the art would have
been motivated to combine the references’ teachings in the manner asserted
by Petitioner; therefore, any such arguments are waived. See Novartis AG v.
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Torrent Pharms. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); NuVasive,
842 F.3d at 1380–81; Paper 12, 6 (“Patent Owner is cautioned that any
arguments for patentability not raised in the response may be deemed
waived.”); Sur-Reply 4 n.1 (Patent Owner stating that it does not address
iOS in its Response and Sur-Reply because “it is not relevant to [Patent
Owner’s] arguments”). Petitioner’s analysis for each of the limitations,
supported by the testimony of Dr. Bederson, which we credit, is persuasive.
See Pet. 25–30, 38; Ex. 1103 ¶¶ 65–74, 84.

b) Disputed Issues
(1) “Simultaneously” Limitation
Claim 1 recites that “the user identification function is performed
simultaneously with switching from the inactive state of the display unit to
the active state of the display unit by pressing the activation button” (the
“simultaneously” limitation). We interpret “simultaneously” to mean that
“when a user just presses the activation button, both the user identification
function and the switching from the inactive state of the display unit to the
active state of the display unit are performed, without additional steps.”
See supra Section II.B.
As discussed above, Petitioner relies on Fadell as teaching the
performance of a “user identification function” (i.e., authenticating the user
by fingerprint) and the combination of Fadell and iOS as teaching
“switching from the inactive state of the display unit to the active state of the
display unit (waking the device) by pressing the activation button (power
button or home button).” Pet. 31. Patent Owner does not dispute either of
those aspects of the “simultaneously” limitation. See supra Section II.D.4.a.
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With respect to the remaining requirement that the user identification
function be performed “simultaneously” with switching from an inactive
state to an active state, Petitioner relies on Fadell and Gagneraud.
Pet. 31–37. Petitioner first argues that Fadell alone teaches simultaneous
performance because Fadell’s user identification function is “performed
‘as the user . . . wakes the device’ (i.e., simultaneously—no other steps
(user action) are described in Fadell).” Id. at 31–32 (quoting Ex. 1105 ¶ 4;
citing Ex. 1105, claim 1). However, to the extent Fadell “lacks sufficient
detail with respect to whether additional steps (user action) are required to
perform the identification function, . . . Gagneraud cures any such
deficiencies,” according to Petitioner. Id. at 32. Petitioner provides the
following annotated version of Figure 8 of Gagneraud (id. at 33).

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Annotated Figure 8 depicts the steps involved in authenticating the user,
highlighting steps 800, 810, 830, 840, and 865 in particular. Petitioner
argues that “after the user presses a button with an integrated fingerprint
sensor [in step 800 shown in yellow], the machine concurrently powers on
(steps 810, 830, 840 in green) and performs fingerprint recognition (step 865
in red).” Id. at 33 (citing Ex. 1106 ¶¶ 25–27, 54, 55, 58, Fig. 8). According
to Petitioner, “the scanning and recognition of a fingerprint [in Gagneraud]
are performed ‘automatically’ and concurrently with powering on of the
machine—simultaneously (there are no additional steps (user action)
between pressing the activation button and performing either the powering
on or fingerprint recognition functions).” Id. at 33–34.

(a) Fadell Alone
Patent Owner disputes Petitioner’s assertion that Fadell alone teaches
performing the user identification function “simultaneously” with switching
from an inactive state to an active state. PO Resp. 26–31 (citing Ex. 2001
¶¶ 97–101, 103–104); see Sur-Reply 4–8. Patent Owner argues that
paragraph 4 of Fadell, relied upon by Petitioner, concerns “where on the
device to place authentication mechanisms to ensure quick and seamless
authentication,” not “when to perform authentication relative to activating
the display.” PO Resp. 26–28. Further, other disclosures in Fadell, such as
Figure 15, show that Fadell involves a “sequential, multi-step operation in
which authentication occurs before the display is turned on, not a
simultaneous operation.”5 Id. at 26–30.

5 Petitioner argues that Patent Owner’s use of the term “sequential” in some
of its arguments improperly attempts to depart from our preliminary
interpretation of the term “simultaneously.” Reply 1–2. We instead
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We agree with Patent Owner that Fadell by itself does not teach
“simultaneously” performing a user identification function and switching a
display unit to an active state. Paragraph 3 of Fadell, in the “Background of
the Invention” section, describes known methods for protecting information
stored on a portable electronic device, such as requiring entry of a “password
or pass code” and “detecting a user’s fingerprint or . . . scanning a user’s
retina.” Ex. 1105 ¶ 3. Paragraph 4 then discloses that
[w]hile both of these approaches may be useful, restricting access
based on a password or pass code is effective only so long as no
other user knows the password or pass code. Once the password
or pass code is known, the restriction mechanism may become
ineffective. Also, a password or pass code may be forgotten, thus
locking an authorized user out of the device. In addition,
requiring a user to provide a fingerprint or submit to a retina scan
may be time consuming and bothersome for the user, requiring
an additional step before the user can access the device. While
this approach is more secure than entering a password or pass
code, it comes at a cost in hardware (e.g., the necessary scanner,
detector, or reader) and time. It would be desirable therefore, to
provide an electronic device by which biometric and other
authentication mechanisms are implemented 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.
Id. ¶ 4 (emphasis added). Petitioner primarily relies on the statement in the
final sentence of paragraph 4 that the device authenticates the user “as the
user . . . wakes the device.” Pet. 31. Fadell, however, never uses the term

consider Patent Owner’s arguments as attempts to distinguish prior art
processes involving multiple steps from processes that would be performed
“simultaneously” (i.e., performance of both recited functions without
additional steps). See PO Resp. 26–27; Sur-Reply 1–2 (arguing that Fadell
does not teach the “simultaneously” limitation because it “disclose[s]
performing the user identification function and switching the display unit
from the inactive state to the active state in sequence (i.e., step-wise)”).
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“wakes” other than in paragraph 4, does not explain what is meant by the
term, and does not describe any particular embodiment in which a user is
authenticated as the user “wakes” the device or how such functionality
would be implemented. Petitioner also points to claim 1 of Fadell, which
recites the steps of “receiving an input from a user,” “detecting identification
information of the user as the input is received,” and “authenticating the user
based on the detected information,” but does not recite any action apart from
the user identification and authentication (e.g., switching a display screen to
an active state) and thus, does not describe the relationship between such
events (i.e., with or without additional steps). See id. at 31–32.
Fadell discloses a specific sequence of steps that take place when
authenticating a user in the context of Figure 15. The authentication process
shown in Figure 15 involves first identifying the user (e.g., by receiving a
username or password or “seamlessly captur[ing] authentication information
as the user operates the device” via a fingerprint sensor) (step 1504),
receiving from the user “a request to access restricted resources”
(step 1506), performing user authentication (step 1508), and then, only if a
determination is made that the user is authenticated, providing access to the
restricted “resources” that the user requested (step 1512). Ex. 1105
¶¶ 93–96. In other words, user authentication is not performed
“simultaneously” with providing access to restricted “resources” because
there are additional steps between the two events.6

6 Fadell’s process of providing access to a “resource” only on the condition
that the user is authenticated is similar to that of U.S. Patent Application
Publication No. 2013/0057385 A1 (Ex. 1142, “Murakami”), addressed
during prosecution of the ’557 patent. See Dec. on Inst. 12–13; Ex. 1102,
190–191 (applicants arguing that Murakami does not teach the
“simultaneously” limitation because “the displaying of the data
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The parties dispute the import of Figure 15. Patent Owner argues that
it is relevant because it is the only description in Fadell of the sequence of
steps involved in authenticating a user, and argues that Fadell uses the term
“resource” expansively, such that the display screen of the device can be a
restricted “resource.” PO Resp. 28–30 (citing Ex. 1105 ¶¶ 24, 41, 42, 46;
Ex. 2001 ¶¶ 100–101, 103). Petitioner argues that nothing in Fadell
explicitly discloses that the display screen is a restricted “resource,” Figure
15 is only one embodiment in Fadell and contrary to another embodiment
shown in Figure 4 where “the display presents authentication instructions,”
and even if it were proper to look to Figure 15, paragraph 4 of Fadell
describes the claimed simultaneous performance by itself. Reply 8–10
(citing Ex. 1105 ¶¶ 24, 93–96; Ex. 1139 ¶¶ 29–33).
Based on our review of the full trial record, we agree with Patent
Owner. As an initial matter, we do not see anything in Fadell indicating that
the display screen cannot be a “resource” to which the user requests access.
Fadell discloses that user authentication “may or may not” be required to
access the display screen, suggesting that the display screen may constitute
a restricted “resource” in at least some circumstances (in which case the
multi-step process of Figure 15 would apply). Ex. 1105 ¶ 42. The question
is whether a person of ordinary skill in the art would have understood the
authentication process of Figure 15 to apply in the context of a user
requesting access to the display screen to wake from a state where the

[in Murakami] is performed on the condition that [the] user’s identity is
authenticated” (i.e., after the user identification function completes the step
of authenticating the user), rather than the user identification function and
switching from the inactive state to the active state being performed without
additional steps (emphasis added)).
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display screen is turned off. Petitioner is correct that Figure 15 is just one
embodiment among others described in Fadell, but, importantly, it is the
only description in Fadell of the sequence of steps of authenticating the user
relative to performing some other action. Fadell uses the term “wakes” in
paragraph 4, but never describes an embodiment in which user
authentication is performed relative to waking the device. Thus, there is no
explicit disclosure of whether the display screen would be a restricted
“resource” in the context of waking the device as described in paragraph 4—
the only relevant disclosure is the Figure 15 embodiment, which is a process
that is performed with additional steps.
Further, although the description of Figure 15 lists two examples of
restricted “data” and “application[s],” other portions of the reference
describe other examples of restricted “resources,” such as “files” and
“personal settings,” and use the term “resource” more broadly. See id. ¶¶ 24
(“Access to any suitable electronic device resource may be restricted . . . .”),
41 (“The electronic device may require authorization prior to providing
access to any electronic device resource.”), 46, 93–96. Indeed, Dr. Bederson
acknowledged that “resource” is used broadly in Fadell and that the display
screen can be a “resource,” testifying as follows:
Q. What is a device resource?
[PETITIONER’S COUNSEL]: Objection; form.
A. I think the way that Fadell describes restricting access to
device resources, this is in the context of restricting a user
to access a device’s resources. So I think it would be some
resource on the device that a user could use.
. . .

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Q. Is the display screen a resource?
A. Well, as I just said, if the device is asleep, I think that the
screen would be off and not available for use, but I think
that would be consistent at least with the way that this
reference is describing restricting access to device
resources.
Ex. 2007, 20:21–21:2, 22:15–21; see Reply 10 (acknowledging that
Dr. Bederson “confirmed that a display generally can be a resource”);
Tr. 15:8–9, 15:19–20 (same).
Finally, we are not persuaded by Petitioner’s reference to Figure 4 of
Fadell. See Reply 9. Figure 4 depicts display screen 400 including
selectable option 410 for “unlocking the display” to access “the home screen
from which information and applications are launched.” See Ex. 1105
¶¶ 46–48, Fig. 4. Because the figure pertains to unlocking the device (when
the device is awake and the display screen is already turned on), rather than
waking the device from a state where the display screen is turned off, it does
not correspond to the disclosure of waking in paragraph 4 that Petitioner
relies upon in the Petition. See id. ¶ 4 (listing three categories where the
user “turns on,” “unlocks,” or “wakes” the device). We agree with Patent
Owner that “[j]ust because the display is not a restricted resource in one
embodiment does not mean that the display can never be a restricted
resource.” See Sur-Reply 8 & n.2.
We find that the isolated reference to authenticating the user as the
user “wakes” the device in paragraph 4 of Fadell is too ambiguous and
counter to the remainder of the reference to constitute by itself a teaching of
performing user identification “simultaneously” with switching to an active
state. See Ex. 1105 ¶ 4. As Patent Owner acknowledges, it merely
expresses a goal of quick and seamless user authentication “as the user turns
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on, unlocks or wakes the device,” but does not teach the claim limitation
alone. See id.; PO Resp. 31.

(b) Combination With Gagneraud
We turn now to Petitioner’s alternative argument that the combination
of Fadell and Gagneraud teaches performing user identification
“simultaneously” with switching to an active state. Petitioner argues that
because “Fadell discloses the goal of simultaneous operations but may not
disclose how the timing of the simultaneous operations would be related to
each other and to other possible user actions, a [person of ordinary skill in
the art] would have looked to analogous systems, like Gagneraud, for
exemplary implementations.” Pet. 34. In the proposed combination,
Petitioner relies on Fadell (understood in view of iOS) for its teachings of
authentication via fingerprint recognition and the goal of authenticating a
user as the user “wakes” the device using an activation button, and relies on
Gagneraud for its teaching of simultaneous operations, namely performing
both fingerprint recognition and powering on of the device based on a button
press by the user, without additional steps. Id. at 27–34. According to
Petitioner, a person of ordinary skill in the art would have applied
“Gagneraud’s teachings of simultaneous performance to Fadell’s wake and
authentication procedures” in such a manner that user authentication in the
combined device would be performed simultaneously with waking the
device (i.e., activating the display). Id. at 34–37.
Patent Owner responds that “Gagneraud does not cure Fadell’s
deficiencies” because Gagneraud discloses “performing an authentication
function while the entire device (except the fingerprint scanner itself) is
being powered on,” not simultaneously performing user authentication and
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activating a display when the device is already on. PO Resp. 31–32 (citing
Ex. 1106 ¶ 15, Figs. 6, 8; Ex. 2001 ¶ 105); see Sur-Reply 8–12. Patent
Owner argues that “[w]hen a limitation is more than a ‘peripheral issue,’
it ‘requires a core factual finding,’ which in turn requires ‘point[ing] to some
concrete evidence in the record in support of these findings,’” and “[n]either
Fadell nor Gagneraud discloses performing fingerprint authentication
simultaneously with activating the display (as opposed to turning on the
device).” PO Resp. 32–34 (quoting K/S HIMPP v. Hear-Wear Techs., LLC,
751 F.3d 1362, 1365 (Fed. Cir. 2014); citing Ex. 2001 ¶ 106).
Patent Owner’s arguments are unpersuasive, as they are directed to
Gagneraud individually rather than the combination of Fadell and
Gagneraud proposed by Petitioner. See Bradium Techs. LLC v. Iancu,
923 F.3d 1032, 1050 (Fed. Cir. 2019) (“A finding of obviousness . . . cannot
be overcome ‘by attacking references individually where the rejection is
based upon the teachings of a combination of references.’” (quoting In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)); In re Mouttet,
686 F.3d 1322, 1332–33 (Fed. Cir. 2012) (holding that “the test for
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art”). Patent Owner is correct
that Gagneraud alone teaches performing user authentication simultaneously
with powering on the device, rather than with switching the device’s display
from an inactive state to an active state. See PO Resp. 31–32. But Petitioner
relies on Fadell (understood in view of iOS), not Gagneraud, as teaching the
recited state switching. Pet. 27–32, 34. Petitioner’s position is that
Gagneraud’s teachings regarding simultaneous performance would apply
equally to other contexts where a user is indicating his or her “initial
interaction” with a device and, therefore, applying Gagneraud’s teachings to
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Fadell and iOS would have resulted in a device that performed user
authentication and activating the display simultaneously, i.e., without
additional steps. Id. at 34–37.
We agree with Petitioner that Fadell, iOS, and Gagneraud in
combination teach the “simultaneously” limitation. Petitioner points to
specific language in the references and explains how a person of ordinary
skill in the art would have viewed their teachings in combination. Fadell
teaches an “activation button” (i.e., home button 812) that, when pressed,
causes the electronic device to perform a “user identification function” (i.e.,
identifying the user by fingerprint). See Ex. 1105 ¶¶ 56, 64–65; Pet. 19–20,
27–31. Fadell’s device is an iPhone, and iOS teaches that pressing the
iPhone home button causes the device to switch from an “inactive state”
where the device’s display screen is turned off but the device is not
completely turned off to an “active state” where the display screen is turned
on (i.e., the device wakes from a sleep state). See Ex. 1107, 20, 27, 145;
Pet. 22–24, 28. Gagneraud expressly teaches performance of a user
identification function (i.e., fingerprint recognition) (step 865 shown in red
in annotated Figure 8 above) and powering on of the device (steps 810, 830,
and 840 shown in green) “simultaneously,” i.e., without additional steps.
See Ex. 1106 ¶¶ 25 (fingerprint recognition is performed “while the machine
100 is powering on” instead of “after the machine 100 is powering on”), 54
(“Once a user is detected, the machine concurrently begins powering on 810
and scans a user fingerprint . . . .” (emphasis added)), 55, 58 (“By utilizing a
fingerprint scanner coupled on a power button, when the fingerprint scanner
detects a user, the single act of the fingerprint scanner detecting the user
results in the fingerprint scanner beginning to scan and store a user’s
fingerprint image while a machine concurrently begins powering on.”
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(emphasis added)); Pet. 20–21, 32–34; PO Resp. 36 (acknowledging that
“Gagneraud discloses a simultaneous process as the device powers on”).
Thus, applying Gagneraud’s teaching of user identification with
respect to powering on of the device to the very similar teaching of Fadell of
user identification with respect to waking from a sleep state results in the full
“simultaneously” limitation. See Pet. 34–37. We credit the supporting
testimony of Dr. Bederson on these points, as it is based on and consistent
with the specific disclosures of the references discussed above. See
Ex. 1103 ¶¶ 53–64, 70–80.
Indeed, Patent Owner acknowledges that the references separately
teach various aspects of the “simultaneously” limitation, stating that “Fadell
discloses a sensor embedded in the device [for fingerprint recognition] that
performs a sequential process when the device is already on” and
“Gagneraud discloses a simultaneous process as the device powers on,” but
disputes whether the references in combination teach the full limitation.
PO Resp. 36. The issue then is whether a person of ordinary skill in the art
would have been motivated to combine the references’ teachings to create a
device that performed user authentication and activating the display
simultaneously, and we address the parties’ arguments on that point below.
See infra Section II.D.4.b.(2).
We find that the combination of Fadell, iOS, and Gagneraud teaches
the limitation of claim 1 that “the user identification function is performed
simultaneously with switching from the inactive state of the display unit to
the active state of the display unit by pressing the activation button.”

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(2) Motivation to Combine With Gagneraud
Petitioner argues that a person of ordinary skill in the art would have
been able and motivated to modify Fadell’s electronic device based on the
teachings of Gagneraud. Pet. 34–37. Specifically, Petitioner asserts that
a person of ordinary skill in the art would have applied “Gagneraud’s
teachings of simultaneous performance to Fadell’s wake and authentication
procedures” such that user authentication would be performed
simultaneously with waking the device (i.e., activating the display). Id. at
34–37.
According to Petitioner, an ordinarily skilled artisan would have been
motivated to do so “to fulfill Fadell’s goal of ‘authenticat[ing] the user
quickly and seamlessly . . . as the user . . . wakes the device’ . . . with the
benefit of saving time and simplifying user interaction.” Id. at 34 (emphasis
omitted) (quoting Ex. 1105 ¶ 4; citing Ex. 1106 ¶ 58). Doing so “would
have been no more than the application of known methods and devices
(Gagneraud’s disclosed timing) to improve similar methods and devices
(Fadell’s device with fingerprint recognition) in the same way (by
implementing concurrent operations to save time with a single step/user
action)” in Petitioner’s view. Id. Petitioner further explains that
a [person of ordinary skill in the art] would have known that the
disclosures and teachings of Fadell and Gagneraud would have
had wide applicability in the art of electronic devices. This is
because their teachings relate to fundamental human-computer
interaction concepts such as (1) determining that a user is
indicating their initial interaction with a device, and
(2) determining whether that user should be allowed to interact
with the device. In other words, Gagneraud teaches that a
fingerprint function should be performed simultaneously with
powering-on a device in order to save time. But whether the
device is “powering” on (as in Gagneraud and Fadell) or
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“waking” from sleep (also in Fadell), or whether the user signals
activation via a power button or home button, has no bearing on
the underlying question of whether the user is indicating their
initial interaction with the device. A [person of ordinary skill in
the art] would have understood that the concept of fingerprint
identification would have been needed for, and applicable to, any
process in which the device has not been in active use (among
other situations) and a user signals that they are initiating
interactions with some function of the device. Fadell makes this
equivalence explicit in saying that authentication mechanisms
are used for the group of functions: “as the user turns on, unlocks
or wakes the device.” Any button that would have been used to
wake a device—i.e., the first button being pressed by the user—
would have been an obvious candidate for the convenience factor
desired in Fadell and Gagneraud.
Id. at 35–36 (citations and emphases omitted).
Finally, Petitioner argues that a person of ordinary skill in the art
would have had a reasonable expectation of success in modifying Fadell as
explained above because, for example, doing so would have utilized
“existing hardware and software” and a person of ordinary skill in the art
“would have only needed to identify the button press and link its activation
to particular functions,” which was a “simple input configuration.” Id. at
37–38. Dr. Bederson provides supporting testimony for Petitioner’s
contentions. See Ex. 1103 ¶¶ 32–41, 75–83.
Patent Owner makes five arguments in response. First, Patent Owner
argues that Petitioner and Dr. Bederson do not explain sufficiently why
“determining that a user is indicating their initial interaction with a device”
(e.g., waking from a sleep state as in Fadell, powering on as in Gagneraud)
constitutes a “fundamental human-computer interaction concept[].”
PO Resp. 34–35 (citing Ex. 2001 ¶¶ 107–108); see Sur-Reply 11–14.
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Dr. Weaver states that he is “not aware of any literature” stating that to be
the case. Ex. 2001 ¶ 108.
We find that the similarity between the references’ teachings
regarding initial interaction with a device is some evidence of whether a
person of ordinary skill in the art would have thought to combine them.
Petitioner’s position is that an ordinarily skilled artisan “would have
understood that the concept of fingerprint identification would have been
needed for, and applicable to, any process in which the device has not been
in active use (among other situations) and a user signals that they are
initiating interaction with some function of the device.” Pet. 35–36. That
assertion is supported by paragraph 4 of Fadell, which expresses a desire for
quick and seamless user authentication in three contexts: when the user
“turns on,” “unlocks,” and “wakes” the device. See Ex. 1105 ¶ 4. Thus,
waking from a sleep state (as in Fadell) and powering on a device (as in
Gagneraud) are analogous initial interaction situations at least by virtue of
the fact that Fadell refers to them together. See Pet. 36 (arguing that “Fadell
makes [the] equivalence explicit”); Ex. 1139 ¶ 35. In addition, the record
demonstrates that issues pertaining to whether a user is granted access to a
device when he or she indicates a desire to access it were well-known in the
art. See Ex. 1105 ¶¶ 3–4; Ex. 1139 ¶ 37; Ex. 1140, 2 (“The problem of how
users authenticate to systems, particularly using passwords, is one of the
oldest and most heavily studied topics in usable security.”).
The similarity between the references’ teachings regarding initial
interaction with a device, though, is only one aspect of Petitioner’s
motivation to combine analysis. More important is the express motivation to
combine in Fadell and clear link between the references’ teachings. See
Pet. 34–35; Reply 10–11. Fadell states that requiring a user to use a
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fingerprint or retina scan to gain access to a portable electronic device can be
“time consuming and bothersome for the user” because it requires an
“additional step” before allowing the user to access the device and also
requires additional “hardware” in the device. Ex. 1105 ¶ 4. Therefore,
according to Fadell, “[i]t would be desirable . . . to provide an electronic
device by which biometric and other authentication mechanisms are
implemented 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.” Id. (emphases added).
We find this to be the most probative evidence of why a person of
ordinary skill in the art would have thought to combine Fadell and
Gagneraud. As both parties agree, Fadell expresses a goal of quick and
seamless user authentication “as the user turns on, unlocks or wakes the
device.” See Pet. 34; PO Resp. 31; Tr. 8:10–13. Fadell achieves quick and
seamless user authentication by integrating a fingerprint sensor into the
device itself (e.g., behind the home button). Ex. 1105 ¶¶ 5, 64–67, Fig. 8B.
But Gagneraud takes that a step further by, in addition to integrating a
fingerprint scanner with a button on the device, “concurrently”
(i.e., simultaneously) performing user authentication and powering on of the
device. See Ex. 1106 ¶ 58. Gagneraud, therefore, “adds to Fadell’s
disclosure by providing examples of specific timings and non-conditional
processes that a [person of ordinary skill in the art] would have been
motivated to apply in order to fulfill Fadell’s goal.” See Reply 12 (emphasis
added). In other words, by performing actions simultaneously, Gagneraud
helps to eliminate an “additional step” consistent with Fadell’s stated
objective. Importantly, Gagneraud expressly states that doing so has the
benefit that “time is saved and user friendliness is increased,” mirroring
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Fadell’s language that user authentication should be quick and seamless and
helping to alleviate Fadell’s identified problem where prior art methods were
“time consuming and bothersome” for the user because they required an
“additional step.” See Ex. 1105 ¶¶ 3–4; Ex. 1106 ¶ 58.
Patent Owner responds that Fadell’s description in paragraph 4 does
not support a motivation to combine because it is focused on “quickly and
seamlessly” authenticating a user via integration of the sensor into the
device, not changing any timing with respect to user authentication, and
Fadell “never indicates that it is concerned with exactly when authentication
occurs relative to activating a display.” Sur-Reply 12–13. We disagree.
Fadell states that it is desirable to perform the user authentication process
“quickly,” suggesting a concern with timing, and Gagneraud provides a way
to do that with an express benefit. See Ex. 1105 ¶ 4; Ex. 1106 ¶ 58;
Tr. 29:23–30:5 (Patent Owner acknowledging that “what Fadell is trying to
do is to save time”), 37:9–21 (Patent Owner acknowledging that the use of
the term “quickly” “implies a time-savings concern”). Dr. Bederson’s
explanation of this connection between the references’ goals and solutions is
consistent with the references’ teachings and particularly persuasive. See,
e.g., Ex. 1103 ¶¶ 81–82; Ex. 1139 ¶¶ 36–37. We find that, in addition to the
similarity of the teachings of Fadell and Gagneraud as both pertaining to
determining a user’s initial interaction with a device, the references
themselves demonstrate that a person of ordinary skill in the art would have
been led to implement Gagneraud’s simultaneous performance in waking the
device of Fadell. See Brown & Williamson Tobacco Corp. v. Philip Morris
Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (evidence of a motivation to
combine prior art references “may flow from the prior art references
themselves”).
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Second, Patent Owner contends that a person of ordinary skill in the
art would not have combined Fadell and Gagneraud because they teach
authenticating a user in different ways—with a multi-step process in Fadell
and a simultaneous process in Gagneraud—and “[w]hen two references
already accomplish similar functions by different means, one of skill in the
art would not be motivated to combine them.” PO Resp. 36 (citing Ex. 2001
¶ 109; Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369
(Fed. Cir. 2012)); see Sur-Reply 14. As explained above, however,
Gagneraud does not merely teach another method of user authentication.
Rather, we find that a person of ordinary skill in the art would have
understood Gagneraud’s teachings regarding simultaneous performance as
adding to and helping to fulfill Fadell’s stated goal, which supports
Petitioner’s position that a person of ordinary skill in the art would have
been motivated to combine their teachings. The similarity between the
references’ disclosures regarding initial interaction with a device also
suggests their compatibility. See In re Hyon, 679 F.3d 1363, 1366 (Fed. Cir.
2012) (affirming an obviousness determination where two “references both
teach processes directed to making the same class of products” and minor
differences between the disclosures did not “negate the motivation to
combine”). Kinetic Concepts is distinguishable because, in that case, the
patent challenger “never offered evidence articulating why a person having
ordinary skill in the art would combine the primary references to obtain the
disclosed inventions” and there was “significant evidence of teaching away,”
whereas Petitioner here provided ample reasoning and there is no evidence
of teaching away. See 688 F.3d at 1368–69.
Third, Patent Owner argues that a person of ordinary skill in the art
would not have combined Gagneraud with Fadell because doing so would
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change the “fundamental operation” of Fadell. PO Resp. 37–38 (citing
Ex. 2001 ¶¶ 110–111); see Sur-Reply 14–15. According to Patent Owner,
Fadell’s fundamental principle of operation is to “require[] authentication
before access to a restricted resource, such as the display, is allowed,”
whereas Gagneraud’s “device powers on regardless of the authentication
result,” such that modifying Fadell’s device based on Gagneraud would
result in Fadell activating the display screen prior to authenticating the user,
“undermining Fadell’s principle of operation.” PO Resp. 37.
We disagree with Patent Owner’s characterization of Fadell.
As explained above, the focus of Fadell is on the integration of a biometric
sensor into the portable electronic device itself so that the user provides
authentication information without performing an express input. That
feature is described prominently and at length in the Abstract and
“Background of the Invention,” “Summary of the Invention,” and “Detailed
Description” sections of Fadell. See, e.g., Ex. 1105, code (54) (“Embedded
Authentication Systems in an Electronic Device” (emphasis added)),
code (57) (“This invention is directed to an electronic device with an
embedded authentication system for restricting access to device resources.”
(emphasis added)), ¶¶ 2 (“This invention is directed to electronic devices
with embedded authentication systems.” (emphasis added)), 4–5, 39, 60–70,
95, Fig. 8B; PO Resp. 27–28 (Patent Owner arguing that “the bulk of
Fadell’s disclosure is about where to place the sensor and how to perform
authentication”); Ex. 2001 ¶¶ 98–99; Tr. 28:11–14 (Patent Owner arguing
that Fadell is “all about the embedded nature of the sensor within the
device”), 31:1–4 (Patent Owner arguing that Fadell is “all about . . . the final
incorporation of the sensor within the device”). Embedding the sensor is not
merely the solution of Fadell; it relates to how the device of Fadell operates
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in practice—it is what allows Fadell, in operation, to seamlessly authenticate
the user. See Ex. 1105 ¶¶ 4, 64 (“To provide a seamless user experience, the
sensors 720 may be embedded in or under at least one of input mechanism
710 and 712.”), 93 (“The electronic device may automatically receive
authentication information without requiring an express input from the user,
for example by placing a sensor of the authentication system in a manner
that seamlessly captures authentication information as the user operates the
device.”), 95. We are not persuaded that Fadell’s discussion of timing in
reference to Figure 15 should be considered the reference’s fundamental
principle of operation. See Ex. 2001 ¶ 85 (Dr. Weaver acknowledging that
“Fadell says little about the timing of authentication relative to turning on
the display” and “[t]he only disclosure of timing is depicted in Figure 15”);
PO Resp. 28 (“The only substantive disclosure in Fadell related to timing of
authentication is Figure 15.”). Based on the full record developed during
trial, we find that modifying the Fadell device to perform user authentication
and activate the display simultaneously would not change Fadell’s principle
of operation or render the device unsuitable for its intended purpose.
Fourth, Patent Owner argues that “power management considerations
would dissuade a [person of ordinary skill in the art] from combining Fadell
with Gagneraud.” PO Resp. 38–40; see Ex. 2001 ¶¶ 112–118 (citing
Exs. 2002–2005 as support). According to Patent Owner, Gagneraud’s
fingerprint scanner “always receives power—even when the device itself is
off,” allowing user authentication “while the device is powering on.”
PO Resp. 38. Gagneraud further discloses larger devices like laptop
computers, whereas Fadell is directed to portable electronic devices like
cellular telephones that have small batteries and short battery life, making
power management an “important concern.” Id. at 39–40 (citing Ex. 1103
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¶ 31 (Dr. Bederson testifying that “[s]ince portable mobile computing and
communication devices were first introduced, power management was a
prime concern”)). Patent Owner contends that “at the time of the invention,
fingerprint scanners could be large power draws, draining a battery quickly,”
so a person of ordinary skill in the art would not have been motivated to
modify Fadell based on Gagneraud’s process (where the fingerprint scanner
always receives power) because doing so “would quickly drain an
already-small battery.” Id. at 40.
To the extent Patent Owner’s arguments are premised on
incorporating certain aspects of Gagneraud’s fingerprint scanner or power
usage of that particular scanner, they are not persuasive. In the proposed
combination, Petitioner relies on Gagneraud only for a teaching of the
timing of actions being performed relative to each other, namely user
authentication being performed “simultaneously” (i.e., without additional
steps) with powering on the device (i.e., a user indicating an initial
interaction with the device by pressing a button to turn the device on). “It is
well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements. . . . Rather, the test for obviousness is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art.” Mouttet, 686 F.3d at 1332–33; see also MCM Portfolio LLC
v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“[t]he test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference” (citation
omitted)).
Nor are we persuaded based on the evidence of record that power
management issues would have been such a concern as to discourage an
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ordinarily skilled artisan from combining Fadell and Gagneraud. Gagneraud
never states that its fingerprint scanner consumes a large amount of power.
In addition, Gagneraud does not actually perform scanning until the user
presses the power button (at which time “the machine concurrently begins
powering on”). See Ex. 1106, Fig. 8 (steps 800, 810, and 820), ¶¶ 54–55,
58. We agree with Dr. Bederson that a person of ordinary skill in the art
would have understood this disclosure to mean that “prior to detecting a user
and scanning the fingerprint, the fingerprint scanner consumes less power,”
and power consumed by the fingerprint scanner would have been at a
“manageable” level. See Ex. 1139 ¶ 44. Evidence in the record also
suggests that lower power fingerprint sensors for portable electronic devices
were known at the time of the ’557 patent. See Reply 15–17; Ex. 1141, 1
(describing a “lower power consumption” fingerprint sensor); Ex. 2004 ¶ 57
(describing how power consumption can be managed with other
considerations, such as, for example, “low power” sensors being used
“if battery power is low”); see also Ex. 1103 ¶ 32 (testifying that prior to the
’557 patent, “designers of mobile computers and phones of course also tried
to have the computer go to some kind of low power ‘sleep’ or ‘standby’
mode whenever the device was not being used”). And Fadell broadly states
that its authentication system can use “any suitable type of sensor” for
detecting the user’s fingerprint. Ex. 1105 ¶¶ 55, 69.
Fifth, Patent Owner argues that Petitioner’s asserted grounds fail
because “Petitioner has not identified any prior art reference that discloses
an activation button that both activates the display and simultaneously
causes the performance of fingerprint recognition (or any user identification
function).” PO Resp. 50–51 (citing Ex. 2001 ¶¶ 132–133); see Sur-Reply
23–24. According to Patent Owner, each reference at most “discloses only
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(1) a button that activates the display, or (2) a device on/off switch that also
causes the performance of fingerprint recognition,” but no single reference
“discloses an activation button that simultaneously performs both functions,”
as required by the claims. PO Resp. 51. Patent Owner is correct that no
single reference discloses the claim limitations at issue, but Petitioner’s
obviousness theory is premised on the combination of Fadell, iOS, and
Gagneraud.
Petitioner has provided sufficient reasoning for why a person of
ordinary skill in the art would have been motivated to combine the teachings
of the references in the manner asserted and would have had a reasonable
expectation of success in doing so.

c) Conclusion
For the reasons set forth by Petitioner and explained above, we are
persuaded that Fadell, iOS, and Gagneraud collectively teach all of the
limitations of claim 1, and that a person of ordinary skill in the art would
have been motivated to combine the references’ teachings to achieve the
mobile communication terminal recited in the claim and would have had a
reasonable expectation of success in doing so. Petitioner has proven, by a
preponderance of the evidence, that claim 1 would have been obvious based
on Fadell, iOS, and Gagneraud under 35 U.S.C. § 103(a).

5. Claims 8, 9, and 15
Independent claim 9 is a method claim with limitations very similar to
those of apparatus claim 1. Largely referring to its analysis of claim 1,
Petitioner explains how the limitations of claim 9 are taught by the
combination of Fadell, iOS, and Gagneraud, with supporting testimony from
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Dr. Bederson. See Pet. 17–39; Ex. 1103 ¶¶ 52–84, 87–89. Claims 8 and 15
depend from claims 1 and 9, respectively, and recite “comparing a
fingerprint acquired by the activation button to pre-stored fingerprint
information of a user.” Petitioner argues that Fadell teaches using “a sensor
embedded in a button or any suitable location to sense features of a user’s
skin and compare the sensed features to pre-stored identification
information.” Pet. 38–39 (citing Ex. 1105 ¶¶ 5, 55, 56, 61, 65; Ex. 1103
¶¶ 85–86, 90). Patent Owner argues independent claims 1 and 9 together in
its Response and Sur-Reply, and does not argue separately dependent claims
8 and 15. See PO Resp. 25–40, 50–51; Sur-Reply 3–15, 23–24.
We disagree with Patent Owner’s arguments for the reasons explained
above. See supra Section II.D.4.b. We have reviewed Petitioner’s
contentions and supporting evidence, including the testimony of
Dr. Bederson, and are persuaded that Petitioner has proven, by a
preponderance of the evidence, that claims 8, 9, and 15 would have been
obvious based on Fadell, iOS, and Gagneraud under 35 U.S.C. § 103(a), for
the reasons stated by Petitioner.

E. Obviousness Ground Based on Goertz and Herfet
1. Goertz
Goertz describes a mobile device having a home button and a touch
screen user interface. Ex. 1113 ¶¶ 2, 8, 59.

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Figures 9, 10, and 11 of Goertz, depicting turning the device on and
off, are reproduced below.

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 and can be activated, such as by touching the home
key, in order to turn the power on. Id. Figure 11 depicts a phone that is
turned on and indicates that touching the home key for an extended period of
time (e.g., five seconds) causes the phone to power off. Id.

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Figures 12, 13, 14, and 15 of Goertz illustrate the locking and
unlocking of the device, and are reproduced below.

In Figure 12, “a lock gadget is displayed in the lower right corner of the
screen” that, when pressed, locks the phone and restricts its access in some
manner. Id. ¶ 60. Figure 13 shows a locked phone, in which the user can
“activate[] the home key, located at the bottom center of the 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 a “Key lock high security” embodiment
where the phone displays a keypad after the home key is activated that
prompts the user to enter a security code to unlock the phone. Id. ¶ 61.
“Optionally,” the “additional security” in that embodiment can be
“implemented by use of fingerprint identification, wherein the phone cannot
be unlocked unless a fingerprint is authenticated.” Id.

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2. Herfet
Herfet describes “a terminal for participating in services . . . subject to
an access authorization” comprising “a camera for recording the fingerprint
of a user and a comparison device for comparing the recorded fingerprint
with a fingerprint stored in a data memory.” Ex. 1114, col. 1, ll. 3–6, 18–23.
“[T]he image recording unit is disposed in the region of an on/off switch of
the terminal,” resulting in “automatic activation of services with access
authorization when the respective on/off switch of the terminal is actuated”
and thus requiring “no additional effort for the user.” Id. at col. 1, ll. 38–43.
Figure 3 of Herfet is reproduced below.

Figure 3 depicts mobile telephone 16 comprising on/off switch 13, “behind
which an image recording unit 5 is disposed.” Id. at col. 2, ll. 46–48, col. 3,
ll. 26–32. Mobile telephone 16 “contains the same functional units as a
conventional mobile radio device,” but for purposes of “access
authorization” to services, includes “an automatic authentication which is
disposed in the region of the on/off switch 13.” Id. at col. 3, ll. 33–39.
Image recording unit 5 records the fingerprint of the user “during the
switch-on process” and compares it to a fingerprint stored in memory for
authentication. Id. at col. 2, ll. 48–50, col. 3, ll. 2–7 (“At the moment when
the set is switched on, the fingerprint 6 of the user is recorded and
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subsequently compared to the database . . . .”). Herfet discloses that there is
“a direct relationship between use, i.e. switching on/off, and authentication.”
Id. at col. 3, ll. 9–11. Also, “[w]hen the terminal is not in use for an
extended period of time, e.g. in standby mode, the authentication can be
reset automatically; i.e. in this case the activation of services with access
authorization is only possible after a renewed switch-on process.” Id. at
col. 3, ll. 11–15. Herfet discloses that the authentication process “can be
implemented in any type of multimedia terminal, in which an access
authorization to specific services is required and the terminal is at the same
time activated by switching on the device.” Id. at col. 3, ll. 16–20.

3. Claim 1
Petitioner argues that claim 1 is unpatentable over Goertz and Herfet
under 35 U.S.C. § 103(a), relying on the testimony of Dr. Bederson as
support. Pet. 40–53 (citing Ex. 1103). Patent Owner makes various
arguments in response, relying on the testimony of Dr. Weaver. PO Resp.
40–51 (citing Ex. 2001); Sur-Reply 15–24.

a) Undisputed Issues
Petitioner relies on Goertz for certain limitations of claim 1.
Pet. 43–53. For example, Petitioner argues that Goertz teaches a “mobile
communication terminal” (i.e., mobile phone) comprising a “display unit”
(i.e., touch screen) and “activation button” (i.e., home key), and performing
a “user identification function” including “fingerprint recognition” (i.e.,
fingerprint identification). Id. Petitioner relies on a combination of Goertz
with Herfet as teaching a “user identification unit.” Id. at 46–47. Petitioner
argues that although Goertz teaches a computer and software for performing
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the functions described in the reference, “to the extent” Goertz does not
explicitly disclose a complete “user identification unit” performing a user
identification function, Herfet teaches “a fingerprint scanner including image
pickup unit 5, signal processing device 7, comparison device 8, and memory
9.” Id.
Patent Owner does not dispute that Goertz and Herfet teach these
limitations of claim 1.7 Petitioner’s analysis for each of the limitations,
supported by the testimony of Dr. Bederson, which we credit, is persuasive.
See id. at 43–44, 46–47; Ex. 1103 ¶¶ 99–104, 106–110, 119.

b) Disputed Issues
(1) Activation Button
Claim 1 recites “an activation button configured to switch from an
inactive state, which is an OFF state of the display unit, to an active state,
which is an ON state of the display unit.” As explained above, we interpret
“inactive state” to mean “a state in which the mobile communication
terminal is communicable but a display screen is turned off, regardless of
whether or not the mobile communication terminal performs a
predetermined operation, and the mobile communication terminal is not
completely turned off,” and interpret “active state” to mean “a state in which
the display screen of the mobile communication terminal is turned on.” See
supra Section II.B. Petitioner argues that Goertz teaches the recited
functionality of an “activation button” (i.e., Goertz’s home key) by virtue of
its description of the transition from Figure 13 to Figures 14 and 15 shown

7 We address the parties’ arguments as to whether a person of ordinary skill
in the art would have been motivated to combine the teachings of Goertz and
Herfet below. See infra Section II.E.3.b.(3).
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above, where the device was locked previously by pressing the lock gadget
shown on the screen in Figure 12. Pet. 45–46 (citing Ex. 1113 ¶¶ 24, 60, 61;
Ex. 1103 ¶¶ 104–105).
Patent Owner argues that Goertz does not disclose the recited
“activation button” that turns on a display unit in response to pressing the
button. PO Resp. 41–42 (citing Ex. 2001 ¶¶ 120–121); see Sur-Reply 18.
Patent Owner asserts that Goertz “never states or confirms that the display is
off in Figure 13”; rather, Goertz discloses that the device is “locked,” which
means that “activation of the phone is restricted in some manner.” PO Resp.
41–42 (quoting Ex. 1113 ¶ 60). According to Patent Owner, it is “equally
plausible that Figure 13 is only emphasizing the action of pressing the home
button,” and nothing in the written description of Goertz “addresses use of
the home button to activate the display.” Id.
We disagree. Figure 12 of Goertz depicts a screen with a “lock
gadget” that, when pressed, “causes the phone to lock.” Ex. 1113 ¶ 60.
When in the locked state, pressing a button that normally would “activate
a gadget” when unlocked does not activate the gadget. Id. “In order to
unlock the phone, the user activates the home key” shown in Figure 13. Id.
Figure 14 then “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 depicts an alternative screen that shows a keypad for entering a
security code after the user presses the home key to unlock the device. Id.
¶ 61. Importantly, Figure 13 shows a blank area in the location of the screen
(i.e., the display screen is turned off), whereas Figures 14 and 15 show
content on the screen (i.e., the display screen is turned on). The written
description of Goertz supports this reading, as it states that “gadgets are now
displayed” in Figure 14 once the device is unlocked, indicating that they
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were not previously in Figure 13 because the display screen was turned off.
See id. ¶ 60 (emphasis added). Further, as Petitioner correctly points out, the
phone of Figure 13 (in a locked state) appears similar to the phone of
Figure 9 (with power turned off)—both have a blank area in the location of
the screen, indicating that the display screen is turned off in both cases, and
pressing the home key results in the display screen being turned on (as
shown in Figures 10, 14, and 15).8 See id. ¶¶ 59–60 (disclosing that Figure 9
shows a phone “with a blank screen, indicating that power is off”); Reply
17–18. No other figure of Goertz shows such a display screen.
Thus, taking into account the full disclosure of Goertz, we do not
agree with Patent Owner that it is “equally plausible” that the display screen
is actually turned on in Figure 13. See PO Resp. 41–42; Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an
obviousness analysis, “the prior art must be considered as a whole for what
it teaches”). Rather, we are persuaded by Petitioner’s argument, supported
by the testimony of Dr. Bederson, that a person of ordinary skill in the art
would have understood Figure 13 to show a device in an “inactive state”
where the display screen is turned off, and Figures 14 and 15 to show a
device in an “active state” where the display screen is turned on, such that
Goertz’s home key constitutes an “activation button” as recited in claim 1.
See Pet. 45–46; Ex. 1103 ¶¶ 104–105; Ex. 1139 ¶¶ 55–56.

8 There is no dispute that the device as shown in Figure 9 is entirely powered
off (i.e., the display screen cannot be on). See Reply 17–18; Sur-Reply 18.
The fact that the locked state device shown in Figure 13 looks identical to
the entirely powered off device in Figure 9 supports Petitioner’s reading that
the display screen is turned off in both.
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We find that Goertz teaches “an activation button configured to switch
from an inactive state, which is an OFF state of the display unit, to an active
state, which is an ON state of the display unit,” as recited in claim 1.

(2) “Simultaneously” Limitation
The “simultaneously” limitation recites (1) the performance of a “user
identification function,” and (2) “switching from the inactive state of the
display unit to the active state of the display unit by pressing the activation
button.” As explained above, Petitioner relies on Goertz as teaching (1) the
performance of a “user identification function” (i.e., fingerprint
identification), and (2) switching from the inactive state of the display unit to
the active state by pressing the home key. Pet. 45–47. Patent Owner does
not dispute the first aspect of the “simultaneously” limitation, and we are
persuaded by Petitioner’s arguments as to the second aspect for the reasons
explained above. See supra Sections II.E.3.a, II.E.3.b.(1).
With respect to the remaining requirement that the user identification
function be performed “simultaneously” with switching from an inactive
state to an active state, Petitioner relies on the combined teachings of Goertz
and Herfet. Pet. 47–53. Petitioner argues that Herfet teaches access
authorization “performed simultaneously with the pressing of an on / off
button . . . without additional user steps (user action).” Id. at 48. In
particular, Petitioner points to Herfet’s disclosure of a “direct relationship”
between switching on/off and authentication, where the user’s fingerprint is
recorded “during the switch-on process,” i.e., “[a]t the moment” when the
device is turned on, as well as Herfet’s disclosure of “automatic activation of
services with access authorization when the respective on/off switch of the
terminal is actuated [with] no additional effort for the user.” Id. at 48–49
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(emphases omitted) (quoting Ex. 1114, col. 1, ll. 40–43, col. 2, l. 48–col. 3,
l. 11). Petitioner further points out that Herfet’s “‘[s]witch-on’ processes . . .
include waking from a standby mode,” i.e., transitioning from an inactive
state to an active state. Id. at 49 (citing Ex. 1114, col. 3, ll. 11–15). In the
proposed combination, Petitioner relies on Goertz for its teachings of
fingerprint identification and switching the display screen from an inactive
state to an active state by pressing the home key, and relies on Herfet for its
teaching of simultaneous operations, namely performing both fingerprint
recognition and powering on of the device based on a button press by the
user, without additional steps. Id. at 47–50. According to Petitioner,
a person of ordinary skill in the art would have applied Herfet’s access
authorization functionality to Goertz such that the modified system “would
have both initiated and performed the fingerprint recognition upon activating
the home key without additional steps (user action).” Id. at 50.
Patent Owner argues that Goertz does not teach performing user
identification “simultaneously” with switching to an active state because
it utilizes a “two-step, sequential process.” PO Resp. 42–43 (citing Ex. 2001
¶ 122); see Sur-Reply 16–18. We do not understand Petitioner to be arguing
that Goertz alone teaches simultaneous performance. In its analysis of the
“simultaneously” limitation, Petitioner relies on Herfet as allegedly teaching
simultaneous performance, acknowledging that “Goertz does not explicitly
disclose the details involved in the user identification function or when the
function is to be performed (i.e., beyond proceeding to a step where
fingerprint recognition is needed, Goertz does not explicitly disclose the
details involved in actually performing the fingerprint recognition).” See
Pet. 47–53; Tr. 18:1–6; cf. Pet. 31–32 (arguing with respect to Petitioner’s
first ground that Fadell alone teaches simultaneous performance but, “to the
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extent” it lacks “sufficient detail,” Gagneraud teaches it as well). Patent
Owner’s argument, therefore, is inapposite, as it is not directed to
Petitioner’s proposed combination.
Next, Patent Owner argues that “Herfet does not cure Goertz’s
deficiencies” because “[l]ike Gagneraud, . . . Herfet’s authentication is one
that occurs only ‘during the switch-on process’—i.e., when the device itself
is powered on,” rather than when the display is being switched from an
inactive state to an active state. PO Resp. 43–44 (citing Ex. 2001 ¶ 123);
see Sur-Reply 18. Petitioner’s reasoning for the combination is very similar
to that presented for its asserted ground based on Fadell, iOS, and
Gagneraud, where Goertz is relied on as teaching switching from an inactive
state to an active state and Herfet is relied on as teaching simultaneous
operations—specifically, fingerprint recognition “during the switch-on
process,” i.e., “[a]t the moment when the [device] is switched on”—such
that the combination teaches the full “simultaneously” limitation. See
Pet. 31–37, 47–53 (emphases omitted) (quoting Ex. 1114, col. 2,
l. 48–col. 3, l. 11). We are persuaded by that analysis, which is supported by
the testimony of Dr. Bederson, for the same reasons explained above. See
supra Section II.D.4.b.(1).(b); Ex. 1103 ¶¶ 91–98, 104–114. Patent Owner’s
argument again is inapposite, as it is directed to Herfet individually rather
than the combination of Goertz and Herfet proposed by Petitioner. See
Bradium, 923 F.3d at 1050; Mouttet, 686 F.3d at 1332–33. The fact that one
reference lacks a feature present in the other does not negate Petitioner’s
obviousness analysis.
Finally, Patent Owner disputes Petitioner’s characterization of
Herfet’s “standby mode.” PO Resp. 44–45 (citing Ex. 2001 ¶ 124);
see Sur-Reply 18–20. Petitioner, however, relies on Goertz, not Herfet
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alone, for a teaching of the recited switching from an inactive state to an
active state. Pet. 45–47. Regardless, though, we do not agree with Patent
Owner’s argument. Herfet states that “[w]hen the terminal is not in use for
an extended period of time, e.g. in standby mode, the authentication can be
reset automatically; i.e. in this case the activation of services with access
authorization is only possible after a renewed switch-on process.” Ex. 1114,
col. 3, ll. 11–15. Patent Owner asserts that the phrase “renewed switch-on
process” implies that when the device in Herfet enters the standby mode,
“authentication is only performed when the device is turned off and back
on.” PO Resp. 44–45. Petitioner responds that “[a] ‘renewed switch-on
process’ is not turning the device off and back on, which would defeat the
entire purpose of ‘standby mode.’” Reply 21–22.
We find that a person of ordinary skill in the art would have read
Herfet in the manner described by Petitioner and Dr. Bederson. The cited
portion of Herfet states that the device enters a “standby mode” when it is
not used for a certain amount of time. Ex. 1114, col. 3, ll. 11–15. If the user
always was required to turn the device off and back on to initiate
authentication, there would be no difference between the standby mode and
normal operation. Instead, “standby mode” suggests that the device is
“standing by,” waiting for activation by the user via a “renewed switch-on
process” triggered by pressing the button with the fingerprint scanner (just as
the user would do to turn the device on). See id. at col. 2, l. 43–col. 3, l. 20.
We credit the following explanation from Dr. Bederson, which is consistent
with, and a logical reading of, the language used in Herfet:
A “renewed switch-on process” is not turning the device off and
back on, which would defeat the entire purpose of the “standby
mode.” Rather, it is how Herfet refers to bringing the device out
of standby mode (i.e., from an inactive to an active state).
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Regardless of whether the terminal is completely off or in a
standby mode, when the user decides to access the terminal, the
user will switch on the terminal. In other words, to turn on the
device from a completely off state, the user switches on the
terminal, and to turn on the device from a standby mode, the user
switches on the terminal. There is no disclosure in Herfet that
there are any additional steps (or conditions) to turn on the device
from the standby mode, and there is no disclosure in Herfet
indicating that “switching on” must be from a completely off
state.
See Ex. 1139 ¶ 61 (emphasis omitted).
We find that the combination of Goertz and Herfet teaches the
limitation of claim 1 that “the user identification function is performed
simultaneously with switching from the inactive state of the display unit to
the active state of the display unit by pressing the activation button.”

(3) Motivation to Combine With Herfet
Petitioner argues that a person of ordinary skill in the art would have
been able and motivated to modify Goertz’s mobile phone based on the
teachings of Herfet. Pet. 49–53. Specifically, Petitioner argues that an
ordinarily skilled artisan would have been motivated to “modify Goertz’s
high security lock unlocking functionality such that when the home key is
activated, as disclosed by Goertz, fingerprint recognition would be
performed, as taught by Herfet, thereby implementing the user identification
function simply and without ‘additional effort for the user.’” Id. at 50
(emphases omitted) (quoting Ex. 1114, col. 1, ll. 40–43).
According to Petitioner, “[b]ecause Goertz discloses that activating
the home key turns on the display and further engages higher security (such
as fingerprint recognition) when applicable, but does not explain the details
of how fingerprint recognition would have been implemented,” a person of
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ordinary skill in the art would have looked to art like Herfet that describes
fingerprint recognition and “provides the benefit of a simple user
experience.” Id. at 50–52 (citations omitted). The proposed combination
with Herfet would have been merely the “application of a known technique
(Herfet’s specific fingerprint recognition technique) to improve a similar
device (Goertz’s phone that is described, generically, as having a fingerprint
recognition requirement) in the same way (to provide a simple
authentication implementation).” Id. at 51–52. Petitioner further explains
that
a [person of ordinary skill in the art] would have known that the
disclosures and teachings of Goertz and Herfet would have had
wide applicability in the art of electronic devices. This is because
their teachings relate to fundamental human-computer
interaction concepts such as (1) determining that a user is
indicating their initial interaction with a device, and
(2) determining whether that user should be allowed to interact
with the device. For example, Herfet teaches that fingerprint
recognition should be performed simultaneously with pressing
its “on/off” switch, and that such switch-on usage includes the
action of waking a device from standby mode. Thus, whether
the user action of activating a switch is to turn a device on (i.e.,
from completely off) or simply waking from a standby mode has
no bearing on the underlying question of whether the user is
indicating their initial interaction with the device. As Goertz
shows, a single activation button can be configured for both
functions and more. A [person of ordinary skill in the art] would
have understood that the concept of fingerprint identification
would have been needed for, and applicable to, any process in
which the device has not been in active use (among other
situations) and a user signals that they are initiating interactions
with some function of the device. Thus any button that would
have been used to wake a device—i.e., the first button being
pressed by the user—would have been an obvious candidate for
the convenience factor desired in Herfet.
Id. at 50–51 (citations and emphases omitted).
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Finally, Petitioner argues that a person of ordinary skill in the art
would have had a reasonable expectation of success in modifying Goertz as
explained above because, for example, “Goertz already discloses the use of
fingerprint recognition but is . . . silent as to its specific details” and
implementation would only have involved receiving an input and comparing
it to “a stored unlock input,” which was a “standard and normal procedure.”
Id. at 52–53. Dr. Bederson provides supporting testimony for Petitioner’s
contentions. See Ex. 1103 ¶¶ 114–118.
Patent Owner makes four arguments in response. First, Patent Owner
again argues that Petitioner and Dr. Bederson do not explain sufficiently
why “determining that a user is indicating their initial interaction with a
device” (e.g., waking from a locked state as in Goertz, powering on as in
Herfet) constitutes a “fundamental human-computer interaction concept[].”
PO Resp. 45–48 (citing Ex. 2001 ¶¶ 125–129); see Sur-Reply 20–22;
Ex. 2001 ¶ 129 (Dr. Weaver stating that he is “unaware of any
human-computer interaction literature” identifying such a determination as a
“particularly important concept”).
For the same reasons explained above, we find that the similarity
between the references’ teachings regarding initial interaction with a device
is some evidence of whether a person of ordinary skill in the art would have
thought to combine them. See supra Section II.D.4.b.(2). Again, though,
that similarity is only one aspect of Petitioner’s motivation to combine
analysis. More important is the express motivation in Herfet itself. See
Pet. 50; Reply 22–24; Brown & Williamson, 229 F.3d at 1125. Herfet states
that its process “results in an automatic activation of services with access
authorization when the respective on/off switch of the terminal is actuated,”
with “no additional effort by the user.” Ex. 1114, col. 1, ll. 40–43; see also
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id. at col. 2, ll. 14–19, 43–46 (disclosing that authentication is “automatic”
and triggered “solely” by turning the device on). Therefore, modifying
Goertz’s locking functionality “such that when the home key is activated,
. . . fingerprint recognition would be performed, as taught by Herfet, [would]
implement the user identification function simply and without ‘additional
effort for the user.’” See Reply 22–23 (quoting Ex. 1114, col. 1, ll. 40–43).
Herfet simplifies and improves on Goertz’s process by removing the need
for additional actions by the user. We find this to be the most probative
evidence of why a person of ordinary skill in the art would have thought to
combine Goertz and Herfet. Patent Owner disagrees that the proposed
combination would simplify Goertz’s process because Herfet allegedly
“involves a convoluted process of turning a device in standby mode off and
back on to authenticate a user.” Sur-Reply 21–22. But we also disagree
with Patent Owner’s reading of Herfet’s standby mode disclosure for the
reasons stated above. See supra Section II.E.3.b.(2).
Second, Patent Owner contends that a person of ordinary skill in the
art would not have combined Goertz and Herfet because they both teach
authenticating a user in different ways—with a multi-step process in Goertz
and a simultaneous process in Herfet—and “[w]hen two references already
accomplish similar functions by different means, one of skill in the art would
not be motivated to combine them.” PO Resp. 48 (citing Ex. 2001 ¶ 130;
Kinetic Concepts, 688 F.3d at 1369); see Sur-Reply 22–23. We are not
persuaded for reasons similar to those explained above. See supra
Section II.D.4.b.(2). The proposed combination with Herfet improves
Goertz’s process by simplifying it and removing the need for additional
effort by the user.
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Third, Patent Owner argues that Herfet “teaches away from the
proposed combination by restricting its application to the power-on
sequence.” PO Resp. 49–50 (citing Ex. 2001 ¶ 131); see Sur-Reply 23.
Patent Owner argues that based on Herfet’s description of a “renewed
switch-on process” when exiting standby mode, “the device must be
powered off and back on” to perform user authentication. PO Resp. 49–50
(citing Ex. 1114, col. 3, ll. 11–15). We disagree with Patent Owner’s
reading of Herfet’s standby mode disclosure for the reasons stated above.
See supra Section II.E.3.b.(2). Patent Owner further contends that Herfet
“limits its scope to ‘any type of multimedia terminal, in which an access
authorization to specific services is required and the terminal is at the same
time activated by switching on the device.’” PO Resp. 49 (quoting Ex. 1114,
col. 3, ll. 16–20). In the same paragraph as the cited disclosure, however,
Herfet states that “the invention is not limited to this field.” Ex. 1114, col. 3,
ll. 16–25. Further, “[a] reference that ‘merely expresses a general preference
for an alternative invention but does not criticize, discredit, or otherwise
discourage investigation into’ the claimed invention does not teach away.”
Meiressone v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citation
omitted). Although Herfet discloses authentication performed in one context
(i.e., when a user presses a button to power on the device), based on the full
record developed during trial, we do not see anything in the reference that
criticizes, discredits, or otherwise discourages authentication in a similar
context in which the user is indicating his or her initial interaction with a
device, namely when the user is pressing a button to wake the device
(as disclosed in Goertz).
Fourth, Patent Owner argues that Petitioner’s asserted grounds fail
because “Petitioner has not identified any prior art reference that discloses
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an activation button that both activates the display and simultaneously
causes the performance of fingerprint recognition (or any user identification
function).” PO Resp. 50–51 (citing Ex. 2001 ¶¶ 132–133); see Sur-Reply
23–24. Again, Patent Owner is correct that no single reference discloses the
claim limitations at issue, but Petitioner’s obviousness theory is premised on
the combination of Goertz and Herfet. Petitioner has provided sufficient
reasoning for why a person of ordinary skill in the art would have been
motivated to combine the teachings of the references in the manner asserted
and would have had a reasonable expectation of success in doing so.

c) Conclusion
For the reasons set forth by Petitioner and explained above, we are
persuaded that Goertz and Herfet collectively teach all of the limitations of
claim 1, and that a person of ordinary skill in the art would have been
motivated to combine the references’ teachings to achieve the mobile
communication terminal recited in the claim and would have had a
reasonable expectation of success in doing so. Petitioner has proven, by a
preponderance of the evidence, that claim 1 would have been obvious based
on Goertz and Herfet under 35 U.S.C. § 103(a).

4. Claims 8, 9, and 15
Largely referring to its analysis of claim 1, Petitioner explains how the
limitations of claim 9 are taught by the combination of Goertz and Herfet,
with supporting testimony from Dr. Bederson. See Pet. 40–54; Ex. 1103
¶¶ 91–119, 123–125. With respect to dependent claims 8 and 15, which
recite “comparing a fingerprint acquired by the activation button to
pre-stored fingerprint information of a user,” Petitioner argues that Herfet
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teaches comparison device 8 “compar[ing] the signal provided by the signal
processing device with signals of a fingerprint stored in a memory 9.”
Pet. 53–55 (quoting Ex. 1114, col. 2, ll. 50–56; citing Ex. 1114, col. 3,
ll. 2–7; Ex. 1103 ¶¶ 120–122, 126). Patent Owner argues independent
claims 1 and 9 together in its Response and Sur-Reply, and does not argue
separately dependent claims 8 and 15. See PO Resp. 40–51; Sur-Reply
15–24. We disagree with Patent Owner’s arguments for the reasons
explained above. See supra Section II.E.3.b. We have reviewed Petitioner’s
contentions and supporting evidence, including the testimony of
Dr. Bederson, and are persuaded that Petitioner has proven, by a
preponderance of the evidence, that claims 8, 9, and 15 would have been
obvious based on Goertz and Herfet under 35 U.S.C. § 103(a), for the
reasons stated by Petitioner.

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III. CONCLUSION9
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 8, 9, and 15 of the ’557 patent are unpatentable. In summary:

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 8, 9, and 15 of the ’557 patent have been
shown to be unpatentable.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

9 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3),
42.8(b)(2).
Claims

35 U.S.C. § References/
Basis
Claims
Shown
Unpatentable

Claims
Not shown
Unpatentable
1, 8, 9, 15 103(a) Fadell, iOS,
Gagneraud
1, 8, 9, 15
1, 8, 9, 15 103(a) Goertz, Herfet 1, 8, 9, 15
Overall
Outcome
1, 8, 9, 15
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FOR PETITIONER:
Gabrielle E. Higgins
Scott A. McKeown
Christopher M. Bonny
Victor Cheung
ROPES & GRAY LLP
gabrielle.higgins@ropesgray.com
scott.mckeown@ropesgray.com
christopher.bonny@ropesgray.com
victor.cheung@ropesgray.com

FOR PATENT OWNER:

Thomas C. Cecil
Barry J. Bumgardner
Matthew C. Juren
NELSON BUMGARDNER ALBRITTON P.C.
tom@nelbum.com
barry@nelbum.com
matthew@nelbum.com