Firstface Co., Ltd.

Patent Trials and Appeals Board

Jul 31, 2020

IPR2019-00613 (P.T.A.B. Jul. 31, 2020)

Trials@uspto.gov Paper 27
571.272.7822 Date: July 31, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

FIRSTFACE CO., LTD.,
Patent Owner.
____________

IPR2019-00613,
IPR2019-010111
Patent 9,633,373 B2
____________

Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
RUSSELL E. CASS, Administrative Patent Judges.

HAAPALA, Administrative Patent Judge.

DECISION
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

1 Case IPR2019-01011 was consolidated with IPR2019-00613.
Accordingly, we issue a consolidated Final Written Decision, and all
citations are to IPR2019-00613 unless otherwise indicated.
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Apple Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
§§ 311–319 to institute an inter partes review of claims 1, 2, 4–6, and 11–14
of U.S. Patent No. 9,633,373 B2 (“the ’373 patent”). Paper 2 (“Pet.”).
Petitioner later filed a Petition in IPR2019-01011 to institute an inter partes
review of claims 10 and 18 of the ’373 patent. IPR2019-01011, Paper 1
(“1011 Pet.”). Firstface Co., Ltd. (“Patent Owner”) filed a Preliminary
Response in IPR2019-00613 (Paper 8) and waived the filing of a preliminary
response in IPR2019-01011 (IPR2019-01011, Paper 7). Applying the
standard set forth in 35 U.S.C. § 314(a), we granted Petitioner’s requests and
instituted an inter partes review of all challenged claims based on all
grounds presented in both Petitions. Paper 10 (“Dec.”); Paper 14 (“1011
Dec.”).2 We further consolidated both proceedings and ordered all further
filings in the consolidated proceeding to be made in IPR2019-00613. 1011
Dec. 23.
During the trial, Patent Owner timely filed a Response (Paper 16,
“PO Resp.”), to which Petitioner timely filed a Reply (Paper 18, “Reply”).
Patent Owner further submitted a Sur-Reply (Paper 21, “Sur-Reply”) to
Petitioner’s Reply. An oral hearing was held on May 5, 2020, and a copy of
the transcript was entered into the record. Paper 26 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of the claims on which we instituted trial. For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the

2 Although we granted Petitioner’s motions to seal certain exhibits filed with
its Petitions (Paper 9; IPR2019-01011, Paper 8), we do not refer to any
sealed material in either Decision Granting Institution or in this Decision.
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evidence that claims 1, 2, 4–6, and 10 are unpatentable. Petitioner has not
shown by a preponderance of the evidence that claims 11–14 and 18 are
unpatentable.
I. BACKGROUND
A. The ’373 Patent (Ex. 1001)
The ’373 patent describes a method and mobile communication
terminal for performing a specific function when a mobile communication
terminal is activated. Ex. 1001, 1:16–18. Figure 1 of the ’373 patent is
reproduced below.

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Figure 1 illustrates an external appearance of mobile communication
terminal 100. Id. at 3:42–44. Mobile communication terminal 100 includes
display unit 110 and activation button 120. Id. at 3:45–47. Display unit 110
displays various information regarding operation states of mobile
communication terminal 100. Id. at 3:64–66. Activation button 120
switches mobile communication terminal 100 from an inactive state (in
which the terminal is communicable but the display screen is turned off) to
an active state (in which the display screen is turned on). Id. at 3:21–23,
3:32–37, 4:22–24.
If the user presses activation button 120 when mobile communication
terminal 100 is in the inactive state, mobile communication terminal 100
performs a predetermined operation in addition to switching to the active
state. Id. at 4:36–40. Example operations that can be performed include
camera activation, user authentication (e.g., fingerprint recognition), and
operation of a music player. See id. at 5:51–63, 7:18–8:20, 10:1–8.
The user can set the operation to be performed when the activation
button is pressed. Id. at 4:51–53. Different operations can be set to be
performed according to the number of presses or a press time of activation
button 120; for example, a first operation can be performed if activation
button 120 is pressed for a short time and a second operation can be set to be
performed if activation button 120 is pressed for a long time. See id. at
4:57–5:2.
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B. Illustrative Claim
Claims 1 and 11 are independent claims. Claim 1 is illustrative of the
subject matter at issue:3
1. A mobile communication terminal comprising:
a touch screen display;
a camera;
a power button configured to turn on and off the terminal
by pressing; and
an activation button separate from the power button and
located outside the touch screen display, the activation button
configured for pressing to turn on the touch screen display and to
initiate one or more additional functions of the terminal,
wherein the terminal has a first function and a second
function to perform in response to user input via the activation
button and is configured to provide user settings for configuring
at least one of the first and second functions such that at least one
of the first and second functions is set to be performed in addition
to turning on the touch screen display upon pressing of the
activation button while the touch screen display is turned off,
wherein the first and second functions are different from each
other and selected from the group consisting of fingerprint
authentication, activating the camera, playing music and a hands-
free function,
wherein upon one-time pressing of the activation button
while the touch screen display is turned off, the terminal is
configured to turn on the touch screen display and further
perform at least one of the first and second functions in addition
to turning on the touch screen display such that:
a lock screen is displayed on the touch screen
display upon turning on the touch screen display in

3 Claims 1 and 11 were corrected in a certificate of correction dated June 27,
2017. Ex. 1001.
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response to the one-time pressing of the activation button
while the touch screen display is turned off,
in response to the one-time pressing of the
activation button, the first function is performed in
addition to turning on the touch screen display for
displaying the lock screen thereon, and
the second function is performed when the one-
time pressing is for a long time longer than a reference
time period,
wherein at least one of the first and second
functions is performed subsequent to turning on the touch
screen display and displaying the lock screen in response
to the one-time pressing of the activation button,
wherein the touch screen display displays the lock
screen when at least one of the first and second functions
is being performed.
C. Instituted Grounds of Unpatentability
Petitioner relies on the following references:
1. Apple iPhone OS 3.1 User Guide (Sept. 2009) (“iOS”) (Ex. 1007).
2. U.S. Patent Application Pub. No. 2010/0017872, published Jan. 21,
2010 (“Goertz”) (Ex. 1013).
3. U.S. Patent Application Pub. No. 2010/0138914, published June 3,
2010 (“Davis”) (Ex. 1015).
4. U.S. Patent Application Pub. No. 2012/0133484, published May
31, 2012 (“Griffin”) (Ex. 1027).
We instituted trial on the following grounds:
References Basis Claims
Griffin, Davis, and iOS 35 U.S.C. § 103(a) 1, 2, 4–6, 10–14, 18
Goertz, Davis, and iOS 35 U.S.C. § 103(a) 1, 2, 4–6, 10–14, 18

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In support of its contentions, Petitioner submitted declarations by its
witness, Benjamin B. Bederson, Ph.D. Exs. 1003, 1039. In response, Patent
Owner submitted a declaration by its witness, Alfred C. Weaver, Ph.D.
Ex. 2001. Petitioner’s expert was cross-examined during the trial, and a
transcript of the deposition is in the record. Ex. 2008.
D. Related Proceedings
Petitioner and Patent Owner identify the following district court
litigation involving the ’373 patent: Firstface Co. v. Apple Inc., Case No. 3-
18-cv-02245 (N.D. Cal.). Pet. 2–3; Paper 3, 2.
II. ANALYSIS
A. Legal Principles
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are “such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) objective evidence of non-obviousness, i.e., secondary
considerations such as commercial success, long felt but unsolved needs,
and failure of others.4 Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). The obviousness inquiry further requires an analysis of “whether
there was an apparent reason to combine the known elements in the fashion

4 The record does not include arguments or evidence regarding objective
indicia of non-obviousness.
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claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness”)).
B. Level of Ordinary Skill in the Art
Petitioner argues that a person of ordinary skill in the art at the time of
the ’373 patent “would have been a person with [a] bachelor’s degree in
Computer Science, Computer Engineering, or equivalent and have 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. 11–12 (citing Ex. 1003 ¶¶ 29–30). Patent Owner does not
dispute Petitioner’s proposed definition of the person of ordinary skill for
purposes of this trial. PO Resp. 7. Based on our review of the record, we
accept the level of skill advocated by Petitioner as it is consistent with the
description of the art in the ’373 patent and the prior art of record. See, e.g.,
Ex. 1001, 1:13–49.
C. Claim Construction
In an inter partes review, claims of a patent shall be construed using
the same claim construction standard that would be used to construe the
claims in a civil action under 35 U.S.C. § 282(b), including construing the
claims in accordance with the ordinary and customary meaning of such
claims as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent. 37 C.F.R. § 42.100(b); see also Phillips v.
AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
Neither party propose constructions for any of the claim terms.
Pet. 12; PO Resp. 6. We determine we need not explicitly construe any
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terms to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that
“we need only construe terms ‘that are in controversy, and only to the extent
necessary to resolve the controversy,’” (citation omitted)).
D. Obviousness over Griffin, Davis, and iOS
Petitioner challenges claims 1, 2, 4–6, and 10–14 as obvious under 35
U.S.C. § 103(a) over Griffin, Davis, and iOS. Pet. 13–52; 1011 Pet. 26–29,
44–46, 51–52.5
1. Overview of Griffin
Griffin describes an electronic device configured to transition between
a locked and unlocked state in response to a detected action. Ex. 1027, code
(57). A locked state includes a “sleep” mode in which certain functions of
the device (such as a display) are halted, and a secure or “screen lock” mode
in which a user interface for a user to enter credentials is displayed to allow
a user to transition to an unlocked state. Id. ¶¶ 25–27. An unlocked state
includes an awake mode (or insecure mode) where the user input interfaces,
stored data, and other functionality of the device are generally all available.
Id. ¶ 27.
The device is unlocked in response to a single, continuous unlock
action applied to at least two input mechanisms on the electronic device. Id.
¶ 31. In response to activation of a first user input, which remains active

5 As noted in our Decision Granting Institution for IPR2019-01011,
Petitioner’s contentions for independent claims 1 and 11 in that proceeding
present substantially the same contentions that are present in the Petition in
IPR2019-00613. See 1011 Dec. 13, 19. Therefore, our citations to the
IPR2019-01011 Petition are limited to Petitioner’s challenges of dependent
claims 10 and 18.
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during the locked state, a second user input interface is activated and a timer
is started. Id. ¶ 121. The device then awaits input at the second input
mechanism. Id. If the correct input is received within the predetermined
period, the device is unlocked. Id. ¶ 122.
Figures 5A, 5B, and 5C of Griffin are depicted below.

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Figures 5A, 5B, and 5C illustrate a single-gesture or continuous-action input
as it is implemented on a handheld mobile device, such as a smartphone
equipped with touchscreen display 510. Id. ¶ 86. Device 100 has a single
“home” button or convenience button 520, positioned at the center along an
edge of display 510. Id. As illustrated in Figure 5A, user’s thumb 500
depresses convenience button 520, which initiates an unlock action. Id.
Upon detection of the input at convenience button 520, the device activates
the second input, in this case touchscreen display 110, so that display 110 is
capable of detecting further input from the user. Id. ¶ 87. Figures 5B and
5C illustrate user’s thumb 500 travelling in an arcuate path 550 along
touchscreen display 510. Id. Arc 550 traced along touchscreen display 510
completes the unlock action, upon which device 100 enters the unlocked
state. Id. Thus, the unlock action comprises detecting two distinct user
inputs applied to two components (initiation at convenience button 520 and
arc 550 traced on touchscreen display 510), which is carried out as a
substantially continuous action by the user. Id.
2. Overview of Davis
Davis describes a system and method of launching applications on a
device using biometric authentication. Ex. 1015 ¶ 1. Davis explains that a
mobile device may automatically enter into a user-inactive mode after a
period of inactivity, or a user may specifically select a menu item on the
device to enter into the user-inactive mode (i.e., to lock the device). Id. ¶ 45.
Various security measures may be required to unlock the mobile device,
such as passwords, a smart card, or biometric authentication. See id. ¶¶ 46–
47.
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Figure 4 of Davis is depicted below.

Figure 4 illustrates steps in an example method of maintaining secure access
to a mobile device. Id. ¶ 47. The mobile device first receives an “unlock”
command (step 402). Id. ¶ 48. Next, the mobile device presents an unlock
dialog on a display to prompt the user to enter authentication factors, such as
a device password and/or smart card password (step 404). Id. The mobile
device then receives and verifies the device and smart code passwords (steps
406–412). Id. ¶ 49–50. At step 416, the mobile device presents a dialog on
the display to prompt the user to provide a fingerprint candidate or other
type of biometric data. Id. ¶ 50, 52. The mobile device then receives and
verifies the fingerprint candidate or other biometric data (steps 418–420).
Id. ¶ 53. If the fingerprint candidate matches a stored fingerprint template,
the mobile device unlocks itself; if the fingerprint candidate does not match,
the mobile device presents a fingerprint verification failure dialog and
returns to step 416 to present the prompt to the user to provide a fingerprint
(steps 422–424). Id.
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3. Overview of iOS
iOS is a user guide for iPhone OS 3.1 software. Ex. 1007, 1. iOS
includes a diagram of an iPhone, which is reproduced below.

The reproduced diagram above depicts an iPhone. Id. at 20. The iPhone
includes a home button that, when pressed, causes the iPhone to display a
home screen that contains the iPhone applications. Id. at 23. The iPhone
also includes a sleep/wake button that allows the user to lock the iPhone. Id.
at 26. When the iPhone is locked, nothing happens if the user touches the
screen. Id. The iPhone can be unlocked by pressing the home button or the
sleep/wake button, in combination with dragging a slider. Id. at 27.
4. Claim 1
Petitioner contends the combination of Griffin, Davis, and iOS
teaches the limitations recited in claim 1. Pet. 13–43. A more detailed
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analysis of Petitioner’s assertions, and Patent Owner’s response, is set forth
below.
a. A mobile communication terminal comprising:
Petitioner asserts that Griffin discloses the preamble of claim 1
through its description of a user device 100 that “may be a mobile device
with two-way communication and advanced data communication
capabilities.” Pet. 28 (citing Ex. 1027 ¶ 59). To the extent the preamble is
limiting, we agree with Petitioner that Griffin discloses a mobile
communication terminal. See Ex. 1027 ¶ 59. Patent Owner has not raised
arguments against this limitation in its Patent Owner Response; therefore
any such arguments are waived. See Novartis AG v. Torrent Pharms. Ltd.,
853 F.3d 1316, 1330 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1381
(Fed. Cir. 2016).6
b. “a touch screen display”
“a camera”
Petitioner asserts Griffin teaches “a touch screen display” through its
description that the device’s “auxiliary subsystem 112 can include devices
such as: a touchscreen,” as well as a “smartphone equipped with a
touchscreen display 510.” Pet. 29 (citing Ex. 1027 ¶¶ 77, 86). Petitioner
further asserts that both Davis and Griffin teach a camera. Id. at 29–30
(citing Ex. 1015 ¶ 78; Ex. 1007, 20). Patent Owner does not present
separate arguments for these limitations. Based on the evidence of record,
we find that Petitioner has shown that Griffin teaches these limitations.

6 As in NuVasive, the Scheduling Order in this proceeding cautioned Patent
Owner that “any arguments for patentability not raised in the response may
be deemed waived.” Paper 11, 6.
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c. “a power button configured to turn on and off the terminal
by pressing; and
an activation button separate from the power button and
located outside the touch screen display, the activation
button configured for pressing to turn on the touch screen
display and to initiate one or more additional functions of
the terminal”
Petitioner asserts that iOS teaches a power button (the “Sleep/Wake
button”), separate from a Home button, and that the power button is
configured to turn the terminal on and off when pressed. Pet. 30–31 (citing
Ex. 1007, 20, 27). Petitioner submits an annotated figure of an iPhone from
iOS, which is depicted below:

Id. at 31 (citing Ex. 1007, 20). The annotated iPhone diagram above shows
a “Sleep/Wake button” located on the top of the device, and a “Home
button” on the front of the device below the touch screen. Id.
Petitioner also points to the following disclosure in iOS:
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Turn iPhone completely off: Press and hold the
Sleep/Wake button for a few seconds until the red slider
appears, then drag the slider. . . .
Turn iPhone on: Press and hold the Sleep/Wake button
until the Apple logo appears.
Id. (citing Ex. 1007, 27).
Turning to Griffin, Petitioner argues that Griffin shows an activation
button (home button or convenience button 520) located outside the touch
screen display (touchscreen display 510). Id. at 31. To illustrate, Petitioner
provides an annotated version of Griffin’s Figure 5B, reproduced below:

Id. at 32 (citing Ex. 1027, Fig. 5B). As shown in Petitioner’s annotated
Figure 5B above,
device 100 . . . is also provided with a single ‘home’ button or
convenience button 520, positioned at the center along an edge
of the display 510. [A]n adult user’s thumb is 500 is capable of
depressing the convenience button 520 while the device 100 is
held in the same hand, if the button 520 must be pressed in
order to be actuated. The depression of the convenience button
520 . . . constitutes the initiation of an unlock action.
Id. at 31 (citing Ex. 1027 ¶ 86).
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Petitioner further asserts Griffin discloses the activation button
configured for pressing to turn on the touch screen display and to initiate one
or more additional functions of the terminal (an unlock action). Id. at 33. In
particular, Petitioner points to Griffin’s disclosure that the “screen may be
reactivated upon detection of an input 212 received via a user input
interface,” such as a keypress, and that “depression of the convenience
button 520, in this example, constitutes the initiation of an unlock action.”
Id. (citing Ex. 1027 ¶¶ 25, 86). Petitioner asserts that Griffin’s disclosure of
the activation button conforms to conventional device operations, such as the
description in iOS that unlocking the phone can be accomplished by pressing
the Home button and dragging a slider, which necessarily requires that the
touchscreen be turned back on. Id. at 33–34 (citing Ex. 1007, 27, 145).
Patent Owner argues that the references do not disclose an activation
button separate from a power button. PO Resp. 14–16; Sur-Reply 2–4.
According to Patent Owner, iOS’s “home button” is not an “activation
button” because it unlocks the device but does not turn on the touch screen
display. PO Resp. 14. Patent Owner further argues that iOS does not teach
the required activation button, and thus cannot teach that the power button is
separate from the activation button. Sur-Reply 3.
We find that Petitioner has sufficiently demonstrated that the
combination of Griffin and iOS teaches these limitations. Griffin discloses a
smartphone with an activation button outside the touch screen display in the
form of home button 820 which, when pressed, turns on the touch screen
display. Ex. 1027 ¶¶ 25, 86, Fig. 5B. iOS discloses a similar smartphone
that includes a home button that looks virtually identical to Griffin’s home
button, as well as an additional “Sleep/Wake” button that turns the power on
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and off. Ex. 1007, 20. iOS further discloses that its home button, when
pressed, turns on the display (to show a slider that can be dragged to unlock
the phone). Id. at 26–27. Thus, the Griffin/iOS combination includes a
home button that turns on the display, and a separate power button that turns
the power on and off, as in claim 1. We further agree with Petitioner that
Griffin discloses its activation button initiates one or more additional
functions through its description that depression of the convenience button
constitutes the initiation of an unlock action. See Pet. 33 (citing Ex. 1027
¶ 86).
Consequently, we find that Petitioner has shown that these limitations
of claim 1 are met by the combination of Griffin and iOS.
d. “wherein the terminal has a first function and a second
function to perform in response to user input via the
activation button and is configured to provide user settings
for configuring at least one of the first and second functions
such that at least one of the first and second functions is set
to be performed in addition to turning on the touch screen
display upon pressing of the activation button while the
touch screen is turned off, wherein the first and second
functions are different from each other and selected from the
group consisting of fingerprint authentication, activating the
camera, playing music and a hands-free function”
Petitioner asserts the combination of Griffin and Davis discloses these
limitations. Pet. 34–40. In particular, Petitioner asserts Griffin discloses
user input via the activation button turning on the touch screen display, and
that after user input via the activation button, a first function is performed (a
second user input interface is activated). Id. at 34–35 (citing Ex. 1027 ¶¶ 25,
86, 121–122, Fig. 11). Petitioner further asserts Davis teaches performing a
first function (fingerprint authentication) in response to an unlock command
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(Griffin’s unlock second input mechanism). Id. at 35–37 (citing Ex. 1015
¶¶ 46–48, 52–53, Fig. 4). Thus, Petitioner asserts Griffin, as modified by
Davis, teaches a user presses the home/convenience button (activation
button), which initiates an unlock command and wakes the screen to display
a fingerprint dialog (lock screen) and the second input mechanism is
activated (fingerprint unlock function, including scanning a fingerprint). Id.
at 18 (citing Ex. 1027, Fig. 11, ¶¶ 24–25, 29; Ex. 1015, Fig. 4).
With respect to the claimed “second function” different from the first
function, Petitioner asserts iOS teaches detecting a long-press of the home
button (activation button) to perform a hands-free function (voice control of
the device). Id. at 38 (citing Ex. 1007, 38, 48, 77).
With respect to the “user settings for configuring at least one of the
first and second functions” limitation, Petitioner asserts Griffin and Davis
disclose the user configures security on the device, and iOS teaches user
settings for configuring the first and second functions through its description
of setting securing features that are performed each time the device is turned
on or woken by pressing the activation button. Id. at 39–40 (citing Ex. 1027
¶ 119; Ex. 1015 ¶¶ 46–47; Ex. 1007, 39, 45, 145).
Patent Owner does not present separate arguments for these
limitations.7
We have reviewed the evidence of record and find that Petitioner has
shown that the combination of Griffin, Davis, and iOS teaches these
limitations. We further address Petitioner’s assertions regarding

7 We address Patent Owner’s arguments that the cited art does not disclose
turning on the display and performing a first function in response to a
one-time pressing of the activation button in Section II.D.4.e below.
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performance of the first and second functions in addition to turning on the
touch screen with respect to the “wherein” limitation discussed in Section
II.D.4.e below.
e. “wherein upon one-time pressing of the activation button
while the touch screen display is turned off, the terminal is
configured to turn on the touch screen display and further
perform at least one of the first and second functions in
addition to turning on the touch screen display such that:
a lock screen is displayed on the touch screen display upon
turning on the touch screen display in response to the one-
time pressing of the activation button while the touch screen
display is turned off,
in response to the one-time pressing of the activation button,
the first function is performed in addition to turning on the
touch screen display for displaying the lock screen thereon,
and
the second function is performed when the one-time pressing
is for a long time longer than a reference time period,
wherein at least one of the first and second functions is
performed subsequent to turning on the touch screen display
and displaying the lock screen in response to the one-time
pressing of the activation button,
wherein the touch screen display displays the lock screen
when at least one of the first and second functions is being
performed.
Petitioner asserts the combination of Griffin, Davis, and iOS teaches
these limitations. See Pet. 13–19, 33–43. In particular, Petitioner argues
that Griffin discloses configuring unlock procedures to use two or more
input mechanisms. Id. at 14. More specifically, according to Petitioner,
Griffin detects actuation of a first input mechanism, activates a second input
mechanism to detect a second input, and then unlocks the device after the
proper inputs are received. Id. at 14–15. Petitioner points to Griffin’s
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disclosure that the first input mechanism can be an unlock action initiated by
pressing the activation button, which turns on the touch screen display. Id.
at 33 (citing Ex. 1027 ¶¶ 25, 86). After the user presses the activation button
to initiate the unlock action, Griffin activates the second user input interface
(the touchscreen) to receive a second input (a swiping motion). Id. at 34
(citing Ex. 1027 ¶¶ 121–122).
Petitioner argues that Griffin provides an open-ended system for
choosing the “first” and “second” input mechanisms, with the use of the
home button and touchscreen as examples. Id. at 15–16 (citing Ex. 1027
¶¶ 85–88). According to Petitioner, Griffin discloses that the mobile
communication terminal includes a fingerprint detector, but does not
explicitly disclose using the fingerprint detector as the second input
mechanism for unlocking the device. Id. at 16 (citing Ex. 1027 ¶ 77).
Petitioner relies on Davis to teach performing a “first function”
(fingerprint authentication) in response to an unlock command to provide
greater security. Id. at 35–36 (citing Ex. 1015 ¶¶ 46–47). Petitioner argues
that Davis presents a fingerprint dialog screen, which is a “lock screen,” for
entering the user’s fingerprint. See id at 18 (citing Ex. 1015, Fig. 4).
Petitioner asserts that Davis discloses receiving “the fingerprint candidate
from a fingerprint sensor . . . on the mobile device.” Id. at 36–37 (quoting
Ex. 1015 ¶¶ 52–53).
Based on the above disclosures, Petitioner argues that the combination
of Davis and Griffin teaches an unlocking procedure that includes an unlock
command followed by a fingerprint dialog and a fingerprint unlock function,
without intervening input mechanisms. Id. at 17–18. Petitioner argues that
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Griffin as modified by Davis would have been implemented by a person of
ordinary skill as follows:
(1) User presses the home/convenience button, a first input
mechanism (Griffin, Fig. 11 step 1100),
(1a) which is the initiation of an unlock command (Griffin
¶ 86), and
(1b) which wakes the screen (Griffin ¶¶ 24–25, 29) to
display a fingerprint dialog (i.e., a lock screen) (as taught
by Davis, modified Fig. 4 steps 402 and 416);
(2) the second input mechanism is activated (Griffin Fig. 11 step
1105);
(2a) Davis teaches that the second input is a fingerprint
unlock function, including scanning a fingerprint and
unlocking the device if the fingerprint is valid (Davis,
modified Fig. 4 steps 418-422), wherein
(2b) the fingerprint dialog (lock screen) is displayed while
the fingerprint function is performed, such that, for
example, a message is displayed if the fingerprint is not
valid (Davis, modified Fig. 4 step 424).
Id. at 18–19 (emphases omitted).
Petitioner further asserts iOS discloses “the second function is
performed when the one-time pressing is for a long time longer than a
reference time period.” Id. at 38, 41–42. Specifically, Petitioner argues iOS
teaches detecting a long-press of the home button (activation button) to
perform a hands-free function (voice control of the device) and that a person
of ordinary skill in the art would have known that the detection of a “press
and hold” action would have used a comparison to a reference time period.
Id. at 38, 41 (citing Ex. 1007, 38; Ex. 1003 ¶ 67).
Patent Owner argues that the cited art does not disclose turning on the
display (displaying a lock screen) and performing a first function in response
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to a one-time pressing of the activation button. PO Resp. 16–25.
Specifically, Patent Owner argues “Griffin does not disclose turning on the
display and performing a fingerprint authentication function in response to a
one-time pressing of the activation button.” Id. at 16. Instead, Patent Owner
argues, “the only function performed by Griffin in response to the activation
button is entering a state in which it will be able to receive further user
input—which is no function at all.” Id. at 19. Patent Owner contends that
Griffin “requires multiple user actions to turn on the display and perform
another function—not a single press of an activation button.” Id. Patent
Owner relies on the testimony of Alfred C. Weaver, Ph.D., in support of its
arguments. See id. (citing Ex. 2001 ¶ 92).
Patent Owner further argues that “Davis does not cure Griffin’s
deficiencies” because “Davis does not disclose a one-time pressing of the
activation button that both turns on the display and performs a first
function.” Id. at 19–20. Instead, according to Patent Owner, Davis
“discloses a multi-stage authentication system requiring multiple user
actions.” Id. at 20 (citing Ex. 2001 ¶ 93). Patent Owner also argues that
Davis never discloses its complex authentication procedure can be reduced
down to simple fingerprint authentication, and, even if Petitioner’s
simplified version of Figure 4 were appropriate, Petitioner’s modified figure
still requires multiple steps. Id. at 21–22 (citing Ex. 2001 ¶ 97–98).
In reply, Petitioner argues that Patent Owner “misinterprets ‘one-time
pressing’ to require that a single user action both press the activation button
and scan a fingerprint.” Reply 5. According to Petitioner, the “plain
language of the claims requires that a ‘one-time pressing of the activation
button’ does two things: (1) turns on the touch screen display and
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(2) ‘initiates’ one or more additional functions (e.g., a fingerprint
authentication function).” Id. at 4. Patent Owner’s interpretation, Petitioner
argues, “incorrectly reads the word ‘initiates’ out of the claims, for example,
by requiring that a single user action both press the activation button and
scan a fingerprint.” Id. Thus, according to Petitioner, “[t]he term ‘one-time
pressing of the activation button,’ which initiates the fingerprint
authentication function, does not preclude other inputs or user actions, such
as a subsequent fingerprint scan.” Id. at 5–6.
In its Sur-Reply, Patent Owner responds that claim 1 requires
“performance, not just initiation, of a first function in response to a one-time
pressing of the activation button.” Sur-Reply 4–8. Patent Owner
acknowledges that “[i]t is true that the claims require the activation button
(rather than some other button) be configured to initiate the one or more
additional functions,” but argues that Petitioner ignores a number of other
claim limitations “that make clear that full performance of the function, not
just initiation of the function, is required in response to a press of the
activation button.” Id. at 5. As an example, Patent Owner points to the
limitation “wherein upon one-time pressing of the activation button while
the touch screen display is turned off, the terminal is configured to turn on
the touch screen display and perform at least one of the first and second
functions in addition to turning on the touch screen display.” Id.
We find that Petitioner has shown sufficiently that the combination of
Griffin, Davis, and iOS teaches these limitations of claim 1. Griffin
discloses that pressing an activation button (e.g., a convenience key) turns
on the touch screen display from a sleep mode in which the touch screen is
turned off. Ex. 1027 ¶ 25 (after the device enters a sleep mode, “[t]he screen
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may be reactivated upon detection of an input 212 received via a user input
interface that may also be integrated into the device, such as . . . a
convenience key”). Thus, Griffin discloses “wherein upon one-time
pressing of the activation button while the touch screen is turned off, the
terminal is configured to turn on the touch screen display,” as recited in
claim 1.
The pressing of Griffin’s activation button initiates an unlock
procedure that detects a second input. See Ex. 1027 ¶¶ 86 (“[t]he depression
of the convenience button 520, in this example, constitutes the initiation of
an unlock action”), 121 (“in response to this actuation, the second user input
interface is activated”). If the second input is received, the device is
unlocked. Id. ¶ 122 (“[i]f the correct input was indeed received” from the
second user input interface, “the device is unlocked”). Thus, Griffin teaches
that, in response to a single press of the home button, an unlock procedure is
initiated “in addition to turning on the touch screen display,” as claim 1
requires.
We also agree with Petitioner that Davis teaches further performing a
first function (fingerprint authentication function) upon receiving an unlock
command, such as the one in Griffin. More specifically, Figure 4 of Davis
teaches an embodiment requiring entry of a smart card password and
fingerprint authentication upon receiving unlock command 402. Ex. 1015
¶¶ 45–47, 52–53. As part of this fingerprint authentication process, Davis
discloses presenting a fingerprint dialog screen on the display, which is a
“lock screen,” for entering the user’s fingerprint. Ex. 1015, Fig. 4, ¶¶ 50,
52–53. As an alternative, Davis discloses using fingerprint authentication
without the smart card reader:
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Alternatively, in an embodiment that may not require the smart
card 334 or the smart card reader 110, the microprocessor 228
may receive (step 418) the fingerprint candidate from a
fingerprint sensor (not shown) on the mobile device 102.
During the verification, if the fingerprint candidate matches a
stored fingerprint template associated with unlocking the
mobile device 102, the microprocessor 228 unlocks (step 422)
the mobile device 102.
Id. ¶ 53. Davis further explains that “many embodiments will only require a
subset of the authentication factors discussed in this application” (id. ¶ 71),
and discloses a process using a user fingerprint input to launch an
application while the device is locked (id. ¶ 79, claim 1). Based on these
disclosures, we find that Davis teaches the use of fingerprint authentication
following an unlock command without the use of a smart card password.
We also find that the combination of Griffin and Davis teaches that
the turning on of the touch screen display and the first function (fingerprint
authentication) are performed “upon one-time pressing of the activation
button,” as claim 1 recites. We agree with Petitioner that the ordinary
meaning of the claim language is that the turning on of the display and the
carrying out of the fingerprint authentication function is performed
following a single press of the activation button, and does not require that
the entirety of the fingerprint authentication function (including the scanning
of the fingerprint) be performed with no additional user input after the
activation button is pressed. This is consistent with the language elsewhere
in claim 1 that “the activation button [is] configured for pressing . . . to
initiate one or more additional functions of the terminal.”
This understanding of the ordinary meaning of the claim language
also flows from claim 1’s lack of any language that would preclude
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receiving additional user input (such as a fingerprint) during the fingerprint
activation function. Indeed, such language is expressly included in claim 11,
which closely tracks claim 1 but additionally requires that upon one-time
pressing of the activation button, the first or second function is performed
“without additional user input other than the one-time pressing.” The
’373 patent inventors could have used the “without additional user input”
language in claim 1, or other language preventing additional user input
during fingerprint authentication, but chose not to do so. The exclusion of
such language from claim 1, as well as its inclusion in claim 11, would have
indicated to one of ordinary skill that claim 1 does not prevent additional
user input during fingerprint authentication. Otherwise, the “without
additional user input” language in claim 11 would be superfluous. See
Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381
(Fed. Cir. 2006) (In the case of two independent claims, “claim
differentiation takes on relevance in the context of a claim construction that
would render additional, or different, language in another independent claim
superfluous.”)
The ordinary meaning of claim 1 is that a single press of the activation
button turns on the touch screen display and initiates the first function, but
does not preclude additional user input (such as a fingerprint scan) during
the performance of the function. Petitioner’s combination of Griffin and
Davis meets this limitation because a single press of the activation button
turns on the touch screen display as in Griffin (see Ex. 1027 ¶¶ 24–25, 29,
86, Fig. 11), and also initiates the fingerprint dialog as in Davis (see Ex.
1015 ¶¶ 46–47, 50, 52–53). The fact that Davis further requires the user to
present their fingerprint for scanning does not negate Petitioner’s arguments
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regarding how a person of ordinary skill in the art would have understood
the references’ teachings in combination.
We also find unpersuasive Patent Owner’s argument that Griffin alone
fails to disclose “turning on the display to display a lock screen [and] the
performance of any separate (enumerated) function in response to a single
press of an activation button.” PO Resp. 17. Petitioner relies on Davis for
the limitation requiring fingerprint authentication following an unlock
command; therefore, Patent Owner’s argument improperly attacks Griffin
individually rather than the combination relied on 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., 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”); 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”). Additionally, we are not persuaded by
Patent Owner’s argument that Griffin discloses a “multi-step process”
including multiple user actions to turn on the display and perform an
additional function (PO Resp. 18–19) because, as discussed above, claim 1
does not preclude additional user input during performance of the first
function. Similarly, Patent Owner’s argument that Davis “discloses a multi-
stage authentication system requiring multiple user actions” (id. at 19–24)
fails because it is based on a misreading of claim 1 that improperly adds a
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requirement that the first function be performed without additional user
input following the unlock command, as discussed above.
Finally, based on the evidence, we agree with Petitioner that the
combination of Griffin, Davis, and iOS teaches the remaining limitations of
claim 1 for the reasons stated by Petitioner. For example, we agree with
Petitioner that iOS teaches the second function is performed when the
one-time pressing is for a time longer than a reference time period.
Specifically, iOS discloses initiating a Voice Control function that allows
“hands-free operation of the terminal” in response to a long press of the
activation (Home) button, as shown in the diagram from iOS reproduced
below.

Ex. 1007, 38; see also id. at 48, 77. As shown in the portion of iOS
reproduced above, iOS teaches that, to initiate Voice Control, a user can
“[p]ress and hold the Home button until the Voice Control screen appears
and you hear a beep.” Id. at 38. The user can then use voice commands to
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“make phone calls and control iPod music playback” with hands-free
operation. Id. We credit Dr. Bederson’s testimony that one of ordinary skill
would have considered the button to be held down for a long-press if the
time the button was pressed was greater than that of a threshold reference
time period, as it is consistent with iOS’s disclosure. Ex. 1003 ¶ 67; see
Ex. 1007, 38 (“Press and hold the Home button until the Voice Control
screen appears and you hear a beep.” (emphasis added)).
Accordingly, for the foregoing reasons, we find that Petitioner has
established that the combination of Griffin, Davis, and iOS teaches these
limitations of claim 1.
f. Reason to Combine
Petitioner argues that a person of ordinary skill would have been
motivated to use a fingerprint detector, as taught by Davis, for the second
unlock input mechanism of Griffin, because biometric inputs provided
higher levels of security and user convenience. Pet. 19 (citing Ex. 1014,
1:24–37). Because Griffin discloses a fingerprint detector in its device, and
discloses that a variety of inputs may be used for the multiple-input unlock
procedures, Petitioner argues that the use of a fingerprint detector, as taught
by Davis, would have required “little more than a design decision.” Id. at
19–20. According to Petitioner, one of ordinary skill would have had a
reasonable expectation of success in using Davis’s fingerprint detector for
Griffin’s unlock routine, because Griffin’s “first” and “second” input
mechanisms were designed to be chosen from available input mechanisms,
and Davis shows that fingerprint authentication was an existing and
well-known unlock input at the time of the ’373 patent. Id. at 19–20 (citing
Ex. 1003 ¶¶ 63, 36–41).
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Petitioner further argues that a person of ordinary skill would have
been motivated to add a camera and power button, as taught by Davis and/or
iOS, to Griffin’s analogous device to provide photo-taking and
power-switching capabilities to the device. Id. at 22. Such a combination,
according to Petitioner, would have been the application of known
techniques (camera and power button components) to improve similar
devices in the same way. Id. Petitioner further argues that iOS describes
well-known hardware, software, and operating system functionality for a
mobile device, and that Griffin is, at the very least, in the same field of
endeavor because it discloses analogous mobile devices that necessarily use
similar combinations of hardware and software. Id. at 22–23. A person of
ordinary skill, according to Petitioner, would have recognized that the
functionality of the iPhone buttons in iOS would have been useful in other
similar smartphone devices with similar hardware and design. Id. at 21–22.
Thus, Petitioner asserts, a person of ordinary skill would have been
motivated to apply iOS’s teachings to other smartphone devices because
such a person would have looked to well-known interface implementations.
Id. at 22.
Additionally, Petitioner asserts a person of ordinary skill would have
been motivated to implement voice control by determining the home button
is depressed for a certain length of time, as taught by iOS, in Griffin’s device
and home button, to provide easy access to hands-free functions of the
device at any time, and that activating the hands-free function based on a
long-press of the home button was merely one known example of the many
ways a person of ordinary skill may have chosen to configure the home
button. Id. at 23. Petitioner asserts the detection of a long-press of the home
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button, as taught in IOS, to trigger a hands-free voice control function would
have been a basic key assignment modification well within the ability of a
person of ordinary skill, and would have been the application of a known
technique to improve a similar device in the same way. Id. at 25.
Petitioner further asserts a person or ordinary skill would have been
motivated to implement user settings and a settings menu for the user to
input preferences, as taught by iOS, for the first and second functions in the
system of Griffin to provide a visual interface for the user to set preferences.
Id. at 26–27. Petitioner argues that settings menus were standard
components of devices, operating systems, and programs having user
interactivity, and the implementation of a settings menu would have been a
basic user modification well within the ability of a person or ordinary skill in
the art. Id. at 27.
Patent Owner argues that a person of ordinary skill would not have
combined Griffin with Davis in the proposed manner “because they each
teach away from the simplicity achieved by the challenged claims.”
PO Resp. 25. Specifically, Patent Owner argues that
Griffin and Davis each recognize that unlocking a device
should not be an insecure or accident-prone process. Griffin
teaches that a complex wake-up or unlock action may be
desirable to prevent accidental waking or unlocking of a device
and, thus, requires two separate user inputs. Similarly, Davis
teaches that a multi-step authentication process is desirable so
that security is maximized. It explicitly criticizes single-factor,
password-based authentication while arguing in favor of two-
or three-factor authentication. Thus, combining Griffin and
Davis in a way that makes authentication easier is
counterintuitive. A proposed combination cannot make a prior
art invention unsatisfactory for its intended purpose. A [person
of ordinary skill in the art] would not combine Griffin and
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Davis because doing so runs contrary to the express security
consciousness of those disclosures.
Id. at 25–26 (citations omitted).
Patent Owner further argues that Petitioner’s proposed combination
“is riddled with hindsight bias because it uses the ’373 patent as a roadmap
to weave together various elements from the prior art.” Id. at 26. Patent
Owner criticizes as conclusory Petitioner’s argument that one of ordinary
skill would have been motivated to use Davis’s fingerprint authentication as
Griffin’s second unlock mechanism because biometric inputs provided
higher levels of security and increased user convenience. Id. As to the
combination of Griffin and iOS, Patent Owner argues that Petitioner has
provided “[n]o clear explanation as to why one of ordinary skill in the art
would be motivated to combine Griffin with iOS.” Id. at 27.
We find that Petitioner has shown that one of ordinary skill would
have been motivated to combine Griffin and Davis as Petitioner proposes.
Griffin discloses using first and second inputs for authentication. Ex. 1027
¶¶ 32, 33, 35. Upon detection of the first input at the first input mechanism,
the second input mechanism is activated such that the second input
mechanism is capable of detecting the second input. Id. ¶ 34. Davis teaches
that biometric information, such as a fingerprint, may be used “[t]o increase
security even further” than could be achieved by requiring entry of a
password, because even if a nefarious person were to gain control of the
password, “the lack of the correct biometric data should keep the nefarious
person from gaining access to the computer of interest.” Ex. 1015 ¶ 4. We
are persuaded by the testimony of Dr. Bederson that Davis’s teaching that
fingerprint authentication provides a higher level of security would have
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motivated one of ordinary skill to use Davis’s fingerprint authentication as
Griffin’s second input mechanism. See Ex. 1003 ¶ 63.
In reaching this decision, we credit the testimony of Petitioner’s
expert, Dr. Bederson, that using Davis’s fingerprint detector for Griffin’s
second input mechanism would have been simply a design decision, and that
a person of ordinary skill would have had a reasonable expectation of
success in making this combination because fingerprint authentication was
an existing and well-known unlock input at the time of the ’373 patent. Id.
Based on the evidence presented, we find that using Davis’s fingerprint
authentication as Griffin’s second input mechanism would have been simply
“the predictable use of prior art elements according to their established
functions,” and would have been no more than the “combination of familiar
elements according to known methods” that “does no more than yield
predictable results.” See KSR, 550 U.S. at 417. Additionally, as the
Supreme Court has explained, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond that person’s skill.” Id. Based on the
evidence of record, including Davis and Dr. Bederson’s testimony, we find
that one of ordinary skill would have recognized that the fingerprint
authentication technique used to improve Davis’s device would also improve
similar devices (such as that of Griffin) in the same way (by increasing
security), and that using this technique would have been within the level of
ordinary skill. See Ex. 1003 ¶ 63 (testifying that a person of ordinary skill
would have had a “reasonable expectation of success” in using Davis’s
fingerprint detector in Griffin, and doing so was merely a “design decision”).
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For these reasons, and because Petitioner’s arguments are based on specific
teachings of the prior art, as explained above, we disagree with Patent
Owner’s contention that the combination of Griffin and Davis “is riddled
with hindsight bias.” See PO Resp. 26.
We also are not persuaded by Patent Owner’s argument that Griffin
and Davis “each teach away from the simplicity achieved by the challenged
claims.” See id. at 25. As discussed above, the limitations of claim 1 are
satisfied by a device that is unlocked using two user inputs, a pressing of the
activation button and a fingerprint. Thus, the fact that Griffin and Davis use
multiple user inputs does not teach away from the claims. Moreover, we
disagree that Griffin teaches that the unlock action must be “complex.” See
id. To the contrary, Griffin teaches that the two user inputs may be selected
from a wide variety of different input mechanisms. Ex. 1027 ¶ 35.
Similarly, although Davis discloses the use of multiple inputs for
increased security, it also teaches using fewer inputs if less security is
needed, because “many embodiments will only require a subset of the
authentication factors discussed in [Davis].” Ex. 1015 ¶ 71. Paragraphs 2–4
of Davis, upon which Patent Owner relies, do not “teach away” from single
factor authentication; they merely describe the advantages of biometric
authentication (including fingerprint authentication) over use of a password
and/or smart card because it provides “something that is unique to the user.”
See id. ¶ 4 (“[E]ven if the smart card falls into the hands of a nefarious
person who also gains knowledge of the device password and the smart card
password, the lack of the correct biometric data should keep the nefarious
person from gaining access to the computer of interest.”). Therefore, this
portion of Davis, if anything, suggests using biometric data (such as
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fingerprint authentication data) in an authentication system such as Griffin.
For these reasons, we also disagree with Patent Owner that combining
Griffin and Davis would be “counterintuitive,” or would render either
reference unsuitable for its intended purpose. See PO Resp. 25–26.
We also find that Petitioner has shown a sufficient motivation to
combine Griffin and iOS. Griffin and iOS disclose very similar smartphone
devices with a touch screen and a home button in virtually identical
locations. iOS discloses a well-known smartphone interface with a camera,
a power button separate from the home button, and voice control by pressing
and holding the home button. Given the similarity between the devices
disclosed in Griffin and iOS, and the well-known nature of the iOS design,
we find that using iOS’s camera, separate power button, and long-press
hands-free function in Griffin would have been simply “the predictable use
of prior art elements according to their established functions.” See KSR, 550
U.S. at 417. Additionally, we find the proposed combination is merely the
combination of familiar elements according to known methods, which yields
predictable results. See id.
Additionally, we determine Petitioner provides sufficient reason to
implement user settings and a settings menu, as taught by iOS, in Griffin.
See Pet. 26–27. We are persuaded by the testimony of Dr. Bederson, which
we credit, that one of ordinary skill would have been motivated to
implement a settings menu for the user to input preferences regarding
authentication functions and enabling or disabling long-press hands-free
functionality, thereby providing a visual interface for the user to set his or
her preferences. Ex. 1003 ¶ 75. We further credit Dr. Bederson’s testimony
that the implementation of a settings menu would have been a basic user
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interface modification well within the skill of a person of ordinary skill in
the art, and that a person of skill would have had a reasonable expectation of
success in implementing known settings menus of mobile devices in other
mobile devices. Id.
Accordingly, for the foregoing reasons, we find that Petitioner has
established that one of ordinary skill would have been motivated to combine
Griffin, Davis, and iOS in the manner proposed by Petitioner.
g. Conclusion
For the foregoing reasons, we conclude Petitioner has demonstrated,
by a preponderance of the evidence, that claim 1 would have been obvious
over the combination of Griffin, Davis, and iOS.
5. Claims 2, 4–6, and 10
Claims 2 depends from claim 1 and recites “wherein the first function
is the fingerprint authentication.” Petitioner cites to its analysis for the first
function limitation cited in claim 1 to support its assertion that Davis teaches
fingerprint authentication. See Pet. 43; see also id. at 35–36 (Petitioner’s
assertions that Davis teaches fingerprint authentication). Patent Owner does
not present separate arguments for this claim. Based on the evidence of
record, we find Petitioner establishes, by a preponderance of the evidence,
that claim 2 would have been obvious over the combination of Griffin,
Davis, and iOS.
Claim 4 depends from claim 1 and recites
wherein one of the first and second functions comprises the
fingerprint authentication, wherein the terminal is configured to
turn on the touch screen display for displaying the lock screen
and further configured to display the lock screen when the
fingerprint authentication is being performed in response to the
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one-time pressing of the activation button while the touch screen
display is turned off.
Petitioner relies on its analysis for the similar limitations recited in claim 1
to support its assertion that the Griffin-Davis-iOS combination teaches the
limitations set forth in claim 4. See id. at 43–44; see also id. at 33–36, 40–
43 (Petitioner’s assertions that Davis teaches fingerprint authentication and
that Griffin, Davis, and iOS teach displaying a lock screen when the
fingerprint authentication is being performed in response to the one-time
pressing of the activation button while the touch screen is turned-off).
Patent Owner does not present separate arguments for this claim. Based on
the evidence of record, and for the reasons discussed above of the similar
limitations recited in claim 1, we find Petitioner establishes, by a
preponderance of the evidence, that claim 4 would have been obvious over
the combination of Griffin, Davis, and iOS. See supra Sections II.D.4.e–f.
Claim 5 depends from claim 4 and recites “wherein the terminal is
configured to continue its lock state when the fingerprint authentication fails
to authenticate a user, whereas the terminal is configured to release the lock
state and make its other functions available when the fingerprint
authentication authenticates a user.” Petitioner asserts that Davis teaches
“a lock state of the terminal continuing when the fingerprint unlock fails and
making other functions available when the fingerprint unlock is successful.”
Pet. 44 (citing Ex. 1015 ¶¶ 13, 53). Patent Owner does not present separate
arguments for this claim. Based on the evidence of record, we find
Petitioner establishes, by a preponderance of the evidence, that claim 5
would have been obvious over the combination of Griffin, Davis, and iOS.
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Claim 6 depends from claim 5 and recites “wherein the terminal is
configured to display a message on the touch screen display when the lock
state continues due to failure of user authentication by the fingerprint
authentication.” Petitioner points to Davis for this limitation, arguing that
Davis “discloses displaying a message on the touch screen display (failure
dialog) when the lock state continues due to failure of the fingerprint
authentication function.” Id. (citing Ex. 1015 ¶ 53). Patent Owner does not
separately argue claim 6. Based on the evidence of record, we find that
Petitioner has established, by a preponderance of the evidence, that claim 6
would have been obvious over the combination of Griffin, Davis, and iOS.
Claim 10 depends from claim 1 and recites “wherein the terminal
comprises a smartphone which comprises an activation sensor configured to
detect pressing of the activation button and a user identification module
configured to perform the fingerprint authentication.” Petitioner argues that
Griffin discloses a terminal that comprises a smartphone and an activation
button (“home button” or “convenience button”) to initiate an unlock action
and reactivate the device. 1011 Pet. 26, 44–45 (citing Ex. 1027 ¶ 86). With
respect to the “activation sensor,” Petitioner argues that Griffin discloses an
“‘actuation’ of a user input mechanism . . . by pressing a button,” and that
“[w]hen one of those active input mechanisms detects a user input, such as a
keypress, the processor can then be signaled to . . . return the device to an
awake and operative state.” Id. at 27 (citing Ex. 1027 ¶¶ 25, 58). Petitioner
also points to Griffin’s disclosure in Figure 11 of the step of “[d]etect[ing]
actuation of first input mechanism 1100.” Id. (citing Ex. 1027, Fig. 11).
Petitioner argues that a person of ordinary skill in the art would have
understood that Griffin’s disclosure of an “input mechanism” that “detects”
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a user input to wake the device is a disclosure of “an activation sensor
configured to detect pressing of the activation button.” Id. According to
Petitioner, Griffin uses the term “input mechanism” broadly to encompass
both the physical “home button” that the user presses as well as the sensor
that detects the press of the home button and translates it into a signal. Id. at
27–28. Thus, Petitioner argues, a person of ordinary skill would have
understood that Griffin discloses both an activation button and an activation
sensor. Id. at 28.
With respect to the “user identification module,” Petitioner argues that
Davis discloses that the authentication functions are implemented via
security module 230C installed on the phone, and that this security module
interfaces the fingerprint sensor into the phone. Id. at 29 (citing Ex. 1015
¶¶ 21, 30, 47, 50–53, 72, Figs. 2–3). Therefore, Petitioner argues, Griffin in
view of Davis discloses “a user identification module configured to perform
the fingerprint authentication.” Id. Petitioner further argues that a person of
ordinary skill in the art would have been motivated and found it obvious and
straightforward to employ Davis’s teachings of a security module that
interfaces with the fingerprint sensor in implementing Griffin’s unlock
routine for its higher levels of security and user convenience. Id.
Patent Owner does not separately argue claim 10. Based on the
evidence of record, we find that Petitioner has established, by a
preponderance of the evidence, that claim 10 would have been obvious over
the combination of Griffin, Davis, and iOS.
6. Claim 11
Independent claim 11 is a method claim that recites limitations
similar to claim 1, but also requires “performing at least one of the first and
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second functions without additional user input other than the one-time
pressing.”
a. The Parties’ Arguments Regarding the “Without
Additional User Input” Limitation
For this limitation, Petitioner points to its analysis for claim 1 and
asserts no additional user input is input for the first function (fingerprint
authentication after initiating unlock or the second function (voice control).
Pet. 48 (citing Ex. 1027, Fig. 11; Ex. 1015, Fig. 4; Ex. 1007, 38, 48, 77).
Patent Owner argues claim 11 together with claim 1 and asserts that
the claims require performance, not just initiation, of a function in response
to a one-time pressing of the activation button. See PO Resp. 16–17;
Sur-Reply 4–8.
Petitioner responds that Patent Owner’s interpretation of claim 11 is
incorrect. Reply 9. According to Petitioner, the “without additional user
input” language “merely clarifies that no additional user input beyond the
one-time pressing is required by the device to initiate the function.” Id. at
9–10. To support this interpretation, Petitioner points to the language
elsewhere in claim 11 stating that “wherein . . . the terminal operates such
that . . . at least one of the first and second function is initiated . . . in
response to the one-time pressing of the activation button.” Id. at 9
(emphasis omitted). Petitioner contends that “‘one-time pressing of the
activation button’ addresses how many times the activation button is
pressed, and ‘without additional user input’ addresses whether the claim is
limited to a single input to ‘initiate’ the function.” Id. at 10.
Petitioner also makes a number of arguments based on the
Specification and other claims. Petitioner argues that the ’373 patent
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Specification discloses separate units for detecting the activation button
press and operating the user identification function, which “confirms that the
claims encompass multiple inputs and/or steps for pressing the activation
button and scanning a fingerprint.” Id. at 6–7. Petitioner further contends
that the Specification does not support an embodiment that uses a single user
action or single input to both press the activation button and scan a
fingerprint, and the one sentence in the Specification regarding fingerprint
authentication says nothing about using a single user action or single input to
both press the activation button and scan a fingerprint. Id. at 7–8 (citing
Ex. 1001, 8:13–20). Finally, Petitioner argues that Patent Owner’s
interpretation would read out of the claims embodiments, such as the
“hands-free function” that uses voice input and the embodiment disclosed in
the Specification that would allow “a password matching method” to “be
performed by pressing the activation button” because such an embodiment
necessarily requires additional user inputs. Id. at 8–9 (citing Ex. 1001, 8:13–
20).
We are not persuaded by Petitioner’s arguments. First, we do not
agree that the “without additional user input” language in claim 11 applies
only to the “initiation” of the first or second function. Claim 11 requires
that, in response to the one-time pressing of the activation button, the device
both changes the terminal from the inactive to the active state in which the
touch screen display is turned on and further “perform[s] at least one of the
first and second additional functions without additional user input other than
the one-time pressing.” The ordinary meaning of this claim language
requires that the device performs at least one of the first and second
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functions without additional user input, not merely that it “initiates” the
function without additional user input.
We also disagree with Petitioner’s arguments that the Specification
compels a different reading of claim 11. We agree with Petitioner that the
Specification describes separate units for detecting the press of the activation
button and operating the user identification function. See Ex. 1001, 7:23–28
(describing separate activation button press and user identification
functions); 8:13–20 (describing the fingerprint authentication function as an
alternative to iris recognition). As discussed above, however, claim 11
clearly states on its face that turning on the screen and performing a first or
second function is done by a single press of the activation button “without
additional user input other than the one-time pressing.” Interpreting claim
11 to allow additional user input during the performance of the function
would effectively read this limitation out of the claim, which would be
improper. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.
17, 29 (1997) (“Each element contained in a patent claim is deemed material
to defining the scope of the patented invention.”); Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 950–52 (Fed. Cir. 2006) (holding that “claims are
interpreted with an eye toward giving effect to all terms in the claim,” and a
claim construction that reads limitations out of a claim is “contrary to the
principle that claim language should not [be] treated as meaningless”); Texas
Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir.
1993) (refusing to interpret claims in a manner that “would read an express
limitation out of the claims” because “[c]ourts can neither broaden nor
narrow claims to give the patentee something different than what he has set
forth”).
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Finally, we are not persuaded by Petitioner’s argument that giving
effect to the “without additional user input” language would improperly read
out embodiments of the claim. See Reply 8–9. Petitioner points to the
claimed “hands-free function,” but we are not persuaded a hands-free
function requires voice input.8 See id. at 8. Rather, we agree with Patent
Owner that Petitioner cites nothing for the proposition that performance of a
hands-free function would require a voice input from a user and that the
hands-free function could simply be the activation of a microphone (at
which point presumably the user could initiate additional functions through
voice commands). See Sur-Reply 6–7. Further, the Specification does not
describe the hand-free function as requiring voice input. See Ex. 1001,
9:22–33. Petitioner also points to claim 9, but claim 9 does not require the
entry of a password, it merely requires the performance of “a third function
other than the first and second functions.” See Reply 8–9. And, although
password entry is described in the ’373 patent Specification, “a claim need
not cover all embodiments,” especially where, as here, the patentee drafts
“different claims to cover different embodiments” (e.g., claim 1 which has
no “without additional user input” limitation, and claim 10 which includes
it). See Intamin, Ltd. v. Magnetar Techs. Corp., 483 F.3d 1328, 1337 (Fed.
Cir. 2007).

8 We also note that although claim 11 recites that the first and second
function are selected from a group consisting of fingerprint authentication,
activating the camera, playing music, and a hand-free function, the claim
does not require the first or second function that is performed to be a
hands-free function.
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b. Application of the “Without Additional User Input”
Limitation to the Prior Art
Turning to the application of the claim language to the prior art,
Petitioner’s arguments for claim 11 are largely based on the premise that the
“without additional user input” claim language only applies to the initiation
of the fingerprint authentication function, rather than the performance of
fingerprint authentication (including receiving a user’s fingerprint). See Pet.
13–19, 48; Reply 9–14. As discussed above, we do not agree with this
reading of claim 11, and therefore find Petitioner’s arguments unpersuasive.
In its claim chart for claim 11, Petitioner further summarily states that:
“No additional user input is input for the first function (fingerprint
authentication after initiating unlock[)]; Griffin Fig. 11 step 1105, Davis Fig.
4 (modified) step 416) or the second function (Voice Control; iOS pp. 28,
48, 77).” Pet. 48 (emphasis omitted). Petitioner also asserts that because
Davis “teaches that unlocking procedures were customizable” and their
order could be rearranged, “a single biometric input mechanism may have
been used to unlock a device and launch an application.” Id. at 17–18
(citing Ex. 1015, claim 1).
We find that these cursory statements by Petitioner are insufficient to
show that the proposed combination teaches the “without additional user
input” limitation of claim 11. Griffin discloses an unlock procedure that
uses two user inputs. See Ex. 1027 ¶¶ 32–25. Davis also fails to disclose a
single user input that turns on a screen and authenticates a fingerprint, but
rather discloses the use of multiple user inputs, such as having the user first
enter an unlock command and then enter a fingerprint for authentication.
See Ex. 1015, Fig. 4, ¶¶ 46, 50, 52–56; Ex. 2001 ¶ 107. For example, Figure
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4 of Davis illustrates receiving a first user input in the form of unlock
command 402, which activates the screen to present an unlock dialog, and
then receiving additional user inputs in the form of passwords and/or a
user’s fingerprint. See Ex. 1015, Fig. 4, ¶¶ 46, 50, 52–56. Petitioner failed,
either in its briefing or at the Oral Hearing, to point to any disclosure in
Davis that uses a single user input to both turn on the screen and authenticate
a fingerprint, and the mere statement in Davis that the order of
authentication factors can be varied is not sufficient to constitute such a
disclosure. See Pet. 17–18, 46; Tr. 17:18–20:21. Moreover, claim 1 of
Davis, which Petitioner cites, merely states that a biometric candidate may
result in unlocking the device and launching execution of an application. It
does not disclose using a single input to both turn on the screen and
authenticate a fingerprint, as required by claim 11.
c. Conclusion as to Claim 11
For the foregoing reasons, we conclude that Petitioner has failed to
prove, by a preponderance of the evidence, that claim 11 would have been
obvious to a person of ordinary skill over the combination of Griffin, Davis,
and iOS.
7. Claims 12–14 and 18
Claims 12–14 and 18 depend from claim 11. Petitioner relies on the
combination of Griffin, Davis, and iOS for the limitations of these claims,
and does not present further evidence with regard to the “without additional
user input” limitation in claim 11, discussed above. See Pet. 50–52; 1011
Pet. 51–52. Because we find that Petitioner has failed to prove, by a
preponderance of the evidence, that claim 11 is unpatentable over this
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combination, we similarly find that Petitioner has failed to prove that
dependent claims 12–14 and 18 are unpatentable.
E. Obviousness over Goertz, Davis, and iOS
Petitioner challenges claims 1, 2, 4–6, 10–14, and 18 as obvious under
35 U.S.C. § 103(a) over Goertz, Davis, and iOS. Pet. 53–86; 1011 Pet. 63–
66, 78–80, 84–85.
1. Overview of Goertz
Goertz describes touch screen user interfaces for electronic devices.
Ex. 1013 ¶ 2. Figures 9, 10, and 11 of Goertz are depicted below.

Figures 9, 10, and 11 illustrate turning a phone on and off. Id. ¶ 23. Figure
9 displays a first phone with a blank screen indicating that power is off. Id.
¶ 59. Figure 10 displays a second phone with gadgets displayed thereon,
indicating that power is on. Id. A “home key” is displayed at the bottom of
the phones, where activating the home key (e.g., touching the key) causes
the power to be turned on. Id. Figure 11 displays a single phone, where
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touching the home key for an extended period of time (e.g., five seconds)
causes the phone to power off. Id.
Goertz further describes touch screens for phones with key lock. Id.
¶ 60. Figures, 12, 13, 14, and 15 of Goertz are depicted below.

Figures 12, 13, 14, and 15 illustrate locking and unlocking a phone. Id. ¶ 24.
In Figure 12, a lock gadget is displayed in a lower right corner of the screen.
Id. ¶ 60. Activating the lock gadget (e.g., pressing on it) causes the phone to
lock, and when the phone is locked, activation of the phone is restricted in
some manner. Id. As shown in Figure 13, the user activates a home key,
located at bottom center of device, to unlock the phone. Id. Figure 14
shows the phone after it has been unlocked; gadgets are now displayed on
screen and are activated in response to user input. Id. Figure 15 shows the
phone displaying a keypad when the home key is activated (e.g., by touching
the home key), and prompting a user to enter a security code. Id. ¶ 61. As
Goertz describes, the phone cannot be unlocked unless the security code is
entered. Id. Goertz further describes that optional additional security is
implemented by use of fingerprint identification, wherein the phone cannot
be unlocked unless the fingerprint is authenticated. Id.
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2. Claim 1
Petitioner asserts the combination of Goertz, Davis, and iOS teaches
the limitations recited in claim 1. Pet. 53–77. Petitioner relies primarily on
Goertz to disclose most of the limitations and relies on Davis and iOS in a
similar manner as in its challenge based on Griffin. See generally id. A
more detailed analysis of Petitioner’s assertions for specific limitations, and
Patent Owner’s response, is set forth below.
a. “an activation button separate from the power button and
located outside the touch screen display, the activation
button configured for pressing to turn on the touch screen
display”
Petitioner asserts Goertz discloses an activation button (home key)
located outside the touch screen display. Pet. 67. Petitioner further asserts
Goertz discloses the activation button is configured for pressing to turn on
the touch screen display. Id. at 69–70 (citing e.g., Ex. 1013 ¶ 59, Figs. 12–
14). Similar to its contentions in its challenge based on Griffin, Petitioner
relies on iOS to disclose a power button separate from the activation button.
Id. at 68, 70 (citing Ex. 1007, 20, 27).
Patent Owner argues Goertz does not disclose an activation button,
separate from a power button, that turns on a display in response to a press.
PO Resp. 31–34. In particular, Patent Owner asserts Goertz never states or
confirms the display is off in Figure 13, but rather Goertz discloses that the
device shown in Figure 13 is locked, which means the activation of the
phone is restricted in some manner. Id. at 32; see also Sur-Reply 15
(asserting nothing in Goertz says that Figure 13 shows a display that is off).
Patent Owner argues that it is “equally plausible” Figure 13 only emphasizes
the action of pressing the home button, and that nothing in the written
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portion of Goertz addresses use of the home button to turn on the display.
PO Resp. 32. Patent Owner also asserts that Figures 9 and 10 of Goertz do
not show this claim limitation because they show using the home button to
power on the device, but the claims differentiate between a power button and
an activation button that is separate from the power button. Id. at 33. Patent
Owner asserts that if the home key in Figures 9–10 of Goertz is a power
button used to turn the device on and off, it cannot be an activation button
that turns on the display. Id. Additionally, Patent Owner argues that the
“home button” in iOS is not an “activation button” and iOS does not disclose
the home button is used to turn on the touch screen display. Id. at 33–34;
Sur-Reply 15–16.
In reply, Petitioner asserts Figures 9–11 of Goertz illustrate what a
display looks like when the display is on (Figs. 10–11) and off (Fig. 9) and,
as is apparent from the series of figures, the same display-off state is shown
in Figure 13, depicting the locked phone. Reply 20. Petitioner asserts that
in describing the unlock operation resulting in the state shown in Figure 14,
Goertz explains that “gadgets are now displayed on screen,” which further
confirms that Figure 13 depicts a display-off state. Id. at 20–21 (citing Ex.
1013 ¶ 60, Ex. 1039 ¶¶ 46–49). Petitioner asserts that the only figures with
blank screens in Goertz are Figures 9 and 13 (power off and locked states),
such that a person of ordinary skill in the art would have understood the
display is off in both figures, and it is an implausible reading of Goertz to
suggest the blank screen in Figure 13 was intended to indicate a display with
gadgets. Id. (citing Ex. 1039 ¶ 50). Additionally, Petitioner asserts that iOS
expressly discloses a device with an activation button (home button), similar
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to Goertz’s home button, and a separate power button (Sleep/Wake button)
that turns on and off the terminal. Id. at 21–22 (citing Ex. 1007, 26–27).9
We determine Petitioner sufficiently demonstrates that the
combination of Goertz and iOS teaches the recited “activation button”
limitation. Goertz discloses an activation button (home key) located outside
the touch screen display and iOS discloses a smartphone that includes a
home button to turn on the display and an additional Sleep/Wake button that
turns the power on and off. See Ex. 1013 ¶¶ 59–60; Ex. 1007, 20, 26–27.
Goertz further discloses that “[i]n order to unlock the phone, the user
activates the home key . . . as shown in FIG. 13” and that “FIG. 14 shows
the phone after it has been unlocked: gadgets are now displayed on screen
and are activated in response to user input.” Ex. 1013 ¶ 60, Figs. 13, 14.
We are not persuaded by Patent Owner’s argument that Figure 13
does not show the display is off before the button is pressed. Goertz
explicitly states gadgets are “now” displayed after the phone is unlocked,
which corresponds to the change from the illustration of Figure 13 (depicting
a blank screen for when the phone is locked) to that of Figure 14 (illustrating
gadgets displayed on the screen after the phone has been unlocked). See id.
In view of this disclosure, we are not persuaded by Dr. Weaver’s testimony
that it is plausible that Figure 13 only emphasizes the action of pressing the

9 Petitioner additionally asserts that iOS discloses its home button also turns
on the display. Reply 22–23. However, as noted by Petitioner, Petitioner
relied on Goertz in the Petition, and not iOS, for the activation button
configured for pressing to turn on the touch screen display. See id.; Pet. 67–
68. We decline to consider Petitioner’s new assertion because it raises a
new issue and exceeds the scope of a proper reply. See 37 C.F.R.
§ 42.23(b).

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home button, and that nothing in the written description of Goertz addresses
the use of the home button to turn on the display. See Ex. 2001 ¶ 110.
Rather, we agree with Dr. Bederson that Goertz’s disclosure does not
support Patent Owner’s reading. See Ex. 1039 ¶ 50. Thus, we determine
Petitioner shows sufficiently that Goertz teaches an activation button
configured for pressing to turn on the touch screen display.
We conclude Petitioner has demonstrated the combination of Goertz
and iOS teaches the “activation button” limitation of claim 1.
b. “[an activation button configured for pressing] to initiate
one or more additional functions of the terminal,
wherein the terminal has a first function and a second
function to perform in response to user input via the
activation button . . . wherein the first and second functions
are different from each other and selected from the group
consisting of fingerprint authentication, activating the
camera, playing music and a hands-free function
wherein upon one-time pressing of the activation button
while the touch screen is turned off, the terminal is
configured to turn on the touch screen and further perform
at least one of the first and second functions in addition to
turning on the touch screen display”
Petitioner asserts Goertz discloses an activation button configured to
initiate one or more additional functions of the terminal. Pet. 69–70 (citing
e.g., Ex. 1013 ¶¶ 60–61). Petitioner asserts Goertz discloses the terminal has
a first function (fingerprint authentication) to perform in response to user
input via the activation button (pressing the home button). Id. at 71 (citing
Ex. 1013 ¶ 61). Petitioner asserts iOS teaches the claimed second function
through its description that detecting a long-press of the home button
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(activation button) performs a hands-free function (voice control of the
device). Id. at 73 (citing Ex. 1007, 38).
Petitioner further asserts that the combination of Goertz, Davis, and
iOS discloses pressing the home key (activation button) to wake the
terminal, turn on the touch screen display, and initiate the unlock function
and further perform the first function (fingerprint authentication) or second
function (hands-free voice control). Id. at 74–75 (citing id. at 69–73).
Petitioner relies on Goertz to teach an activation button that initiates
performance of fingerprint authentication. See id. at 69, 71. Petitioner
asserts Davis teaches steps for performing Goertz’s fingerprint
authentication in response to an unlock command (Goertz’s pressing of the
home key). Id. at 71–72 (citing Ex. 1015, Fig. 4, ¶¶ 47–48, 53). Petitioner
also asserts Davis teaches customizing authentication factors by changing
their order and/or limiting them to a subset of factors (i.e., one embodiment
includes the fingerprint authentication without password/smartcard
authentication). Id. at 72–73 (citing Ex. 1015 ¶ 71, Fig. 4, claim 1); see also
id. at 55–56 (Petitioner’s assertions that Davis teaches customizable
authentication and an unlocking procedure that includes an unlock command
followed by a fingerprint authentication).
Patent Owner argues that the cited prior art does not disclose turning
on the display and performing a first function in response to a one-time
pressing of the activation button. PO Resp. 34–37. Specifically, Patent
Owner asserts Goertz does not disclose the display and timing requirements
in the challenged claims, but rather discloses a multi-step process requiring
multiple user inputs. Id. at 34–36. Patent Owner asserts that, while Goertz
discloses “additional security is implemented by use of fingerprint
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authentication,” it does not disclose the authentication sequence is any
different when fingerprint recognition is used in addition to a security code.
Id. at 36 (citing Ex. 1013 ¶ 61). Thus, Patent Owner asserts that even if
Petitioner is correct that a press of the activation button causes the display to
turn on, the Goertz authentication sequence is a two-step process in which
the display turns on and then the device prompts the user to perform
authentication (after the display turns on). Id. Patent Owner further asserts
that Davis does not cure the Goertz deficiencies, but instead discloses a
multi-stage authentication system requiring multiple user inputs. Id. at 37
(citing Ex. 2001 ¶ 116).
In reply, Petitioner argues Goertz discloses that pressing the home
button turns on the display and also initiates a high security function, such as
fingerprint authentication. Reply 23. Petitioner argues that Patent Owner’s
arguments that Goertz discloses a multi-step sequential process requiring
multiple user inputs is irrelevant because the claims are not limited to a
single step or user action to both press the activation button and scan a
fingerprint. Id. at 24. Similar to its assertions in the challenge based on
Griffin, Patent Owner responds that Petitioner’s interpretation of the claims
is wrong because the claims require performance, not just initiation of the
first function (fingerprint authentication) in response to a one-time pressing
of the activation button. Sur-Reply 16–17.
We determine that Petitioner shows sufficiently the combination of
Goertz and Davis teaches these limitations of claim 1. Goertz teaches upon
pressing of an activation button (home key) while the touch screen is turned
off, the terminal is configured to turn on the touch screen display. See
Ex. 1013 ¶ 60, Figs. 13, 14. Goertz also discloses “[w]hen the home key is
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activated, such as by touching the home key . . . a user is prompted to enter a
security code” and “[o]ptionally, additional security is implemented by use
of fingerprint authentication, wherein the phone cannot be unlocked unless a
fingerprint is authenticated.” Ex. 1013 ¶ 61. Id. As discussed previously,
Davis discloses steps for performing fingerprint authentication in response to
an unlock command. See Ex. 1015 ¶¶ 46, 50, 53, Fig. 4; see also id. ¶ 71,
79, claim 1 (describing that many embodiments will only require a subset of
authentication factors and using a fingerprint input to launch an application
while the device is locked). Thus, we are persuaded that the combination of
Goertz and Davis teaches an activation button configured to initiate one or
more additional functions and wherein upon one-time pressing of the
activation button (Goertz’s pressing of the home key) while the touch screen
is turned off, the terminal is configured to turn on the touch screen and
further perform a first function (fingerprint authentication). We further
agree with Petitioner that iOS teaches the recited “second function” through
its description of voice control of the device (hands-free function). See
Ex. 1007, 38.
We are not persuaded by Patent Owner’s arguments that Goertz and
Davis both disclose multi-step authentication systems. For the reasons
discussed previously in our analysis of the challenge based on Griffin, claim
1 does not preclude additional user input during the performance of the
fingerprint authentication function (first function) or second function. See
supra Section II.D.4.f.
We conclude Petitioner has established the combination of Goertz and
Davis teaches these limitations of claim 1.
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c. Remaining Limitations
Petitioner asserts the combination of Goertz, Davis, and iOS teaches
the remaining limitations recited in claim 1. See Pet. 64–67, 73–77.
Specifically, Petitioner asserts Goertz discloses a mobile communication
terminal, a touch screen display, and a camera. Id. at 64–66 (citing Ex. 1013
¶¶ 59–61, 78, Figs. 9–15, 40–42). Petitioner asserts iOS also discloses a
camera and the recited “power button” limitation. Id. at 66–68 (citing Ex.
1007, 20, 27). As in its challenge based on Griffin, Petitioner relies on
Davis and iOS to teach the “wherein the terminal . . . is configured to
provide user settings” limitation. Id. at 73–74 (citing Ex. 1015 ¶¶ 46–47;
Ex. 1007, 39, 45, 145). And for the “lock screen” and subsequent remaining
limitations, Petitioner points to its analysis of previous limitations of claim 1
to support its assertion that the Goertz-Davis-iOS combination teaches these
limitations. See id. at 75–77. Patent Owner does not present separate
arguments for these limitations.
We have reviewed Petitioner’s analysis and supporting evidence. We
determine Petitioner establishes that the combination of Goertz, Davis, and
iOS teaches each of these limitations recited in claim 1.
d. Reason to Combine
Petitioner asserts a person of ordinary skill would have been
motivated to implement the fingerprint function taught by Davis for the
fingerprint authentication of Goertz because Goertz mentions fingerprint
authentication but does not explain any steps in detail, and is, thus, ready for
improvement by known techniques. Pet. 56; Reply 25–26. Petitioner asserts
that the modification would have been well within the abilities of the person
of ordinary skill, the use of a lock screen to display a lock/unlock dialog
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would have been little more than the use of a known technique to yield the
predictable result of displaying device status to a user, and a person of
ordinary skill would have had a reasonable expectation of success in
implementing the fingerprint authentication and lock screen display
techniques because such techniques already existed and their application
would have been similar and routine. Pet. 56–57 (citing Ex. 1003 ¶¶ 85, 36–
41).
Petitioner further asserts a person of ordinary skill would have been
motivated to include a power button, as taught by iOS, in Goertz’s mobile
device because the combination would have been the application of a known
technique to improve a similar device in the same way. Id. at 59. Petitioner
asserts a person of skill would have been motivated to implement voice
control by determining the home button is depressed for a certain length of
time, as taught by iOS, in Goertz’s device to provide easy access to hands-
free functions of the device at any time, and activating the hands-free
function based on a long-press of the home button was merely one known
example of many ways a person of skill may have chosen to configure the
home button. Id. at 60–61. Petitioner asserts the detection of a long-press of
the home button to trigger a hands-free voice control function would have
been a basic key assignment modification and would have been the
application of a known technique to improve a similar device in the same
way. Id. at 62 (citing Ex. 1003 ¶¶ 90–94, 39–41).
Additionally, Petitioner asserts a person of skill would have been
motivated to implement user settings and a settings menu for the user to
input preferences, as taught by Davis and iOS, for the first and second
functions in the system of Goertz to provide a visual interface for the user to
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set preferences. Id. at 63–64. Petitioner asserts settings and settings menus
were standard components of devices and the implementation would have
been a basic user modification well within the skill of a person of ordinary
skill in the art. Id. at 64.
Patent Owner argues a person of ordinary skill would not have
combined Goertz with Davis in the proposed manner because Goertz already
teaches a method of fingerprint authentication so there is no reason to look
to Davis and there is no indication why one of skill in the art would use
anything other than the fingerprint mechanism already disclosed in Goertz.
PO Resp. 37–38; Sur-Reply 18. Patent Owner argues Goertz actively
discourages the display and timing requirements of the challenged claims
because Goertz discloses a multi-step process requiring multiple user inputs.
PO Resp. 35–36. Patent Owner also argues Petitioner’s analysis is
improperly based on hindsight bias because it uses the ’373 patent as a
roadmap to cobble together separate components from the prior art and does
not provide a clear motivation as to why one would have been motivated to
combine the references in the proposed manner. See PO Resp. 38–43; Sur-
Reply 19.
We determine Petitioner has shown that one of ordinary skill would
have had reason to combine Griffin and Davis in the proposed manner. We
are not persuaded by Patent Owner’s arguments that Goertz discloses
specific timing requirements for fingerprint authentication. We agree with
Patent Owner’s statements, made during oral argument, that Goertz discloses
that in key lock security mode, the user presses a button and a keypad is
displayed and it prompts the user to enter a security code. Tr. 35:6–8; Ex.
1013 ¶ 61. However, we disagree with Patent Owner’s argument that Goertz
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teaches fingerprint authentication being done the same way, and thus, the
timing is present in Goertz. See Tr. 35:8–36:2. Goertz merely discloses that
“[o]ptionally, additional security is implemented by use of fingerprint
authentication, wherein the phone cannot be unlocked unless a fingerprint is
authenticated.” Ex. 1013 ¶ 61. We agree with Petitioner’s assertions,
supported by the testimony of Dr. Bederson, that Goertz mentions
fingerprint authentication but does not explain any steps in detail and does
not limit itself to requesting a fingerprint after a password input. Reply 25;
Ex. 1039 ¶ 61. Thus, we are persuaded that a person of ordinary skill in the
art would have understood that Goertz was ready for improvement by
implementing the known fingerprint function taught by Davis, which does
disclose the details on how to implement fingerprint authentication to unlock
a phone. See, e.g., Ex. 1015 ¶¶ 52–53, Fig. 4. We find that using the
fingerprint authentication taught by Davis in Goertz would have been simply
the predictable use of prior elements according to known methods that does
no more than yield predictable results. See KSR, 550 U.S. at 417.
We also are not persuaded by Patent Owner’s argument that Goertz
discourages the display and timing requirements of claim 1 because it
discloses a multi-step process requiring multiple user inputs. As discussed
previously, the limitations of claim 1 are satisfied by a device that is
unlocked using multiple inputs (a pressing of the activation button and a
fingerprint). See supra Section II.D.4.e. Further, because we find Petitioner
provides sufficient rationale for why one of skill in the art would have
combined the references in the proposed manner, premised on the teachings
of the references themselves, we disagree with Patent Owner’s argument that
the combination is improperly based on hindsight bias.
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Additionally, we find Petitioner provides sufficient rationale to
combine Goertz with iOS to include a separate power button, and to
implement voice control (hands free function) by determining the home
button is depressed for a certain length of time. We are persuaded that the
power button and long-press function were well-known components of
mobile devices and a person of skill in the art would have had a reasonable
expectation of success in implementing such features in other mobile
devices, such as the device taught by Goertz. See Pet. 62. We find the
proposed combination is merely the combination of familiar elements
according to known methods, which yields predictable results.
We further determine Petitioner provides sufficient reason to
implement user settings and a settings menu, as taught by Davis and iOS, in
Goertz. See Pet. 63–64. We credit the testimony of Dr. Bederson that one
of skill in the art would have been motivated to make the combination to
provide a well-known visual interface for a user to set preferences, and the
implementation of a settings menu for a mobile device would have been a
basic modification for a person of ordinary skill in the art. Ex. 1003 ¶ 96.
Accordingly, we find Petitioner establishes that one of ordinary skill
would have had reason to combine Goertz, Davis, and iOS in the proposed
manner.
e. Conclusion
For the foregoing reasons, we conclude Petitioner has demonstrated,
by a preponderance of the evidence, that claim 1 would have been obvious
over the combination of Goertz, Davis, and iOS.
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3. Claims 2, 4–6, and 10
Claims 2, 4–6, and 10 depend from claim 1. Petitioner relies on its
analysis of the references’ teachings for claim 1 to support its assertion that
the combination of Goertz, Davis, and iOS teaches the limitations recited in
claims 2 and 4, which are similar to those in claim 1. See Pet. 77–78.
Petitioner asserts the combination of Goertz and Davis teaches the
limitations recited in claim 5. Id. at 78 (citing Ex. 1013 ¶¶ 60, 61; Ex. 1015
¶¶ 13, 53). Similar to its challenge based on Griffin, Petitioner relies on
Davis to teach the limitations recited in claim 6. Id. at 78–79 (citing Ex.
1015 ¶ 53). For claim 10, Petitioner asserts Goertz discloses the recited
smartphone and activation sensor and asserts Davis discloses the recited user
identification module. 1011 Pet. 79–80 (citing Ex. 1013 ¶¶ 23–24, 56, 59,
60–62, Figs. 3, 9–11, 13; Ex. 1015 ¶¶ 4, 21, 30, 47, 50–53, 87, Figs. 2, 3).
Patent Owner does not present separate arguments for these claims.
We have reviewed Petitioner’s analysis and supporting evidence. We
determine Petitioner establishes, by a preponderance of the evidence, that
claims 2, 4–6, and 10 would have been obvious over the combination of
Goertz, Davis, and iOS.
4. Claim 11
Petitioner asserts the combination of Goertz, Davis, and iOS teaches
the limitations recited in claim 11. Pet. 79–83 (citing to analysis for claim
1); see also id. at 64–77 (analysis for claim 1). As we noted previously,
claim 11 is similar to claim 1, but also requires “performing at least one of
the first and second functions without additional user input other than the
one-time pressing.” Claim 11 further recites “at least one of the first and
second functions is initiated . . . in response to the one-time pressing of the
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activation button.” For the reasons discussed in our analysis of the challenge
based on Griffin, the ordinary meaning of the claim language requires that,
in response to the one-time pressing of the activation button, the device
performs at least one of the first and second function without additional user
input, not merely that it initiates the function. See supra Section II.D.6.
Petitioner relies on its analysis of claim 1 to support its assertion that
the combination of Goertz and Davis teaches the “without additional user
input limitation.” Pet. 81. Petitioner further asserts that no additional user
input occurs for the first function (fingerprint authentication after pressing
the home key) or the second function (voice control). Id.
Patent Owner argues the combination of Goertz and Davis does not
teach performing a first function in response to a one-time pressing of the
activation button. PO Resp. 34–37; Sur-Reply 16–18. Patent Owner argues
that, as admitted by Petitioner, Goertz does not disclose the display and
timing requirements, and the Goertz authentication sequence is a two-step
process in which the display turns on and then the device prompts the user to
perform authentication. PO Resp. 35–36 (citing Pet. 54; Ex. 2001 ¶ 115).
Patent Owner argues that Davis also discloses a multi-stage authentication
system requiring multiple user actions (receiving an unlock command and
then receiving the fingerprint in response to a prompt). Id. at 37 (citing
Ex. 2001 ¶ 116).
As in the challenge based on Griffin, Petitioner’s arguments for claim
11 are based on the premise that “without additional user input” only applies
to the initiation of the first or second function. See Pet. 71–75, 81; Reply
23–25. Because we do not agree with this premise, we find Petitioner’s
arguments unpersuasive. See supra Section II.D.6. We agree with Patent
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Owner that Goertz discloses a two-step process in which the user unlocks
the phone by activating the home key and then authentication is performed.
See Ex. 1013 ¶¶ 60–61. And, for the reasons discussed above in our analysis
of the challenge based on Griffin, we agree Davis and iOS also fail to
disclose performance of the first or second function without additional user
input other than the one-time pressing. See supra Section II.D.6. Therefore,
we conclude Petitioner has failed to establish, by a preponderance of the
evidence, that claim 11 would have been obvious over the combination of
Goertz, Davis, and iOS.
4. Claim 12–14 and 18
Claims 12–14 and 18 depend from claim 11. Petitioner relies on the
combination of Goertz, Davis, and iOS for the limitations of these claims,
and does not present further evidence with regard to the “without additional
user input” limitation in claim 11, discussed above. See Pet. 83–86; 1011
Pet. 84–85; see also Pet. 77–79; 1011 Pet. 44–46 (Petitioner’s analysis of
dependent claims 2, 4–6, and 10 cited to in Petitioner’s analysis of
dependent claims 12–14, 18). Because we conclude that Petitioner has
failed to prove, by a preponderance of the evidence, that claim 11 is
unpatentable over this combination, we similarly conclude that Petitioner
has failed to prove that dependent claims 12–14 and 18 are unpatentable.
III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1, 2, 4–6, and 10 are unpatentable. Petitioner has not demonstrated
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by a preponderance of the evidence that claims 11–14 and 18 are
unpatentable.10
In summary:
Claims 35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 4–6,
10–14, 18
103(a) Griffin, Davis, iOS 1, 2, 4–6, 10 11–14, 18
1, 2, 4–6,
10–14, 18
103(a) Goertz, Davis, iOS 1, 2, 4–6, 10 11–14, 18
Overall
Outcome
1, 2, 4–6, 10 11–14, 18

IV. ORDER
It is
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1, 2, 4–6, and 10 of the ’373 patent are unpatentable;

10 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceedings 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 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), (b)(2).

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FURTHER ORDERED that Petitioner has not demonstrated by a
preponderance of the evidence that claims 11–14 and 18 of the ’373 patent
are unpatentable; and
FURTHER ORDERED, that because this is a final written decision of
the Board under 35 U.S.C. § 318(a), any party to this proceeding seeking
judicial review of our decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Gabrielle E. Higgins
Scott McKeown
Victor Cheung
Christopher Bonny
gabrielle.higgins@ropesgray.com
scott.mckeown@ropesgray.com
victor.cheung@ropesgray.com
christopher.bonny@ropesgray.com

PATENT OWNER:

Barry Bumgardner
Matthew Juren
Thomas Cecil
barry@nelbum.com
matthew@nelbum.com
tom@nelbum.com