DCT
3:18-cv-02245
Firstface Co Ltd v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Firstface Co., Ltd. (Republic of Korea)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: Nelson Bumgardner Albritton P.C.; Banys, P.C.
- Case Identification: 3:18-cv-02245, N.D. Cal., 04/13/2018
- Venue Allegations: Venue is alleged to be proper as Defendant Apple Inc. resides in the Northern District of California, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s iPhone and iPad products infringe three patents related to activating device functions, such as fingerprint authentication and a voice assistant, with a single button press when the device's display is off.
- Technical Context: The technology concerns user interface shortcuts on mobile devices, which combine the action of waking a device from a standby state with the performance of additional functions, aiming to enhance user convenience and security.
- Key Procedural History: The complaint alleges that Defendant was made aware of the earliest patent-in-suit in early 2015 during a presentation by Plaintiff regarding a potential purchase or license of its patent portfolio. Subsequent to the complaint's filing, Inter Partes Review (IPR) proceedings at the USPTO resulted in the cancellation of some asserted claims, including all asserted claims of U.S. Patent No. 8,831,557 and several claims of U.S. Patent Nos. 9,633,373 and 9,779,419.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-19 | Priority Date for ’557, ’373, and ’419 Patents |
| 2013-09-20 | Earliest Accused Product Launch (iPhone 5s) |
| 2014-09-09 | U.S. Patent No. 8,831,557 Issues |
| Early 2015 | Plaintiff allegedly notifies Defendant of ’557 Patent |
| 2017-04-25 | U.S. Patent No. 9,633,373 Issues |
| 2017-10-03 | U.S. Patent No. 9,779,419 Issues |
| 2018-04-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,831,557 - Method, System, and Mobile Communication Terminal for Performing Specific Function When Mobile Communication Terminal Is Activated
The Invention Explained
- Problem Addressed: The patent describes the conventional process of using a mobile device from a standby (or "inactive") state as inefficient, requiring a user to first press a button to turn on the display and then perform a separate operation to execute a desired function (’557 Patent, col. 1:35-47).
- The Patented Solution: The invention proposes a mobile terminal where pressing an "activation button" not only switches the display from an OFF state to an ON state but also "simultaneously" performs a predetermined operation, such as user authentication (’557 Patent, Abstract; col. 2:1-8). This consolidates two user steps into a single action. Figure 4A illustrates the core components: an "activation sensing unit" (410) that detects the button press and a "user identification unit" (420) that performs the simultaneous function (’557 Patent, Fig. 4A).
- Technical Importance: This approach streamlines the user interaction required to securely access a mobile device, reducing the time and number of steps needed to begin using the device from a locked state.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9, as well as dependent claims 8 and 15 (Compl. ¶10).
- Independent Claim 1 (Apparatus):
- A display unit.
- An activation button configured to switch from an inactive (display OFF) to an active (display ON) state.
- A user identification unit configured to operate a user identification function.
- Wherein the user identification function is performed "simultaneously" with switching from the inactive to the active state by pressing the activation button.
- Wherein the user identification function includes fingerprint recognition.
- Independent Claim 9 (Method):
- Sensing whether an activation button has been pressed to switch from an inactive to an active state.
- Performing a user identification process by fingerprint recognition "simultaneously" with switching from the inactive state to the active state if the button press is sensed.
U.S. Patent No. 9,633,373 - Activating Display and Performing Additional Function in Mobile Terminal With One-Time User Input
The Invention Explained
- Problem Addressed: Similar to its parent patent, the '373 Patent addresses the inefficiency of requiring multiple distinct user inputs to wake a device and then perform a function (’373 Patent, col. 1:28-48).
- The Patented Solution: The invention discloses a mobile terminal with an "activation button" separate from the power button that can initiate different functions based on the duration of a "one-time pressing." A short press performs a "first function" (e.g., fingerprint authentication) while a "long time" press performs a "second function" (e.g., activating a voice assistant), all initiated from a screen-off state (’373 Patent, Abstract; col. 13:1-24). The method involves displaying a lock screen while these functions are performed.
- Technical Importance: The invention adds a layer of context-sensitivity to a single button, allowing it to serve as a multi-modal shortcut and further increasing user interface efficiency.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11, along with several dependent claims (Compl. ¶23-24).
- Independent Claim 1 (Apparatus):
- A touch screen display, camera, power button, and an activation button separate from the power button.
- The terminal performs a "first function" and a "second function" in response to a "one-time pressing" of the activation button.
- The second function is performed when the press is for a "long time longer than a reference time period."
- A lock screen is displayed upon turning on the display in response to the press.
- The first function is performed in addition to turning on the display for displaying the lock screen.
- Independent Claim 11 (Method):
- Detecting a "one-time pressing" of the activation button in an inactive state.
- Changing the terminal to an active state.
- In addition to changing state, performing at least one of a first and a second function.
- Wherein a lock screen is displayed, the first function is performed in addition to displaying the lock screen, and the second function is performed for a long press.
U.S. Patent No. 9,779,419 - Activating Display and Performing User Authentication in Mobile Terminal With One-Time User Input
Technology Synopsis
This patent, also related to the '557 Patent, addresses the same multi-step activation problem. The solution is a mobile terminal where a "one-time pressing" of an activation button (separate from the power button) while the screen is off causes the terminal to both turn on the display and perform a fingerprint authentication function, with a lock screen displayed during the process (’419 Patent, Abstract). It further contemplates performing a different function, such as a hands-free operation, for a long press.
Asserted Claims
Independent claims 1 and 10, and numerous dependent claims (Compl. ¶37).
Accused Features
The complaint alleges that the Home Button on Apple's devices, when pressed, simultaneously wakes the display and initiates Touch ID fingerprint authentication, and when held for a longer duration, activates the Siri hands-free function (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
Apple mobile devices that support fingerprint authentication and Siri, including iPhone models from the 5s onward and various iPad models (Compl. ¶10, ¶24, ¶37).
Functionality and Market Context
The complaint identifies the "home button" on the accused iPhones and iPads as the infringing "activation button" (Compl. ¶12, ¶26). The alleged infringing functionality involves a single press of this button to awaken the device's display from an "off" state while concurrently initiating a fingerprint scan via the integrated Touch ID sensor for user authentication and unlocking (Compl. ¶12). The complaint further alleges that a longer press of the same home button from the same initial state activates the Siri voice assistant functionality (Compl. ¶26, ¶39). These features are described as central to the user experience of Apple's commercially significant flagship products.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’557 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an activation button configured to switch from an inactive state... to an active state | The home button on the Accused Products, which, when pressed, switches the display from an off state to an on state. | ¶12 | col. 3:26-30 |
| a user identification unit configured to operate a user identification function | The Accused Products contain a user identification unit that performs fingerprint recognition (Touch ID). | ¶12 | col. 7:12-19 |
| wherein the user identification function is performed simultaneously with switching from the inactive state... by pressing the activation button | The fingerprint recognition function is alleged to occur simultaneously with the display switching from off to on. | ¶12 | col. 11:50-54 |
| wherein the user identification function includes a fingerprint recognition | The user identification is performed via fingerprint recognition. | ¶12 | col. 7:6-9 |
’373 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an activation button separate from the power button and located outside the touch screen display | The Accused Products have a home button that is separate from the power button and located outside the touchscreen. | ¶26 | col. 12:1-5 |
| wherein the terminal has a first function and a second function... the second function is performed when the one-time pressing is for long time longer than a reference time period | The first function is fingerprint authentication (short press) and the second function is activating Siri (long press). | ¶26 | col. 13:21-24 |
| a lock screen is displayed on the touch screen display upon turning on the touch screen display in response to the one-time pressing... | A lock screen is displayed on the touch screen while fingerprint authentication is being performed. | ¶26 | col. 13:14-18 |
| 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 | Upon pressing the activation button, the Accused Products turn on the display and perform fingerprint authentication. | ¶26 | col. 13:18-21 |
Identified Points of Contention
- Scope Questions: A central question for the ’557 Patent may be the scope of the term "simultaneously". The complaint alleges simultaneous operation, but a defense may argue that waking the screen and authenticating the user are technically distinct, sequential software processes, even if they occur rapidly within a single user action.
- Technical Questions: For the ’373 and ’419 Patents, the analysis may focus on the precise sequence of events. The claims require a "first function" to be performed "in addition to turning on the touch screen display for displaying the lock screen." A potential point of contention is whether Apple's implementation performs authentication in a manner that can be technically distinguished from the claimed sequence, or if the activation of Siri (the alleged "second function") fully meets the claim limitations for an additional function performed upon a long press.
V. Key Claim Terms for Construction
The Term: "simultaneously with" (’557 Patent, Claim 1)
Context and Importance: This term is central to the asserted claims of the ’557 Patent. Its construction will determine whether a rapid, user-initiated sequence of events meets the claim, or if a stricter, technical definition of concurrent processing is required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary states that "a predetermined operation is performed simultaneously with switching to the active state by pressing the activation button" (’557 Patent, col. 2:6-8). This language, focusing on the single user action ("by pressing"), may support an interpretation where the entire resulting process is considered "simultaneous" from the user's perspective.
- Evidence for a Narrower Interpretation: The claim language requires the function itself to be performed simultaneously with the switching. This could invite a technical argument that two distinct hardware or software operations are, by nature, sequential, even if the delay is imperceptible to a user.
The Term: "one-time pressing" (’373 Patent, Claim 1)
Context and Importance: The infringement theory for both short-press (authentication) and long-press (Siri) actions depends on both being considered a "one-time pressing." Practitioners may focus on this term because its scope must be broad enough to read on both a simple press and a press-and-hold action.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent appears to use "one-time" to distinguish from "repeated pressing" (’373 Patent, col. 14:3-9). This suggests any single, continuous interaction with the button, regardless of duration, could be construed as a "one-time pressing."
- Evidence for a Narrower Interpretation: A defendant might argue that a "press" is the initial actuation and a "hold" is a separate user input. However, the claim itself recites that "the second function is performed when the one-time pressing is for long time," which intrinsically links the "one-time pressing" to the duration (’373 Patent, col. 13:21-23).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing instructional materials, such as user guides and online support pages, that teach and encourage users to operate the Accused Products in an infringing manner (e.g., using the home button to unlock with Touch ID and activate Siri) (Compl. ¶15-16, ¶29-30, ¶42-43). Contributory infringement is alleged on the basis that the accused devices contain specific hardware and software combinations (e.g., the home button with Touch ID sensor) that are a material part of the invention and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶17-18, ¶31-32, ¶44-45).
- Willful Infringement: The complaint alleges willful infringement of the ’557 Patent based on alleged pre-suit knowledge. It asserts that in "early 2015," Plaintiff presented its patent portfolio, including the ’557 Patent, to Defendant, thereby giving Defendant actual notice (Compl. ¶14). The complaint alleges that Defendant's continued infringement despite this knowledge was "willful, wanton, and deliberate" (Compl. ¶20). For the ’373 and ’419 patents, knowledge is alleged to have begun with the filing of the complaint (Compl. ¶28, ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "simultaneously with," as used in the ’557 Patent, be construed to cover a rapid sequence of events initiated by a single user action, or does it require a stricter temporal overlap that the accused products may not satisfy?
- A key evidentiary question will be one of operational sequence: does the precise technical implementation of turning on the display, presenting a lock screen, and performing fingerprint authentication in the accused Apple products map directly onto the specific, multi-part sequence required by the claims of the ’373 and ’419 Patents?
- A third critical question, particularly for damages, will be one of willfulness: what evidence exists to substantiate the complaint's allegation that Defendant was made aware of the ’557 Patent in early 2015, and if so, was its subsequent conduct objectively reckless, warranting enhanced damages?