Apple Inc v. Firstface Co Ltd

1. Case Identification

• Case #: IPR2019-00612
• Patent #: 8,831,557
• Filed: January 23, 2019
• Petitioner(s): Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Firstface Co., Ltd.
• Challenged Claims: 1, 8-9, and 15

2. Patent Overview

• Title: Method, System, and Mobile Communication Terminal for Performing Specific Function
• Brief Description: The ’557 patent describes a method and system for a mobile device to perform a user identification function, such as fingerprint recognition, simultaneously with switching the device’s display unit from an inactive (OFF) state to an active (ON) state upon the press of an activation button.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fadell, iOS, and Gagneraud - Claims 1, 8-9, and 15 are obvious over Fadell in view of iOS and Gagneraud under 35 U.S.C. §103.

• Prior Art Relied Upon: Fadell (Application # 2009/0083850), iOS (Apple iPhone OS 3.1 User Guide (Sep. 2009)), and Gagneraud (WO 2010/126504).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Fadell, discloses a mobile electronic device with an embedded biometric authentication system, such as a fingerprint sensor behind a home button, designed to authenticate a user "quickly and seamlessly, for example as the user turns on, unlocks or wakes the device." To the extent Fadell does not explicitly teach that its button switches the display unit from an OFF to an ON state, Petitioner asserted that iOS (a user guide for the iPhone operating system, a device explicitly mentioned in Fadell) provides this context, showing it was well-known for home and power buttons to wake a device's display from an inactive (OFF) to an active (ON) state. Gagneraud was introduced to explicitly teach performing fingerprint scanning concurrently with powering on a machine from a single user action to save time and simplify user interaction. Gagneraud’s flowchart shows that upon user detection, the machine concurrently powers on and performs fingerprint recognition without additional user steps.
  • Motivation to Combine: A POSITA would combine these references to achieve Fadell’s stated goal of quick and seamless authentication. While Fadell taught the goal of simultaneous operation, Gagneraud provided an exemplary and advantageous implementation of concurrent processing (power-on and fingerprint scan) initiated by a single button press. A POSITA would have been motivated to apply Gagneraud’s time-saving, concurrent methodology to Fadell’s system to improve its functionality and user experience. Applying the known display-waking function of a button (taught by iOS) to Fadell's device was a predictable design choice.
  • Expectation of Success: Petitioner contended there was a high expectation of success. Modifying Fadell’s device to use a button press to simultaneously wake the display and initiate fingerprint recognition involved mapping a hardware button to known software functions, which was a standard and well-understood practice for a POSITA.

Ground 2: Obviousness over Goertz and Herfet - Claims 1, 8-9, and 15 are obvious over Goertz in view of Herfet under 35 U.S.C. §103.

• Prior Art Relied Upon: Goertz (Application # 2010/0017872) and Herfet (German Application # DE 197 10 546 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Goertz discloses a mobile device with a "home key" that switches the display from an inactive to an active state and initiates a security function, which can optionally include fingerprint recognition. Goertz, however, does not detail the specific implementation of the fingerprint recognition process. Herfet was presented to cure this deficiency, as it teaches a mobile terminal with a fingerprint scanner integrated directly into its on/off switch. Herfet explicitly describes that the user's fingerprint is recorded "at the moment when the set is switched on" or "during the switch-on process," which results in authentication with "no additional effort for the user."
  • Motivation to Combine: A POSITA reading Goertz, which suggests fingerprint security but lacks implementation details, would have been motivated to look to analogous art for an efficient method. Herfet provides a specific, user-friendly solution by integrating the scanner into the activation button to perform authentication simultaneously with activation. This combination would achieve the high-security option mentioned in Goertz while providing the simple user experience taught by Herfet. The modification was argued to be a straightforward application of a known technique (Herfet's integrated scanner/switch) to improve a similar device (Goertz's phone).
  • Expectation of Success: The petition argued for a high likelihood of success. Implementing Herfet’s specific technique within Goertz’s framework would involve routine configuration of input, storage, and lookup functions. Since Goertz already contemplated fingerprint recognition, integrating a known, specific method for it would be a simple and predictable task for a POSITA, well within their ordinary skill.

4. Key Claim Construction Positions

• Petitioner dedicated significant argument to the term "simultaneously". Based on the Patent Owner's arguments during prosecution to overcome prior art, Petitioner argued that for the purposes of this IPR, the term should be construed to mean that the user identification function and the display switching are "performed, without additional user action." Petitioner asserted the claims are obvious even under this limiting construction proposed by the Patent Owner.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 8-9, and 15 of the ’557 patent as unpatentable.