PTAB

IPR2019-00613

Apple Inc v. Firstface Co Ltd

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Device Authentication and Function Control
  • Brief Description: The ’373 patent relates to a mobile terminal and method where an activation button performs different functions based on the duration of a press. A single press can wake the device and initiate a first function (e.g., fingerprint authentication), while a long-press can initiate a second function (e.g., camera activation), with at least one function performed while a lock screen is displayed.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-6, and 11-14 are obvious over Griffin in view of Davis and iOS under 35 U.S.C. § 103.

  • Prior Art Relied Upon: Griffin (Application # 2012/0133484), Davis (Application # 2010/0138914), and iOS (Apple iPhone OS 3.1 User Guide (Sept. 2009)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Griffin disclosed a base mobile device with a "convenience key" to wake the device from sleep and initiate an unlock process. While Griffin taught that the device could include a fingerprint detector, it did not explicitly disclose using it for the unlock process while displaying a lock screen—the key feature Petitioner asserted led to the patent's allowance. Petitioner contended that Davis remedied this deficiency by teaching a customizable biometric unlock system where a fingerprint dialog (i.e., a lock screen) is presented to the user while a fingerprint scan is performed. Petitioner further argued that iOS taught other claimed features as common in the art, including duration-based button presses (a long-press on the home button to activate a hands-free Voice Control), a separate power button, and a camera.
    • Motivation to Combine: A POSITA would combine Griffin and Davis to improve the security and user-friendliness of Griffin’s device. Since Griffin already disclosed a fingerprint detector, a POSITA would be motivated to implement a robust fingerprint unlock routine, such as that taught by Davis, which provides necessary user feedback via a lock screen dialog. A POSITA would combine features from iOS into Griffin’s device to add well-known, desirable functionality, representing a predictable application of known techniques to a similar device.
    • Expectation of Success: A POSITA would have a high expectation of success in combining these known elements. Integrating a known authentication method (Davis) into a device designed to be unlocked (Griffin) and adding standard hardware and software features (iOS) would yield only predictable results.

Ground 2: Claims 1-2, 4-6, and 11-14 are obvious over Goertz in view of Davis and iOS under §103.

  • Prior Art Relied Upon: Goertz (Application # 2010/0017872), Davis (Application # 2010/0138914), and iOS (Apple iPhone OS 3.1 User Guide (Sept. 2009)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground substituted Goertz for Griffin as the primary reference. Petitioner argued that Goertz disclosed a mobile device with a "home key" that, when pressed, wakes the device and can initiate a "high security" function, which Goertz explicitly stated could include fingerprint authentication. However, Petitioner asserted Goertz failed to detail the user interface specifics, namely the display of a lock screen during the authentication process. As in Ground 1, Petitioner contended that Davis supplied this teaching by disclosing a fingerprint dialog presented during the scan, and iOS supplied teachings for other conventional features like long-press functions.
    • Motivation to Combine: The motivation to combine was substantially the same as in Ground 1. A POSITA, seeking to implement the fingerprint authentication function mentioned in Goertz, would have looked to known, detailed implementations like Davis to provide a complete and functional user experience. This would involve adding a lock screen dialog during the scan for improved user feedback and security. The motivation to add features from iOS remained the same: to incorporate standard functionalities into the mobile device.
    • Expectation of Success: Petitioner asserted a reasonable expectation of success for the same reasons as in Ground 1. The combination of Goertz’s base system with the detailed implementation from Davis and standard features from iOS was presented as a routine design choice with predictable results.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate because key prior art was not substantively considered during prosecution. It was contended that Davis was not before the Examiner at all and taught the very element—displaying a lock screen during fingerprint authentication—that the Examiner found missing in the art and which formed the basis for allowance. Petitioner also argued that while Griffin and iOS were cited in an IDS, they were not meaningfully considered by the Examiner, and thus presented new teachings for review.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-2, 4-6, and 11-14 of Patent 9,633,373 as unpatentable.