Apple Inc v. Firstface Co Ltd

1. Case Identification

• Case #: IPR2019-00614
• Patent #: 9,779,419
• Filed: January 23, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Firstface Co., Ltd.
• Challenged Claims: 1-4, 6-7, 10-13, 15-17

2. Patent Overview

• Title: Mobile Terminal and Method of Controlling the Same
• Brief Description: The ’419 patent describes a mobile device that performs different functions based on the duration of a single press of an activation button. For example, a short press from an inactive state can turn on the display and initiate fingerprint authentication, while a long press can initiate a hands-free operation.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-7, 10-13, and 15-17 are obvious over Griffin in view of Davis and iOS.

• Prior Art Relied Upon: Griffin (Application # 2012/0133484), Davis (Application # 2010/0138914), and iOS (Apple iPhone OS 3.1 User Guide (Sep. 2009)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Griffin disclosed a mobile device with a multi-step unlock process, such as pressing a home button (a first input) to wake the device, which then activates a second input mechanism (e.g., a touchscreen) to complete the unlock. While Griffin mentioned a fingerprint detector as a possible component, it did not explicitly teach using it as the second input. Petitioner asserted that Davis supplied this missing element by teaching the use of fingerprint authentication to unlock a device, including displaying a fingerprint dialog on a lock screen. For limitations related to duration-based functions, Petitioner pointed to iOS, which disclosed that pressing and holding the home button initiated a hands-free Voice Control feature. iOS also taught other standard features like a separate power button and user-configurable settings.
  • Motivation to Combine: A POSITA would combine Griffin and Davis to improve security and convenience. Since Griffin already disclosed a fingerprint detector and a flexible multi-input unlock system, using the specific fingerprint authentication method taught by Davis was presented as a simple and obvious design choice. A POSITA would incorporate features from iOS, such as a long-press for hands-free functions, to provide users with quick and convenient access to frequently used features, which was a well-known goal in user interface design.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success because the combination involved applying known user interface techniques (fingerprint dialogs, long-press functions) to a known device architecture (Griffin's mobile device) to achieve the predictable result of enhanced security and functionality.

Ground 2: Claims 1-4, 6-7, 10-13, and 15-17 are obvious over Goertz in view of Davis and iOS.

• Prior Art Relied Upon: Goertz (Application # 2010/0017872), Davis (Application # 2010/0138914), and iOS (Apple iPhone OS 3.1 User Guide (Sep. 2009)).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented Goertz as an alternative primary reference to Griffin. Petitioner argued that Goertz disclosed pressing a "home key" on a locked device to switch the display from an inactive to an active state and initiate a security function. Goertz explicitly mentioned that this security function could be fingerprint authentication but provided no implementation details. Petitioner argued that Davis remedied this deficiency by teaching the specific steps of a fingerprint unlock process, including presenting a fingerprint dialog on the screen while the scan is performed and providing feedback to the user. As in Ground 1, iOS was cited to teach duration-based activation of hands-free functions via a long-press of the home button, as well as other common device features.
  • Motivation to Combine: A POSITA would be motivated to combine the teachings of Davis with Goertz to implement the fingerprint authentication feature that Goertz mentioned but did not detail. Using the established and customizable fingerprint unlock procedure from Davis was argued to be an obvious way to improve the rudimentary security system of Goertz, thereby increasing both security and user convenience. The motivation to add features from iOS was identical to that in Ground 1: to incorporate well-known, convenient user interface functions into a similar mobile device.
  • Expectation of Success: Petitioner asserted a high expectation of success, as this combination merely involved implementing a known security technique (Davis) into a device (Goertz) that was already contemplated to include such a feature. The integration of these known elements was portrayed as a routine task for a POSITA that would yield predictable improvements.

4. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-4, 6-7, 10-13, and 15-17 of the ’419 patent as unpatentable under 35 U.S.C. §103.