Apple Inc v. Firstface Co Ltd

1. Case Identification

• Case #: IPR2019-01011
• Patent #: 9,633,373
• Filed: April 24, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Firstface Co., Ltd.
• Challenged Claims: 10 and 18

2. Patent Overview

• Title: Activating Display and Functions Based on Button Press Duration
• Brief Description: The ’373 patent relates to a system for activating a mobile device's display via a button and performing different functions based on the duration of the button press, such as a short press for unlocking and a long press for a hands-free function.

3. Grounds for Unpatentability

Ground 1: Claims 10 and 18 are obvious over Griffin, Davis, and iOS

• 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 the core concept of using a single "home" or "convenience" button press to wake a mobile device from a sleep state, turn on the display, and initiate a multi-step unlock process. While Griffin mentioned a fingerprint detector as a possible input mechanism, it lacked a detailed implementation. Petitioner contended that Davis supplied this missing detail, teaching a customizable unlock procedure that uses fingerprint authentication, including displaying a fingerprint dialog (i.e., a lock screen) during the scanning process. To meet limitations regarding a separate, duration-based function, Petitioner pointed to iOS, which taught that a long press of the home button could activate a distinct function like Voice Control (for hands-free calling or music playback), separate from the primary unlock function.
  • Motivation to Combine: A POSITA would combine Griffin and Davis to implement a more secure and convenient biometric unlock feature into Griffin's flexible, multi-input system; Griffin’s own disclosure of a fingerprint detector made this a simple design choice. A POSITA would further incorporate well-known features from iOS, such as a separate power button and a duration-based long-press shortcut for the home button, to improve Griffin’s device with standard functionality and the obvious benefit of increased user convenience for frequently used tasks.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these references because it involved integrating known, predictable components. Griffin’s system was designed to be modular, Davis provided a well-understood biometric unlock method, and iOS demonstrated a common, existing implementation of a long-press shortcut.

Ground 2: Claims 10 and 18 are obvious over Goertz, Davis, and iOS

• 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 presented an alternative to Ground 1, substituting Goertz as the primary reference. Petitioner argued that Goertz disclosed activating a "home key" to switch a display from an inactive to an active state and initiate a security function, explicitly noting that fingerprint authentication could optionally be used. Petitioner asserted that Goertz, like Griffin, did not disclose the specific details of the fingerprint process. Therefore, a POSITA would turn to Davis to provide the established method for fingerprint authentication, including presenting a lock screen during the scan. The teachings of iOS were used identically to Ground 1 to disclose other claim elements, such as a camera, a separate power button, and using a long press of the home key to activate a secondary hands-free function.
  • Motivation to Combine: A POSITA would combine Goertz and Davis because Goertz already suggested fingerprint authentication but was vague on implementation. A POSITA would be motivated to improve Goertz's system by implementing a known, detailed method like that taught by Davis. The motivation to add standard hardware and convenient software features (like the long-press shortcut) from iOS was the same as in Ground 1: applying known techniques to improve a similar device and enhance user experience.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination. Implementing Davis's detailed fingerprint authentication process into the system of Goertz, which already contemplated such a feature, was a straightforward application of a known technique. Similarly, adding the well-known long-press functionality from iOS to Goertz's home key was a routine modification.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate because this petition challenged different claims (dependent claims 10 and 18) than those in a related, earlier-filed petition (IPR2019-00613).
• Petitioner asserted the omission of these claims from the earlier petition was inadvertent and that this petition was filed diligently upon discovery. The related proceeding was in its early stages, with no institution decision issued, meaning a consolidated review would introduce minimal additional work for the Board and would not prejudice the Patent Owner.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 10 and 18 of the ’373 patent as unpatentable.