Apple Inc v. Firstface Co Ltd

1. Case Identification

• Case #: IPR2019-01012
• Patent #: 9,779,419
• Filed: April 24, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Firstface Co., Ltd.
• Challenged Claims: 9

2. Patent Overview

• Title: Activating Display and Performing Additional Function in Mobile Terminal with One-time User Input
• Brief Description: The ’419 patent describes a mobile terminal that performs different functions based on a single press of an activation button. The function performed, such as turning on the display and initiating user authentication, can vary depending on the duration of the button press.

3. Grounds for Unpatentability

Ground 1: Obviousness over Griffin, Davis, and iOS - Claim 9 is 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 the combination teaches all limitations of claim 9. Griffin was asserted to disclose a method for unlocking a mobile device that transitions from a sleep mode to an active state upon pressing a "home" or "convenience" button. This initial press initiates a multi-input unlock procedure, and Griffin explicitly mentions the availability of a fingerprint detector. However, Griffin does not detail using the fingerprint detector as the second unlock input. Davis was asserted to supply this missing detail, teaching the use of biometric inputs, specifically fingerprint authentication, to unlock a device. Davis explicitly discloses presenting a fingerprint dialog (a lock screen) and scanning a user's finger to validate and unlock the device. Finally, iOS was cited to teach other well-known, conventional smartphone features recited in the dependent claims, such as using a long-press of a home button to activate a hands-free function (Voice Control) regardless of the phone's lock status. Claim 9, which depends from claim 1, adds limitations for a smartphone with an activation sensor and a user identification module, which Petitioner argued were expressly or inherently disclosed by the combination of Griffin and Davis.
  • Motivation to Combine: A POSITA would combine Davis’s detailed fingerprint authentication process with Griffin’s general unlock framework to implement a more secure and convenient unlocking mechanism. Because Griffin already disclosed the presence of a fingerprint detector, using it as an input mechanism as taught by Davis would have been a predictable design choice. Furthermore, a POSITA would have been motivated to incorporate standard features from iOS, such as long-press functionality for hands-free access, into the Griffin device to improve its overall utility and user convenience, reflecting common practice in the field.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. Integrating a known authentication method (Davis's fingerprint scan) into a known unlock sequence (Griffin's) and adding standard user interface features (iOS's long-press) involved applying known techniques to existing devices to achieve predictable results.

Ground 2: Obviousness over Goertz, Davis, and iOS - Claim 9 is 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 an alternative to Ground 1, substituting Goertz as the primary reference. Petitioner argued Goertz disclosed activating a mobile device's display from an inactive state by pressing a "home key." This action could initiate a "high security" function, which Goertz stated could optionally include fingerprint authentication. Similar to Griffin, Goertz did not disclose the specific details of the fingerprint authentication process. The petition again relied on Davis to teach the specific implementation, including presenting a fingerprint dialog on a lock screen, scanning the fingerprint, and validating it. iOS was used for the same purpose as in Ground 1: to teach conventional features like a long-press of the home button to activate a hands-free function. The specific limitations of dependent claim 9 (smartphone, activation sensor, user identification module) were alleged to be met by the combination of Goertz and Davis.
  • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA, starting with the Goertz system that mentions but does not detail fingerprint authentication, would have been motivated to look to a reference like Davis for a known, detailed implementation to improve the security and functionality of the unlock procedure. The combination was presented as a straightforward application of Davis's specific biometric solution to Goertz's more general security framework. The motivation to add functionality from iOS remained the same.
  • Expectation of Success: As with the first ground, Petitioner argued that combining these known elements would have been routine. Implementing a detailed fingerprint process from Davis into the Goertz system, which already contemplated such a feature, was a predictable modification with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. The petition asserted that claim 9 was inadvertently omitted from a previously filed IPR petition (IPR2019-00614) challenging other claims of the same ’419 patent using the same prior art. Petitioner contended it acted diligently in filing the instant petition immediately upon discovering the omission. It was further argued that because the co-pending IPR was still in its early stages—with no institution decision or patent owner response filed—instituting review would create minimal additional work for the Board and the Patent Owner, favoring consolidation or coordinated scheduling.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 9 of Patent 9,779,419 as unpatentable.