PTAB

IPR2020-00202

Apple Inc v. Maxell Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Mobile Terminal and Control Method Thereof
  • Brief Description: The ’586 patent discloses a method for using one authenticated mobile terminal to unlock a second mobile terminal via short-range wireless communication when the two devices are in proximity. The purported novelty resides in a specific sequence of operations required before the second terminal is unlocked.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kirkup - Claims 1, 6-7, 9, 13-14, 16, and 18 are obvious over Kirkup.

  • Prior Art Relied Upon: Kirkup (Application # 2006/0041746).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kirkup, which was not cited during prosecution, teaches every element of the challenged claims. Kirkup discloses a system where a handheld electronic device (the claimed "mobile terminal") unlocks a personal computer or laptop (the claimed "another mobile terminal") using a short-range wireless link like Bluetooth. Petitioner asserted that Kirkup’s authentication process directly maps onto the three ordered conditions that were added to the claims of the ’586 patent to overcome prior art rejections.
    • Specifically, Kirkup’s process begins when both the handheld device and the PC are in a locked state and within communication range (the first condition). After a user initiates an action on the locked PC (e.g., moving the mouse), the PC automatically establishes a short-range wireless communication with the handheld device to request an authentication code (the second condition). In response, the handheld device prompts the user for a PIN; upon receiving this "authentication input," the handheld device unlocks itself and transmits the authentication code to unlock the PC (the third condition). Petitioner contended this sequence is identical to that required by the independent claims.
    • Dependent claims reciting Bluetooth communication (claims 7, 14) or storing information for multiple terminals (claims 6, 13, 18) were also allegedly taught by Kirkup, which explicitly mentions Bluetooth and describes scenarios involving multiple user devices requiring authentication.

Ground 2: Obviousness over Kirkup and de la Huerga - Claims 2, 6, 10, 13, 17, and 18 are obvious over Kirkup in view of de la Huerga.

  • Prior Art Relied Upon: Kirkup (Application # 2006/0041746) and de la Huerga (Patent 7,941,534).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground combined Kirkup's core authentication system with teachings from de la Huerga to render obvious claims requiring biometric authentication and storing information for multiple terminals. For claims requiring biometrics (claims 2, 10, 17), Petitioner argued that de la Huerga explicitly taught using a mobile device (e.g., a cell phone) with a biometric sensor, such as a fingerprint reader, to authenticate a user. This biometric authentication could be used to switch the device from a locked to an unlocked state. For claims requiring the system to support "two or more another mobile terminals" (claims 6, 13, 18), Petitioner pointed to de la Huerga’s disclosure that a security device can be preprogrammed with a list of trusted computer system identifiers to unlock a plurality of devices.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine these references for two primary reasons. First, a POSITA would replace Kirkup’s PIN-based authentication with de la Huerga’s biometric authentication to improve security and convenience, which was a well-known design choice at the time. Second, a POSITA would incorporate de la Huerga’s multi-device unlocking capability into Kirkup’s system to increase its functionality and address the known problem of managing authentication across a user's multiple devices, a problem noted in Kirkup's own background section.
    • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success. The combination involved the simple substitution of one known authentication element (biometrics) for another (PIN) and the application of a known technique (storing multiple identifiers for multi-device access) to a known system, both of which would yield predictable and improved results.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §314(a), asserting that the parallel district court litigation involving the ’586 patent was in its earliest stages. At the time of filing, no preliminary injunction motion had been filed, no Markman hearing had been held, and the court had not invested any significant time in analyzing prior art invalidity issues. Petitioner contended that denying institution would undermine the statutorily prescribed one-year window for filing an IPR following service of a complaint.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 6-7, 9-10, 13-14, and 16-18 of the ’586 patent as unpatentable.