Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2021-00362
• Patent #: Patent 8,982,086
• Filed: December 23, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Information Processing Apparatus
• Brief Description: The ’086 patent relates to an information processing apparatus with a touch panel for user authentication. The system operates in a registering mode and an identification mode, and purports to distinguish between user input made with a finger pad versus an end of a finger to identify the user.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-4 over Bayram

• Prior Art Relied Upon: Bayram (Patent 8,941,466).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bayram taught all limitations of the challenged claims. Bayram disclosed an information processing apparatus (e.g., a mobile device) with a touchscreen that authenticates a user based on a "signature" input. This system operated in a "registration phase" (the claimed "registering mode") and an "authentication phase" (the claimed "identification mode"). Petitioner asserted that Bayram’s disclosure of "one or more processors" satisfied the "first controller" and "second controller" limitations, with one processor controlling the operating modes and another executing a specified process (e.g., unlocking the device) when an input signature matched a stored signature. The memory limitation was met by Bayram's disclosure of storing signature data. Critically, for the limitation requiring separate modes for inputting via a finger pad and a finger end, Petitioner contended that Bayram’s teaching of capturing "non-centroid information" such as the shape, size, and orientation of a user's finger touch during a signature gesture rendered this distinction obvious. A POSITA would have understood that different parts of the finger, like the pad versus the tip, naturally produce different touch shapes, sizes, and orientations, which Bayram's system was already configured to detect and record.
  • Motivation to Combine (for §103 grounds): Not applicable for a single-reference ground.
  • Expectation of Success (for §103 grounds): Not applicable for a single-reference ground.

Ground 2: Obviousness of Claims 1-4 over Bayram in view of Rosenberg

• Prior Art Relied Upon: Bayram (Patent 8,941,466) and Rosenberg (Application # 2007/0097096).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that to the extent Bayram was deemed not to explicitly teach distinguishing between finger-pad and finger-end inputs, Rosenberg supplied this teaching. Rosenberg explicitly disclosed a system for a touchscreen device that determines whether a user interaction is a "finger-tip interaction type" or a "finger-pad interaction type." Rosenberg taught that this determination is based on analyzing the size, shape, and orientation of the finger's contact area—the same "non-centroid" parameters that Bayram disclosed for collection as part of its authentication process.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Rosenberg's explicit technique for distinguishing touch types with Bayram's authentication system to improve its functionality. Since Bayram already collected the necessary data (touch area, shape, orientation), implementing Rosenberg's method would have been a simple and logical step to enhance the biometric security of Bayram's device by adding another layer of user-specific data. The combination involved applying a known technique (Rosenberg) to a similar, known device (Bayram) to yield a predictable result.
  • Expectation of Success (for §103 grounds): Petitioner asserted a high expectation of success because the combination would primarily involve software modifications using data already collected by Bayram’s system, requiring no significant hardware changes.

4. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments for why the Board should not exercise discretionary denial under 35 U.S.C. §325(d) or §314(a).
• §325(d) Argument: Petitioner argued that denial would be improper because Bayram and Rosenberg were never substantively considered during the original examination of the ’086 patent. Although the references were cited in an Information Disclosure Statement during the prosecution of a later-filed reissue application, they were never used as the basis for a rejection by the examiner. Therefore, the Patent Office had not previously considered the specific invalidity arguments presented in the petition.
• §314(a) (Fintiv) Argument: Petitioner argued that discretionary denial under Fintiv was unwarranted. The only relevant parallel proceeding with authority to cancel claims was a district court case, which was subject to a stay and had no scheduled trial date that would precede the Board's Final Written Decision (FWD). Petitioner contended that a co-pending ITC investigation was irrelevant for Fintiv analysis because the ITC lacks the authority to invalidate a patent, meaning an IPR would not be duplicative. The strong merits of the petition and the goal of promoting patent system integrity were argued to heavily favor institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 of Patent 8,982,086 as unpatentable.