PTAB

IPR2023-00948

ALivecoR Inc v. Apple Inc

Title: Electronic Device with a Biometric Button Assembly
Brief Description: The ’619 patent relates to an electronic device featuring a biometric button assembly designed to be sealed against contaminants. The core of the disclosed invention is the use of a "flexible conduit" that cooperates with a seal to restrict the ingress of liquid and debris into the device's main enclosure.

Prior Art Relied Upon: Kim (Patent 10,620,828)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kim, which teaches an "Electronic Device Having Combined Button," discloses or renders obvious all limitations of the challenged claims. Petitioner asserted that Kim's device includes a button assembly with a fingerprint sensor, a flexible printed circuit board (PCB) that constitutes the claimed "flexible conduit," and a "sealing rubber" that functions as the claimed "seal." The petition maps Kim’s figures to show this flexible PCB is sandwiched between the seal and the device housing. For dependent claims, Petitioner argued that incorporating elements like a tactile dome switch, plunger, and retainer into Kim’s assembly would have been obvious modifications based on the general knowledge of a person of ordinary skill in the art (POSITA).
- Motivation to Combine (for obviousness elements): A POSITA would be motivated to incorporate well-known components like dome switches into Kim's assembly to provide tactile feedback and create a functional button, representing a predictable and common design choice for mobile devices.
- Expectation of Success: A POSITA would have a high expectation of success in making these modifications, as they involve the integration of standard, modular components commonly used in electronic device buttons to achieve their well-understood functions.

Prior Art Relied Upon: Jung (Application # 2016/0100499) and Meyers (Application # 2015/0071509).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Jung discloses a general mobile device with a "key-waterproof structure" but lacks specific details on its integrated biometric sensor. Meyers allegedly supplies these missing details by teaching a complete biometric sensor button assembly, including a fingerprint sensor, an input member, a dome switch, and sealing structures. Petitioner argued the combination of Jung's waterproofing methods with the specific button assembly from Meyers would result in the device claimed in the ’619 patent.
- Motivation to Combine: A POSITA would combine the references to implement a fully-functional, waterproof biometric button. The motivation was to improve Jung's waterproof device with the specific, known sensor technology disclosed in Meyers, as both references are directed to solving analogous problems in the same field of button assemblies for portable electronics.
- Expectation of Success: Success was reasonably expected because the combination involved integrating two known and compatible sub-systems—a waterproofing structure and a biometric sensor assembly—to achieve the predictable result of a sealed biometric button.

Prior Art Relied Upon: Chang (Patent 10,133,910).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Chang, which discloses an electronic device with a waterproof key module, anticipates or renders obvious the challenged claims. Chang allegedly discloses all key elements, including a "fingerprint recognizing member" (biometric sensor), "sealing members" (seal), a "flexible conductive member" (flexible conduit), and a dome switch. Petitioner's analysis, supported by annotated figures, asserted that Chang’s structure shows the flexible conduit sandwiched between a sealing member and a sealing surface of the button assembly, directly corresponding to the core limitation of claim 1.
- Motivation to Combine (for obviousness elements): To the extent any limitation was not explicitly disclosed, Petitioner argued a POSITA would have been motivated to arrange the components as claimed to achieve Chang's stated goals of a simple, improved waterproof structure and reliable key-click feel.
- Expectation of Success: A POSITA would have an expectation of success in implementing the claimed features, as it would involve applying Chang's own teachings for waterproofing and component assembly in a predictable manner.
Additional Grounds: Petitioner asserted a challenge to claims 1, 5, 9, and 10 under 35 U.S.C. §102 and/or §103 over Kim, which relied on the same core teachings as the broader obviousness ground over Kim presented above.

"biometric characteristic": Petitioner argued this term should be construed to mean "a human characteristic that is so distinctive and measureable that a particular human individual may be identified." This proposed construction is based on what Petitioner asserted is an explicit definition provided in the ’619 patent specification using the phrase "as used herein." This construction is central to Petitioner's arguments that prior art references teaching fingerprint sensors meet this claim limitation.

Petitioner argued that discretionary denial under Fintiv would be inappropriate. The core arguments were that the parallel district court case is in its infancy, with no trial date set and no significant litigation investment made by the parties. Petitioner further asserted that the trial date is highly unlikely to occur before a Final Written Decision could be issued by the Board. To mitigate concerns of overlapping issues, Petitioner stipulated that it would withdraw any identical invalidity grounds from the district court litigation if the IPR is instituted.

Petitioner requested institution of an inter partes review and cancellation of claims 1-10 of Patent 10,866,619 as unpatentable.