PTAB
IPR2023-00948
AliveCor Inc v. Apple Inc
1. Case Identification
- Case #: IPR2023-00948
- Patent #: 10,866,619
- Filed: June 7, 2023
- Petitioner(s): AliveCor, Inc.
- Patent Owner(s): Apple Inc.
- Challenged Claims: 1-10
2. Patent Overview
- Title: Biometric Button Assembly
- Brief Description: The ’619 patent discloses an electronic device with a biometric button assembly. The invention purports to solve issues with prior art buttons by incorporating a biometric sensor and using a flexible conduit that cooperates with a seal to restrict the ingress of contaminants into the device's enclosure.
3. Grounds for Unpatentability
Ground 1: Claims 1, 5, 9, and 10 are unpatentable under 35 U.S.C. §§102 and/or 103 over Kim
- Prior Art Relied Upon: Kim (Patent 10,620,828).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kim, which discloses an electronic device with a combined button including a fingerprint sensor, anticipates or renders obvious the key limitations of claim 1. Specifically, Kim’s flexible printed circuit board (“PCB”) was mapped to the claimed “flexible conduit,” and its “sealing rubber 722” was mapped to the claimed “seal.” Petitioner contended that Kim’s Figure 10(b) shows the flexible PCB “sandwiched” between the sealing rubber and the device housing (“enclosure”), directly teaching the dispositive limitation of claim 1[1.f]. For dependent claims, Petitioner asserted Kim’s disclosure of a flexible PCB passing through the sealing rubber meets claim 5, and its teachings of a “capacitive fingerprint sensor” satisfy the limitations of claims 9 and 10.
- Motivation to Combine (for §103 grounds): For any limitations argued as not explicitly disclosed, Petitioner asserted a person of ordinary skill in the art (POSITA) would have been motivated to modify Kim’s design based on general knowledge. For instance, a POSITA would find it obvious to seal button assemblies in mobile devices to prevent moisture ingress and would use known techniques like sandwiching a flexible conduit between a seal and an enclosure to protect ingress points in a space-efficient manner.
- Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have a reasonable expectation of success because the modifications involved applying well-known sealing techniques to known electronic components, leading to the predictable result of a sealed biometric button.
Ground 2: Claims 1, and 3-10 are obvious under 35 U.S.C. §103 over Jung in view of Meyers
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 “key-waterproof structure” for an electronic device, including a flexible conduit and a seal, but does not detail the biometric sensor assembly. Meyers was argued to supply this missing detail by expressly disclosing the structure of a complete fingerprint sensor button assembly, including an input member, a biometric sensor positioned below it, and a sealing surface. The combination of Jung’s waterproofing technology with Meyers’ biometric button assembly was alleged to render the challenged claims obvious.
- Motivation to Combine: Petitioner argued a POSITA would combine Jung and Meyers because both references are in the same technical field of button structures for mobile devices. A POSITA seeking to implement the biometric sensor functionality mentioned in Jung would naturally look to a reference like Meyers, which explicitly teaches the structure of such an assembly. The motivation was to improve Jung’s device by incorporating a known, functional biometric button from Meyers to achieve the predictable result of a waterproof, biometric-sensing button.
- Expectation of Success: A POSITA would have a high expectation of success in combining the references, as it involved the routine integration of a known type of button assembly (Meyers) into a device with a known waterproofing structure (Jung).
Additional Grounds: Petitioner asserted additional challenges, including that claims 1-10 are obvious over Kim (Ground 2, building on Ground 1) and that claims 1-2, 6, and 9 are unpatentable under §§102 and/or 103 over Chang (Patent 10,133,910). These grounds relied on similar arguments regarding the predictability of sealing biometric buttons in electronic devices.
4. Key Claim Construction Positions
- "biometric characteristic": Petitioner proposed this term be construed to mean "a human characteristic that is so distinctive and measureable that a particular human individual may be identified." This construction was based on definitional language ("as used herein") in the ’619 patent’s specification. Petitioner argued this construction is critical because the prior art references, which disclose fingerprint sensors, meet this definition, thereby satisfying a key element of the challenged claims.
5. Arguments Regarding Discretionary Denial
- Petitioner argued that discretionary denial under Fintiv would be inappropriate. The core reasons asserted were:
- The parallel district court litigation was in its earliest stages, with no trial date set and minimal discovery having occurred. The median time-to-trial in the district far exceeds the statutory deadline for a Final Written Decision in the IPR.
- Petitioner stipulated that, if the IPR is instituted, it will withdraw any identical or substantially similar invalidity grounds from the district court litigation, thereby eliminating concerns about duplicative efforts and inconsistent results.
- The prior art asserted in the petition was not considered during the original prosecution of the ’619 patent, suggesting the Board would benefit from a fresh review of patentability.
6. Relief Requested
- Petitioner requests the institution of an inter partes review and the cancellation of claims 1-10 of the ’619 patent as unpatentable.