AliveCor Inc v. Apple Inc

1. Case Identification

• Case #: IPR2023-00949
• Patent #: 10,866,619
• Filed: June 7, 2023
• Petitioner(s): AliveCor, Inc.
• Patent Owner(s): Apple Inc.
• Challenged Claims: 11-20

2. Patent Overview

• Title: Electronic Device with Biometric Button Assembly
• Brief Description: The ’619 patent discloses an electronic device featuring a button assembly with a biometric sensor. The invention purports to solve issues with sealing such buttons against liquid and contaminants by using a flexible conduit that cooperates with a seal to restrict ingress.

3. Grounds for Unpatentability

Ground 1: Claims 11, 14, 16, and 19 are anticipated by and/or obvious 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 mechanical button and fingerprint sensor, teaches every limitation of the challenged claims. The central argument focused on claim 11’s requirement of a flexible conduit portion being "sandwiched" between a seal and a surface. Petitioner asserted that Kim’s Figure 10(b) explicitly shows a flexible printed circuit board (the claimed "flexible conduit") positioned between a "sealing rubber" (the claimed "seal") and the device "housing" (a "surface of the opening"). Kim was also alleged to disclose a retainer (the "support fixture") defining a sealing surface, as required by independent claims 11 and 16.
  • Motivation to Combine (for §103 grounds): For any limitations not explicitly disclosed, Petitioner argued a person of ordinary skill in the art (POSITA) would have found them obvious based on Kim's teachings. For instance, sandwiching the flexible conduit with the seal was presented as a known and logical way to protect ingress points and efficiently use limited space in a mobile device.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing any minor modifications, as they involved applying conventional sealing and electronic assembly techniques to the structure disclosed in Kim.

Ground 2: Claims 11-14, 16-17, and 19-20 are obvious 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 printed circuit board passing through a passageway and pressed against a seal. However, Jung does not expressly detail the structure of its mentioned "fingerprint sensor." Meyers was argued to supply this missing element, as it explicitly discloses a complete "biometric sensor stack structure," including an input member, a fingerprint sensor, a retainer ("button support plate"), and a compressible dome switch. The combination of Jung's waterproofing and flexible conduit arrangement with Meyers's detailed button assembly was alleged to teach all limitations of the challenged claims, including the "sandwiched" conduit.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references because they address the same technical problem: incorporating sealed button structures into mobile devices. A POSITA looking to implement the biometric sensor mentioned in Jung would have naturally looked to a reference like Meyers, which details the specific structure of such a sensor assembly. Implementing Meyers's sensor into Jung's waterproof structure was presented as a known technique to improve a similar device.
  • Expectation of Success (for §103 grounds): Success would be expected because the combination involved integrating a known type of sensor assembly (Meyers) into a compatible waterproof key structure (Jung), which is a predictable engineering task.

Ground 3: Claims 11-17 and 19 are anticipated by and/or obvious over Chang.

• 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 an improved waterproof key module, teaches all challenged claim limitations. Chang describes a key module with a fingerprint sensor, a flexible conductive member, and sealing members. Petitioner asserted that Chang’s figures and description show that a sealing member is interposed between a retainer ("lower plate 470") and the fingerprint sensor. This arrangement results in the flexible conductive member being "sandwiched" between the seal and the sealing surface of the retainer, directly mapping to the key limitation of independent claim 11. Chang was also argued to disclose a compressible layer ("elastic member 800") and other features of the dependent claims.
  • Motivation to Combine (for §103 grounds): To the extent any limitation was not explicitly disclosed, Petitioner argued it would have been obvious to a POSITA. For example, a POSITA would understand that Chang's disclosed button assembly, though depicted in a ring shape, could be modified to fit different device designs, and such modifications would lead to the claimed "sandwiched" configuration to ensure a sufficient seal around the electrical connection points.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in making any minor modifications to Chang's design, as it would involve routine design choices to optimize sealing for a specific device form factor.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2) over Kim for claims 11-14 and 16-20, which relied on the same core teachings of Kim from Ground 1 while presenting alternative obviousness rationales for certain dependent claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. It was asserted that the parallel district court litigation was in its earliest stages, with no trial date set and minimal discovery conducted. Petitioner also stipulated that if the IPR is instituted, it will withdraw any identical invalidity grounds from the district court case, eliminating concerns of overlapping issues. Finally, Petitioner contended that the grounds presented are highly meritorious and plainly lead to the conclusion that the challenged claims are unpatentable.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 11-20 of Patent 10,866,619 as unpatentable.