Samsung Electronics Co Ltd v. Maxell Ltd

1. Case Identification

• Case #: IPR2024-00828
• Patent #: 8,982,086
• Filed: April 26, 2024
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-2, 4-7, and 9-14

2. Patent Overview

• Title: User Identification via Differentiated Finger Touches
• Brief Description: The ’086 patent is directed to an information processing apparatus with a touch panel that identifies a user by distinguishing between different types of finger contacts, such as a "finger pad input" and a "finger tip input." This touch-type information can be used in combination with other inputs to form a password for unlocking the device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rogers and Rosenberg

• Claims: 1-2 and 4-7 are obvious over Rogers in view of Rosenberg.
• Prior Art Relied Upon: Rogers (Patent 8,683,582) and Rosenberg (Application # 2007/0097096).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rogers taught a graphical passcode system on a touch-sensitive device that measures various parameters of a user's touch, including "contact area," to authenticate a user. This system included both a registration mode to store a template passcode and an identification mode to compare a subsequent input against the template, thereby disclosing most limitations of claim 1. Petitioner asserted Rosenberg supplied the missing element: explicitly distinguishing between different types of finger touches. Rosenberg taught a system that could differentiate between a "finger-tip interaction" and a "finger-pad interaction" based on the size, shape, and orientation of the contact area.
  • Motivation to Combine: A POSITA would combine Rosenberg’s finger-differentiation technique with Rogers’ graphical passcode system to improve its functionality and convenience. Rogers already contemplated using contact area to distinguish inputs (e.g., a large fingertip vs. a small stylus). A POSITA would recognize that substituting the inconvenient stylus with Rosenberg's more "natural and intuitive" finger pad/tip distinction was a simple and obvious improvement. This combination represented applying a known technique (Rosenberg's) to a similar device (Rogers') to yield predictable results.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Both references operate in the same technical field of touch-screen inputs and teach calibration or "training" modes, making their features compatible. The modification was argued to be a simple substitution of known elements.

Ground 2: Obviousness over Rogers, Rosenberg, and Miyazawa

• Claims: 9-14 are obvious over the combination of Rogers, Rosenberg, and Miyazawa.

• Prior Art Relied Upon: Rogers (Patent 8,683,582), Rosenberg (Application # 2007/0097096), and Miyazawa (Patent 8,633,909).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that claims 9-14 added limitations requiring the system to execute specific operations like "tapping, dragging, flicking, and pinching." The base combination of Rogers and Rosenberg already disclosed a touch-input authentication system capable of recognizing basic touches, swipes, and taps as part of a graphical passcode. Petitioner argued Miyazawa explicitly taught a touch-panel apparatus capable of recognizing the specific gestures of dragging, flicking, and pinching (pinch-in/pinch-out), and distinguishing between them based on parameters like duration and movement of the touch.
  • Motivation to Combine: A POSITA would be motivated to integrate the specific gesture recognition capabilities of Miyazawa into the graphical passcode system of Rogers/Rosenberg. All three references concern touch-input technology and are analogous art. Incorporating a wider variety of recognized gestures would improve the robustness and complexity of the graphical passcodes, which was a stated goal of Rogers. A POSITA would view this as a simple substitution of known gesture-recognition techniques to enhance an existing system.
  • Expectation of Success: The combination would have been successful because the gesture operations described in Miyazawa were argued to be identical to those recited in the ’086 patent. Implementing these known gestures on the touch-surface device of Rogers/Rosenberg was a predictable and straightforward design choice.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 1-2 and 4-7 over Rogers and Rekimoto (Patent 8,477,115), and for claims 9-14 over Rogers, Rekimoto, and Miyazawa. These grounds relied on similar arguments, presenting Rekimoto as an alternative reference to Rosenberg for teaching the distinction between finger pad and fingertip touches based on contact area.

4. Key Claim Construction Positions

• "first information necessary for an identification of the user" and "second information relating to the identification of the user": Petitioner proposed that these terms must be construed to mean "information sufficient for the identification of the user, but not including information about a user's fingerprint."
• Basis for Construction: This proposed construction was based on prosecution history disclaimer. During the prosecution of a related reissue application (RE48,830), the Patent Owner attempted to add claims reciting "information corresponding to a fingerprint of the user." The Examiner rejected these claims for lacking written description support, and the Patent Owner subsequently canceled them. Petitioner argued this created a clear and unmistakable surrender of claim scope related to fingerprint information.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §314(a) and §325(d).
• Under §314(a) (addressing Fintiv factors), Petitioner contended the petition presented "compelling merits" of unpatentability, weighing against denial.
• Under §325(d), Petitioner argued the challenges were not the same or cumulative to art considered during prosecution. While Rogers was previously cited, it was not applied in the same manner, and the combinations with Rosenberg, Miyazawa, and Rekimoto were never considered.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4-7, and 9-14 of the ’086 patent as unpatentable.