The Apple logo at an Apple Store in Brooklyn, New York, U.S. REUTERS/Brendan McDermid
The U.S. Court of Appeals for the Federal Circuit on Monday affirmed Apple Inc's Patent Trial and Appeal Board win invalidating parts of a fingerprint-authentication patent owned by Korean patent owner Firstface Co Ltd, but also upheld two other Firstface patents that Apple had challenged.
U.S. Circuit Judge Raymond Chen wrote for a unanimous three-judge panel rejecting Apple's claims that the two valid patents were obvious based on earlier disclosures, but agreeing with Apple that a third patent was obvious.
Firstface sued Apple and Samsung in 2018 in San Francisco federal court for infringing the three patents with "home buttons" or "home keys" that wake devices and use fingerprints to authenticate users simultaneously, in cases that were stayed for the PTAB proceedings.
Firstface's attorney Christopher Granaghan of Nelson Bumgardner Conroy declined to comment. Apple and its attorney Douglas Hallward-Driemeier of Ropes & Gray didn't immediately respond to a request for comment.
Chen, joined by Circuit Judges Timothy Dyk and Richard Linn, affirmed that parts of one of the Firstface patents were invalid as obvious.
Firstface argued that the PTAB shouldn't have decided that an ordinary artisan would have been motivated to combine two earlier patent applications cited by Apple to create Firstface's "activation button."
But Chen said the board correctly found a "clear linkage" between the two prior art references, which both disclosed authenticating a user while waking or powering on a device, that would have inspired an ordinary artisan to combine them.
In its appeal, Apple said the board misconstrued parts of two other "activation button" patents that it had unsuccessfully argued were obvious. Apple took issue with the board's interpretation of the patented invention's ability to "perform" authentication "without additional user input." Apple argued this meant that "when the activation button is pressed, the first or second function only must be initiated without additional user input, allowing for additional user input" before the function is completed.
Chen said the board properly ruled for Firstface because the ordinary meaning of "performing" requires "full performance" without more user input, and "something more than 'initiating.'" There was also nothing in the patent itself indicating that "perform" and "initiate" should be treated interchangeably, Chen said.
Chen also rejected Apple's argument that "perform" had to mean "initiate" to avoid improperly "reading out" a hands-free function – like Apple's Siri – that Firstface had disclosed in the patents as a way that the technology would be used. The function is compatible with the board's interpretation because it only switches the device into hands-free mode and doesn't require further user input, Chen said.
The cases are Apple Inc v. Firstface Co Ltd, U.S. Court of Appeals for the Federal Circuit, No. 21-1001, and Firstface Co v. Apple Inc, U.S. Court of Appeals for the Federal Circuit, No. 20-2347.
For Apple: Douglas Hallward-Driemeier of Ropes & Gray
For Firstface: Christopher Granaghan of Nelson Bumgardner Conroy
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