Apple gets mixed ruling in ‘identification’ patent dispute
Apple did not meet its burden of proving that two fingerprint authentication patents were invalid at the Patent Trial and Appeal Board (PTAB), according to the US Court of Appeals for the Federal Circuit.
In 2018, mobile tech company Firstface sued Apple for allegedly ripping off its patented methods for unlocking smartphone screens through a sensor-based user authentication method with the launch of its Touch ID in September 2012.
On Monday, September 13, the Federal Circuit upheld Apple’s PTAB victory that invalidated parts of a patent owned by the Korean company. In doing so, it dismissed Firstface’s appeal of the PTAB finding that claims 1, 8, 9, and 15 of US patent number 8,831,557 were unpatentable.
But the court also affirmed two other Firstface patents that Apple had challenged.
Apple had appealed the findings that it did not meet its burden of proving claims 11–14 and 18 of US patent number 9,633,373 and claims 10–13 and 15–17 of US patent number 9,779,419 unpatentable on the grounds of obviousness.
The ’373 patent is directed to a mobile terminal that includes an activation button for turning on a display. Pressing the activation button also causes certain functions to occur, such as fingerprint authentication, activating the camera, playing music, and a “hands-free function”.
The ’419 patent includes similar limitations, but further performs a fingerprint authentication function using fingerprint recognition without additional user input.
The definition of ‘performing’
Apple’s primary argument on appeal was based on a claim construction issue. According to Apple, the claim term “performing” means nothing more than “initiating”.
In Apple’s view, the claim’s recitation of “performing . . . without additional user input” means 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 performance of that function is completed”.
The PTAB rejected this proposed construction and instead construed the claim to require the full performance of the function without an additional user.
The Federal Circuit held that the board correctly construed the claims according to the common and ordinary meaning of “performing”.
Apple also argued that the specification did not support restricting additional user input during the performance of the claimed function, specifically in connection with the fingerprint authentication function.
But the court held that his potential written description problem “does not raise a strong enough inference under the circumstances to persuade that ‘perform’ carries some other meaning than its plain, ordinary one in the context of the ’373 and ’419 patents”.
The court proceeded to affirm the board’s decision finding independent claim 11 of the ’373 patent and independent claim 10 of the ’419 patent, and their dependent claims, were not shown to be unpatentable.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
