The Apple logo at an Apple store in Brooklyn, New York, USA REUTERS / Brendan McDermid
(Reuters) – The U.S. Court of Appeals for the Federal Circuit ruled Monday that Apple Inc.’s Patent and Appeals Board won the invalidation of 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 to a three-judge unanimous court rejecting Apple’s claims that the two valid patents were obvious based on previous 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 all three patents with “home buttons” or “home keys” that activate the devices and use fingerprints to authenticate users simultaneously, in the cases that were suspended for PTAB proceedings.
Firstface’s lawyer, Christopher Granaghan, of Nelson Bumgardner Conroy, declined to comment. Apple and its attorney Douglas Hallward-Driemeier of Ropes & Gray did not immediately respond to a request for comment.
Chen, along with circuit judges Timothy Dyk and Richard Linn, claimed that parts of one of Firstface’s patents were obviously invalid.
Firstface argued that the PTAB should not have decided that a normal craftsman would have been motivated to combine two previous patent applications cited by Apple to create Firstface’s “activation button.”
But Chen said the board correctly found a “clear link” between the two references to the prior art, which revealed a user’s authentication while waking up or turning on a device, which would have inspired a normal craftsman to combine it. the.
In its appeal, Apple said the board misinterpreted some parts of two other “activation button” patents it had argued unsuccessfully. Apple criticized the board’s interpretation of the patented invention’s ability to “perform” authentications “without additional user input.” Apple argued that this meant that “when the activation button is pressed, the first or second function should only be started without additional user input, allowing additional user input” before to complete the function.
Chen said the board properly ruled Firstface because the ordinary meaning of “acting” requires “full performance” with no further user input and “something more than“ starting. ”There was also nothing in the patent that indicated that “acting” and “Starting” should be treated interchangeably, Chen said.
Chen also rejected Apple’s argument that “perform” should mean “start” to avoid “improperly” reading a hands-free feature, such as Apple’s Siri, which Firstface had disclosed in patents as a form. to use technology. The feature supports the interpretation of the board, as it only switches the device to hands-free mode and does not require any other 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 by Nelson Bumgardner Conroy