Case: 20-2347 Document: 40 Page: 1 Filed: 09/13/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FIRSTFACE CO., LTD.,
Appellant
v.
APPLE INC., SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
Appellees
______________________
2020-2347
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00612.
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Decided: September 13, 2021
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CHRISTOPHER GRANAGHAN, Nelson Bumgardner PC,
Fort Worth, TX, argued for appellant. Also represented by
EDWARD R. NELSON, III.
DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP,
Washington, DC, argued for appellees. Also represented
by CHRISTOPHER M. BONNY, East Palo Alto, CA; SAMUEL
LAWRENCE BRENNER, Boston, MA; GABRIELLE E. HIGGINS,
San Francisco, CA.
Case: 20-2347 Document: 40 Page: 2 Filed: 09/13/2021
2 FIRSTFACE CO., LTD. v. APPLE INC.
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Before DYK, LINN, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Firstface Co., Ltd. appeals an inter partes review deci-
sion of the Patent Trial and Appeal Board (Board) finding
claims 1, 8, 9, and 15 of U.S. Patent No. 8,831,557 (’557
patent) unpatentable as obvious on two separate grounds:
(1) Fadell 1 in view of an iOS User Guide (iOS) 2 and
Gagneraud, 3 and (2) Goertz 4 in view of Herfet. 5 Apple Inc.
v. Firstface Co., IPR2019-00612, 2020 Pat. App. LEXIS
12613 (P.T.A.B. July 31, 2020). We affirm the Board’s de-
cision on the first ground and, accordingly, need not and do
not address the second challenged ground.
The only issue as to the first ground is whether sub-
stantial evidence supports the Board’s finding of a motiva-
tion to combine Fadell with Gagneraud to create a mobile
phone in which, upon pressing an activation button, the
phone’s display switches from an inactive state to an active
state while a user is simultaneously authenticated.
The Board correctly found an express motivation to
combine because of the clear linkage between the refer-
ences’ teachings: Fadell identifies a goal of “quickly and
seamlessly” authenticating a user when a user “turns on,
1 U.S. Patent Application Publication No.
2009/0083850.
2 “iPhone User Guide: For iPhone OS 3.1 Software.”
J.A. 835.
3 International Patent Application Publication No.
WO 2010/126504.
4 U.S. Patent Application Publication No.
2010/0017872.
5 German Patent Application Publication No. DE
19710546.
Case: 20-2347 Document: 40 Page: 3 Filed: 09/13/2021
FIRSTFACE CO., LTD. v. APPLE INC. 3
unlocks or wakes the device,” and Gagneraud identifies a
similar benefit of saving time and increasing user friendli-
ness by simultaneously authenticating the user when pow-
ering on the device. J.A. 34–36; Fadell ¶ 4; Gagneraud ¶
58. Further, the Board reasonably found that “waking”
(the pertinent action of Fadell in view of iOS) and “turning
on” (Gagneraud) a device are analogous initial interaction
situations by virtue of the fact Fadell refers to them to-
gether. J.A. 34 (citing Fadell ¶ 4; J.A. 2275 ¶ 35). The
Board concluded, therefore, that a skilled artisan would
have been led to implement Gagneraud’s simultaneous per-
formance of authentication in waking the device of Fadell.
J.A. 34–36. That conclusion is supported by substantial
evidence. Brown & Williamson Tobacco Corp. v. Philip
Morris, Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (“This
evidence [of a motivation to combine] may flow from the
prior art references themselves . . . .”).
Firstface’s contrary arguments lack merit. There is
nothing conclusory about the Board’s finding of an express
motivation to combine based on such “clear and particular”
disclosures in Fadell and Gagneraud. Id. Nor are we per-
suaded by Firstface’s other arguments, either that Fadell
and Gagneraud involve approaches of authentication so
completely independent that would preclude their combi-
nation or that activating Fadell’s display in a simultaneous
manner as taught by Gagneraud would alter a fundamen-
tal operation of Fadell, for reasons thoroughly discussed by
the Board. J.A. 37–39.
For the foregoing reasons, we affirm the Board’s deci-
sion finding that independent claims 1 and 9 and their de-
pendent claims 8 and 15 would have been obvious over
Fadell in view of iOS and Gagneraud.
AFFIRMED
Firstface Co., Ltd. v. Apple Inc.
Combined Opinion