Case: 21-1001 Document: 46 Page: 1 Filed: 09/13/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
FIRSTFACE CO., LTD.,
Appellee
______________________
2021-1001, 2021-1002
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00613, IPR2019-00614, IPR2019-01011, IPR2019-01012.
______________________
Decided: September 13, 2021
______________________
DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP,
Washington, DC, argued for appellant. Also represented
by CHRISTOPHER M. BONNY, East Palo Alto, CA; SAMUEL
LAWRENCE BRENNER, Boston, MA; GABRIELLE E. HIGGINS,
San Francisco, CA.
CHRISTOPHER GRANAGHAN, Nelson Bumgardner PC,
Fort Worth, TX, argued for appellee. Also represented by
EDWARD R. NELSON, III.
______________________
Case: 21-1001 Document: 46 Page: 2 Filed: 09/13/2021
2 APPLE INC. v. FIRSTFACE CO., LTD.
Before DYK, LINN, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Apple Inc. appeals four inter partes review decisions of
the Patent Trial and Appeal Board (Board) finding that Ap-
ple did not meet its burden of proving claims 11–14 and 18
of U.S. Patent No. 9,633,373 (’373 patent) and claims 10–13
and 15–17 of U.S. Patent No. 9,779,419 (’419 patent) un-
patentable as obvious under 35 U.S.C. § 103(a). Apple Inc.
v. Firstface Co., IPR2019-00613, IPR2019-01011, 2020 Pat.
App. LEXIS 12595 (P.T.A.B. July 31, 2020); Apple Inc. v.
Firstface Co., IPR2019-00614, IPR2019-01012, 2020 Pat.
App. LEXIS 12655 (P.T.A.B. July 31, 2020). For the rea-
sons discussed, we affirm the Board’s decisions.
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 func-
tions to occur, such as fingerprint authentication, activat-
ing the camera, playing music, and a “hands-free function.”
Independent claim 11 of the ’373 patent recites in part:
11. A method of operating a mobile computing ter-
minal, the method comprises:
. . . the terminal having a first function and a sec-
ond function that are different from each other and
selected from the group consisting of fingerprint au-
thentication, activating the camera, playing music
and a hands-free function;
detecting one-time pressing of the activation but-
ton while the terminal is in an inactive state in
which the touch screen display is turned off;
in response to the one-time pressing, changing the
terminal from the inactive state to an active state
in which the touch screen display is turned on; and
in addition to changing to the active state, further
Case: 21-1001 Document: 46 Page: 3 Filed: 09/13/2021
APPLE INC. v. FIRSTFACE CO., LTD. 3
performing at least one of the first and second func-
tions without additional user input other than the
one-time pressing; . . . .
’373 patent col. 14 ll. 26–35 (emphases added); see also J.A.
283 (Certificate of Correction). Independent claim 10 of the
’419 patent includes similar limitations, but the most per-
tinent limitation recites: “in addition to changing to the
active state, further performing a fingerprint authentica-
tion function using fingerprint recognition without addi-
tional user input.” ’419 patent col. 14 ll. 29–31 (emphases
added).
Apple’s primary argument is a claim construction is-
sue. 1 “We review the Board’s ultimate claim constructions
de novo and its underlying factual determinations involv-
ing intrinsic evidence for substantial evidence.” Mayne
Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927
F.3d 1232, 1240 (Fed. Cir. 2019). According to Apple, the
claim term “performing” means nothing more than “initi-
ating.” In Apple’s view, the claim’s recitation of “perform-
ing . . . 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, allow-
ing for additional user input before the performance of that
function is completed. The Board rejected this proposed
construction and instead construed the claim to require the
full performance of the function without additional user
1 Because the claim construction issues and the spec-
ifications are the same for claim 11 of the ’373 patent and
claim 10 of the ’419 patent, our discussion focuses on claim
11 of the ’373 patent as representative. As the inter partes
petitions were filed after November 13, 2018, the Board ap-
plied the claim construction standard articulated in Phil-
lips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
in accordance with its regulation, 37 C.F.R. § 42.100(b).
J.A. 8.
Case: 21-1001 Document: 46 Page: 4 Filed: 09/13/2021
4 APPLE INC. v. FIRSTFACE CO., LTD.
input. J.A. 41–44.
We hold that the Board correctly construed the claims
according to the common and ordinary meaning of “per-
forming.” There is no serious dispute that, in general, “per-
forming” means doing something more than “initiating.”
Moreover, Apple has not shown that “perform” and “initi-
ate” are used interchangeably in the patent specification.
In addition, claim 11 specifically uses both terms, suggest-
ing that “perform” and “initiate” have different meanings.
’373 patent col. 14 ll. 51–54 (reciting “wherein at least one
of the first and second functions is initiated subsequent to
changing to the active state”); see also ’419 patent col. 14 ll.
61–65 (“initiating a hands-free operation of the terminal”).
Nor does the specification demand that “performance” be
re-understood to mean something akin to “initiation.”
Nothing in the specification shows that the patent is con-
cerned only with the problem of “eliminating multiple ini-
tiating steps,” which Apple argues is why performance
must mean initiation. Appellant Br. 39–41 (citing ’373 pa-
tent col. 1 ll. 34–35, col. 4 l. 51–col. 5 l.2, col. 6 ll. 66–67, col.
8 ll. 2–5, and corresponding portions of the ’419 patent).
The cited passages do not mention “initiation” and, further,
many of the passages that Apple characterizes as discuss-
ing initiation specifically refer to “performance.” Apple
also points to Firstface’s expert testimony that “the claims
of the ’373 patent are directed to using the activation but-
ton to turn on a touch screen display and to initiate addi-
tional functions (such as fingerprint authentication) in
response to a one-time pressing of the activation button.”
J.A. 2977 ¶ 75 (emphasis added). This statement appears
consistent with the fact that another part of claim 11 is di-
rected to “initiat[ion]” of a function. ’373 patent col. 14 ll.
51–54. The expert’s statement, however, does not show
that the claims must exclude the further requirement that
the plain language of the claims calls for: the full perfor-
mance of the function without additional user input upon
the one-time pressing of the activation button.
Case: 21-1001 Document: 46 Page: 5 Filed: 09/13/2021
APPLE INC. v. FIRSTFACE CO., LTD. 5
We also disagree that “perform” must be construed as
“initiate” to avoid improperly reading out claimed embodi-
ments. Appellant’s Br. 43. Apple focuses on the “hands-
free function,” which is one of the claimed options for the
“first or second functions.” Apple’s position is that because
the hands-free function necessarily involves a user input—
in the form of voice input or voice command—for the func-
tion to be completed, “performing . . . without additional
user input” can only mean that the function is initiated
without additional user input. However, the specification
describes the hands-free function in terms of switching the
device into the hands-free communication mode. ’373 pa-
tent col. 9 ll. 21–33 (“Mode Change During Drive”; “it is
possible to significantly reduce traffic accident risks by
switching the mode of the mobile communication terminal
100 . . . with only a simple operation of pressing the activa-
tion button 120 during driving”). This described “hands-
free function” does not necessarily include any subsequent
voice input. The specification, thus, is consistent with the
construction of the hands-free function argued by Firstface
and adopted by the Board. J.A. 44 (“the hands-free func-
tion could simply be the activation of a microphone”). And
the Board’s construction of “performing . . . without addi-
tional user input” does not read out an embodiment of the
claim.
Apple also argues that the specification does not sup-
port restricting additional user input during performance
of the claimed function, specifically in connection with the
fingerprint authentication function. Apple may be correct
that the specification does not describe a single user input
that both presses the activation button and scans a finger-
print. Indeed, Firstface’s response cites only a bare listing
of authentication methods without identifying an example
in which pressing a button both activates a display and au-
thenticates a user’s fingerprint. Appellee’s Br. 38 (citing
’373 patent col. 8 ll. 13–17). Nevertheless, this potential
§ 112 written description problem does not raise a strong
Case: 21-1001 Document: 46 Page: 6 Filed: 09/13/2021
6 APPLE INC. v. FIRSTFACE CO., LTD.
enough inference under the circumstances to persuade us
that “perform” carries some other meaning than its plain,
ordinary one in the context of the ’373 and ’419 patents.
Lastly, we reject Apple’s arguments that are based on
issue preclusion, the cross-appeal rule, or claim differenti-
ation. In these IPR proceedings, the Board had found claim
1 of the ’373 patent and claim 1 of the ’419 patent unpatent-
able based on certain claim constructions, and Firstface did
not appeal those portions of the decisions. But Apple’s pre-
clusion and cross-appeal arguments fail because claim 11
of the ’373 patent and claim 10 of the ’419 patent include a
key limitation that sets them apart from the held-un-
patentable claims—“without additional user input.” That
limitation drove the Board’s different constructions be-
tween the claims. J.A. 40–44; J.A. 175–79. Because “iden-
tity of issues” is lacking given this important difference
between the claims, issue preclusion and the cross-appeal
rule are inapplicable. And Apple’s claim differentiation ar-
gument fails because the Board did not base its construc-
tion of claim 11 on claim differentiation, but rather on the
principle that all words in a claim, including “without ad-
ditional user input,” should be given meaning. J.A. 43; see
also J.A. 178.
Finding that the Board correctly construed the claims
to require the relevant function to be fully performed with-
out additional user input, we turn to Apple’s secondary ar-
guments that, even accepting the construction, the Board
erred in not finding the claims obvious based on an iOS
User Guide (iOS) 2 and Griffin. 3 We reject both arguments.
With respect to iOS, we find that Apple failed to
2 “iPhone User Guide: For iPhone OS 3.1 Software.”
J.A. 835.
3 U.S. Patent Application Publication No.
2012/0133484.
Case: 21-1001 Document: 46 Page: 7 Filed: 09/13/2021
APPLE INC. v. FIRSTFACE CO., LTD. 7
preserve the argument it presents on appeal. Apple ar-
gues to us that iOS teaches a hands-free function that is
performed without additional user input because iOS dis-
closes Voice Control that activates a microphone when the
home button of the device is pressed. 4 Apple’s petition did
not identify this theory. See J.A. 360 (cross-referencing
J.A. 346, 352). Nor did Apple’s reply, and Apple does not
appear to have made the argument during the oral hear-
ing before the Board.
With respect to Griffin, the Board’s findings suffi-
ciently reject Apple’s argument that Griffin’s “single, con-
tinuous unlock action” in combination with Davis’s
fingerprint authentication meets the “without additional
user input” limitation. The Board found that “Griffin dis-
closes an unlock procedure that uses two user inputs.”
J.A. 45 (citing paragraph “32–25” of Griffin, which we as-
sume should read “32–35”). Paragraph 35 of Griffin
states that a “single, continuous unlock action is applied
to two input mechanisms.” Griffin ¶ 35. In other words,
even when a user unlocks the device with a single, contin-
uous unlock action, that action is considered by Griffin as
a two-input action by the user. During the oral hearing,
the Board questioned Apple regarding Griffin’s “single,
continuous unlock action” and pointed out that a “press-
ing and then a sliding on the display . . . is a different in-
put mechanism” and that the input mechanisms occur “in
different areas.” IPR2019-00613, Paper No. 26, pp. 14, 18
(P.T.A.B. May 22, 2020) (Consolidated Oral Hearing); see
Appellant Br. 61 (“Griffin’s disclosure of a single continu-
ous user action was also discussed extensively at the oral
hearing.”). When the Board reasonably found that
4 Apple’s iOS argument is made only with respect to
claim 11 of the ’373 patent because claim 10 of the ’419 pa-
tent specifically requires that “fingerprint authentication”
be the function performed “without additional user input.”
Case: 21-1001 Document: 46 Page: 8 Filed: 09/13/2021
8 APPLE INC. v. FIRSTFACE CO., LTD.
“Griffin discloses an unlock procedure that uses two user
inputs,” it rejected Apple’s “single, continuous unlock ac-
tion” argument, a finding that is supported by substantial
evidence. J.A. 45; In re Nuvasive, Inc., 842 F.3d 1376,
1379 (Fed. Cir. 2016) (“We review the PTAB’s factual de-
terminations for substantial evidence . . . .”). Because the
Board found that even the single, continuous unlock ac-
tion disclosed by Griffin is a two-input method, that fea-
ture cannot meet the “without additional user input”
limitation, which requires a single user action, i.e, “one-
time pressing of the activation button,” to both activate
the display and perform a function like fingerprint detec-
tion. Davis, which the Board found also “fails to disclose a
single user input that turns on a screen and authenticates
a fingerprint, but rather discloses the use of multiple user
inputs,” cannot cure Griffin’s deficiency. J.A. 45.
For the foregoing reasons, we affirm the Board’s deci-
sion finding independent claim 11 of the ’373 patent and
independent claim 10 of the ’419 patent, and their de-
pendent claims, were not shown to be unpatentable.
AFFIRMED