Firstface Co., Ltd. v. Apple, Inc.

Background

Firstface asserted claims 11–14 and 18 of U.S. Patent No. 9,633,373 and claims 10–13 and 15–17 of U.S. Patent No. 9,779,419 against Apple. The patents share a specification and describe a mobile communication terminal that can activate its display and authenticate a user at the same time. The ’419 patent’s claims specifically address fingerprint recognition and authentication as functions of an activation button.

The parties asked the court to determine the meaning of eight phrases in the asserted claims. During a technology tutorial, Apple also raised an issue about Firstface’s earlier positions before the Patent Trial and Appeal Board. The court allowed supplemental briefs on that issue, but struck an almost 900-page filing by Apple because it went far beyond the permitted scope and length. The court then allowed the parties to file the contemplated ten-page submissions.

Legal standard

The court explained that claim construction—the process of determining what patent-claim language means—starts with the claim language and considers the meaning that a person of ordinary skill in the relevant technology would have understood at the time of the invention. The court primarily considers the patent claims, the specification, and, when relevant, the prosecution history. A patent specification may expressly define a claim term, and may also redefine or narrow a term by implication.

The court’s constructions

1. “Inactive state” and “while the touch screen display is turned off.” The court adopted the specification’s definition: “a state in which the device is communicable but a display screen is turned off.” The court rejected Firstface’s proposed wording because it differed from the specification’s definition, and rejected Apple’s proposal that the device be in a state where it was not receiving power. The court explained that the device remains on and communicable in the inactive state, even though its display is off.

2. “Active state.” The court construed this phrase to mean “a state in which the display screen of the device is turned on,” following the specification’s express definition.

3. “Activation button.” The court construed this phrase to mean “a means for switching the device from the inactive state to the active state.” The court rejected Apple’s proposed requirement that the button be a depressible mechanical component. The court stated that the activation button could include a software-based button and did not need to operate while the terminal was completely turned off. The court distinguished the activation button from an “ON/OFF button,” which the specification described as capable of completely turning the terminal on or off.

4. “Pressing of the activation button” and “an activation button for pressing.” The court gave these phrases their plain and ordinary meaning. It rejected Apple’s proposal that pressing necessarily means moving the button in response to pressure because Apple did not identify support for that special definition in the specification.

5. “Fingerprint recognition.” The court construed this phrase to mean “process whereby a detected fingerprint is compared with a pre-stored fingerprint, including the steps of detecting and extracting a fingerprint.” The court concluded that recognition was not limited to the comparison step because a fingerprint must first be detected and extracted before it can be compared with stored information.

6. “Fingerprint authentication.” The court construed this phrase to mean “process whereby current user is authenticated as a true user if the two fingerprints match.” The court agreed with Apple that fingerprint authentication itself is the authentication step when the fingerprints match, but explained that fingerprint recognition is a necessary earlier step whose results are used for authentication.

7. The phrase concerning a one-time pressing of the activation button and a long press. The court gave the phrase its plain and ordinary meaning. It rejected Apple’s proposed insertion of the word “instead,” which would have treated the functions performed on a regular press and a long press as mutually exclusive. The court found no sufficient basis in the specification or prosecution history to prevent both functions from occurring during a long press.

8. The phrase concerning performing another function when the one-time pressing is longer than a reference period. Because the parties agreed that this phrase should be construed consistently with the preceding long-press phrase, the court also gave it its plain and ordinary meaning and rejected Apple’s proposed addition of “instead of.”

Disposition

The court entered the claim constructions described above and stated, “IT IS SO ORDERED.” The opinion is a claim construction order; it does not state a final ruling on whether Apple infringed the patents.