On 13 September 2021, Apple both won (and partly lost) a patent infringement lawsuit started by Firstface in 2018. This article will look at the details of the popular case from last year…
Firstface, established in 2006, is a certified Recruitment and Executive Search Company who launched an IP dispute in 2018 with multinational technology companies, Apple and Samsung.
The dispute began as the two giant tech corporations, Apple and Samsung, starting implementing fingerprint authorisation technology on their home buttons as a way of opening smart phones and other devices.
In 2021, a panel of judges unanimously rejected two of Apple’s claims, however they did agree that the third patent was obvious. Let’s delve further in to the details…
Who is Firstface?
Firstface is a mobile technology solutions firm based in South Korea. They began as an information technology start-up and are now focused on improving user interface and user experience.
The company specialises in smartphone interface software that provides users with an easy way to activate their mobile devices and are now well known as the business who successfully took on Apple in an IP dispute over home buttons and fingerprint authentication technology.
Firstface has many patents regarding smartphone technology with over 50 regarding advertisement displays and lock screens.
Who is Apple?
If you’ve never heard of Apple, you may have been living under a rock. This multinational American company sells electronics, software, and a range of online services to billions of consumers worldwide.
They are the highest earning tech company in the world, with over 518 stores and over 1.8 billion active devices.
How Did the Home Button IP Dispute Begin?
In 2018, Firstface filed a patent infringement lawsuit against Apple and Samsung for infringing on three separate U.S. patents regarding technology that uses fingerprint authentication to unlock a device.
They claimed that Samsung’s Galaxy S6 and Galaxy Tab S2 violated the patents along with all of Apples Touch ID products. Firstface claims that Apple’s iPhone 5, which came out in 2012, uses technology that infringes upon their patents.
Allegedly in 2011, Firstface registered a US patent using biometric sensor-based user authentication to unlock a device. Because of this patent, Firstface has taken action against companies like Apple, who have released products using this technology since.
Firstface also have a variety of patents on face, fingerprint, and iris recognition technology in Korea, China, Europe, and Japan. It is reported that they Apple a licencing deal, but it was rejected.
How Did Apple Respond to the Lawsuit?
In response, Apple claimed that the three patents were obviously based on previous revelations.
In January 2019, Apple filed an invalidation request for Firstface’s three patents however, this was rejected by the judges.
Following this, Apple requested that Firstfaces claims were invalidated, but this was also rejected.
How Did Apple Win?
Apple claimed that the three patents were ‘obvious’, but only one was accepted.
U.S. Circuit Judge Raymond Chen alongside Judges Timothy Dyk and Richard Linn agreed that there was a ‘clear linkage’ between two previous patent applications that could have inspired an ‘ordinary craftsman’ to make Firstface’s activation button.
Despite disagreement from Firstface, both previously recognised patents showed references to user authentication while they turned on a device. The judges maintained that this information would have provided the motivation for many artisans to have combined this technology.
Thus, making Firstface’s claim that Apple infringed on their patent obsolete, as the technology could have plausibly been produced with no knowledge of their patent.
How did Apple Lose?
Despite the judge’s ruling in Apple’s favour for one of the Firstface patents, the other two were unanimously upheld. Apple had claimed that, as previously discussed, both patents were ‘obvious’ based on information that had been disclosed before the Firstface patents were filed.
The judges rejected these allegations, and Apple made an appeal. They claimed the board had misunderstood sections of patents involving the activation button, arguing again that these patents were in fact, ‘obvious’.
Apples Appeal
Within Apples appeal there were a few key points of interest where they disagreed with the board’s interpretation of other patents regarding activation buttons, which Apple was trying to use to back up their argument.
The activation button’s ability to ‘perform’ authentication with no ‘additional user input’, was interpreted by the board as meaning that it does not need any additional input from the user to perform correctly.
They stated that this was because the traditional meaning of performing required the ‘full performance’.
The judges also disagreed with Apple when they claimed that ‘initiate’ needed to be interchangeable with ‘perform’, in order to avoid ruling out hand’s free services like Siri.
In response, Chen pointed out that there was nothing in the patent that provided any indication that ‘perform’ and ‘initiate’ should be used interchangeably.
The Final Result of the IP Dispute…
Three years after starting an IP dispute over Apple’s use of fingerprint authorisation technology, Firstface achieved two out of three claims, with U.S. Circuit Judge Raymond Chen, Judges Timothy Dyk and Richard Linn rejecting Apples invalidation requests and appeal.
Apple is still using Touch ID on a variety of their products. For example, the iPads and MacBook Pros. However, for many of their main products, Apple are now favouring Face ID over fingerprint authentication.
Jung Jae-rak, Firstface’s chief executive, expressed that after receiving US patent court validation for two patents, Firstface will be able to gain an upper hand throughout the patent litigations going on in Japan.
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Photos by: Bangyu Wang, George Prentzas, Ana Bernardo