Trials@uspto.

gov
571-272-7822

Paper 7
Entered: January 11, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,
v.
IMMERSION CORPORATION,
Patent Owner.
_______________
Case IPR2016-01371
Patent 8,619,051 B2
_______________

Before MICHAEL R. ZECHER, BRYAN F. MOORE, and

MINN CHUNG, Administrative Patent Judges.
MOORE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. 314(a) and 37 C.F.R. 42.108

IPR2016-01371
Patent 8,619,051 B2
I.

INTRODUCTION

Petitioner, Apple Inc., filed a Petition requesting an inter partes

review of claims 13 and 515 of U.S. Patent No. 8,619,051 B2 (Ex. 1001,
the 051 patent). Paper 1 (Pet.). In response, Patent Owner, Immersion
Corporation, filed a Preliminary Response. Paper 6 (Prelim. Resp.). We
have jurisdiction under 35 U.S.C. 314, which provides that an inter partes
review may not be instituted unless . . . the information presented in the
petition . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.
For the reasons set forth below, we do not institute an inter partes
review of claims 13 and 515 of the 051 patent.

A. Related Matters
The 051 patent is involved in the following lawsuits: (1) Certain
Mobile Electronic Devices Incorporating Haptics (Including Smartphones
and Smartwatches) and Components Thereof, U.S. International Trade
Commission Investigation No. 337-TA-990 (the ITC Investigation), which
has been consolidated with In the Matter of: Certain Mobile and Portable
Electronic Devices Incorporating Haptics (Including Smartphones and
Laptops) and Components Thereof, ITC Investigation No. 337-TA-1004
(USITC); and (2) Immersion Corporation v. Apple Inc., No. 1:16-cv-00077
(stayed) (D. Del.). Pet. 1; Paper 5, 23.

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Patent 8,619,051 B2
B. The 051 Patent
The 051 patent relates to a handheld device with a touchscreen that
includes a haptic feedback system. Ex. 1001, 1:1517. The Specification
describes a haptic feedback system that includes a controller, a memory
coupled to the controller, an actuator drive circuit coupled to the controller,
and an actuator coupled to the actuator drive circuit. Id. at 1:652:2. The
memory stores at least one haptic effect that is executed by the controller in
order to create a haptic effect. Id. at 2:24. The haptic effect . . . is
predefined with the low level haptic parameters such as voltage levels and
time duration. Id. at 5:2532.

C. Illustrative Claim
Of the challenged claims, claims 1, 8, and 12 are the only independent
claims. Challenged claims 2, 3, 57, 911, and 1315 depend directly or
indirectly from one of independent claims 1, 8, or 12.
Claim 1, reproduced below, is illustrative of the challenged claims.
1. A haptic feedback system comprising:
a processor;
a memory coupled to the processor, wherein the memory
stores a plurality of pre-defined haptic effects;
an actuator drive circuit coupled to the processor; and
an actuator coupled to the actuator drive circuit;
wherein the processor is adapted to output a first stored
haptic effect of the pre-defined haptic effects in response to a
haptic effect request;
wherein the haptic effect request is a control signal
generated in response to a first application that identifies the
first stored haptic effect to be played:
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wherein the output causes the first stored haptic effect to be
played;
wherein the entire haptic output in response to the haptic
effect request consists of the first stored haptic effect:
wherein an application program interface (API) receives
the haptic effect request from the first application and retrieves
the requested first stored hap tic effect, wherein the first
application is registered with the API and a second application
is also registered with the API and has access to the first stored
haptic effect.
Ex. 1001, 7:4061.
D. Prior Art Relied Upon
Petitioner relies upon the following prior art references:
Braun
Chen

US 6,252,583 B1
US 5,742,278

June 26, 2001

Apr. 21, 1998

(Ex. 1008)
(Ex. 1011)

E. Asserted Grounds of Unpatentability

Petitioner asserts the following grounds of unpatentability:
Challenged Claims

Basis

Reference(s)

13 and 515

103(a)

Braun

13 and 515

103(a)

Braun and Chen

II.

ANALYSIS

A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 778 F.3d 1271, 128182 (Fed. Cir. 2015); affd sub nom.
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Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016)
(upholding the use of the broadest reasonable interpretation standard in an
inter partes review proceeding). Under the broadest reasonable
interpretation standard, claim terms are generally given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
For the purposes of this Decision, most of the claim terms do not
require an express construction. See Vivid Techs., Inc. v. Am. Sci. & Engg,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in
controversy need to be construed and only to the extent necessary to resolve
the controversy).
Petitioner urges us to construe several claim terms in a manner at
least as broad as those implied by the Patent Owners infringement and
domestic industry contentions in the ITC Investigation as evidenced by
Patent Owners assertions in claim charts provided in that investigation. Pet.
67. In particular, Petitioner takes this approach as to the term stored
haptic effect. Id. at 7.
As an initial matter, there are several problems with the approach
Petitioner takes to claim construction in this proceeding. First, Petitioner
provides no detailed analysis regarding the operation of the products accused
of infringement such that we can determine the implication of the statements
in the claim charts. See Pet. 7; see also generally Exs. 1004 (redacted
domestic industry claim charts), 1005 (domestic industry claim charts)
(collectively, ITC claim charts). Second, the claim charts contain citations
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to exhibits that are not a part of the record in this case. See, e.g. Ex. 1004,
13 (citing ITC Ex. 33). Third, Petitioner provides no citation to the
Specification of the 051 patent to verify that the constructions provided by
Petitioner are consistent with how one of ordinary skill in the art would have
understood the meaning of certain terms in the context of the entire
Specification. See Translogic, 504 F.3d 1249, 1257. Finally, we are not
bound, nor is the Patent Owner, by Patent Owners representations to the
ITC.1 In fact, Patent Owner asserts the charts provided by Petitioner in this
case were preliminary charts. To illustrate that point, Patent Owner
provided more recent claim constructions agreed upon by the parties in the
ITC Investigation. Prelim. Resp. 8 (citing Ex. 2002). With these problems
in mind, we address Petitioners proposed claim constructions.
In a single sentence of the Petition, Petitioner proposes that the term
stored haptic effect encompasses a stored haptic effect definition based
on the ITC claim charts. Pet. 7 (citing Ex. 1004, 12; Ex. 1005, 19).
Although the ITC claim charts contain some description of the product
features which are allegedly effect definitions, the import of these
descriptions is not explained adequately in the Petition. Petitioner does not
explain what effect definitions should mean in the context of the invention

Although we are not bound by any ITC order construing claim terms, we
would consider such an order were it before us. See Power Integrations,
Inc., v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (The fact that the board
is not generally bound by a previous judicial interpretation of a disputed
claim term does not mean, however, that it has no obligation to acknowledge
that interpretation or to assess whether it is consistent with the broadest
reasonable construction of the term.). However, here we are not presented
with any final construction of claim terms by an ITC Judge.
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of the 051 patent, particularly in light of the specification and the claims.
Furthermore, Petitioner admits that it is aware of what Patent Owner was
likely to argue regarding claim construction. Pet. 14 (Immersion may argue
that a store[d] haptic effect requires storing a haptic effect defined with
low-level parameters such as voltage, rather than high-level parameters such
as magnitude or frequency.) Yet Petitioner does not attempt to explain
adequately why such a claim construction would not represent the broadest
reasonable construction of that term.
A petitioner must propose those claim constructions necessary to
support its burden of showing a reasonable likelihood of success. See 37
C.F.R. 42.104(b)(3) (the petition must state [h]ow the challenged claim is
to be construed); see also 35 U.S.C. 314(a) (petitioner must show, in its
petition, a reasonable likelihood of prevailing). Petitioner, however, did
not propose its own well-supported independent construction for stored
haptic effect in its Petition, but rather it merely proposes Patent Owner be
held to its admitted position in the ITC Investigation. Pet. 7. However,
we are not bound by admissions or agreements by the parties in the ITC
because the claim construction standard in the ITC is different from the
claim construction standard applied to unexpired patents in inter partes
review proceedings. See 37 C.F.R. 42.100(b); Cuozzo, 778 F.3d at 127882; affd sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).
For the reasons stated above, Petitioner has not presented sufficient evidence
or argument supporting its proposed claim construction.
Patent Owner asserts that broadest reasonable construction of the term
stored haptic effect in view of the Specification is the same as the
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construction both parties agreed on and proposed in the ITC Investigation
a haptic effect predefined with low-level haptic parameters such as voltage
levels over time. Prelim. Resp. 9 (citing Ex. 2002, Attach., 1). We
recognize that, similar to Petitioner, Patent Owner relies on representations
from the ITC Investigation for its claim construction. As explained above,
we are not bound by these agreements by the parties. However, unlike
Petitioner, Patent Owner provides support from its proposed construction in
the Specification. Thus, we consider Patent Owners analysis below.
We recognize that the term stored haptic effect does not contain the
phrase low-level haptic parameters. To explain why this language is
included in its construction, Patent Owner begins by asserting that a related
term, pre-defined haptic effect, should be construed to mean the same
thing as stored haptic effect because the Specification uses a parenthetical
to equate stored haptic effects with pre-defined haptic effects. Ex. 1001
at 4:1819 (pre-defined effects (stored haptic effects)); Prelim. Resp. 10.
We agree. Equating the terms is consistent with the use of these terms
throughout the Specification. See generally Ex. 1001, 2:47, 3:1217, 4:17
21, 5:2532. Thus, for the purpose of this Decision, and consistent with the
Specification, we equate the terms stored haptic effects with pre-defined
haptic effects. Cf. Siliconix Inc. v. Alpha & Omega Semiconductor Inc.,
2004 WL 5645572, at *2 (N.D. Cal. Sept. 10, 2004) (finding the [w]ith
[the] use of [a] parenthetical, the specification attempts to define planar as
meaning flat; however, ultimately finding the specification suggested
such a construction is not warranted).

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Patent 8,619,051 B2
Given that the terms stored haptic effects with pre-defined haptic
effects are equated in the Specification, Patent Owner asserts that [t]he
specification describes the stored haptic effects claimed in the 051 patent
as haptic effects pre-defined with low level parameters, such as voltage
levels over time. Prelim. Resp. 10. Patent Owner asserts further that the
specification distinguishes the stored haptic effects from prior art haptic
effects that were not pre-defined with low-level haptic parameters (such as
voltage levels and time durations) but were instead computed and generated
in real-time from a plurality of high level parameters. Id. (citing Ex. 1001,
5:2531). We agree.
As an initial matter, Patent Owners proposed construction is
consistent with the Specification. For instance, in the Summary of
the Invention section, the 051 patent explains that storing haptic
effects avoids the need for real-time generation of the effect from
high-level parameters and reduces the required processing power. Id.
at 2:46 (The stored haptic effect, unlike real-time generated haptic
effects, reduces the required processing power.). The only stored
haptic effects disclosed in the Specification are the pre-defined with
low-level haptic parameters, such as voltage levels over time, as
illustrated in Figure 6. See generally Ex. 1001.
Patent Owner also is correct that the Specification defines the
invention over the prior art by noting that prior art systems used highlevel parameters to generate haptic effects. Ex. 1001, 5:2531.
Specifically, the Specification contrasts storing low-level haptic
parameters with using high-level haptic parameters. Ex. 1001, 5:28
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31. The fact that the 051 patent asserts the storing of low-level haptic
parameters is an advantage over the prior art suggests that the claim
were meant to cover such storage. Chi. Bd. Options Exch., Inc. v. Intl
Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012). Finally, the
patentee defines what a pre-defined haptic effect is by stating the
haptic effect in FIG. 6 is predefined with the low level haptic
parameters such as voltage levels and time duration. Ex. 1001 at
5:2931.
For the reasons discussed above, Patent Owner has shown
sufficiently that the patentee intended to limit the invention to storing
low level parameters. See, e.g., Alloc, Inc. v. Intl Trade Commn,
342 F.3d 1361, 1370 (Fed. Cir. 2003) ([T]his court recognizes that it
must interpret the claims in light of the specification, yet avoid
impermissibly importing limitations from the specification. That
balance turns on how the specification characterizes the claimed
invention. In this respect, this court looks to whether the specification
refers to a limitation only as a part of less than all possible
embodiments or whether the specification read as a whole suggests
that the very character of the invention requires the limitation to be a
part of every embodiment. (citations omitted)). Thus, applying the
broadest reasonable construction standard, we adopt Patent Owners
construction of the term stored haptic effects as a haptic effect
predefined with low-level haptic parameters such as voltage levels
over time.

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We need not construe any of the remaining terms offered for
construction to resolve any dispute relevant to determining whether to
institute.
B. Principles of Law
A patent claim is unpatentable under 35 U.S.C. 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of four
underlying factual determinations: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when in evidence, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 1718
(1966).
In that regard, an obviousness analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ. KSR, 550 U.S. at 418; see also
Translogic, 504 F.3d at 1259.
The level of ordinary skill in the art is reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
579 F.2d 86, 91 (CCPA 1978). We analyze the asserted grounds of
patentability with these principles in mind.
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C. Obviousness of Claims over Braun
Petitioner asserts that claims 13 and 515 are unpatentable under
35 U.S.C. 103(a) as obvious over Braun. Pet. 9. To support its
contentions, Petitioner provides detailed explanations as to how Braun meets
each claim limitation. Id. at 938. Petitioner also relies upon a Declaration
of Dr. Patrick Baudisch, who has been retained as a declarant by Petitioner
for the instant proceeding. Ex. 1012.
As noted in Section A above, we construe stored haptic effect to
require storing low-level haptic parameters. Petitioner concedes that Braun
does not disclose explicitly storing low lever haptic parameters by stating
[i]t would have been obvious to a skilled artisan to store haptic effects in
this manner because Braun discloses that a force effect may be defined with
one or more parameters . . . as desired, and one of skill in the art would
recognize that Brauns actuators 64 typically would be controlled with
different voltage levels. Pet. 14 (citing Ex. 1008, 11:6512:2, 8:649:13;
Ex. 1012 (Baudisch Decl.) 71). Petitioner further asserts [a] skilled
artisan would recognize that a force effect could readily be defined using
such low-level parameters. Id. (citing Baudisch Decl., 71.) Finally,
Petitioner asserts that the motivation to modify Braun in this manner arises
at least from a desire to reduce the processing burden on local processor 130,
as recognized by Brauns disclosure that the host computer 18 can provide
low-level force commands (instead of high level supervisory commands),
which microprocessor 130 directly transmits to the actuators. Id. (citing
Ex. 1008, 7:3641, 7:648:8).

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Petitioner essentially argues that Braun has the ability to use low-level
force commands, but does not argue that Braun discloses using stored, predefined low lever force commands. Petitioner has not explained why Braun
would not use the high-level parameters it discloses to generate low-level
parameters rather than use stored pre-defined low-level parameters. We
agree with Patent Owner that the means by which an actuator is controlled
to output a haptic effect is entirely separate from the means by which the
haptic effect is stored in memory. Prelim. Resp. 20. For example, Patent
Owner explains, and we agree, that Braun expressly teaches that the lowlevel forces are not pre-defined and stored in memory, but are rather
generated in real-time based on high-level parameters. See Ex. 1008, 7:38
41 (microprocessor 130 manages low level force control loops to sensors
and actuators in accordance with the high level commands). Id.
Additionally, the motivation suggested by Petitioner (i.e. reducing the
burden on the local processor) is not found in Braun itself, but rather is
provided by attorney argument and by Brauns Declarant, whose testimony
on this issue is simply a verbatim copy of the argument in the Petition. Pet.
14 (citing Ex. 1012 71); Prelim. Resp. 2021. Petitioners reliance on the
conclusory testimony of its Declarant to prove the unpatentablility of a claim
limitation is not supported by Brauns disclosure or by other evidence of
record.
We further note that, under 37 C.F.R. 42.65(a), [e]xpert testimony
that does not disclose the underlying facts or data on which the opinion is
based is entitled to little or no weight. It is within our discretion to assign
the appropriate weight to the testimony offered by Mr. Baudisch. See, e.g.,
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Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board
has discretion to give more weight to one item of evidence over another
unless no reasonable trier of fact could have done so); In re Am. Acad. Of
Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ([T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
(In giving more weight to prior publications than to subsequent conclusory
statements by experts, the Board acted well within [its] discretion.).
The only record evidence regarding storing pre-defined low-level
haptic parameters is found in the Specification of the 051 patent. The
inventors own path itself never leads to a conclusion of obviousness; that is
hindsight. What matters is the path that the person of ordinary skill in the art
would have followed, as evidenced by the pertinent prior art. Otsuka
Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012).
Thus, absent impermissible hindsight reconstruction, we are not persuaded
that Petitioner has provided a sufficient rationale for modifying Braun as
proposed in the Petition.
The remaining independent claims 8 and 12 each contain the same
limitation at issue in claim 1 and, thus, all of the challenged claims contain
the stored haptic effects limitation that Petitioner alleges is taught or
suggested by Braun. Thus, upon review of the proposed ground of
obviousness over Braun against claims 13 and 515, we are not persuaded
that Petitioner has established a reasonable likelihood that Petitioner would
prevail in its challenge to these claims on this particular ground.
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D. Obviousness of Claims over Braun and Chen
Petitioner asserts that claims 13 and 515 are unpatentable under
35 U.S.C. 103(a) as obvious over the combination of Braun and Chen.
Pet. 38. To support its contentions, Petitioner provides detailed explanations
as to how this proffered combination meets each claim limitation. Id. at 27
31. Petitioner also relies upon a Declaration of Dr. Baudisch, who has been
retained as a declarant by Petitioner for the instant proceeding. Ex. 1012.
As noted above, we find that Braun does not disclose a stored haptic
effect as required by claim 1. We also find that Petitioner does not provide
a sufficient rationale to modify Braun to add this claimed feature. Petitioner
relies on essentially same contentions regarding Braun to support the
asserted ground based on Braun and Chen. Thus, for the reasons stated
above we are not persuaded by Petitioners assertion that the combination of
Braun and Chen teaches the limitation to a stored haptic effect, nor are we
persuaded that there is a sufficient rationale to modify Braun in the manner
proposed by Petitioner.
Petitioner also asserts a skilled artisan would recognize that the Chen
effects could readily be defined as a series of voltage levels at least because
the motors of Chen typically would be controlled using varying voltage
levels. Pet. 4243 (citing Ex. 1011, 3:2327, 3:3236; Ex. 1012 201).
However, Chen teaches that a force effect can be viewed as being a process
or subroutine, wherein the force to be output is generated based on a set of
high-level parameters that define the force effect. Ex. 1011, 5:2223.
Petitioner does not explain adequately why the Chens method of controlling
the motors using voltage levels based on high-level parameters would be
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replaced by storing pre-defined low-level haptic parameters. Thus, Chen
does not make up for the deficiencies of Braun identified above. For the
reasons stated above we are not persuaded by this alternative argument that
the combination of Braun and Chen teaches the limitation to a stored haptic
effect.
The remaining independent claims 8 and 12 each contain the same
limitation at issue in claim 1 and, thus, all of the challenged claims contain
the stored haptic effects limitation that Petitioner alleges is taught or
suggested by Braun and Chen. Thus, upon review of the proposed ground of
obviousness over Braun and Chen against claims 13 and 515, we are not
persuaded that Petitioner has established a reasonable likelihood that
Petitioner would prevail in its challenge to these claims on this particular
ground.
III. CONCLUSION
After reviewing the information presented in the Petition and the
Preliminary Response, as well as the evidence of record, we determine that
Petitioner has not established a reasonable likelihood that it will prevail in
showing that claims 13 and 515 of the 051 patent are unpatentable.

IV. ORDER
Accordingly, it is
ORDERED that that the Petition is DENIED as to all challenged
claims of the 051 patent, and no trial is instituted.

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PETITIONER:
James Heintz
Robert Buergi
Robert.buergi@dlapiper.com
Apple-immersion-IPR@dlapiper.com

PATENT OWNER:
Michael R. Fleming
Babak Redjaian
Irell & Manella LLP
mfleming@irell.com
bredjaian@irell.com
ImmersionIPR@irell.com

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