DCT

1:17-cv-01081

Immersion Corp v. Motorola Mobility LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01081, D. Del., 08/03/2017
  • Venue Allegations: Venue is alleged as proper in the District of Delaware because both Defendant entities are chartered under the laws of the State of Delaware.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile phone products infringe five patents related to haptic feedback technology, which Defendant had previously licensed from Plaintiff until the license expired in 2015.
  • Technical Context: The dispute centers on haptic feedback, a technology that provides tactile sensations (e.g., vibrations) to users of touch-screen devices, which has become a standard feature in the smartphone market.
  • Key Procedural History: Plaintiff states that Defendant was a licensee to its patent portfolio for many years and that four of the five asserted patents were part of a prior license that expired in November 2015. The parties previously engaged in litigation at the International Trade Commission (ITC) and in the District of Delaware involving the same four patents, which was settled by the entry into that license agreement. Two of the asserted patents have also survived ex parte reexamination proceedings at the U.S. Patent and Trademark Office.

Case Timeline

Date Event
1997-11-14 Earliest Priority Date for ’288 and ’332 Patents
1998-06-23 Earliest Priority Date for ’846, ’720, and ’181 Patents
2002-08-06 U.S. Patent No. 6,429,846 Issues
2011-06-28 U.S. Patent No. 7,969,288 Issues
2011-07-19 U.S. Patent No. 7,982,720 Issues
2011-08-21 Date Plaintiff alleges Defendant was aware of the ’846, ’288, ’720, and ’181 patents
2011-10-04 U.S. Patent No. 8,031,181 Issues
2012-02-07 Plaintiff files prior ITC complaint against Defendant
2012-07-30 Reexamination requested for ’288 Patent
2012-09-12 Reexamination requested for ’720 Patent
2014-02-18 Reexamination Certificate issues for ’720 Patent
2015-11-21 Prior patent license between parties expires
2016-04-26 U.S. Patent No. 9,323,332 Issues
2016-11-21 Date after which certain accused products were allegedly distributed
2017-08-03 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,429,846 - Haptic Feedback for Touchpads and Other Touch Controls (Issued Aug. 6, 2002)

The Invention Explained

  • Problem Addressed: The patent’s background section notes that touchpads on portable computers, unlike mice or joysticks, typically lack haptic feedback, which deprives users of tactile sensations that can assist in targeting and control tasks within a graphical user interface (GUI) (’846 Patent, col. 1:56-62).
  • The Patented Solution: The invention proposes coupling at least one actuator to a planar touch input device, such as a touchpad or touch screen. A computer processor monitors the location of a user's touch and the corresponding cursor's interaction with on-screen graphical objects (e.g., icons, window borders). Based on these interactions, the processor sends force information to the actuator, which then outputs a force on the touch surface, creating a haptic sensation (like a pulse or vibration) for the user (’846 Patent, Abstract; col. 2:7-22).
  • Technical Importance: This approach enabled compact, flat input devices common on portable electronics to provide the rich, tactile user feedback previously associated with larger, mechanical input devices, thereby enhancing the user experience (’846 Patent, col. 2:55-63).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶22).
  • Essential elements of claim 1 include:
    • A haptic feedback touch control for inputting signals to a portable computer and outputting forces to a user.
    • A touch input device integrated in the computer's housing with an approximately planar touch surface for inputting a two-dimensional position signal.
    • The computer positioning a cursor in a graphical environment based on the position signal.
    • At least one actuator coupled to the touch input device that outputs a force directly on the device to provide a haptic sensation, based on force information from the computer's processor.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 7,969,288 - Force Feedback System Including Multi-Tasking Graphical Host Environment and Interface Device (Issued June 28, 2011)

The Invention Explained

  • Problem Addressed: In a multi-tasking computing environment (e.g., Windows), multiple applications may run simultaneously. The patent identifies the problem of managing potentially conflicting force feedback commands from these different applications to a single haptic device, as the device may not have the capacity to store and execute all possible commands at once (’288 Patent, col. 2:25-56).
  • The Patented Solution: The patent describes a software architecture that manages force commands from multiple applications. A "context" is created for each application to store its specific set of force effect commands. A driver layer determines which application is currently "active" (i.e., in the foreground). Only the force commands from the active application's context are sent to the haptic device, thereby preventing inactive applications from generating conflicting forces (’288 Patent, Fig. 4; col. 3:45-4:2).
  • Technical Importance: This architecture provides a systematic method for enabling robust haptic feedback in modern, multi-tasking operating systems, ensuring that the user feels tactile sensations relevant to the application they are directly interacting with (’288 Patent, col. 2:25-40).

Key Claims at a Glance

  • The complaint asserts at least independent claim 18, which survived an ex parte reexamination with amendment (Compl. ¶28, 30).
  • Essential elements of the reexamined claim 18 include:
    • A software method in a multi-tasking environment.
    • Storing a plurality of data sets in memory, where each data set represents force effects and is associated with a specific software application.
    • Calling an application programming interface (API).
    • Determining which one of a plurality of concurrently running application programs is active.
    • Generating a signal representing the data set associated with the active application program.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 7,982,720 - "Haptic Feedback for Touchpads and Other Touch Controls" (Issued July 19, 2011)

  • Patent Identification: U.S. Patent No. 7,982,720, "Haptic Feedback for Touchpads and Other Touch Controls," Issued July 19, 2011 (Compl. ¶36).
  • Technology Synopsis: This patent addresses a haptic feedback device with a touch screen that has at least two distinct, non-overlapping regions. One region is associated with cursor positioning (e.g., a text entry field), while another region is for control functions not related to cursor positioning (e.g., system navigation buttons). The device provides haptic feedback in response to contact in these regions.
  • Asserted Claims: Independent claim 10 is asserted (Compl. ¶38).
  • Accused Features: The complaint alleges that the Moto G4's touch screen infringes by having a first region for cursor positioning (e.g., a text box) and a separate, non-overlapping region for control functions (e.g., home, recent, and back keys) (Compl. ¶38.i).

U.S. Patent No. 8,031,181 - "Haptic Feedback for Touchpads and Other Touch Controls" (Issued October 4, 2011)

  • Patent Identification: U.S. Patent No. 8,031,181, "Haptic Feedback for Touchpads and Other Touch Controls," Issued October 4, 2011 (Compl. ¶44).
  • Technology Synopsis: This patent claims a haptic feedback device with a touch screen having at least two distinct regions for different functionalities (e.g., cursor positioning vs. control). A key aspect is that the first and second regions are associated with different haptic effects.
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶46).
  • Accused Features: The complaint alleges infringement by the Moto G4's touch screen, which has a cursor-positioning region (e.g., a text box) and a control region (e.g., home/back keys) that are allegedly associated with different haptic effects (Compl. ¶46.i).

U.S. Patent No. 9,323,332 - "Force Feedback System Including Multi-Tasking Graphical Host Environment" (Issued April 26, 2016)

  • Patent Identification: U.S. Patent No. 9,323,332, "Force Feedback System Including Multi-Tasking Graphical Host Environment," Issued April 26, 2016 (Compl. ¶52).
  • Technology Synopsis: Similar to the ’288 Patent, this patent describes a haptic system for a multi-tasking environment. It claims a system comprising computer memory storing application programs that command force sensations, a processor to run them concurrently, an operating system to manage the multi-tasking environment, and an actuator that is specifically configured to output force sensations commanded by the active application program.
  • Asserted Claims: Independent claim 11 is asserted (Compl. ¶54).
  • Accused Features: The complaint accuses the Moto G4 system, which uses an Android operating system, a processor, and memory to run multiple applications, and an actuator that allegedly outputs haptic effects commanded by the active application (Compl. ¶54.i-iv).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentalities as the "Accused Phones," which include but are not limited to the Moto G4, Moto G4 Play, Moto G4 Plus, Moto G5, Moto G5 Plus, Moto Z, Moto Z Force, and Moto Z Play models (Compl. ¶18).

Functionality and Market Context

  • The Accused Phones are described as touch screen mobile phones that incorporate haptic feedback technology (Compl. ¶11, 18). This technology includes an actuator that produces tactile sensations, such as vibrations, when a user interacts with the touch screen, for example, by typing on a virtual keyboard or touching virtual keys for system navigation (e.g., home, recent, back) (Compl. ¶22). The complaint alleges these devices are developed, manufactured, used, imported, and sold by Motorola (Compl. ¶18). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'846 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A haptic feedback touch control for inputting signals to a portable computer and for outputting forces to a user of the touch control... The Moto G4 is alleged to be a haptic touch control that takes touch input and outputs forces (vibrations) to the user. ¶22.a col. 2:7-9
A touch input device integrated in a housing of said portable computer, said touch input device including an approximately planar touch surface operative to input a position signal... representing a location in two dimensions; The Moto G4 is a portable device with an integrated, planar touch screen that senses the two-dimensional location of a user's contact and outputs a corresponding position signal to its processor. ¶22.i col. 3:62-64
wherein said computer positions a cursor in a graphical environment displayed on a display device based at least in part on said position signal; The Moto G4's processor uses the position signal from the touch screen to position cursors in the graphical environment, for example, to mark a text input location. ¶22.ii col. 2:13-16
at least one actuator coupled to said touch input device, said actuator outputting a force... based on force information output by said processor, said actuator outputting a force directly on said touch input device. The Moto G4 contains an actuator coupled to the touch screen, which outputs a force (haptic sensation) based on signals from its processor when the user types or touches system keys. ¶22.iii col. 2:16-22
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether a smartphone, such as the accused Moto G4, qualifies as a "portable computer" within the meaning of the claim. The patent's primary embodiment is a laptop computer, but the specification also refers to handheld devices and PDAs, which may support a broader construction (’846 Patent, Fig. 1; col. 15:45-54).
    • Technical Questions: The analysis may focus on the meaning of the actuator "outputting a force directly on said touch input device." The nature of the physical coupling between the actuator and the touch screen assembly in the Accused Phones will be relevant to determining if this limitation is met.

'288 Patent Infringement Allegations

Claim Element (from reexamined Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
A software method in a multi-tasking environment comprising: The Moto G4's Android operating system is alleged to provide a multi-tasking environment where multiple applications can run concurrently. ¶30.a col. 2:25-33
storing a plurality of data sets in memory, each data set comprising a representation of one or more force effects, wherein each one of the plurality of data sets is associated with one software application; The complaint alleges that each haptic-enabled application on the Moto G4 includes data sets (haptic constants or method parameters) representing force effects that the application can call. ¶30.i col. 3:51-58
calling an application programming interface; The Moto G4 allegedly generates haptic effects through calls to APIs provided by Android's Vibrator and View classes. ¶30.ii col. 17:45-48
determining which one of a plurality of concurrently running application programs is active in the multi-tasking environment; The Android operating system on the Moto G4 is alleged to determine which application becomes active when selected by the user. ¶30.iii col. 3:61-66
generating a signal representing the data set associated with the active application program. It is alleged that the Moto G4 generates signals representing the haptic parameters of the active application after a call is made to the Vibrator class, which are then transmitted to the actuator driver. ¶30.iv col. 19:24-34
  • Identified Points of Contention:
    • Scope Questions: A potential dispute is whether Android's system of providing haptic feedback through general API calls (e.g., vibrate(long milliseconds)) constitutes the claimed method of storing distinct "data sets... associated with one software application." The analysis will question whether this is a direct mapping or a fundamentally different software architecture.
    • Technical Questions: Evidence will be required to show how the Android OS on the Accused Phones technically manages haptic parameters for multiple concurrent applications and whether it generates signals "representing the data set associated with the active application program" in the specific manner claimed.

V. Key Claim Terms for Construction

For the ’846 Patent

  • The Term: "portable computer" (from claim 1 preamble)
  • Context and Importance: This term's construction is critical to determining whether the patent's scope covers the accused smartphones. The defendant may argue that in 2002, when the patent issued, a "portable computer" referred to a laptop and not a cellular phone.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification explicitly contemplates devices beyond traditional laptops, stating the invention can be used in "other portable devices or devices worn on the person, handheld or used with a single hand of the user" (’846 Patent, col. 4:56-59). It also specifically describes and depicts a PDA embodiment, a handheld device with a touch screen, which is functionally analogous to a modern smartphone (’846 Patent, Fig. 8a; col. 15:45-54).
    • Evidence for a Narrower Interpretation: The primary illustrated embodiment is a laptop computer (’846 Patent, Fig. 1). The term "computer" itself could be argued to connote a general-purpose computing device distinct from a communications-focused device like a phone, though this distinction has eroded over time.

For the ’288 Patent

  • The Term: "data set comprising a representation of one or more force effects" (from claim 18)
  • Context and Importance: Practitioners may focus on this term because the infringement allegation hinges on whether Android's method of handling haptic API calls meets this specific architectural requirement. The definition will determine if a simple parameter passed in an API call qualifies as the claimed "data set."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification refers to "force effect commands" being stored in "contexts," which could be broadly interpreted to include any set of parameters that define a haptic output, such as duration, pattern, or amplitude (’288 Patent, col. 3:51-55).
    • Evidence for a Narrower Interpretation: The patent describes a structured system where a context driver manages lists of effects for each application (as shown in Fig. 4). A defendant could argue that this implies a more formal data structure than merely passing a value (e.g., a millisecond count) to a generic system vibrate() function, which may not be "associated with one software application" in the manner contemplated by the patent's architecture.

VI. Other Allegations

  • Indirect Infringement: For all five patents, the complaint alleges both induced and contributory infringement. Inducement is based on allegations that Motorola provides "directions, instruction manuals, guides, and/or other materials that instruct and encourage" users to operate the accused haptic features in an infringing manner (e.g., Compl. ¶24, 32, 40, 48, 56). Contributory infringement is based on the allegation that the haptic functionality is a material part of the invention, is especially adapted for infringement, and is not a staple article of commerce suitable for substantial noninfringing use (e.g., Compl. ¶24, 32).
  • Willful Infringement: Willfulness is alleged for all five patents. For the ’846, ’288, ’720, and ’181 patents, the basis for pre-suit knowledge is Defendant’s prior multi-year license to Plaintiff's patent portfolio and prior litigation involving these specific patents (Compl. ¶1, 14-15, 25, 33, 41, 49). For the ’332 patent, which issued after the license expired, the complaint alleges knowledge "since it issued, or shortly thereafter" (Compl. ¶56). Continued alleged infringement after the license expired forms the basis of the willfulness claim.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term “portable computer,” originating from a patent filed in the late 1990s and primarily illustrated with a laptop, be construed to encompass the accused modern smartphones?
  • A key technical question will be one of architectural mapping: does the Android operating system’s method for handling haptic feedback—which the complaint characterizes as using API calls to system classes like Vibrator—constitute the specific software architecture claimed in the ’288 and ’332 patents, which require managing distinct "data sets" of force effects based on which application is "active"?
  • A central legal question regarding damages will be the impact of prior dealings: given the extensive history of licensing and litigation between the parties, how will this history influence the analysis of willfulness and the potential for enhanced damages if infringement of the previously licensed patents is found?