Agarwal Amit v. Immersion Corp

1. Case Identification

• Case #: IPR2016-00807
• Patent #: 8,773,356
• Filed: March 29, 2016
• Petitioner(s): Amit Agarwal
• Patent Owner(s): Immersion Corp.
• Challenged Claims: 1-3, 5, 7, 9-13, 15, 17, 19-23, 25, 26

2. Patent Overview

• Title: Method and Apparatus for Providing Tactile Sensations
• Brief Description: The ’356 patent discloses methods and systems for generating haptic feedback on touch-sensitive devices. The technology involves detecting an interaction between a user's touch (via finger or stylus) and a graphical object on a screen, and then generating a specific tactile sensation via an actuator based on that interaction and predefined haptic effect data stored in a lookup table.

3. Grounds for Unpatentability

Ground 1: Anticipation by Rosenberg - Claims 1-3, 9-13, 19-23, 25, and 26 are anticipated under pre-AIA 35 U.S.C. §102(e) by Rosenberg.

• Prior Art Relied Upon: Rosenberg (Application # 09/487,737).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenberg disclosed every element of independent claims 1 (method) and 12 (system). Rosenberg described a touch-sensitive input device, such as a touchscreen, that outputs a display signal for graphical objects and receives a sensor signal indicating contact. Petitioner asserted that Rosenberg taught determining an interaction by detecting when a cursor, acting as a proxy for the user’s finger or stylus, is positioned over a graphical object like an icon. Based on this interaction, Rosenberg generated an actuator signal to produce haptic feedback (e.g., pulses, vibrations). The final limitation, "haptic effect data in a lookup table," was allegedly met through Rosenberg's incorporation by reference of another application that described storing "force profiles" in a look-up table.
  • Key Aspects: Petitioner contended that Rosenberg explicitly stated features described for its touchpad embodiment were "equally applicable" to its touchscreen embodiment. This statement, Petitioner argued, justified combining disclosures related to both embodiments to satisfy all claim limitations within a single reference. The anticipation argument for numerous dependent claims (e.g., claims 9, 10, 19, 20 concerning multiple haptic effects for multiple graphical objects) relied on Rosenberg's disclosure of associating stronger pulses with more frequently used menu items. The software-based claims (22-23, 25-26) were argued to be inherently disclosed as Rosenberg’s system is entirely computer-implemented.

Ground 2: Obviousness over Rosenberg and Simon - Claims 5, 7, 15, and 17 are obvious over Rosenberg in view of Simon.

• Prior Art Relied Upon: Rosenberg (Application # 09/487,737) and Simon (IBM's User's Manual for the Simon PDA product, published 1994).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that these dependent claims added limitations for displaying a "keypad comprising a plurality of softkeys" (claims 5 and 15) and, more specifically, "one softkey for each digit from 0 to 9" (claims 7 and 17). While Rosenberg provided the foundational haptic feedback system for interacting with various graphical objects (icons, menus), it did not explicitly show a numeric keypad. Simon, an early PDA with a touch-sensitive screen, disclosed a user interface with a graphical numeric keypad containing softkeys for digits 0-9. Petitioner contended that combining Simon's conventional keypad with Rosenberg's haptic feedback system rendered the claims obvious.
  • Motivation to Combine: Petitioner asserted that Rosenberg itself provided the motivation to combine. Rosenberg stated that its haptic feedback technology was primarily relevant to devices including "cellular phones having touch screens." Simon was such a device. Therefore, a person of ordinary skill in the art (POSITA) would have been directly motivated by Rosenberg's own suggestion to apply its haptic feedback technology to the known user interface elements of a contemporary device like Simon, including its softkey keypad. The combination was presented as a simple application of a known technology (haptic feedback) to a known interface (softkey keypad) to achieve a predictable result.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining the teachings involved integrating a known software-based haptic feedback feature with a standard graphical user interface element, both of which were well-understood at the time.

4. Key Technical Contentions (Beyond Claim Construction)

• No Expert Testimony Required: A central contention of the petition was that the challenge did not require expert witness testimony for resolution. Petitioner argued that the technology at issue was not complex hardware design but rather fundamental "user interaction and user experience." The concepts of interacting with a graphical object on a touch screen and receiving a vibration in response were asserted to be intuitive and understandable by a technically-savvy Board without expert guidance, likening the required intuition to that of a "lay consumer of modern electronics."

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5, 7, 9-13, 15, 17, 19-23, 25, and 26 of the ’356 patent.