Apple Inc v. Immersion Corp

1. Case Identification

• Case #: IPR Unassigned (as of filing)
• Patent #: 8,773,356
• Filed: July 8, 2016
• Petitioner(s): Apple Inc.
• Patent Owner(s): Immersion Corporation
• 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 describes systems and methods for providing tactile feedback on electronic devices with touch-sensitive inputs, such as touchpads or touch screens. The technology uses a processor to detect user interaction with graphical objects on a display and generates a corresponding actuator signal to create a haptic sensation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rosenberg 737 and Rosenberg 281 - Claims 1-3, 9-13, 19-23, 25-26 are obvious over Rosenberg 737 in view of Rosenberg 281.

• Prior Art Relied Upon: Rosenberg 737 (Application # 09/487,737) and Rosenberg 281 (Application # 09/103,281). Petitioner also noted that Rosenberg 737 incorporates by reference Rosenberg 132 (Application # 09/253,132) and Braun 401 (Provisional Application # 60/160,401), which reinforce the teachings.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosenberg 737 teaches a haptic feedback system with all the core elements of the challenged claims except for the explicit use of a "lookup table" for storing haptic effect data. Rosenberg 737 discloses a processor that receives sensor signals from a touch-sensitive surface, determines an interaction with a graphical object, and generates an actuator signal based on that interaction. Petitioner asserted that Rosenberg 281, which is expressly incorporated by reference into Rosenberg 737, remedies this gap by explicitly disclosing the use of "a look-up table of force values to be output based on the current position of the user object."
  • Motivation to Combine: The primary motivation asserted was that Rosenberg 737 expressly incorporates Rosenberg 281 by reference to describe movable housing portions that provide haptic feedback. A person of ordinary skill in the art (POSITA), when implementing the system of Rosenberg 737, would have been motivated to consult the incorporated Rosenberg 281 reference and would have found its disclosure of using a lookup table to be a desirable and efficient method for storing and retrieving force data.
  • Expectation of Success: A POSITA would have had a high expectation of success because both references describe similar system architectures with a programmable processor. Integrating a known software component (a lookup table) from Rosenberg 281 into the analogous system of Rosenberg 737 would have been a predictable and straightforward task, resulting in the beneficial and efficient storage of haptic effect data.

Ground 2: Obviousness over Rosenberg 737, Rosenberg 281, and Newton 2.0 - Claims 5, 7, 15, and 17 are obvious over the combination of Rosenberg 737, Rosenberg 281, and Newton 2.0.

• Prior Art Relied Upon: Rosenberg 737 (Application # 09/487,737), Rosenberg 281 (Application # 09/103,281), and Newton 2.0 (Newton 2.0 User Interface Guidelines, May 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, which Petitioner argued establishes a haptic feedback system using a lookup table. The additional reference, Newton 2.0, was introduced to teach the specific limitations of claims 5, 7, 15, and 17, which require displaying a keypad comprising a plurality of softkeys, including one softkey for each digit from 0 to 9. Newton 2.0, the official user interface guide for the Apple Newton PDA, explicitly discloses multiple built-in softkey keyboards (numeric, phone, etc.) that meet this description.
  • Motivation to Combine: Petitioner argued for an explicit motivation to combine, as Rosenberg 737 states that its haptic feedback system "can include ... the Newton from Apple Computer." A POSITA seeking to implement the haptic system of Rosenberg 737 on an Apple Newton would have been directly led to consult the Newton 2.0 guidelines and would have found it obvious to apply the haptic feedback to the disclosed softkey keyboards.
  • Expectation of Success: A POSITA would have expected success in this combination because Rosenberg 737 teaches that its graphical buttons are programmable in shape and function. Applying haptic feedback to the well-defined softkeys described in Newton 2.0 would have been a predictable implementation using known software programming techniques.

4. Key Claim Construction Positions

• "determining": Petitioner argued this term, found in claims 1, 12, and 22, should be construed to mean "ascertaining." This construction distinguishes the claimed act of a processor reading sensor signals to ascertain an interaction from the different act of causing an interaction to occur, which Petitioner contended is not disclosed in the patent.
• "generating an actuator signal based at least in part on the interaction and haptic effect data in a lookup table": Petitioner proposed a broad construction for this phrase, arguing it means the actuator signal is based on two separate inputs: (1) the interaction and (2) haptic effect data from a lookup table. Petitioner contended that nothing in the claim language or file history requires the interaction itself to be stored in the lookup table or that the table must contain an association between the interaction and the data. This construction was central to their argument that Rosenberg 281’s disclosure of a lookup table of force values meets the limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• No Entitlement to Provisional Filing Date: A central contention was that no claim of the ’356 patent is entitled to the effective filing date of its earliest provisional application. Petitioner argued that the "Lookup Table Limitation" was added during prosecution to overcome a rejection. However, the first provisional application allegedly lacks any written description support for this limitation, as it only generically mentions a "controller" without discussing lookup tables or incorporating references that disclose them. This argument was critical for establishing that Rosenberg 737 (published July 26, 2001) qualifies as prior art under §102.

6. Relief Requested

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