Apple Inc v. Immersion Corp

1. Case Identification

• Case #: IPR2017-01368
• Patent #: 8,581,710
• Filed: May 4, 2017
• Petitioner(s): Apple Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 13, 18, 19, and 20

2. Patent Overview

• Title: System and Methods For Haptic Confirmation of Commands
• Brief Description: The ’710 patent discloses systems for providing haptic feedback to confirm user commands. The technology addresses scenarios where audio or visual cues are not ideal, such as with voice commands issued to electronic devices like smartphones and PDAs.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 13, 19, and 20 over Martin in view of Makela

• Prior Art Relied Upon: Martin (Patent 7,336,260) and Makela (Application # 2009/0164207).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Martin taught a method for providing tactile feedback on electronic devices by receiving a user input, associating it with a command and a corresponding haptic effect via a lookup table, and then driving an actuator to produce that effect. Martin disclosed various input methods but did not explicitly teach using a microphone for speech input. Makela supplied this missing element, disclosing a user interface for mobile devices that explicitly included a microphone and associated speech recognition functions for command input. The combination of Martin's haptic feedback system with Makela's speech input modality allegedly rendered the challenged claims obvious.
  • Motivation to Combine: A POSITA would combine these references to improve the user interface of mobile devices, a goal common to both. Makela provided an express motivation for using a microphone to enable "eyes-free reception and hands-free interaction," a known benefit that a POSITA would find desirable to implement in Martin's haptic feedback system. The combination represented a predictable application of a known input technique (speech) to an existing system (haptic feedback) to yield a predictable result.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved incorporating a well-understood input device (a microphone, as taught by Makela) into a system designed to work with various inputs (Martin).

Ground 2: Obviousness of Claims 13, 18, and 19 over Theodore in view of Shahoian

• Prior Art Relied Upon: Theodore (Patent 6,505,159) and Shahoian (Application # 2002/0033795).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Theodore disclosed a speech recognition system that provided feedback to a user indicating whether a voice command was recognized or not recognized. While Theodore's primary embodiment used audible tones for feedback, it expressly contemplated using alternative "tactile indicators such as buzzers." Theodore did not, however, detail the specific circuitry for driving such a buzzer. Shahoian was alleged to cure this deficiency by teaching specific circuitry, such as a self-exciting oscillation circuit, for driving a piezo buzzer to produce modulated haptic sensations. The combination provided a complete system for haptic confirmation of voice commands.
  • Motivation to Combine: A POSITA seeking to implement the tactile feedback expressly suggested by Theodore would be motivated to consult a reference like Shahoian, which provided the necessary technical details for driving a haptic actuator. The motivation arose directly from Theodore's disclosure pointing toward the use of tactile buzzers, making Shahoian's teachings a natural and logical implementation choice to achieve Theodore’s stated goal.
  • Expectation of Success: A POSITA would have a high expectation of success because Shahoian provided a known, practical solution for implementing an improvement (tactile feedback) that was already contemplated and suggested by Theodore. This amounted to applying a known technique to a known system to achieve a predictable outcome.

4. Key Claim Construction Positions

• "otherwise..." (claim 13): Petitioner argued that under the broadest reasonable interpretation standard and based on PTAB precedent (e.g., Ex Parte Schulhauser), a prior art reference need not teach the steps recited in the "otherwise" portion of a conditional "if...otherwise..." claim limitation to render the claim obvious. Petitioner asserted that this analysis, previously adopted by the Board in a prior IPR on the ’710 patent, should apply here.
• "haptic effect configured to emulate the command" (claim 20): Petitioner proposed this term be construed broadly, consistent with the Patent Owner's infringement contentions in a related ITC action. In that action, a short vibration was alleged to "emulate" a command to display a menu. Petitioner argued this broad interpretation should apply for the purposes of the IPR.
• "signal" (all challenged claims): Petitioner argued for a broad construction based on its plain and ordinary meaning, defined as "any electrical quantity, such as voltage, current, or frequency, that can be used to transmit information," encompassing both analog and digital signals.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §315(d) and §325(d). The petition asserted that it was proper because it addressed different claims and different prior art than a previously filed petition (IPR2016-01603). Petitioner contended this was only its second petition against the ’710 patent and did not constitute overwhelming the Patent Owner. Furthermore, filing the petition was presented as a measure to conserve Board and party resources by providing a lower-cost alternative to a concurrent, stayed district court action, consistent with the goals of the America Invents Act.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 13, 18, 19, and 20 of the ’710 patent as unpatentable.