Apple Inc v. Immersion Corp

1. Case Identification

• Case #: IPR2017-01369
• Patent #: 7,336,260
• Filed: May 4, 2017
• Petitioner(s): Apple Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 3-9

2. Patent Overview

• Title: Method and Apparatus For Providing Tactile Sensations
• Brief Description: The ’260 patent discloses systems for providing tactile feedback (haptic sensations) to input devices on electronic devices such as smartphones. The technology involves using a controller to receive signals from pressure-sensitive input devices and, in response, commanding actuators to generate corresponding tactile sensations.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 3-9 over Komata 036

• Prior Art Relied Upon: Komata 036 (Application # 2001/0009036).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Komata 036’s disclosure of a "pressure-sensitive parameter-setting program" for an entertainment system controller renders independent claim 1 and its dependent claims obvious. Komata 036’s controller buttons can resolve 255 different pressure levels, which are mapped to 13 distinct pressure ranges. When a user's applied pressure falls within a specific range, the system changes a parameter (e.g., volume) at a corresponding rate and outputs a "click" tactile sensation. Petitioner contended that a user applying varying pressures that fall into different ranges (e.g., pressure values of 70, 110, and 150) would trigger the detection of a first, second, and third pressure. Each detection would result in a corresponding tactile "click," thereby teaching the core limitations of claim 1.
  • Prior Art Mapping (Dependent Claims): Petitioner argued that dependent claims 3-5 and 7-9 were also rendered obvious. Komata 036’s controller system provides the tactile "click" sensation to the entire controller body, which includes multiple input devices (buttons), thus meeting the limitations of providing sensations to a second input device (claims 3-5, 7). Furthermore, Komata 036 discloses displaying the changing parameter value (e.g., "1" changing to "2") on a screen, which Petitioner asserted meets the limitations of providing signals for and displaying alphanumeric characters corresponding to the detected pressures (claims 8-9).

Ground 2: Obviousness of Claim 6 over Komata 036 in view of Komata 849

• Prior Art Relied Upon: Komata 036 (Application # 2001/0009036) and Komata 849 (Application # 2001/0008849).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner addressed claim 6, which depends from claim 5 and requires that a "fourth tactile sensation [be] different from the first tactile sensation." Petitioner asserted that while Komata 036 teaches a "click" sensation for different pressure ranges, it does not explicitly state that the clicks are different from one another. To supply this missing element, Petitioner pointed to Komata 849, which discloses a game for the same entertainment system and expressly teaches generating different tactile sensations by associating 255 distinct drive signals with 255 different detected pressure levels.
  • Motivation to Combine: A POSITA would combine the references to improve the user interface of the system disclosed in Komata 036. Petitioner emphasized that both patent applications were filed on the same day, share the same inventor, and are directed to the same hardware. Komata 849 explicitly teaches that varying haptic feedback based on pressure is useful and applicable beyond gaming. Therefore, a POSITA would be motivated to apply Komata 849’s teaching of varied feedback to the parameter-setting application of Komata 036 to provide more granular and informative feedback to the user.
  • Expectation of Success: A POSITA would have a high expectation of success in making this combination. The proposed modification involved applying a known and compatible method (varied haptic feedback from Komata 849) to an existing system (the controller in Komata 036) to achieve the predictable result of an enhanced user interface.

4. Key Claim Construction Positions

• "input device": Petitioner adopted the construction from a related IPR proceeding, proposing the term means "a device by which a user can interact with an electronic device to provide instructions, responses, and other input."
• "first/second/third...tactile sensations": Petitioner argued that, under the broadest reasonable interpretation, these terms should be construed to mean the haptic sensations can be either the same as or different from other claimed sensations. This position was supported by the doctrine of claim differentiation, as dependent claim 6 explicitly adds the limitation that a sensation must be "different."
• "second pressure greater than the first pressure": Petitioner contended this phrase and similar relational limitations only require the detection of different pressure magnitudes. The claim language was argued not to impose any temporal relationship between the detections, such as requiring them to occur within a single, continuous user press.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §315(d) or §325(d). The petition was asserted to be proper because it challenged a different set of claims (3-9) based on a different primary prior art reference (Komata 036) than those in a previously instituted IPR on the same patent (IPR2016-01884). Petitioner further contended that this was only its second petition against the ’260 patent and was filed to conserve party and Board resources by efficiently addressing claims at issue in a parallel, stayed district court litigation.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 3-9 of the ’260 patent as unpatentable on the grounds asserted.