Fitbit Inc v. Immersion Corp

1. Case Identification

• Case #: IPR2018-00588
• Patent #: 8,059,105
• Filed: February 7, 2018
• Petitioner(s): Fitbit, Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 19-21

2. Patent Overview

• Title: Haptic feedback for touchpads and other touch controls
• Brief Description: The ’105 patent discloses a haptic feedback device that provides tactile notifications, such as vibrations, in response to "user-independent events." These events do not require user interaction and include occurrences like the receipt of an email, a reminder event, or an event occurring within a game.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 19 and 21 over Shinohara

• Prior Art Relied Upon: Shinohara (Patent 6,422,943).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shinohara, which discloses a game controller, teaches all limitations of independent claim 19. Shinohara's controller contains a processor (CPU) that receives an input signal ("dynamic transmission data") from a game console corresponding to a user-independent event (an event occurring in a game). The processor then generates a force signal to drive actuators ("response means") that impart a haptic effect (vibration) on the user. For dependent claim 21, Petitioner asserted that the "plurality of manipulation buttons" on the Shinohara controller constitutes a keypad.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground.
  • Expectation of Success (for §103 grounds): Not applicable as this is a single-reference ground.

Ground 2: Obviousness of Claim 20 over Shinohara in view of Goto

• Prior Art Relied Upon: Shinohara (Patent 6,422,943), Goto (Patent 6,392,613).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claim 20, which adds the limitation that the haptic device is a "portable computing device." While Shinohara's controller is inherently portable, Petitioner argued that Goto explicitly teaches a "portable, electronic gaming device" designed to be mounted on a game controller nearly identical to Shinohara's. Goto's device includes a microcomputer and memory, meeting the "computing device" requirement, and its purpose is to make the controller portable and wireless.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Shinohara and Goto to achieve the well-known and desirable benefit of portability in a gaming device. The motivation was strong because both patents were assigned to Sony, were filed within 10 months of each other, are directed to the same field of game controllers, and disclose nearly identical controller designs with vibrational feedback.
  • Expectation of Success (for §103 grounds): The combination would have been entirely predictable, as Goto's portable device was specifically designed to be mounted on a controller like that taught in Shinohara.

Ground 3: Obviousness of Claims 19-21 over Macko, Mooney, and MacDonald

• Prior Art Relied Upon: Macko (Patent 6,052,563), Mooney (Patent 5,023,504), and MacDonald (Patent 5,293,161).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted this combination of pager patents teaches all challenged claims. Macko discloses a communication device (pager) with a processor that receives an input signal (an incoming message, including a forwarded email, which is a claimed user-independent event) and generates a control signal for a "vibration alert." To supply missing implementation details, a POSITA would look to Mooney, which explicitly teaches using an "actuator" (a piezo-electric motor) to generate a "tactile alert" in a pager. MacDonald further teaches using a variable frequency vibrator to provide different haptic alerts based on the content of an incoming message, rendering obvious the generation of a force signal based on the input signal. Dependent claim 20 is met because Macko discloses a pager, and claim 21 is met because Macko's user interface is disclosed as a keypad or touchscreen.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references because all three are pager patents filed by the same assignee (Motorola) in the 1990s to solve the same problem of alerting users to messages. A POSITA would have been motivated to implement Macko's vibration alert using Mooney's explicit actuator teaching and to enhance it with MacDonald's variable-frequency alerts to provide more informative, discreet notifications.
  • Expectation of Success (for §103 grounds): Success was expected as the combination involved implementing a known type of alert (vibration) in a pager using well-understood components (actuators) to achieve the predictable benefit of improved user notification.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 19-21 based on the combination of Mooney, Laflin (Patent 5,705,995), and MacDonald. This ground relied on a similar pager-based combination theory but focused on different user-independent events taught by Laflin, namely reminder events and events occurring in a game for which the user is not an active participant.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 19-21 of Patent 8,059,105 as unpatentable.