Fitbit Inc v. Immersion Corp

1. Case Identification

• Case #: IPR2018-00592
• Patent #: 8,638,301
• Filed: February 7, 2018
• Petitioner(s): Fitbit, Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1-6, 9-11, 14-17, 21-24, 27-29, and 31

2. Patent Overview

• Title: Systems and methods for transmitting haptic messages
• Brief Description: The ’301 patent describes a messaging system for mobile devices that communicate by transmitting messages capable of causing various visual and tactile ("haptic") effects based on sensor inputs. The invention allows users to interact with their devices to generate and send messages that produce a combined audio-visual and haptic experience on a receiving device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Grams and POSITA Knowledge - Claims 1-6, 9-11, 14-17, 21-24, 27-29, and 31 are obvious over Grams in view of the knowledge of a Person of Ordinary Skill in the Art (POSITA).

• Prior Art Relied Upon: Grams (Application # 2007/0049313).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Grams, which discloses a multi-player mobile gaming system, teaches every element of the challenged claims. In Grams, players use mobile devices to aim and fire virtual weapons at each other. The core teachings of Grams were mapped to the independent claims as follows:
    • For method claim 1, Grams’s mobile devices include sensors like GPS, inclinometers, and compasses that generate a “first sensor signal” associated with the device’s movement and orientation for aiming. The game’s processor uses this signal to determine the outcome of a virtual weapon firing—a "hit" or "miss"—which constitutes the claimed "message to be displayed." Based on this same movement/aiming data, Grams’s system determines and outputs a vibration on the targeted player’s device, satisfying the "determining a haptic effect" limitation.
    • For method claim 15, which requires both a "first sensor signal" from movement and a "second sensor signal" from user interaction, Petitioner asserted Grams meets both limitations. The movement sensors for aiming provide the first signal, while user input controls (e.g., buttons or touch pads) used to fire the weapon provide the second signal. Grams then transmits a data signal ("first data signal") based on both the user's firing action and the device's movement to determine if a hit occurred, and a haptic effect is generated on the targeted device based on receiving this data signal.
    • For system claim 27, Petitioner contended that Grams discloses a system with a processor configured to perform the steps recited in the method claims. The processor in Grams receives signals from movement sensors and user input sensors, receives data signals from other devices via a network interface, and determines corresponding display changes and haptic effects.
    • Petitioner argued that the dependent claims add only conventional or obvious features. For example, Grams explicitly teaches using accelerometers and GPS sensors (claim 2). Adding a touch-screen (claims 4, 16, 29) was argued to be an obvious design choice for a mobile gaming device at the time, given the prevalence of devices like the original iPhone. Similarly, generating predefined messages like "hit" or "miss" (claim 5) is an inherent aspect of the gaming system described in Grams.
  • Motivation to Combine (for §103 grounds): The primary combination is of the express teachings of Grams with the general knowledge of a POSITA. Petitioner argued a POSITA would have been motivated to implement the mobile gaming system of Grams using well-known, conventional components and functionalities. For instance, a POSITA would naturally use a touch-screen for user input on a mobile device, as it was a common and advantageous alternative to buttons and touch pads. No motivation to combine distinct, complex references was required, as Grams alone was argued to provide the foundational system, with a POSITA merely applying routine design choices.
  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success in implementing the claimed features, as they involved applying predictable and well-established technologies. Combining a known input method like a touch-screen with the mobile gaming system of Grams would have yielded predictable results.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 9-11, 14-17, 21-24, 27-29, and 31 of the ’301 patent as unpatentable.