Samsung Electronics Co., Ltd v. IMMERSION CORPORATION

1. Case Identification

• Case #: IPR2018-01467
• Patent #: 6,429,846
• Filed: August 6, 2018
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1, 2, 4, 7, 13, 16, 18, 19

2. Patent Overview

• Title: Haptic Feedback for Touchpads and Other Touch Controls
• Brief Description: The ’846 patent describes a touch input device, such as a touchpad integrated into a portable computer, that provides haptic feedback to the user. The system uses one or more actuators (e.g., piezoelectric, solenoid) to generate tactile sensations like pulses or vibrations on the touch surface in response to user interactions with objects in a graphical user interface (GUI).

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, 7, 13, 16, 18, and 19 are obvious over Beeks in view of Stephan.

• Prior Art Relied Upon: Beeks (Patent 6,373,463) and Stephan (Patent 5,748,185).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Beeks taught a computer pointing device with a touchpad and actuators (a solenoid for "bumping" and a motor for "vibrating") that provide tactile feedback to reduce a user's need to look at the screen. However, Beeks’ primary embodiment was a desktop or cockpit system with separate buttons. Stephan was alleged to remedy this by teaching a multi-region touchpad (for cursor, scroll, and pan functions) that is integrated directly into the housing of a portable laptop computer. The petition asserted that Beeks disclosed all elements of independent claim 1 except for integration into a portable computer, a limitation supplied by Stephan. Stephan was also cited for disclosing a two-dimensional (X,Y) position signal, and for teaching a touchpad with multiple functional regions to address dependent claims 16 and 18.
  • Motivation to Combine: A POSITA would combine Beeks and Stephan to create a portable version of Beeks’ haptic system for use in environments that Beeks itself identified, such as vehicles and military battlefields, where portability is advantageous. Further motivation would arise from the desire to improve usability by replacing Beeks' separate physical knobs and buttons with integrated "soft" buttons on a multi-region touchpad, as taught by Stephan. This consolidation would predictably reduce the device's footprint and further Beeks’ goal of minimizing "head down time."
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as combining a known haptic system with a known portable computer architecture was a straightforward application of existing technologies to achieve a predictable result.

Ground 2: Claim 7 is obvious over Beeks in view of Stephan and Bisset.

• Prior Art Relied Upon: Beeks (Patent 6,373,463), Stephan (Patent 5,748,185), and Bisset (Patent 5,543,588).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed the "handheld device" limitation in claim 7. The argument built upon Ground 1, asserting that the Beeks-Stephan combination teaches a haptic touchpad on a portable laptop. Petitioner introduced Bisset, which taught further miniaturization of portable computers into very compact, "handheld" devices designed to be carried in a pocket and operated with one or two hands. Bisset disclosed a device with a display on one face and a touchpad on the opposite face, directly teaching the "handheld" form factor.
  • Motivation to Combine: A POSITA would have been motivated to apply Bisset's miniaturization teachings to the portable computer resulting from the Beeks-Stephan combination. This motivation was allegedly driven by strong and recognized market pressure for smaller, more compact handheld computing devices. The petition argued that making a computer "handheld" was an obvious design choice to improve portability, a known goal for devices used in military and mobile environments.
  • Expectation of Success: A POSITA would have expected success in miniaturizing the computer architecture, as this was a well-understood and common design trend at the time of the invention.

4. Key Claim Construction Positions

• "touch input device": Petitioner proposed the construction "device that allows a user to provide input by touching an area on the device, and may include a touch surface, a display, and a touch sensor but not the bezel, chassis or controller." This construction was argued to be critical for distinguishing the active device from the passive housing.
• "outputting a force directly on said touch input device": Petitioner proposed "outputting a force on the touch input device without intervening structure." This was contrasted with the Patent Owner’s anticipated position that force could be transmitted through connected rigid bodies. Petitioner contended its invalidity arguments succeeded even under a broader construction.
• "approximately planar touch surface": Petitioner asserted this term was indefinite but argued the issue was moot for the IPR because the prior art clearly disclosed a planar touch input device, satisfying the limitation regardless of its potential indefiniteness.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the core prior art references—Beeks, Stephan, and Bisset—were never presented to or considered by the USPTO during the original prosecution of the ’846 patent. Petitioner further argued that instituting this IPR alongside a concurrently filed petition (challenging a different, but overlapping, set of claims with different art) would be efficient. The overlap in challenged claims would allow for streamlined parallel proceedings, serving the goal of a just, speedy, and inexpensive resolution.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 2, 4, 7, 13, 16, 18, and 19 of the ’846 patent as unpatentable.