PTAB

IPR2018-01467

Samsung Electronics Co Ltd v. Immersion Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Haptic Feedback for Touchpads and Other Touch Controls
  • Brief Description: The ’846 patent describes devices used to interface with computer systems that provide haptic feedback to the user. The technology is presented as a solution to a perceived problem in the prior art where touchpads lacked the ability to provide haptic sensations to assist with user control tasks in a graphical environment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Beeks and Stephan - 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 the core invention: a computer cursor control system with a touchpad (input device element 204) configured to provide tactile feedback via actuators (vibrating source 502 and bumping source 504). However, Beeks disclosed its system in the context of desktop or aircraft cockpit computers. Petitioner asserted that Stephan remedied this by disclosing a multi-region touchpad (touchpad 260) explicitly integrated into the housing of a portable, clamshell-type laptop computer (computer 262). The combination of Beeks' haptic feedback system with Stephan's portable form factor and multi-region touchpad functionality rendered the challenged claims obvious. For dependent claims, Stephan’s disclosure of a multi-region touchpad with separate areas for cursor control, scrolling, and other functions was argued to teach the limitations of claims 16 and 18. The solenoid (bumping source 504) in Beeks was asserted to meet the actuator limitation of claim 13.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Beeks and Stephan for several reasons. First, modifying Beeks’ system to be portable was an obvious variation, especially since Beeks suggested applications like “military battlefields” where portability is crucial. Stephan provided a known and conventional way to make a touchpad-based system portable. Second, market demand for laptop computers would have driven a POSITA to adapt Beeks' haptic technology for a portable device. Third, a POSITA would integrate the functionality of Beeks’ separate buttons and knobs into a multi-region touchpad as taught by Stephan to condense the form factor and improve usability, consistent with Beeks’ goal of reducing user distraction (“head down time”).
    • Expectation of Success: A POSITA would have reasonably expected success in combining the references. The petition argued this was a predictable combination of known elements—Beeks’ haptic feedback and Stephan’s portable, multi-region touchpad—to achieve a known result: a portable device with haptic feedback. Miniaturizing Beeks' actuators to fit a laptop housing was presented as a routine design choice.

Ground 2: Obviousness over Beeks, Stephan, and Bisset - 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 targeted the "handheld device" limitation of claim 7. Petitioner established the obviousness of a portable haptic touchpad using the Beeks-Stephan combination as in Ground 1. To address the "handheld" aspect, Petitioner introduced Bisset, which described a compact, handheld computing device (device 300) with an integrated touchpad surface. Bisset explicitly addressed the market push for smaller, more compact systems. Petitioner argued that incorporating the haptic touchpad from the Beeks-Stephan combination into an even smaller, handheld form factor as taught by Bisset rendered claim 7 obvious.
    • Motivation to Combine: The motivations were an extension of those in Ground 1. A POSITA, having already been motivated to create a portable haptic touchpad, would have been further motivated by the well-known market pressure for miniaturization to reduce the device's size to a handheld form factor. Bisset taught a known design for such handheld devices. Petitioner noted that just as with laptops, the military was also developing handheld computing devices for battlefield use, providing another specific motivation to adapt the Beeks/Stephan technology to a smaller, handheld device as taught by Bisset.
    • Expectation of Success: Petitioner asserted that making a device smaller or handheld was a predictable and obvious design choice, absent some unexpected change in functionality. A POSITA would have reasonably expected that the haptic touchpad from the Beeks-Stephan combination would function in the same way when implemented in the smaller, handheld form factor disclosed by Bisset.

4. Key Claim Construction Positions

  • "touch input device": Petitioner noted this term was disputed in co-pending litigation. Petitioner proposed a construction that includes a touch surface, display, and sensor, but excludes the bezel or chassis. Patent Owner argued for plain and ordinary meaning. The petition asserted its invalidity arguments apply with equal force under either construction.
  • "outputting a force directly on said touch input device": Petitioner proposed this meant outputting a force "without intervening structure." The petition argued that Beeks' disclosure of a solenoid actuator contacting the underside of the touchpad met this limitation under any reasonable construction, including the parties' constructions from district court.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d), stating that the primary prior art references (Beeks, Stephan, and Bisset) were never considered by the examiner during the original prosecution. As the claims were never rejected, the Patent Office had not previously considered any substantive patentability arguments. Petitioner also disclosed a concurrently filed petition against other claims of the ’846 patent, arguing that any burden is offset by efficiencies gained from trying the petitions in parallel, as there is substantial overlap in the challenged claims.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review of claims 1, 2, 4, 7, 13, 16, 18, and 19 of the ’846 patent, and that those claims be found unpatentable and canceled.