Samsung Electronics Co., Ltd v. Immersion Corporation

1. Case Identification

• Case #: IPR2018-01501
• Patent #: 8,031,181
• Filed: August 6, 2018
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1-3, 6, 8, 14, 20-21

2. Patent Overview

• Title: Haptic Feedback for Touchpads and Other Touch Controls
• Brief Description: The ’181 patent discloses devices used to interface with computer systems that provide haptic feedback to the user. The technology is primarily described in the context of touchpads and touchscreens on portable computers, wherein actuators provide vibrations or other tactile sensations in response to user interactions with a graphical user interface (GUI).

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6, 8, 14, and 20-21 are obvious over Gemmell in view of Maddalozzo.

• Prior Art Relied Upon: Gemmell (WO 92/00559) and Maddalozzo (Patent 7,768,501).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of Gemmell and Maddalozzo renders the challenged claims obvious under 35 U.S.C. §103. Gemmell was asserted to teach a computer system with a touch-sensitive input device (e.g., a touchscreen) that provides varied vibrational tactile feedback to a user based on interactions with GUI elements like icons and windows. This provides the foundational haptic feedback system. Maddalozzo was asserted to disclose a portable computer with a sophisticated touchscreen GUI that includes distinct, software-defined functional regions. Specifically, Maddalozzo's GUI can switch between a "mouse mode" for cursor positioning, a "keyboard mode," and a "display mode" with scroll bars, all operable on a single touch surface.

  • Petitioner contended that combining these references would result in the device of independent claim 1. Gemmell’s haptic feedback system would be applied to Maddalozzo’s multi-region GUI. This combination allegedly taught a haptic feedback device with a touchscreen (from both references) that outputs a position signal for cursor positioning (from Maddalozzo’s “mouse mode” region, which serves as the claimed “first region”) and also has a “second region” (e.g., Maddalozzo’s mode-select buttons or scroll bar) providing a different signal for a different control functionality. The combination would naturally lead to associating different haptic effects (as taught by Gemmell) with these different functional regions (from Maddalozzo), and would include an actuator (from Gemmell) to impart force based on computer output (from Gemmell). The dependent claims were argued to be obvious as they recite additional, well-known features of such systems, such as being a portable computer or PDA (disclosed in both references), using a stylus (disclosed in Gemmell), or using a solenoid actuator (disclosed as an option in Gemmell).

  • Motivation to Combine (for §103 grounds): Petitioner presented several motivations for a person of ordinary skill in the art (POSITA) to combine the references. First, since Gemmell teaches using a Windows-based GUI, a POSITA would have been motivated to look to a reference like Maddalozzo, which provides specific implementation details for an improved, multi-functional, Windows-based touchscreen GUI. Second, market demand for more compact and functional tablet computers would have driven a POSITA to integrate the advanced GUI features of Maddalozzo with the enhanced user feedback system of Gemmell. Third, applying Gemmell’s haptic feedback to distinguish between Maddalozzo’s distinct functional regions would be a natural way to further Gemmell’s stated goal of improving a user’s ability to interact with a GUI.

  • Expectation of Success (for §103 grounds): Petitioner argued that a POSITA would have had a reasonable expectation of success because the combination involved applying a known technique (haptic feedback) to a known type of system (a multi-region touchscreen GUI) to achieve a predictable result.

4. Key Claim Construction Positions

• Petitioner argued that its invalidity contentions hold under any reasonable construction, including both its own and the Patent Owner's proposed constructions from a related district court case, thereby obviating the need for the Board to resolve the dispute.
• "touch screen": This was the primary disputed term.
  • Petitioner's Proposed Construction: "a display 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"
  • Patent Owner's Proposed Construction: "No construction is necessary," or alternatively, "[A] 'display device that allows a user to provide input by touching an area on the device.' A touch screen may include a touch surface, a touch sensor, a local microprocessor, and a display."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It asserted that although Gemmell was cited during prosecution of the ’181 patent, it was "buried" among over 600 references and was not substantively considered by the examiner. Furthermore, the primary combination reference, Maddalozzo, was not before the examiner at all.
• Petitioner also addressed a concurrently filed IPR petition against the same patent, arguing that institution of both would be proper and efficient. It noted that the present petition uniquely challenges claims 6 and 14, and that significant overlap in the other challenged claims would allow for efficiencies like shared depositions and hearings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6, 8, 14, and 20-21 of the ’181 patent as unpatentable.