PTAB

IPR2019-00704

Samsung Electronics Co Ltd v. Immersion Corp

Key Events

Petition

petition

Case #: IPR2019-00704
Patent #: 8,619,051
Filed: March 12, 2019
Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
Patent Owner(s): Immersion Corporation
Challenged Claims: 1-15

Title: Haptic Feedback System with Stored Effects
Brief Description: The ’051 patent discloses a haptic feedback system for devices that use an actuator to generate vibrations. The system includes a memory storing a collection of "pre-defined haptic effects" that can be called by software applications to control an actuator and produce the requested haptic output.

Prior Art Relied Upon: Baron (WO 99/40504).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Baron taught a haptic feedback system comprising a processor, memory, actuator drive circuit, and actuator. Baron’s memory stores a library of "predefined vibro scenarios" (pre-defined haptic effects) as digital files (e.g., .wav files) that contain data defining the haptic output. An application, such as a game, generates "vibro commands" (haptic effect requests) that cause the processor to retrieve the corresponding data from memory and output it to drive an actuator. Baron also disclosed that multiple applications can access the stored effects via a "vibro data resource" (an API) and taught a priority scheme to manage simultaneous requests, ensuring that the output consists of a single effect at a time.
- Motivation to Combine (for §103 grounds): This ground relied on a single reference.
- Expectation of Success (for §103 grounds): This ground relied on a single reference.

Prior Art Relied Upon: Malmberg (WO 2005/085981) and Grant (WO 2004/053671).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Malmberg disclosed a haptic system for mobile devices where a CPU retrieves stored "vibration patterns" from memory in response to requests from applications. Grant disclosed storing haptic effects as "haptic codes" that can be directly applied to an actuator to render the effect, reducing processing overhead. The combination of Malmberg's architecture with Grant's efficient data format taught a system where a processor retrieves pre-defined haptic effects stored as direct-drive codes from memory in response to application requests. Malmberg also taught multiple applications accessing stored effects via an API.
- Motivation to Combine (for §103 grounds): A POSITA would combine Grant's "haptic code" format with Malmberg's system to reduce the processing power required to play back stored vibration effects. By storing effects in a format that could be directly applied to the actuator, the CPU would not need to perform significant preparation or conversion, leading to increased performance, lower costs, and better power efficiency in a mobile device.
- Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because Grant described implementing its haptic codes in a vibration generation system fundamentally similar to that described in Malmberg.

Prior Art Relied Upon: Malmberg (WO 2005/085981), Grant (WO 2004/053671), and Chang (Patent 6,424,356).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the combination of Malmberg and Grant from Ground 2 and added the teachings of Chang. Chang disclosed assigning priorities to individual force effects to manage situations where multiple effects are requested simultaneously and a conflict arises. This combination taught the system of Malmberg/Grant further including a priority system where haptic effect requests include a priority, and the system outputs the effect based on that priority to resolve conflicts.
- Motivation to Combine (for §103 grounds): Malmberg taught a system where multiple applications could request vibration effects at or near the same time, potentially leading to conflicts. A POSITA would have been motivated to incorporate Chang’s priority management techniques into the Malmberg/Grant system to ensure that a requested high-priority effect is played correctly, thereby avoiding a situation where it is masked or distorted by a lower-priority effect played simultaneously.
- Expectation of Success (for §103 grounds): Success would be expected as Chang’s priority system was designed to solve the exact problem of managing conflicting effect requests that would arise in a system like Malmberg’s.

"stored haptic effects" / "pre-defined haptic effects" (claim 1): Petitioner proposed construing these terms to mean "haptic effect[s] predefined with low-level haptic parameters such as voltage levels over time." This construction was adopted by the Board in a prior IPR and is central to arguing that the prior art's stored vibration data (e.g., .wav files or haptic codes) meets this limitation.
"the entire haptic output...consists of the first stored haptic effect" (claim 1): Petitioner proposed this term means "the haptic output in response to the haptic effect request is limited to a single stored haptic effect." This construction is critical for mapping prior art that uses priority schemes to serialize haptic outputs and prevent multiple effects from playing simultaneously.
"digitized streamed envelope construct" (claim 3): Petitioner proposed this term encompasses "a digital file including data representing a set of magnitudes over time for an effect, such as a signal voltage." This broad construction allows Petitioner to argue that prior art file formats like .wav files meet this limitation.

Petitioner argued that discretionary denial under §314(a) would be inappropriate based on the General Plastic factors. It asserted that this was Samsung's first petition challenging the ’051 patent and that it was filed without undue delay after being sued by the Patent Owner. Petitioner contended that it had no reason to search for the asserted prior art until after the suit was filed, which occurred after two previous IPRs filed by Apple had already concluded. Furthermore, Petitioner argued the current IPR raises new issues, relying on different prior art combinations and expert testimony than what is at issue in the co-pending district court litigation, and challenges claims not asserted in that litigation.

Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’051 patent as unpatentable.