Samsung Electronics Co., Ltd v. Immersion Corporation

1. Case Identification

• 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): Robert Lacroix, et al. (Real Party-in-Interest: Immersion Corporation)
• Challenged Claims: 1-15

2. Patent Overview

• Title: Haptic Feedback System With Stored Effects
• Brief Description: The ’051 patent describes a haptic feedback system that includes a collection of “pre-defined haptic effects” stored in memory. Software applications executing on a device can issue commands to call a specific stored effect, causing the system to control an actuator and produce the requested haptic vibration.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are obvious over Baron.

• Prior Art Relied Upon: Baron (PCT Publication No. WO 99/40504).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baron discloses all elements of the challenged claims. Baron teaches a "system and method for...storing force, tactile or other vibro output," which constitutes a haptic feedback system. It discloses a processor and memory storing a "vibro data library" containing "predefined vibro scenarios" (the claimed "pre-defined haptic effects"). An application, such as a game, generates "vibro commands" (the "haptic effect request") to retrieve data from the library and send it to a "vibro output device" comprising an actuator drive circuit and actuator. Petitioner contended that Baron’s disclosure of storing haptic data in a ".wav" file format, which contains a stream of sampled amplitude values, meets the "digitized streamed envelope construct" limitation of claim 3. Further, Baron's system prioritizes commands when multiple are received at once, ensuring only the highest-priority effect plays, which Petitioner argued meets the limitation that the "entire haptic output...consists of the first stored haptic effect."
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 1-3, 6-9, 11-13, and 15 are obvious over Malmberg in view of Grant.

• Prior Art Relied Upon: Malmberg (PCT Publication No. WO 2005/085981) and Grant (PCT Publication No. WO 2004/053671).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Malmberg teaches a haptic feedback system for mobile devices where a CPU retrieves stored "vibration patterns" from memory to control an actuator. Grant teaches encoding haptic effects into "haptic codes" that can be directly applied to an actuator without significant processing. The combination provides a complete system with a processor (Malmberg's CPU), memory storing predefined effects (Malmberg's storage using Grant's "haptic code" format), an actuator drive circuit, and an actuator. Petitioner argued that Malmberg’s disclosure of an Application Program Interface (API) that allows game applications to access stored vibration patterns meets the API-related limitations of the claims.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Grant's efficient "haptic code" format with Malmberg's system to reduce processing load on the CPU. Because Grant's codes are directly applicable to an actuator, Malmberg's CPU would not need to perform intermediate conversions, resulting in lower cost, reduced power consumption, and higher overall performance.
  • Expectation of Success (for §103 grounds): Success would be expected because both references describe similar haptic feedback systems, and implementing a more efficient data format (from Grant) in a known system architecture (from Malmberg) was a predictable design choice.

Ground 3: Claims 5, 10, and 14 are obvious over Malmberg, Grant, and Chang.

• 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 builds on the Malmberg/Grant combination to specifically address claims requiring that a haptic effect request comprises a "priority" and is outputted based on that priority. Chang teaches a system for commanding force effects where "priorities may also be assigned to the individual force effects" to resolve conflicts when multiple effects are requested simultaneously.
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would be motivated to add Chang's priority management to the Malmberg/Grant system. Malmberg’s system allows multiple applications to request haptic effects, creating the potential for conflicts. Chang explicitly teaches using priorities to manage such conflicts. Therefore, incorporating Chang’s priority scheme was an obvious solution to a known problem in the art to ensure a higher-priority effect is not masked or distorted by a lower-priority one.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in implementing a known conflict-resolution technique (priority assignment from Chang) into the haptic system of Malmberg and Grant.

4. Key Claim Construction Positions

• "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, adopted by the Board in a prior IPR, was argued to be critical for mapping prior art data formats (e.g., .wav files or sampled values) to the claim language.
• "the entire haptic output...consists of the first stored haptic effect" (claim 1): Petitioner proposed this means "the haptic output in response to the haptic effect request is limited to a single stored haptic effect." This construction was central to arguing that prior art systems with priority schemes (like Baron's), which play only one effect at a time in case of a conflict, meet the claim limitation.
• "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 construction was argued as necessary to show that standard digital file formats for storing vibration data, like those in Baron, fall within the scope of the claim.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) would be inappropriate based on the General Plastic factors. The petition asserted that this was Samsung's first IPR challenge to the ’051 patent. It distinguished itself from two prior, unsuccessful IPRs filed by Apple, noting that the Patent Owner sued Samsung only after the Apple IPRs were denied institution. Petitioner contended it had no reason to search for prior art until it was sued. Furthermore, the petition argued it relies on different prior art (Grant and Chang) and presents different combinations and arguments than those in the prior Apple IPRs or the co-pending district court litigation. Finally, the petition challenges claims (4-7 and 10-15) that are not at issue in the district court case, reducing overlap and favoring institution.

6. Relief Requested

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