Motorola Mobility LLC v. Immersion Corp

1. Case Identification

• Case #: IPR2019-00847
• Patent #: 6,429,846
• Filed: March 20, 2019
• Petitioner(s): Motorola Mobility LLC, Motorola Mobility Holdings LLC
• 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 relates to touch control devices, such as touchpads integrated into portable computers, that provide haptic feedback to a user. The system uses one or more actuators coupled to the touch surface to generate tactile sensations corresponding to a user's interactions with a graphical user interface (GUI).

3. Grounds for Unpatentability

Ground 1: Obviousness over Beeks and Stephan - Claims 1-2, 4, 7, 13, 16, 18-19 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 complete haptic feedback system for a computer pointing device, including a touch input device (touchpad 204), a processor (main processor 202), and an actuator (solenoid bumping source 504) coupled to the touchpad. The Beeks system was designed to reduce user "head down time" by outputting tactile forces based on information from the processor corresponding to GUI events. Petitioner contended this met most limitations of independent claim 1. Stephan was asserted to supply the remaining key limitation by teaching the integration of a multi-region touchpad (touchpad 260) directly into the housing of a portable, clamshell-style laptop computer (computer 262). The combination of Beeks' haptic functionality with Stephan's integrated, portable form factor allegedly rendered the claims obvious.
  • Motivation to Combine: A POSITA would combine Beeks' haptic system with Stephan's portable, multi-region touchpad for several reasons. The primary motivation was to apply a known haptic technology to the common and commercially significant laptop form factor to improve portability and usability. Beeks itself suggested applicability in environments requiring portability, such as "military battlefields." Furthermore, Stephan's multi-region design offered a predictable way to condense the multiple physical knobs and buttons of Beeks' device into "soft" buttons on the touchpad surface, a necessary step for a compact laptop design. This integration was consistent with Beeks' goal of reducing reliance on visual GUI cues.
  • Expectation of Success: Petitioner asserted that combining known haptic actuators with a standard laptop touchpad was a predictable integration of known elements. A POSITA would have had a reasonable expectation of successfully creating a portable computer with haptic feedback, as it involved applying a known improvement (haptics) to a known device (laptop with touchpad).

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 claim 7, which required the touch input device to be integrated into a "handheld device operated by at least one hand of a user." Building upon the Beeks-Stephan combination that resulted in a haptic-enabled laptop, Petitioner introduced Bisset to teach the modification of this device into an even smaller, handheld form factor. Bisset disclosed a very compact handheld computing device featuring a touchpad on its rear face and a display on its front face, and explicitly illustrated a user grasping the device with one hand while operating it.
  • Motivation to Combine: A POSITA would be motivated to further modify the portable laptop taught by the Beeks-Stephan combination into the smaller handheld form factor taught by Bisset. This motivation stemmed from the strong and well-documented market pressure for device miniaturization and increased portability at the time of the invention. Bisset provided an exemplary design for incorporating a touchpad into such a handheld device. The combination was presented as an obvious design choice to make the resulting haptic device more compact and suitable for pocket transport, directly addressing the limitations of claim 7.
  • Expectation of Success: Petitioner argued that reducing the size of the combined Beeks-Stephan device using the known compact design principles taught by Bisset would have been a predictable design modification with a high expectation of success.

4. Key Claim Construction Positions

• "touch input device": Petitioner proposed construing this term as a "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 important to Petitioner's arguments for distinguishing the claimed interactive device from its passive housing and other internal components when mapping the prior art.
• "outputting a force directly on said touch input device": Petitioner proposed this term be construed as "outputting a force on the touch input device without intervening structure." This was critical to its argument that the actuator in Beeks (a solenoid) met the limitation because its armature was disclosed as directly contacting the underside of the touchpad to create a "bumping sensation."
• Petitioner asserted that its invalidity arguments were persuasive under either its proposed constructions or the Patent Owner's alternative constructions (which generally advocated for plain and ordinary meaning).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper because the primary references (Beeks, Stephan, and Bisset) were never considered by the examiner during the original prosecution of the ’846 patent. Petitioner contended that the prosecution record was devoid of any substantive patentability arguments, as the claims were allowed in a first action.
• The petition also noted the concurrent filing of another IPR against the ’846 patent and argued that any burden from two petitions was offset by the potential for efficiency gains, such as conducting the trials in parallel with shared discovery and hearings.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 4, 7, 13, 16, and 18-19 of the ’846 patent as unpatentable under 35 U.S.C. §103.