PTAB

IPR2019-00847

Motorola Mobility LLC v. Immersion Corporation

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1. Case Identification

  • Case #: IPR2019-00847
  • Patent #: 6,429,846
  • Filed: March 20, 2019
  • Petitioner(s): Motorola Mobility LLC and Motorola Mobility Holdings LLC
  • Patent Owner(s): Louis B. Rosenberg, et al.
  • 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 describes a system for providing haptic feedback through a touch input device, such as a touchpad integrated into a portable computer. The system generates forces (e.g., pulses, vibrations) on the touch surface that a user can feel, which are correlated with user interactions within a graphical user interface (GUI), such as moving a cursor over an icon or activating a button.

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 a computer cursor control system with a haptic feedback touchpad. Beeks’s system used actuators (a vibrating motor and a bumping solenoid) to provide tactile feedback to the user in response to specific GUI events, thereby reducing the need for visual confirmation ("head-down time"). However, Beeks primarily depicted its system with desktop or specialized cockpit computers. Petitioner asserted that Stephan remedied this by teaching a touchpad with multiple distinct functional regions (e.g., cursor, scroll, pan) that is integrated directly into the housing of a portable, clamshell-type laptop computer. The combination of Beeks's haptic feedback technology with Stephan's integrated, multi-region portable touchpad renders the challenged claims obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Beeks and Stephan for several reasons. First, applying Beeks's haptic feedback to a portable computer as taught by Stephan was a predictable step to meet market demand for portable computing, particularly in environments mentioned by Beeks (e.g., military battlefields, vehicle operations) where portability is key. Second, a POSITA would integrate the functionality of Beeks’s separate physical knobs and buttons into "soft" regions on a single touchpad surface, as taught by Stephan, to create a more compact and streamlined device suitable for a laptop. This represents a simple combination of known elements to achieve a predictable improvement in portability and usability.
    • Expectation of Success: A POSITA would have had a high expectation of success in this combination. The integration of a touchpad into a laptop was a well-known and common practice. Furthermore, miniaturizing the actuators disclosed in Beeks to fit within a laptop housing would have been a routine design choice, not an inventive leap. The combination simply applies a known feature (haptic feedback) to a known device type (portable computer with an integrated touchpad).

Ground 2: Obviousness over Beeks, Stephan, and Bisset - Claim 7 is obvious over Beeks and Stephan in view of 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 targets claim 7, which recites a "handheld device." Petitioner asserted that the combination of Beeks and Stephan taught a haptic touchpad integrated into a portable laptop. Bisset was introduced because it explicitly taught a truly handheld computing device designed for maximum compactness, featuring a touchpad on one face and a display on the other. Petitioner argued that applying Bisset’s teachings on miniaturization and handheld form factors to the portable system of Beeks/Stephan would render the "handheld" limitation of claim 7 obvious.
    • Motivation to Combine: A POSITA would be motivated to incorporate Bisset’s teachings to further reduce the size of the Beeks/Stephan portable laptop into a handheld device. This modification would be driven by the strong and well-recognized market pressure for smaller, more compact computing devices that could be carried in a pocket. The motivation was not to invent a new function, but to make a known system smaller and more portable, which is an ordinary and predictable design goal.
    • Expectation of Success: There was a reasonable expectation of success because miniaturizing electronic components was a well-established trend and a routine engineering task. Applying Bisset's known design principles for handheld devices to the combined Beeks/Stephan system would predictably yield a smaller device that retained the core functionality of providing haptic feedback on a touch surface.

4. Key Claim Construction Positions

  • Petitioner asserted that all claim terms should be given their plain and ordinary meaning but highlighted disputed constructions from a co-pending district court proceeding to ensure transparency.
  • The most critical disputed term was "touch input device." Petitioner proposed a narrower construction ("device that allows a user to provide input by touching an area on the device... but not the bezel, chassis or controller"), while the Patent Owner argued for a broader, plain-meaning approach.
  • Crucially, Petitioner argued that its obviousness contentions were valid and persuasive under either party's proposed construction, thereby aiming to relieve the Board of the need to resolve this dispute to find the claims unpatentable.

5. Arguments Regarding Discretionary Denial

  • Relation to Prior Art and Prosecution: Petitioner argued against discretionary denial under §325(d), stating that the primary references (Beeks, Stephan, and Bisset) were never considered by the examiner during the original prosecution of the ’846 patent. Therefore, the petition raised new arguments based on art the Patent Office had not previously evaluated.
  • Relation to Other Petitions: Petitioner disclosed a concurrently filed petition against the ’846 patent but argued against denial on that basis. It contended that this petition was unique because it challenged dependent claims 2, 4, and 13, which were not challenged in the other filing. Petitioner suggested that the two trials could be conducted in parallel to create efficiencies through shared depositions and hearings.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 7, 13, 16, 18, and 19 of the ’846 patent as unpatentable.