Motorola Mobility LLC v. Immersion Corporation

1. Case Identification

• Case #: IPR2019-00848
• 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, 3, 5-7, 16, 18, 19

2. Patent Overview

• Title: Haptic Feedback for Touchpads and Other Touch Controls
• Brief Description: The ’846 patent discloses systems for providing haptic feedback on touch-sensitive input devices, such as touchpads and touchscreens. The technology involves coupling one or more actuators (e.g., piezoelectric actuators) to the touch surface to generate forces like pulses or vibrations, providing tactile sensations to the user that correspond to interactions with a graphical user interface (GUI).

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 5-7, 16, 18, and 19 are obvious over Gemmell in view of Maddalozzo and Blouin.

• Prior Art Relied Upon: Gemmell (WO 92/00559), Maddalozzo (Patent 7,768,501), and Blouin (Patent 5,977,867).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Gemmell, Maddalozzo, and Blouin teaches every element of the challenged claims. Gemmell discloses the foundational concept: a computer system with a touch-sensitive input (touchscreen) that provides tactile feedback using a vibrating mechanism (a speaker coil) controlled by the workstation. Gemmell also shows this system can be applied to a handheld tablet form factor. To supplement Gemmell’s general disclosure, Maddalozzo teaches a portable tablet computer with a sophisticated, space-saving GUI that includes different functional regions (e.g., mouse mode, keyboard mode, scroll bar) and shows a cursor tracking a user's finger movement on the touchscreen. Blouin further provides specific implementation details for a compact, handheld device, disclosing a vibrator (actuator) fixed directly to a resistive touch screen that generates two-dimensional (X-Y) coordinate data, explicitly to provide tactile feedback for user interactions like keystrokes. Together, these references were asserted to teach a portable haptic touch control with a planar surface that inputs a 2D position signal to a processor to move a cursor, where an actuator directly coupled to the touch surface outputs processor-controlled forces.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) would combine these references for several reasons. A POSITA would have been motivated to start with Gemmell’s foundational system and consult analogous art like Maddalozzo and Blouin for well-known implementation details to create a more refined and feature-rich product. Furthermore, strong market demand for smaller, more compact, and more functional portable devices would have driven a POSITA to integrate Maddalozzo's space-saving GUI and Blouin's compact haptic technology into Gemmell’s system.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the combination involved applying known technologies for their intended purposes to achieve predictable results. Integrating a known GUI (Maddalozzo) and a known direct-haptic-feedback mechanism (Blouin) with a known haptic system (Gemmell) presented no significant technical hurdles and was a matter of routine design.
  • Key Aspects: The petition emphasized that combining known elements to make a device portable or to add known features in response to market trends is a classic case of obviousness. It also argued that when faced with a finite number of predictable design choices, such as directly or indirectly mounting an actuator, pursuing a known option (as taught by Blouin) is obvious.

4. Key Claim Construction Positions

• "touch input device": Petitioner argued for a construction that includes the touch surface, display, and sensor, but explicitly excludes the bezel, chassis, or controller. This distinction was relevant to defining the scope of the claimed device in relation to the prior art systems.
• "outputting a force directly on said touch input device": Petitioner proposed this term means "outputting a force on the touch input device without intervening structure." This construction was central to the argument, as Blouin's disclosure of a vibrator fixed directly to the touch screen surface was used to demonstrate this limitation, remedying any ambiguity in Gemmell’s disclosure.
• "approximately planar touch surface": Petitioner contended this term is indefinite but argued the issue is moot because the prior art references clearly and individually disclose devices with planar touch surfaces, rendering the limitation obvious regardless of the term's definiteness.

5. Key Technical Contentions (Beyond Claim Construction)

• Prior Art Form Factor: Petitioner asserted that a POSITA would have recognized the mobile devices in the prior art, such as Gemmell’s "mobile workstation" and Maddalozzo's computer system, as handheld tablet computers. This was supported by comparing the drawings in the prior art to commercially available devices at the time, like the Apple Newton and Fujitsu Stylistic 1200, to argue that the "portability" limitation was met.
• Component Miniaturization and Equivalence: The petition contended that miniaturizing components like Gemmell's speaker coil for a handheld device was a well-known and predictable engineering task at the time. It also argued that different types of actuators disclosed in the art (e.g., speaker coils, pager motors) were known, functionally equivalent solutions to the same problem of providing tactile feedback.

6. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: The petition argued that discretionary denial would be inappropriate because the primary references (Gemmell, Maddalozzo, and Blouin) were never considered by the Patent Office during the original prosecution. Petitioner asserted that the prosecution record lacks any substantive patentability arguments, and therefore the prior art and arguments in the petition are not substantially the same as what was previously presented to the Office.
• Relation to Other Petitions: Petitioner acknowledged filing a concurrent petition against other claims of the ’846 patent but argued for institution of both. It reasoned that this petition challenges a unique set of claims (3, 5, and 6) and that conducting parallel trials would be efficient due to overlapping claims, discovery, and hearings, thus serving the goal of a just and speedy resolution.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 5-7, 16, 18, and 19 of the ’846 patent as unpatentable.