Motorola Mobility LLC v. Immersion Corporation

1. Case Identification

• Case #: IPR2019-00920
• Patent #: 8,031,181
• Filed: April 4, 2019
• Petitioner(s): Motorola Mobility LLC, Motorola Mobility Holdings LLC
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1-3, 8, 12, and 20-22

2. Patent Overview

• Title: Haptic Feedback for Touchpads and Other Touch Controls
• Brief Description: The ’181 patent describes systems for providing haptic feedback on touch-sensitive surfaces, such as touchpads and touchscreens. The technology aims to enhance the user experience by generating tactile sensations corresponding to user interactions with a graphical user interface (GUI), such as moving a cursor or activating on-screen elements.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 8, 12, and 20-22 are obvious over Stephan in view of Oross and Blouin.

• Prior Art Relied Upon: Stephan (Patent 5,748,185), Oross (Patent 6,757,002), and Blouin (Patent 5,977,867).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Stephan taught the foundational system: a portable computer with a touchscreen comprising multiple distinct regions for different functions, including a primary region for cursor control and secondary regions for other functions like scrolling. Petitioner asserted that Stephan’s system provided haptic feedback only through passive means, such as physical textures or ridges separating the regions. The combination with Oross and Blouin was argued to supply the claimed active haptic feedback. Oross was cited for teaching a multi-region touchpad that uses a vibration source to actively generate a tactile cue, and Blouin was cited for teaching a vibrator fixed to a touchscreen to provide tactile feedback to the user.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve on Stephan’s design. Specifically, a POSITA would replace or supplement Stephan’s static physical textures with the dynamic, configurable active vibrations taught by Oross and Blouin. The motivations included simplifying manufacturing, allowing for adjustable feedback intensity, and creating a more effective and versatile user interface, all of which were predictable improvements based on the teachings of the references.
  • Expectation of Success: The proposed combination involved applying a well-known technique (actuator-based haptics) to a known system (a multi-region touchscreen) to achieve the predictable result of a haptically-enhanced user interface.

Ground 2: Claims 1-3, 8, 12, and 20-22 are obvious over Stephan, Oross, and Blouin in view of Beeks.

• Prior Art Relied Upon: Stephan (Patent 5,748,185), Oross (Patent 6,757,002), Blouin (Patent 5,977,867), and Beeks (Patent 6,373,463).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented to reinforce and supplement Ground 1, particularly to address any interpretation that the claims require a haptic effect specifically in response to cursor positioning. While Petitioner argued the primary combination already taught this, Beeks was introduced as explicitly disclosing this feature. Beeks teaches a cursor control system that provides different types of haptic feedback from multiple actuators (e.g., a vibrating motor and a bumping solenoid) in direct response to cursor-related events. For example, Beeks describes generating a vibration when the cursor is positioned over a selectable GUI component.
  • Motivation to Combine: A POSITA would be motivated to incorporate the teachings of Beeks into the Stephan-Oross-Blouin system to provide more sophisticated, context-aware haptic feedback. This would allow the device to provide distinct tactile cues for different GUI interactions (e.g., hovering vs. selecting), which Beeks taught was useful for minimizing the user's need to look at the screen. This was a known technique to enhance a known system for a predictable improvement in usability.
  • Expectation of Success: Combining Beeks's cursor-specific feedback with a multi-region haptic touchscreen was a straightforward application of known technologies to achieve the predictable benefit of a more intuitive user interface.

4. Key Claim Construction Positions

• "touch screen": Petitioner argued for the construction: "a display 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 for establishing that the prior art, particularly Stephan's integrated device, fell within the scope of the claims. Petitioner contended its invalidity arguments were valid under this construction, the Patent Owner's construction, or the Broadest Reasonable Interpretation (BRI) standard.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) or §314(a) would be inappropriate. It was contended that although Blouin and Beeks were cited during the original prosecution, they were part of a list of over 600 references and were never substantively applied by the examiner in a rejection, making the arguments and art combination novel to the Patent Office.
• Petitioner also addressed a concurrently filed petition against the ’181 patent, arguing that institution of both was proper. The reasons provided were that the present petition challenges a unique set of dependent claims (12 and 22), significant overlap in other claims would create trial efficiencies, and the number of grounds was not excessive.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 8, 12, and 20-22 of Patent 8,031,181 as unpatentable under 35 U.S.C. §103.