Meta Platforms Inc v. Immersion Corp

1. Case Identification

• Case #: IPR2023-00944
• Patent #: 10,269,222
• Filed: May 26, 2023
• Petitioner(s): Meta Platforms, Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1, 2, 5, 7, 10, 11, 15, 17, 18, 21, and 23

2. Patent Overview

• Title: System and Method for Generating Haptic Feedback for a Wearable Device
• Brief Description: The ’222 patent describes a system involving a wearable device, such as augmented reality (AR) eyewear, that communicates with a second device. The system is configured to generate specific haptic feedback based on different events occurring in the user's environment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Douris in view of Rodriguez - Claims 1-2, 5, 7, 10-11, 15, 17-18, 21, and 23 are obvious over Douris in view of Rodriguez.

• Prior Art Relied Upon: Douris (Application # 2009/0289955) and Rodriguez (Application # 2012/0028577).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Douris discloses the foundational system of the challenged claims. Douris describes a wearable "reality overlay device," such as AR glasses, that displays visual information superimposed on the user's view of the physical world. This system detects events, such as the user's proximity to specific businesses or people, and presents relevant visual overlays. Douris thus teaches a system with a wearable device, a processor, and the detection of different environmental events. Petitioner contended that Douris, however, does not explicitly teach using haptic feedback.

    To supply the missing haptic feedback elements, Petitioner turned to Rodriguez. Rodriguez teaches techniques for providing haptic feedback on mobile and wearable devices, including eyewear, in response to recognizing objects or entities. Crucially, Rodriguez discloses using distinct "haptic signatures" (varying in waveform, amplitude, frequency, etc.) to correspond to different classes of objects or events, such as proximity to social network friends or popular establishments. Rodriguez also explicitly discloses that a processor generates the electrical "control signals" necessary to drive haptic actuators.

    Petitioner asserted that combining these references renders the claims obvious. The system of Douris would be modified to incorporate the haptic feedback technology of Rodriguez. The processor in Douris's wearable device would be configured to generate a first control signal for a first haptic effect when a first event is detected (e.g., proximity to a business) and a second control signal for a different haptic effect when a second event is detected (e.g., proximity to a person), as taught by Rodriguez.

  • Motivation to Combine: Petitioner asserted a strong motivation to combine these analogous references. A person of ordinary skill in the art (POSITA) would combine the visual overlay system of Douris with the haptic feedback of Rodriguez to provide a clear enhancement. Adding a haptic modality would allow the device to convey information without obstructing the user's field of vision, provide alerts in loud or quiet environments where audio is unsuitable, and offer an alternative feedback channel for vision-impaired users. This combination represents a simple substitution of one known feedback method (haptic) into an existing system to improve its functionality.

  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success. Rodriguez confirms that using control signals to provide haptic feedback was well-known in the art for various devices, including wearable computers. Implementing the haptic feedback taught by Rodriguez into the AR system of Douris would involve applying conventional techniques without requiring undue experimentation.

4. Key Claim Construction Positions

• Petitioner argued that no express claim construction is required for the petition. While the term "augmented reality" is subject to a dispute in co-pending litigation, Petitioner contended that the challenged claims are obvious under any of the proposed constructions from that litigation, or under any other reasonable construction. Therefore, the Board did not need to resolve the construction dispute to assess the petition.

5. Arguments Regarding Discretionary Denial

• Petitioner presented arguments that discretionary denial under either 35 U.S.C. §314(a) or §325(d) would be inappropriate.
• §314(a) (Fintiv Factors): While the ’222 patent is asserted in a co-pending district court case, Petitioner noted that as of the filing date, no claim construction order or other substantive rulings had been issued. To mitigate concerns of parallel proceedings, Petitioner provided a Sotera stipulation, agreeing that if the IPR is instituted, it will not pursue in the district court any invalidity ground that was raised or reasonably could have been raised in the IPR.
• §325(d): Petitioner argued that denial would be improper because none of the prior art relied upon in the petition (Douris or Rodriguez) was previously presented to or considered by the USPTO during the original prosecution of the ’222 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5, 7, 10, 11, 15, 17, 18, 21, and 23 of the ’222 patent as unpatentable.