Samsung Electronics Co Ltd v. Resonant Systems Inc

1. Case Identification

• Case #: IPR2023-00992
• Patent #: 9,369,081
• Filed: June 14, 2023
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Resonant Systems, Inc.
• Challenged Claims: 1-9, 11, 14-17

2. Patent Overview

• Title: Linear Vibration Modules
• Brief Description: The ’081 patent discloses linear vibration modules designed to produce vibrational forces through the linear oscillation of an internal component. The technology is presented as an alternative to conventional motors that generate vibration as a byproduct of unbalanced rotation and is intended for use in various devices, such as consumer appliances and pagers.

3. Grounds for Unpatentability

Ground 1: Claims 1–3, 7–9, 15, and 17 are obvious over Fukumoto.

• Prior Art Relied Upon: Fukumoto (Patent 7,292,227).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fukumoto, which discloses an electronic device like a PDA with an oscillatory actuator for haptic feedback, teaches every limitation of the challenged claims. Fukumoto’s actuator was described as a linear vibration module comprising a housing (case 115a), a moveable component (movable weight 122), a driving component (coil 121), user-input features (touch panel and keys), and a power source. Petitioner asserted that Fukumoto’s CPU and drive signal generation circuit function as the claimed control component, as they receive user inputs and generate a drive signal with a specific frequency and amplitude based on stored waveform data to cause the desired oscillation. For dependent claims, Petitioner mapped Fukumoto’s CPU and memory to the claimed microprocessor and control program (claim 2) and its use of a touch sensor to adjust vibration as meeting the sensor feedback limitations (claim 3).

Ground 2: Claims 1–3, 7–9, 15, and 17 are obvious over Fukumoto in view of Grant.

• Prior Art Relied Upon: Fukumoto (Patent 7,292,227), Grant (Application # 2006/0284849).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, specifically addressing the limitation that oscillation frequency and amplitude are specified by user input. While Fukumoto uses pre-set waveform data, Grant teaches a system for mobile devices where a user can program and customize haptic effects. Grant’s disclosure allows a user to map events to specific haptic effects with user-defined amplitude and frequency values, which are then compiled into a haptic lookup table.
  • Motivation to Combine: A POSITA would combine Fukumoto’s linear actuator with Grant’s user-customization software to provide more advanced and personalized haptic feedback, a known area for improvement in mobile devices. Petitioner contended the references are analogous, as both relate to electromagnetic vibration generation in handheld electronics.
  • Expectation of Success: The combination involved applying a known software-based customization technique (from Grant) to a known hardware platform (from Fukumoto) to achieve the predictable result of enhanced, user-driven haptic control.

Ground 3: Claims 3–6 are obvious over Fukumoto in view of Ueda.

• Prior Art Relied Upon: Fukumoto (Patent 7,292,227), Ueda (Application # 2004/0169480).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground focused on claims 3-6, which require a control component that receives signals from sensors and adjusts operational outputs accordingly. Ueda discloses a closed-loop feedback control system for a linear vibration motor that uses multiple sensors (an output detector and a position detector) to monitor motor performance. The system compares the detected signals to desired output signals and adjusts the driving voltage (amplitude) and frequency to ensure the motor operates as intended, including at a resonant frequency.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Ueda’s sophisticated feedback control into Fukumoto’s more basic actuator. This modification would address a known objective in the art: improving the reliability and accuracy of vibrations to ensure they are consistently delivered at the desired frequency and amplitude, thus enhancing the user experience.
  • Expectation of Success: Petitioner argued a POSITA would have reasonably expected success in implementing Ueda's known feedback control techniques into Fukumoto's linear vibrator to achieve the predictable benefit of improved performance and efficiency.

• Additional Grounds: Petitioner asserted numerous additional obviousness grounds, including combinations based on Fukumoto in view of Barton (for user-customized vibration patterns); Ogusu as a primary reference in view of Fukumoto (for a different actuator design); and further combinations with Erixon, Fuller, Saiki, and Masahiko to teach specific features like parallel magnetic fields, complex vibration modes, and the use of paramagnetic materials.

4. Key Claim Construction Positions

• Petitioner argued that the terms "moveable component," "driving component," and "control component" should be construed as means-plus-function (MPF) limitations under pre-AIA 35 U.S.C. §112, ¶6.
• The argument asserted that the generic placeholder "component," when coupled with purely functional language, overcomes the presumption that the absence of the word "means" avoids MPF treatment.
• Based on this position, Petitioner identified the corresponding structures from the ’081 patent's specification for the recited functions. For example, the structure for the "control component" was identified as a "Processor and H Bridge Switch" programmed with a specific algorithm disclosed in the specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Fintiv factors weigh against discretionary denial of institution under §314(a).
• The petition was filed at an early stage of the parallel district court litigation, just eight weeks after amended infringement contentions were served and before significant discovery or claim construction milestones.
• Petitioner asserted a lack of complete overlap between the proceedings, noting that the IPR challenges claims not asserted in the litigation (claims 9, 11, 14-16). Furthermore, Petitioner stipulated that it would not pursue the IPR grounds in the district court if review is instituted, mitigating concerns of duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9, 11, and 14-17 of Patent 9,369,081 as unpatentable.