PTAB

IPR2023-00993

SamSung ElecTronics Co Ltd v. ReSonant Systems Inc

Case #: IPR2023-00993
Patent #: 9,941,830
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, and 19-20

Title: Vibration Module
Brief Description: The ’830 patent discloses linear vibration modules (LVMs) for generating vibrational forces in devices like consumer appliances and pagers. The technology focuses on producing vibrations through the linear oscillation of a weight, as opposed to prior art methods using unbalanced rotating motors.

Prior Art Relied Upon: Fukumoto (Patent 7,292,227)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Fukumoto, which discloses an electronic device (e.g., PDA) with an oscillatory actuator for haptic feedback, teaches all limitations of the challenged claims. Fukumoto’s actuator includes a housing (case 115a), a moveable component (weight 122), a driving component (coil 121), a power supply, and user-input features (touch panel/keys). Petitioner asserted Fukumoto’s CPU and drive signal generation circuit function as the claimed “control component,” reading stored waveform data (with frequency and amplitude values) to generate a drive signal causing the moveable weight to oscillate.
- Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
- Expectation of Success (for §103 grounds): Not applicable.

Prior Art Relied Upon: Fukumoto (Patent 7,292,227) and Grant (Application # 2006/0284849).
Core Argument for this Ground:
- Prior Art Mapping: This ground asserted that if Fukumoto alone does not teach the control component limitations (claim 1[f]), the combination with Grant does. Grant was cited for its disclosure of user-programmable haptic effects, where a user can map specific events to haptic effects (defined by amplitude and frequency) stored in a haptic lookup table. This allegedly provides the teaching of populating "stored values" via user input to specify frequency and amplitude.
- Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Fukumoto and Grant because both relate to electromagnetic vibration in mobile devices. The motivation was to incorporate Grant's user-driven customization into Fukumoto’s device to provide a predictable improvement in user control over haptic feedback.
- Expectation of Success (for §103 grounds): Petitioner argued success was expected, as it involved applying known programming steps (Grant's lookup table) to a known, improvement-ready device (Fukumoto's PDA).

Prior Art Relied Upon: Fukumoto (Patent 7,292,227) and Ueda (Application # 2004/0169480). This argument was also made with Fukumoto-Grant and Fukumoto-Barton as the primary combination.
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims requiring the control component to receive signals from sensors and adjust outputs accordingly. Petitioner asserted Ueda teaches a closed-loop feedback system for a linear vibration motor using multiple sensors. Ueda’s output detector and position detector provide signals (Dop, Dposi) that a control unit uses to adjust the driving voltage (amplitude) and frequency to match desired parameters, including achieving resonant frequency.
- Motivation to Combine (for §103 grounds): A POSITA would have been motivated to add Ueda's feedback control to Fukumoto’s actuator. This would apply a known technique (feedback control) to an existing device to yield a predictable result: more reliable and enhanced vibration delivery at the desired frequency and amplitude.
- Expectation of Success (for §103 grounds): Success was expected because it involved integrating a known sensor-based feedback control system into a compatible linear actuator to improve performance.

Combining Fukumoto with Barton (Application # 2006/0248183) for its teachings on user creation of custom vibration patterns.
Combining Fukumoto with Erixon (Application # 2008/0174187) or Fuller (Application # 2008/0001484) for specific teachings on tubular housings with repelling magnets or coils.
Combining Fukumoto, Dong (China Application # 101488697A), and Ogusu (Japan Application # JPH08196053A) to teach adding paramagnetic materials (flux paths) to improve magnetic circuit efficiency.
Combining Fukumoto with Saiki (Patent 7,006,641) and Masahiko (Patent 8,917,486) to teach complex, beat-frequency, and aperiodic vibration waveforms.
A separate series of grounds using Ogusu as the primary reference, combined with the same secondary references (Fukumoto, Grant, Ueda, etc.) to argue for similar modifications on an alternative base system.

Petitioner argued that the terms "moveable component," "driving component," and "control component" in the challenged claims are means-plus-function (MPF) limitations under §112, ¶6, despite not using the word "means."
Petitioner contended these terms are generic placeholders for a function without reciting sufficient structure.
For the "control component" of claim 1, Petitioner identified the corresponding structure in the ’830 patent as a "Processor and H Bridge Switch" programmed with a specific algorithm for setting and providing outputs to generate vibrations based on stored values. This construction was central to mapping prior art processors and drive circuits to the claims.

Petitioner argued that claims 14, 16, and 19 are not entitled to the ’830 patent’s earliest priority date (May 18, 2009).
The argument was based on the fact that the figures and descriptive text providing the only potential written description support for these claims (e.g., for paramagnetic flux paths and complex waveforms) were first introduced in a continuation-in-part application filed on January 6, 2012.
This later priority date was critical for establishing that references like Dong (published 2009) and Masahiko (filed 2011) qualify as prior art against these specific claims.

Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate.
The parallel district court litigation was in an early stage, with the Markman hearing and invalidity contentions not due for many months.
Petitioner stipulated that, if the IPR is instituted, it would not pursue the same grounds or grounds based on the same primary references (Fukumoto and Ogusu) in the district court action, mitigating concerns of overlap and duplicative effort.
Petitioner also noted that it challenges more claims in the IPR than are asserted in the district court litigation, meaning the IPR provides a more efficient and complete resolution.

Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-9, 11, 14-17, and 19-20 of Patent 9,941,830 as unpatentable.