Valve Corp v. Immersion Corp

1. Case Identification

• Case #: IPR2024-00557
• Patent #: 10,665,067
• Filed: February 7, 2024
• Petitioner(s): Valve Corporation
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1-8, 11-12, 15-21

2. Patent Overview

• Title: Integrating Haptics into Augmented Reality
• Brief Description: The ’067 patent is directed to systems and methods for integrating haptic feedback with augmented reality (AR) visual overlays. The technology involves a user interacting with a physical "proxy object" while the system modifies the object's visual appearance via an AR display and provides a corresponding haptic effect.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 11-12, and 15-21 are anticipated by, or alternatively obvious over, Banerjee.

• Prior Art Relied Upon: Banerjee (Application # 2017/0108930).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Banerjee discloses haptic AR and VR systems for surgical simulation that meet all limitations of the challenged claims. Specifically, Banerjee’s AR "Open Surgery Station" (OSS) uses a physical haptic stylus as the claimed "proxy object." The system's display, which includes a semi-transparent mirror, superimposes a virtual surgical tool onto the physical stylus, satisfying the limitation of a "visual effect onto a surface of the proxy object." The haptic stylus provides force feedback to the user, meeting the "haptic effect" limitation, and the system tracks the stylus's position, meeting the "sensor" limitation. Petitioner asserted that Banerjee's VR "Microsurgery Station" also meets the claim limitations under the Patent Owner's broader claim interpretation.
  • Motivation to Combine (for obviousness alternative): To address dependent claim 2, which adds a "wearable device comprising one or more second haptic output devices," Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to add a second haptic device, such as a haptic glove, for the user's free hand. Banerjee teaches that allowing users to interact with both hands is "very useful," providing an explicit reason to implement known wearable haptic devices for two-handed control in the disclosed simulation.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Banerjee’s haptics rendering software is already configured to receive location information from multiple hand-tracking devices and compute corresponding haptic feedback.

Ground 2: Claims 1-8, 11-12, and 15-21 are anticipated by, or alternatively obvious over, Meglan.

• Prior Art Relied Upon: Meglan (Application # 2012/0045742).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Meglan, which discloses a medical trauma simulator, anticipates the claims. In Meglan, a physical mannequin serves as a "physical surrogate," meeting the definition of a "proxy object." A video see-through display overlays a virtual wound (the "visual effect") onto the real-time video feed of the mannequin. A "sensorized substrate" on the mannequin provides haptic feedback, such as a simulated pulse or body heat. The system uses a video camera ("sensor") to track the position of the user's hands interacting with the mannequin.
  • Motivation to Combine (for obviousness alternative): For claim 2, Petitioner argued that Meglan’s disclosure of multi-trainee simulations provides a clear motivation to combine different types of disclosed haptic devices. A POSITA would find it obvious and beneficial to allow one trainee to interact using the sensorized substrate while a second trainee at the same or a remote location uses a disclosed haptic glove (a "wearable device") to participate in the same simulation, thereby enhancing training flexibility.
  • Expectation of Success: A POSITA would expect success in this implementation because Meglan explicitly teaches that its system can aggregate interactions from multiple trainees and that different types of haptic devices can be used within the system.

Ground 3: Claims 1-8, 11-12, and 15-21 are anticipated by, or alternatively obvious over, Rogers.

• Prior Art Relied Upon: Rogers (Application # 2017/0354864).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Rogers, which discloses a VR and AR gaming system, anticipates the claims. In Rogers, a user holds a physical "directional interface object" (e.g., a game controller), which functions as the "proxy object." A head-mounted display (HMD) shows a virtual weapon in place of the physical controller, representing the "visual effect." The controller itself contains "tactile feedback hardware" (e.g., a movable weight) to generate haptic effects, and its position is tracked by both an external camera and internal inertial sensors, meeting the "sensor" requirement.
  • Motivation to Combine (for obviousness alternative): The argument for claim 2 is presented as meeting the limitation directly through anticipation. Petitioner argued Rogers discloses that the HMD itself can include tactile feedback hardware, thus constituting a "wearable device" with "second haptic output devices" as part of the primary system.
  • Expectation of Success: As this ground was primarily argued as anticipation, the expectation of success focused on the direct mapping of elements disclosed in Rogers as a complete, functioning system.

4. Key Claim Construction Positions

• Petitioner addressed a key claim construction dispute from a co-pending district court litigation. Patent Owner asserted a broad interpretation where the "proxy object" and "visual effect" limitations can be met in a purely virtual reality (VR) environment (e.g., a physical controller held by the user, with a virtual hand and virtual controller shown on the display).
• Petitioner argued for a narrower construction, confining the claims to an AR context where a visual effect is overlaid on a view of the real-world proxy object. However, Petitioner contended that all asserted grounds demonstrate unpatentability under both the Patent Owner’s broad VR-encompassing interpretation and Petitioner’s narrower AR-focused construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors would be inappropriate.
• Key arguments included that the petition was filed diligently (roughly four months after receiving infringement contentions), the district court trial is scheduled for late 2025 (likely after an FWD would issue), and litigation investment has been minimal, with no claim construction or merits determinations having occurred.
• Petitioner also argued that denial under 35 U.S.C. §325(d) is unwarranted because none of the prior art references asserted in the petition were cited or considered during the original prosecution of the ’067 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 11-12, and 15-21 of Patent 10,665,067 as unpatentable.