Apple Inc v. Resonant Systems Inc

1. Case Identification

• Case #: IPR2024-00697
• Patent #: 8,093,767
• Filed: April 12, 2024
• Petitioner(s): Apple Inc.
• Challenged Claims: 1-5

2. Patent Overview

• Title: Linear-Resonant Vibration Module
• Brief Description: The ’767 patent discloses linear resonant vibration modules (LRVMs) that produce haptic feedback through the linear oscillation of a component. The invention includes a feedback control mechanism designed to maintain the vibration frequency near the module's resonant frequency for optimal power consumption and performance.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Shahoian and Cosper - Claim 1 is obvious over Shahoian in view of Cosper.

• Prior Art Relied Upon: Shahoian (Patent 6,982,696) and Cosper (Application # 2008/0246532).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shahoian disclosed a "force feedback interface device" with all the basic structural elements of claim 1, including a linear actuator with a housing, a moveable magnet head, a power supply, a driving component (wire coil), and a "local microprocessor" for control. However, Shahoian's control was open-loop. Cosper was argued to supply the missing feedback control limitations by teaching a system for maintaining resonant oscillation of a linear actuator using sensors (e.g., for position, velocity, acceleration) to provide feedback to a controller, which then adjusts the drive signal.
  • Motivation to Combine: A POSITA would combine Cosper’s well-understood feedback control system with Shahoian’s linear actuator to gain the predictable benefit of enhanced vibration performance. Adding feedback control would allow for precise monitoring and adjustment of the actuator's vibrations to maintain a resonant frequency, a known method for improving efficiency and output quality in such devices.
  • Expectation of Success: A POSITA would have a reasonable expectation of success due to the fundamental compatibility of the systems. Implementing a known feedback control technique (Cosper) into a standard linear actuator (Shahoian) was presented as a routine design choice with predictable results.

Ground 1B: Obviousness over Shahoian, Cosper, and Rossi - Claims 1-4 are obvious over Shahoian and Cosper in view of Rossi.

• Prior Art Relied Upon: Shahoian (Patent 6,982,696), Cosper (Application # 2008/0246532), and Rossi (Patent 4,879,641).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Shahoian-Cosper combination from Ground 1A and argued that Rossi supplied specific details for the "switch" element recited in claims 1 and 2. Shahoian disclosed a generic "well-known H-bridge circuit" to drive its actuator. Petitioner contended that Rossi taught the specific H-bridge switch configuration required by the claims, including a directional-signal input, a splitter/inverter to generate complementary internal signals, and two pairs of solid-state switches controlled by these complementary signals to drive a load in opposite directions.
  • Motivation to Combine: A POSITA, seeking to implement the H-bridge circuit mentioned in Shahoian, would predictably look to a reference like Rossi for a well-known, reliable design. Rossi's circuit provided a simple and effective method for controlling the bidirectional current flow needed for oscillation, making it a suitable and obvious choice to implement in the Shahoian-Cosper system. This was characterized as a simple substitution of one known H-bridge circuit for another to achieve a predictable function.
  • Expectation of Success: The combination was asserted to be straightforward, as it involved implementing a standard electronic circuit (Rossi) to perform its conventional function within a known type of actuator system (Shahoian-Cosper).

Ground 2A: Obviousness over Shahoian, Cosper, Ramsay, and Aldrich - Claim 1 is obvious under a means-plus-function construction.

• Prior Art Relied Upon: Shahoian (Patent 6,982,696), Cosper (Application # 2008/0246532), Ramsay (Application # 2008/0294984), and Aldrich (NASA Tech Briefs, Apr. 2008).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground re-evaluated the claims under a stricter means-plus-function (MPF) construction for "control component," arguing the prior art disclosed the corresponding structure (a specific control algorithm) described in the ’767 patent's specification. Petitioner asserted the base Shahoian-Cosper combination provided the hardware, while Ramsay added user-customizable haptic parameters (e.g., vibration strength and frequency via a GUI). Aldrich was argued to teach the specific "hill-climbing" feedback control algorithm used to find and maintain oscillation at a resonant frequency by incrementally adjusting drive frequency and accepting changes that increase output (e.g., vibration strength).
  • Motivation to Combine: A POSITA would add Aldrich's hill-climbing algorithm to the Shahoian-Cosper-Ramsay system to implement a known, effective method for achieving and maintaining resonance, which was the explicit goal of Cosper's feedback system. This combination would predictably improve the system's ability to automatically target the resonant frequency, a known technique for optimizing performance.
  • Expectation of Success: Implementing Aldrich's algorithm in software on Shahoian's existing microprocessor to process sensor data from Cosper was a routine application of known software coding techniques with a high expectation of success.

• Additional Grounds: Petitioner asserted Ground 1C, which added Ramsay to the Shahoian-Cosper-Rossi combination to render claim 5 obvious by teaching user-customization of vibration strength and frequency. Petitioner also asserted Ground 2B, which added Rossi to the MPF combination of Ground 2A to render claims 1-5 obvious.

4. Key Claim Construction Positions

• Petitioner presented arguments under two alternative claim construction frameworks to ensure the claims were found unpatentable regardless of the Board's interpretation.
• Plain and Ordinary Meaning (Grounds 1A-1C): For the terms "driving component" and "control component," Petitioner first applied their plain and ordinary meaning.
• Means-Plus-Function (MPF) (Grounds 2A-2B): Alternatively, because Petitioner argued for an MPF construction in related district court litigation, it also presented a full analysis under 35 U.S.C. §112(f). For this, Petitioner identified the specific structures in the ’767 patent's specification corresponding to the claimed functions, including the control algorithms detailed in Figures 7A-7C, and argued the prior art disclosed these structures.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• General Plastic / §325(d): The petition asserted that the ’767 patent had not previously been the subject of an IPR by any party. Further, the prior art references and arguments presented were not applied during the original prosecution, favoring institution under the Advanced Bionics test.
• Fintiv / §314(a): Petitioner argued the Fintiv factors weighed in favor of institution because a motion to stay was likely in the co-pending litigation, the PTAB’s Final Written Decision would likely issue before a trial on the merits, and the petition was filed diligently, early in the litigation timeline.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5 of the ’767 patent as unpatentable.