Apple Inc v. Resonant Systems Inc

1. Case Identification

• Case #: IPR2024-00698
• Patent #: 8,093,767
• Filed: April 12, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Resonant Systems, Inc.
• Challenged Claims: 1-5

2. Patent Overview

• Title: LINEAR-RESONANT VIBRATION MODULE
• Brief Description: The ’767 patent relates to linear resonant vibration modules (LRVMs). The technology uses a feedback control mechanism with a microprocessor to maintain the vibration frequency of a moveable component close to its resonant frequency, which results in optimal power consumption relative to the vibration amplitude produced.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Izumi (Application # 2005/0275294) and Cosper (Application # 2008/0246532).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Izumi disclosed a linear actuator resonance system for a handheld device (a shaver) that meets most limitations of claim 1, including a housing, moveable component, power supply, and a driving component. Izumi’s system included a controller that used feedback from a single sensor to control oscillation. Petitioner asserted that Cosper remedied any deficiencies by disclosing a feedback control system for a linear actuator that explicitly used a microprocessor and multiple sensors (e.g., for position, velocity, acceleration) to precisely monitor and control the actuator’s vibration at or near its resonant frequency.
  • Motivation to Combine: A POSITA would combine Izumi and Cosper to improve the precision, accuracy, and reliability of Izumi’s feedback control system. By incorporating Cosper’s use of a microprocessor and multiple sensors, a POSITA would gain more detailed real-time data about the actuator's movement, leading to a more robust and reliable control loop. The use of a microprocessor was also a suitable and known option for implementing the control logic described in both references.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved applying a known, advanced control strategy (Cosper) to a known type of resonant system (Izumi) to achieve the predictable benefits of improved performance and reliability.

Ground 2: Obviousness over Izumi, Cosper, and Rossi - Claims 1-3 are obvious over Izumi in view of Cosper and Rossi.

• Prior Art Relied Upon: Izumi (Application # 2005/0275294), Cosper (Application # 2008/0246532), and Rossi (Patent 4,879,641).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Izumi-Cosper combination and added Rossi to address the specific "switch" limitations of claims 2 and 3. Petitioner argued that while Izumi taught a generic H-bridge switch, Rossi disclosed the specific details recited in claim 2, including a directional-signal input, a voltage input, a splitter/inverter that generates two complementary internal signals, and two pairs of solid-state switches controlled by those complementary signals. The combination’s inclusion of a vibration sensor (from Cosper) that is monitored to adjust frequency meets the limitations of claim 3.
  • Motivation to Combine: A POSITA implementing the H-bridge circuit in the Izumi-Cosper system would look to well-known references like Rossi for standard and reliable implementation details. Rossi provided a simple and effective circuit design that used a single control signal, which was then split and inverted in hardware to drive the switch pairs. This approach would simplify the control signal generation from the microprocessor, reduce the chance of software bugs, and reliably drive the actuator.
  • Expectation of Success: The combination amounted to a simple substitution of one known H-bridge circuit implementation for another to achieve predictable benefits in a known system.

Ground 3: Obviousness under Means-Plus-Function Construction over Izumi, Cosper, Ibuki, and Aldrich - Claim 1 is obvious over Izumi, Cosper, and Ibuki in view of Aldrich.

• Prior Art Relied Upon: Izumi (Application # 2005/0275294), Cosper (Application # 2008/0246532), Ibuki (Application # 2005/0144784), and Aldrich (NASA Tech Briefs, Apr. 2008).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground asserted that if the "control component" term is construed under means-plus-function (§112(¶6)), the claimed functions correspond to the control algorithm disclosed in the ’767 patent’s specification (FIGS. 7A-7C). Petitioner argued that the combination of Izumi, Cosper, and Ibuki (providing user inputs for different operating modes) provided the basic hardware. Aldrich then supplied the key missing element: a specific "hill-climbing" feedback control algorithm that incrementally adjusts drive frequency and measures the resulting output to find and maintain operation at a resonant peak. Petitioner contended this algorithm was the structural equivalent of the algorithm disclosed in the ’767 patent.
  • Motivation to Combine: A POSITA seeking to implement a robust resonance-tracking feature in the base Izumi/Cosper/Ibuki system would be motivated to adopt Aldrich’s well-known hill-climbing algorithm. Aldrich explicitly described this technique for driving an actuator at resonance, furthering the core objective of the base system. Implementing this known algorithm would be a routine application of software coding techniques.
  • Expectation of Success: A POSITA would expect success because the combination involved implementing a known control algorithm (Aldrich) via software on a known hardware platform (Izumi/Cosper/Ibuki) to achieve the predictable result of maintaining oscillation at a resonant frequency.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including a four-way combination of Izumi, Cosper, Rossi, and Ibuki against claims 4-5 (adding user input features), and a full five-way combination of Izumi, Cosper, Ibuki, Aldrich, and Rossi against claims 1-5 under a means-plus-function theory.

4. Key Claim Construction Positions

• Petitioner presented a dual-pronged argument for the terms "driving component" and "control component," asserting they are unpatentable under either construction.
• Plain and Ordinary Meaning: For Grounds 1A-1D, Petitioner argued the terms should be given their plain and ordinary meaning, which would not limit them to the specific structures disclosed in the specification.
• Means-Plus-Function (MPF): For Grounds 2A-2B, Petitioner argued that if the terms are construed under 35 U.S.C. §112(¶6) as MPF limitations, the claimed functions correspond to specific structures in the ’767 patent. For "control component," Petitioner identified the corresponding structure as the detailed control algorithm depicted in the patent's flowcharts (FIGS. 7A-7C), not just a generic microprocessor.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under multiple PTAB frameworks.
• General Plastic Factors: The ’767 patent had not previously been the subject of an IPR by any petitioner, weighing heavily against denial.
• Advanced Bionics (§325(d)): The prior art references and arguments presented in the petition were not applied during original prosecution and are materially different, favoring institution.
• Fintiv Factors (§314(a)): Petitioner argued the factors favored institution because: (1) a motion to stay is pending in the co-pending litigation; (2) the Board’s Final Written Decision would likely issue before or near the district court trial date; (3) the petition was filed diligently, nearly two months before the deadline, while litigation is in its early stages; and (4) the petition's merits are exceptionally strong.

6. Relief Requested

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