Valve Corp v. Immersion Corp

1. Case Identification

• Case #: IPR2024-00714
• Patent #: 10,627,907
• Filed: March 22, 2024
• Petitioner(s): Valve Corporation
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1-20

2. Patent Overview

• Title: Haptic Feedback for User Input Element with Boundary Range
• Brief Description: The ’907 patent describes methods and systems for controlling a haptic user input element, such as a videogame controller joystick or trigger. The technology involves defining a primary range, a secondary range, and a "boundary range" of positions that partially overlaps the other two, and rendering a haptic effect when the input element enters the boundary range.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Goldenberg - Claims 1-6, 8-13, and 15-19 are anticipated by and/or obvious over Goldenberg.

• Prior Art Relied Upon: Goldenberg (Application # 2004/0032395).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Goldenberg, owned by the Patent Owner and undisclosed during prosecution, describes all elements of the challenged claims. Goldenberg’s "jog shuttle model" for a force-feedback knob discloses a profile with distinct force sensations based on rotational position. Petitioner mapped the clockwise rotation range to the claimed "primary range of positions" and the counter-clockwise range to the "secondary range of positions." The "small range...around the origin position" where a second, stiffer spring effect is applied was mapped to the claimed "boundary range," which partially overlaps the primary and secondary ranges. The rendering of this stiffer spring force was argued to be the claimed "haptic effect."
  • Motivation to Combine (for §103 grounds): For any claim elements deemed not explicitly disclosed, Petitioner argued a person of ordinary skill in the art (POSITA) would have found it obvious to implement them. For example, modifying Goldenberg's knob to create a uni-directional profile (claim 5) was presented as an obvious design choice to improve usability in applications like video editing by preventing accidental rewinding.
  • Expectation of Success (for §103 grounds): Petitioner asserted that implementing such modifications would involve routine and predictable design choices with a high expectation of success.

Ground 2: Obviousness over Goldenberg and Cruz-Hernandez - Claims 7, 14, and 20 are obvious over Goldenberg in view of Cruz-Hernandez.

• Prior Art Relied Upon: Goldenberg (Application # 2004/0032395) and Cruz-Hernandez (Application # 2008/0055244).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims requiring the adjustment of a profile to account for a change in the input element's resting position. Petitioner established that Goldenberg teaches the base system with profiles as argued in Ground 1. Cruz-Hernandez, another reference assigned to the Patent Owner, was introduced for its teaching of a "position reset" function. This function redefines the center or origin of a haptic effect (like a detent or spring force) after a user releases the input object, ensuring a more consistent feel upon re-engagement.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings to improve the user experience of Goldenberg's haptic knob. Applying Cruz-Hernandez's "position reset" would make Goldenberg's simulated spring effects feel more realistic and consistent, as mechanical springs typically reset to their origin. This would prevent an unrealistic feel if a user re-engaged the knob after it had come to rest away from its initial origin.
  • Expectation of Success (for §103 grounds): The combination was argued to be a straightforward application of a known technique (position reset) to a known system (haptic knob) to achieve a predictable improvement in performance.

Ground 3: Anticipation and Obviousness over Rosenberg - Claims 1-4, 6, 8-11, 13, 15-17, and 19 are anticipated by and/or obvious over Rosenberg.

• Prior Art Relied Upon: Rosenberg (Application # 2007/0139375).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Rosenberg’s disclosure of a "restoring force command" for an interface device anticipates the claims, particularly when viewed through the lens of the Patent Owner's own claim interpretation from parallel litigation. Petitioner mapped Rosenberg's "deadband" or "deadzone" (a region with zero or low force around an origin) to the "primary range of positions." The region of constant, near-maximum restoring force outside the deadband was mapped to the "secondary range." The "localized region R," where force rapidly changes between the deadband and the constant force region, was mapped to the "boundary range," which overlaps the other two. The application of the "rapidly" changing restoring force within region R was asserted to be the claimed haptic effect.
  • Motivation to Combine (for §103 grounds): For claims not fully anticipated, Petitioner argued that any necessary modifications, such as mapping positions to increasing or decreasing analog-to-digital conversion (ADC) values (claim 4), would have been a matter of straightforward design for a POSITA, as monotonic ordering is a basic principle in ADC mapping.
  • Expectation of Success (for §103 grounds): Success was expected as the arguments relied on applying fundamental and well-known engineering principles to the system disclosed in Rosenberg.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on combinations of Roberts (Patent 6,203,432) with Rosenberg and Cruz-Hernandez, and a separate ground of anticipation/obviousness over Levin (Application # 2007/0152988), which relied on similar haptic feedback and positional range mapping theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and Fintiv.
• §325(d): Denial was argued to be unwarranted because the primary prior art references (Goldenberg, Rosenberg, Levin, etc.) were not cited or considered during the original prosecution of the ’907 patent.
• Fintiv: Petitioner contended that Fintiv factors weigh against denial. It noted that it had requested a stay in the parallel district court litigation. Furthermore, the district court's trial is scheduled for late August 2025, which is only one month before the statutory deadline for a Final Written Decision in this inter partes review (IPR), minimizing concerns of inefficiency. Petitioner also asserted that litigation investment has been minimal and that the petition was filed diligently, well before the §315(b) deadline.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-20 of the ’907 patent as unpatentable.