Apple Inc v. Resonant Systems Inc

1. Case Identification

• Case #: IPR2024-00807
• Patent #: 8,860,337
• Filed: April 12, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Resonant Systems, Inc.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Linear Vibration Modules and Linear-Resonant Vibration Modules
• Brief Description: The ’337 patent discloses vibration modules for incorporation into various electromechanical devices. The technology is directed to producing vibrations of user-selected amplitudes and frequencies over a wide range by using a linear oscillation of an internal weight or component.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wakuda and Ramsay - Claims 1-4 are obvious over Wakuda in view of Ramsay.

• Prior Art Relied Upon: Wakuda (Patent 7,005,811) and Ramsay (Application # 2008/0294984).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wakuda, which discloses a small vibration generator system for devices like portable telephones, taught the core components of a linear vibration module, including a housing, a movable body (component), a driving component (coil), and a control means. Ramsay taught techniques for allowing an end-user to customize haptic effects—including frequency and amplitude—through a graphical user interface (GUI) on a device. The combination of Wakuda’s hardware with Ramsay’s user-configurable software allegedly met all limitations of the independent claims. For claim 1(g), Petitioner asserted that Wakuda’s requirement for a casing made of a “magnetic substance” to form a magnetic path, combined with the well-known use of paramagnetic materials like aluminum for such casings, rendered the use of a paramagnetic material to reduce reluctance obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ramsay with Wakuda to improve Wakuda's haptic system by adding user-customization capabilities. Ramsay addressed the known limitation that end-users typically could not modify haptic feedback, providing a direct motivation to incorporate its user-friendly GUI and software into a known haptic device like Wakuda’s to create a more flexible and feature-rich product.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing Ramsay's known software solutions into Wakuda's conventional hardware setup, a task requiring only routine software implementation skills.

Ground 2: Obviousness over Wakuda, Ramsay, Rossi, and Aldrich - Claims 1-4 are obvious over the combination of Wakuda, Ramsay, Rossi, and Aldrich.

• Prior Art Relied Upon: Wakuda (Patent 7,005,811), Ramsay (Application # 2008/0294984), Rossi (Patent 4,879,641), and Aldrich (NASA Tech Briefs (Apr. 2008)).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Wakuda-Ramsay combination and was asserted to defeat the claims under a means-plus-function construction for the “control component” term. Petitioner argued that Rossi disclosed a specific H-bridge switching circuit, a well-known structure for driving a coil in opposite directions, which provided the corresponding structure for the "switch" element of the control component. Further, Aldrich taught a "hill-climbing" feedback control algorithm to drive an actuator at its resonant frequency. This algorithm provided the corresponding structure for the processor's control program, which Petitioner argued was absent in detail from Wakuda and Ramsay.
  • Motivation to Combine: A POSITA implementing the Wakuda-Ramsay system would have looked to references like Rossi for a standard, reliable circuit to switch current flow, as Wakuda did not detail a specific circuit. Similarly, to implement feedback control for resonance tracking, a POSITA would have turned to known algorithms like the one in Aldrich to improve performance and provide the necessary implementation details lacking in the primary references.
  • Expectation of Success: Success was expected as it involved integrating a conventional H-bridge circuit (Rossi) and a known software algorithm (Aldrich) into the combined Wakuda-Ramsay system, which were routine design and programming tasks.

Ground 3A: Obviousness over Gregorio, Ramsay, and Wakuda - Claims 1, 2, and 4 are obvious over Gregorio in view of Ramsay and Wakuda.

• Prior Art Relied Upon: Gregorio (Patent 7,843,277), Ramsay (Application # 2008/0294984), and Wakuda (Patent 7,005,811).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Gregorio as an alternative primary reference that disclosed a haptically-enabled system for a handheld device with a linear resonant actuator (LRA) that determined and adjusted to its resonant frequency. Similar to Ground 1, Ramsay was added to provide user-configurability of haptic parameters. Wakuda was added because Gregorio described its LRA components at a high level; a POSITA would have looked to a reference like Wakuda for specific, detailed implementations of a similar linear vibration generator, including its casing, coil, and movable body structure.
  • Motivation to Combine: The motivation to combine Gregorio and Ramsay was the same as in Ground 1: to add user customization to a known haptic system. A POSITA would have been motivated to consult Wakuda to find concrete implementation details for the LRA components that Gregorio described only functionally, thereby enabling the construction of the physical device.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success as the combination involved applying known techniques (Ramsay's software, Wakuda's actuator design) to a known system (Gregorio's haptic device) to achieve predictable improvements.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Gregorio-Ramsay-Tierling (Ground 3B), Gregorio-Ramsay-Wakuda-Rossi-Aldrich (Ground 4A), and Gregorio-Ramsay-Tierling-Rossi-Aldrich (Ground 4B), which relied on similar combination rationales but introduced Tierling for generating complex, multi-frequency vibration modes.

4. Key Claim Construction Positions

• Petitioner argued that the terms “control component” and “driving component” are central to the invalidity analysis. Due to the Patent Owner’s inconsistent positions in co-pending litigation, Petitioner presented its unpatentability arguments under two alternative constructions for these terms: (1) their plain and ordinary meaning, and (2) a means-plus-function interpretation under 35 U.S.C. §112(6). The petition asserted that the claims are unpatentable regardless of which construction is adopted, with specific grounds (e.g., Ground 2 and 4) tailored to explicitly map prior art structures to the means-plus-function limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under multiple frameworks.
• General Plastic Factors: Petitioner argued against denial based on a pre-existing IPR filed by Sony (IPR2024-00569), asserting that Apple is a separate, unrelated party using entirely different prior art, claim constructions, and priority date arguments, thus avoiding concerns of follow-on petitions.
• §325(d) (Advanced Bionics): Petitioner contended that denial is unwarranted because the prior art references asserted in the petition were not considered during prosecution and are not cumulative of the art that was before the Examiner.
• §314(a) (Fintiv): Petitioner argued Fintiv factors favor institution because the co-pending district court litigation is in its early stages, a motion to transfer and stay is pending, and the Board's Final Written Decision would likely issue before a potential trial.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 of the ’337 patent as unpatentable.