Apple Inc v. Resonant Systems Inc

1. Case Identification

• Case #: IPR2024-00808
• Patent #: 9,941,830
• Filed: April 12, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Resonant Systems, Inc.
• Challenged Claims: 1-8, 14-17, 19-20

2. Patent Overview

• Title: Linear Vibration Modules and Linear-Resonant Vibration Modules
• Brief Description: The ’830 patent discloses electromechanical vibration modules for incorporation into various devices to produce haptic feedback. The modules are designed to generate vibrations of selected amplitudes and frequencies, using a moveable component that oscillates within a housing.

3. Grounds for Unpatentability

Ground 1A: Claims 1-4, 7, 8, 14-17, 19, and 20 are obvious over Wakuda in view of Ramsay (under plain-and-ordinary meaning construction).

• 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 taught the core elements of a vibration module, including a housing, a moveable magnetic body, an electromagnetic coil as the driving component, and a control means that generates drive signals to cause oscillation. Ramsay was alleged to teach user-input features and software that allow an end-user to create, modify, and store customized haptic effects by specifying parameters like frequency and amplitude. The combination of Wakuda’s hardware with Ramsay’s user-customization software was argued to meet the limitations of the independent claims.
  • Motivation to Combine: A POSITA would combine Wakuda and Ramsay to enhance the functionality of a known haptic device. While haptic feedback customization was typically limited to professional designers, Ramsay provided tools for end-users. A POSITA would have been motivated to incorporate Ramsay's user-friendly customization into Wakuda's compact vibration generator to offer greater flexibility and a fuller haptic experience to the end-user.
  • Expectation of Success: Petitioner asserted a high expectation of success because combining the references involved a predictable software implementation (Ramsay) onto a known hardware platform (Wakuda). Both references described controlling linear actuators to produce desired outputs, making their structures and operations compatible.

Ground 1B: Claims 2-6 are obvious over Wakuda and Ramsay in view of Amaya.

• Prior Art Relied Upon: Wakuda (Patent 7,005,811), Ramsay (Application # 2008/0294984), and Amaya (Patent 5,955,799).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Wakuda-Ramsay combination by adding Amaya's teachings for claims dependent on sensor feedback. Petitioner argued that Amaya disclosed a linear vibration motor with a detailed closed-loop feedback control system. This system used sensors to detect the moveable component's position or velocity and adjusted the driving current to maintain resonant operation, directly corresponding to the limitations in claims 3-6 regarding receiving sensor signals and adjusting control outputs.
  • Motivation to Combine: A POSITA would incorporate Amaya's feedback control to improve the performance of the Wakuda-Ramsay system. Wakuda described a need to handle varying loads and changes in elastic forces but provided only a high-level description of its feedback mechanism. Amaya provided a specific, known solution to this exact problem, motivating a POSITA to implement its detailed feedback algorithm to achieve more robust and stable resonant vibration.
  • Expectation of Success: Success was expected because all three references described substantially similar vibration architectures and control techniques. Combining Amaya’s feedback control with the Wakuda-Ramsay system was merely the application of a known technique to improve a known device.

Ground 2A: Claims 1-8, 14-17, 19, and 20 are obvious over Wakuda and Ramsay in view of Rossi and Aldrich (under means-plus-function construction).

• 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 argued that if the terms "control component" and "driving component" are construed as means-plus-function terms, the corresponding structure was rendered obvious by the combination. Petitioner alleged Rossi disclosed a specific H-bridge switching circuit, a well-known structure corresponding to the claimed "driving component" function. Aldrich was argued to disclose a specific "hill-climbing" feedback control algorithm that tunes frequency to maintain resonance, providing the corresponding structure for the "control component" function.
  • Motivation to Combine: A POSITA would have been motivated to implement the high-level concepts of the Wakuda-Ramsay combination using the specific, well-known structures taught by Rossi and Aldrich. Where Wakuda-Ramsay lacked implementation details for the driving circuit and control algorithm, Rossi and Aldrich provided conventional, off-the-shelf solutions for achieving oscillating power and maintaining resonance, respectively.
  • Expectation of Success: Petitioner argued success would have been predictable as it involved combining known, compatible components. Implementing Rossi’s H-bridge circuit and Aldrich’s control algorithm were routine matters of circuit design and software programming for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 1C (over Wakuda-Ramsay-Tierling) to teach complex vibration modes by superimposing frequencies, and Ground 2B (over Wakuda-Ramsay-Rossi-Aldrich-Tierling) applying the means-plus-function construction to the combination including Tierling.

4. Key Claim Construction Positions

• Petitioner presented its invalidity arguments under two alternative claim construction theories for the terms "control component" and "driving component" to preempt disputes.
• Plain-and-Ordinary Meaning (Grounds 1A-1C): Under this theory, the terms were not treated as means-plus-function limitations.
• Means-Plus-Function (Grounds 2A-2B): Petitioner argued that if the terms are construed under 35 U.S.C. §112(f), the petition identified corresponding structures in the prior art. This dual approach was taken in response to Patent Owner’s allegedly inconsistent positions on these terms in co-pending district court litigations.

5. Arguments Regarding Discretionary Denial

• General Plastic Factors: Petitioner argued against discretionary denial based on other IPRs filed by Samsung and Sony, asserting that the General Plastic factors favor institution. The arguments centered on Apple being a separate, unrelated party, using entirely different prior art and claim construction arguments than the other petitions, and that there was no evidence of strategic staging or unfair advantage.
• Fintiv Factors: Petitioner argued that Fintiv factors also favor institution. It contended that the scheduled trial date in the parallel district court case was uncertain due to a recent judicial transfer and a pending motion to transfer venue. Therefore, the IPR was likely to conclude before a trial on the merits. Petitioner also emphasized the compelling merits of its petition as a reason to institute.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-8, 14-17, 19, and 20 of the ’830 patent as unpatentable.