Apple Inc v. Resonant Systems Inc

1. Case Identification

• Case #: IPR2024-00983
• Patent #: 11,152,882
• Filed: May 30, 2024
• Petitioner(s): Apple Inc.
• Challenged Claims: 1-6, 10, 17, 19-20

2. Patent Overview

• Title: Oscillating-Resonant-Module Controller
• Brief Description: The ’882 patent discloses an oscillating resonant module controller. The technology involves generating vibrational forces through the back-and-forth oscillation of a mass along an oscillation path, which the patent describes as representing a segment of a space curve.

3. Grounds for Unpatentability

Ground 1: Obviousness over Alexander and Cosper - Claims 1-6, 10, 17, 19-20 are obvious over Alexander in view of Cosper.

• Prior Art Relied Upon: Alexander (Application # 2013/0237751) and Cosper (Application # 2008/0246532).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Alexander discloses an actuator with a "mover" that reciprocates along a "curvilinear path," which satisfies the claimed "segment of a space curve" limitation. Alexander also teaches a feedback controller and position sensors. Petitioner asserted that Cosper teaches a feedback control system for maintaining resonant oscillation in a linear actuator by using sensor data on position and velocity to generate drive signals. The combination of Alexander's actuator and curvilinear path with Cosper's resonant feedback control allegedly rendered the independent claims obvious.
  • Motivation to Combine: A POSITA would combine the references to achieve known benefits of resonant operation. Specifically, a POSITA would incorporate Cosper’s resonant feedback control into Alexander’s device to improve operational efficiency, enhance vibration strength for a given energy input, and extend battery life.
  • Expectation of Success: A POSITA would have expected success because the combination involved applying known feedback control methods from Cosper to a known actuator type from Alexander to yield predictable results. The implementation would primarily involve software changes and adding common bias members (e.g., a spring), which was a matter of conventional design choice.

Ground 2A: Obviousness over Gregorio - Claims 1-5, 10, 17, 19-20 are obvious over Gregorio.

• Prior Art Relied Upon: Gregorio (Patent 7,843,277).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended Gregorio alone discloses all elements of the challenged claims. Gregorio teaches a resonant actuator where a magnet (mass) attached to a spring is driven to generate haptic feedback at a resonant frequency. The system includes a processor-based controller that uses sensor inputs (e.g., from a Hall sensor) on the mass's position to generate drive signals. Petitioner argued Gregorio's linear oscillation path meets the "segment of a space curve" limitation, citing the Patent Owner's own broad interpretation of this term in co-pending litigation.

Ground 2B: Obviousness over Gregorio and Fuller - Claims 1-5, 10, 17, 19-20 are obvious over Gregorio in view of Fuller.

• Prior Art Relied Upon: Gregorio (Patent 7,843,277) and Fuller (Application # 2008/0001484).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground modifies Gregorio’s linear actuator system with teachings from Fuller. Fuller discloses electromagnetic vibrators where a movable magnet oscillates along an explicitly "curved" pathway, which Fuller describes as "preferred" for producing more complex rotating vibrations. Petitioner argued that Fuller provides a direct and explicit teaching for the "segment of a space curve" limitation, which was a key feature for patentability during prosecution.
  • Motivation to Combine: A POSITA would combine Gregorio's resonant actuator with Fuller's curved path to generate a more expansive and versatile vibration response. Fuller’s teaching that a curved path produces vibrations "in two directions" would have provided a clear reason to modify Gregorio’s system to create more complex haptic effects.
  • Expectation of Success: A POSITA would have expected success in imparting a slight curvature to Gregorio's oscillation path. This was a predictable modification that would not fundamentally alter the structural components or control logic of Gregorio's well-defined system.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges, primarily building upon the Gregorio and Gregorio-Fuller combinations by adding Ramsay (Application # 2008/0294984) for its teachings on user-configurable haptic parameters and Muramatsu (Patent 5,952,806) for its disclosure of using lookup tables and specific velocity calculation techniques.

4. Key Claim Construction Positions

• Petitioner argued that the term "control component" should be given its plain and ordinary meaning. However, to preempt arguments from co-pending litigation, Petitioner also presented a complete invalidity analysis under an alternative means-plus-function (MPF) construction pursuant to §112(f). The petition asserted that the challenged claims are obvious under either construction, thereby equipping the Board to resolve unpatentability regardless of its ultimate interpretation of the term.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments against discretionary denial under both 35 U.S.C. §325(d) and §314(a).
• Advanced Bionics (§325(d)): Petitioner argued denial is improper because most of the asserted prior art (Cosper, Gregorio, Fuller, Muramatsu) was never considered during prosecution. Regarding Alexander, which was previously cited, Petitioner contended the examiner committed material error by overlooking its most pertinent disclosures—specifically, the "curvilinear" oscillation path that directly taught the "space curve" limitation, a primary basis for allowance. This, Petitioner argued, presented the reference in a new light.
• Fintiv (§314(a)): Petitioner contended the Fintiv factors strongly favor institution, highlighting the early stage of the parallel district court litigation, the uncertainty of the trial schedule, and the compelling merits of the petition. Petitioner argued the petition demonstrates unpatentability across multiple, distinct grounds and claim constructions, weighing against discretionary denial under Fintiv.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6, 10, 17, and 19-20 of Patent 11,152,882 as unpatentable under 35 U.S.C. §103.