Apple Inc v. Haptic Inc

1. Case Identification

• Case #: IPR2024-01476
• Patent #: 9,996,738
• Filed: September 30, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Haptic Inc.
• Challenged Claims: 3, 6-7, and 12-13

2. Patent Overview

• Title: System and Method for Controlling a Terminal Device
• Brief Description: The ’738 patent discloses a control system that uses an accelerometer within a housing mounted on a surface (e.g., a wall) to detect vibrations from user interactions, such as knocks. These detected vibrations are processed as gestures to generate commands for controlling a separate terminal device, like a thermostat.

3. Grounds for Unpatentability

Ground 1A: Claims 3, 6-7, and 12-13 are obvious over Murakoshi in view of Stewart.

• Prior Art Relied Upon: Murakoshi (Application # 2014/0191963) and Stewart (Patent 4,744,249).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Murakoshi taught the core concept of a control system with a sensor (specifically an accelerometer) that detects vibrations on a surface (e.g., tapping) to control a remote device. Murakoshi’s system included a sensor, a server with processing and routing components, and a terminal device. However, Murakoshi did not detail the mechanical mounting of the sensor. Stewart addressed this deficiency by disclosing a robust method for mounting multiple accelerometers within a case (housing) using a bracket assembly and attaching the case to a supporting structure with case mounts. The combination of Murakoshi’s system with Stewart’s mounting implementation disclosed the claimed control system, including the housing, the sensor (accelerometer) within, and the "engagement means" for mounting to a surface.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Murakoshi’s vibration-sensing system would combine it with Stewart's teachings to solve the practical problem of how to securely and effectively mount the accelerometer. Stewart’s use of brackets and case mounts was a well-known, suitable option to fix the sensor within a housing and the housing to a surface, ensuring stable orientation and reliable vibration detection without interference.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as combining known mounting techniques (Stewart) with a sensor system (Murakoshi) was a predictable application of existing technologies to achieve a known goal.

Ground 1B: Claims 3, 6-7, and 12-13 are obvious over Murakoshi, Stewart, and Sachs.

• Prior Art Relied Upon: Murakoshi (Application # 2014/0191963), Stewart (Patent 4,744,249), and Sachs (Application # 2009/0265671).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Murakoshi and Stewart combination by adding the teachings of Sachs to address the claim limitation requiring the processing module to determine and match a data pattern with a gesture profile. Petitioner asserted Sachs taught a gesture recognition system for mobile devices that explicitly identified "data features" from sensor waveforms—such as the magnitude and timing of tap pulses—to recognize a specific gesture. This method of analyzing signal characteristics corresponded directly to the claimed "determining a data pattern" and "matching...with a gesture profile."
  • Motivation to Combine: While Murakoshi taught mapping tap patterns to commands, it lacked detail on how to process the raw sensor data. A POSITA seeking an efficient method to interpret these patterns would combine the Murakoshi/Stewart system with Sachs’s technique for segmenting vibratory signals into distinct data features. This approach was more efficient and robust against background noise than comparing entire raw waveforms.

Ground 1C: Claims 3 and 6 are obvious over Murakoshi, Stewart, Sachs, and Orr.

• Prior Art Relied Upon: Murakoshi (Application # 2014/0191963), Stewart (Patent 4,744,249), Sachs (Application # 2009/0265671), and Orr (Application # 2015/0348554).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Orr to the previous combination to teach the claimed client-server architecture. Petitioner argued that Orr disclosed using a virtual assistant that operates on a client-server model, where a user device captures input and a remote, cloud-based server performs the intensive processing. This mapped directly to the claimed system where a sensor communicates with a server comprising routing and processing modules.
  • Motivation to Combine: A POSITA would implement the gesture processing taught by Murakoshi and Sachs on a cloud-based server as taught by Orr for several known benefits. This architecture would leverage greater processing power for complex gesture analysis, reduce the size and cost of the local sensor apparatus, and achieve a "separation of concerns"—a well-known software design principle allowing server and client applications to be maintained independently. The use of cloud-based servers for data processing was a well-established and suitable option.

4. Key Claim Construction Positions

• Petitioner presented claim constructions for several terms disputed in parallel litigation, arguing the prior art renders the claims obvious under either its own or the Patent Owner's proposed constructions.
• "engagement means": Petitioner argued this term, recited in claim 1, was a means-plus-function term under §112(f). The recited functions included attaching the housing to a surface and transmitting data signals. The corresponding structure in the specification was identified as an adhesive, mechanical fasteners, or screws, and a "transmission portion" (including frames, brackets, or a spring-loaded portion).
• "module" terms: Petitioner contended that terms such as "routing module," "processing module," and "output module" were also means-plus-function terms lacking sufficient corresponding structure in the specification, as a POSITA would not have understood "module" as a name for a specific structure.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under the Fintiv factors would be inappropriate.
• Factor 2 (Trial Timing): The scheduled trial date of September 2025 in the parallel district court case was likely to be delayed. Petitioner noted the median time-to-trial in the Northern District of California was 48.9 months, projecting a trial date significantly later than the Final Written Decision (FWD) deadline for this inter partes review (IPR).
• Factor 3 (Case Progression): The petition was filed well before the one-year statutory bar, and the parallel litigation remained in its early stages, with significant resources on invalidity yet to be expended.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 3, 6-7, and 12-13 of the ’738 patent as unpatentable.