Petition for Inter Partes Review of U.S. Patent 8,773,356
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`
`
`Filed by:
`Amit Agarwal, pro se
`14420 Edinburgh Moor Drive
`Wimauma, FL 33598
`310-351-6596
`ama7386@gmail.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`AMIT AGARWAL
`Petitioner
`
`v.
`
`IMMERSION CORP.
`Patent Owner
`U.S. Patent 8,773,356
`Filing Date: January 31, 2012
`Issue Date: July 8, 2014
`Title: Method and Apparatus for Providing Tactile Sensations
`__________________
`
`Case IPR2016-00807
`__________________
`
`Petition for Inter Partes Review of U.S. Patent 8,773,356
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Filed by:
`Amit Agarwal, pro se
`14420 Edinburgh Moor Drive
`Wimauma, FL 33598
`310-351-6596
`ama7386@gmail.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`AMIT AGARWAL
`Petitioner
`
`v.
`
`IMMERSION CORP.
`Patent Owner
`U.S. Patent 8,773,356
`Filing Date: January 31, 2012
`Issue Date: July 8, 2014
`Title: Method and Apparatus for Providing Tactile Sensations
`__________________
`
`Case IPR2016-00807
`__________________
`
`Petition for Inter Partes Review of U.S. Patent 8,773,356
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`
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`1. Disclosures, certifications, and other regulatory requirements
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`Real party-in-interest: Amit Agarwal (“Petitioner”).
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`Related matters: Immersion Corp. v. Apple et al, No.1-16-cv-00077 (D. Del.)
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`and Investigation No. 337-TA-990 (USITC).
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`Service: ama7386@gmail.com (email), 14420 Edinburgh Moor Dr., Wimauma,
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`FL 33598 (address), 310-351-6596 (phone). Petitioner served this petition and
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`supporting evidence by EXPRESS MAIL ® on the patent owner Immersion Corp.
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`(“Immersion”) at the correspondence address of record for U.S. Patent 8,773,356
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`(“’356”) (Petitioner Ex. 1001): Carl Sanders, Kilpatrick Townsend, 1001 West
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`Fourth Street, Winston-Salem, NC 27101.
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`Standing: Petitioner certifies that the ’356 patent is available for inter partes
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`review and that Petitioner is neither barred nor estopped from filing this petition.
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`Identification of challenge and request for relief: Claims 1-3, 9-13, 19-23,
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`25, and 26 of the ’356 patent, with a priority date of Nov. 1, 2001, are anticipated
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`under pre-AIA 35 U.S.C. § 102(e) by U.S. Patent Application No. 09/487,737 filed
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`on Jan. 19, 2000 (“Rosenberg”) (Petitioner Ex. 1002). Claims 5, 7, 15, and 17 are
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`obvious under pre-AIA 35 U.S.C. § 103(a) in light of U.S. Patent Application No.
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`09/487,737 (“Rosenberg”) and IBM’s User’s Manual for the Simon PDA product
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`(“Simon”) published in 1994 (Petitioner Ex. 1005). No claim interpretation is
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`needed. Petitioner requests the Board to institute trial on this challenge.
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`1
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`2. Rosenberg anticipates Claim 1-3, 9-13, 19-23, 25, and 26 of the ’356
`patent.
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`2.1 Rosenberg anticipates Claim 1 of the ’356 patent.
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`For Claim 1, the intrinsic record lacks (i) clear and unambiguous disclaimers or
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`disavowals of claim scope or (ii) special definition for any claim term. The plain
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`meaning of each claim term is its broadest reasonable interpretation to an
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`ordinarily skilled artisan who has read the entire intrinsic record.
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`2.1.1 “A method, comprising: outputting a display signal configured to
`display a graphical object on a touch-sensitive input device”
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`The circle, triangle, square, and letter ‘F’ are not permanently etched in
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`Rosenberg Fig. 8a. Petitioner Ex. 1002 p.6. Each shape is a transient display—the
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`outcome of outputting a display signal configured to display a graphical object
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`resembling that shape on “[s]creen 82,” a touch-sensitive input device, “preferably
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`a ‘touch screen’ that includes sensors.” Id. at p. 15 ¶ 72.
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`2.1.2 “receiving a sensor signal from the touch-sensitive input device, the
`sensor signal indicating an object contacting the touch-sensitive input
`device”
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`Referencing Fig. 8a, Rosenberg discloses usage of “a transparent sensor film . .
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`. overlaid on the screen 80, where the film can detect pressure from an object
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`contacting the film.” Id. The display of ‘F’ is the outcome of receiving sensor
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`signals from the touch-sensitive input device, here the transparent sensor film on
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`the touch screen which can detect pressure, indicating an object contacting the
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`touch-sensitive input device, here a stylus contacting the touchscreen at various
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`locations which, joined together, form the shape ‘F’.
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`2.1.3 “determining an interaction between the object contacting the touch-
`sensitive input device and the graphical object; and”
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`In the context of the touchpad-in-a-laptop embodiment, Rosenberg teaches
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`outputting a vibration to “signify a graphical object which the cursor is currently
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`positioned over.” Petitioner Ex. 1002 at p. 13 ¶ 56. For example, “[a] pulse or
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`bump force can be output when the cursor is moved over . . . an icon.” Id.
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`Determining when a user’s finger contacting the touchpad moves a cursor over an
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`3
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`icon suffices as the disclosure of determining an interaction between the object
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`(stylus/finger) contacting the touch-sensitive input device (touchpad) and the
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`graphical object (icon).
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`Immersion might argue that Rosenberg’s disclosed interaction is between the
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`cursor and the graphical object and not between an object contacting the touch-
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`sensitive input device and the graphical object. But the cursor is merely a proxy or
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`agent for the object contacting the touch-sensitive input device. Thus, any
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`disclosure of an interaction between a cursor and a graphical object is the
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`disclosure of an interaction between the cursor’s principal, i.e., the object
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`contacting the touch-sensitive input device and the graphical object.
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`Immersion might also object to Petitioner’s citation of Rosenberg’s touchscreen
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`embodiment for some claim elements and touchpad embodiment for others, citing
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`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (A prior
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`art reference cannot anticipate “unless [it] discloses within the four corners of the
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`document not only all of the limitations claimed but also all of the limitations
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`arranged or combined in the same way as recited in the claim.”). But Rosenberg
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`states that “features described . . . for the touchpad are equally applicable to the
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`touch screen embodiment 80.” Petitioner Ex. 1002 at p. 15 ¶ 75. “A reference may
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`. . . anticipate if the reference teaches that the disclosed components or
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`functionalities may be combined and one of skill in the art would be able to
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`implement the combination.” Blue Calypso, LLC v. Groupon, Inc., No. 15-1391
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`(Fed. Cir. March 1, 2016).
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`2.1.4 “generating an actuator signal based at least in part on the
`interaction”
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`Rosenberg discloses that “[o]ne or more actuators 86 can be coupled to the
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`underside of the touch screen 82 to provide haptic feedback such as pulses,
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`vibrations, and textures; for example, an actuator 86 can be positioned near each
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`comer [sic] of the screen, as shown in FIG. 8a . . . The user can experience the
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`haptic feedback through a finger or a held object such as a stylus 87 that is
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`contacting the screen 82.” Petitioner Ex. 1002 at p. 15 ¶ 74. “Furthermore, the
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`magnitude of output forces . . . can depend on the . . . interaction in the graphical
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`environment.” Id. at p. 13 ¶ 59. Thus, Rosenberg discloses generating an actuator
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`signal based at least in part on the interaction between the object contacting the
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`touch-sensitive input device and the graphical object.
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`2.1.5 “and haptic effect data in a lookup table.”
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` A
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` host document incorporates material by reference if it “identif[ies] with
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`detailed particularity what specific material it incorporates and clearly indicate[s]
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`where that material is found in the various documents.” Callaway Golf Co. v.
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`Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009). In Callaway Golf, the Federal
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`Circuit analyzed this incorporation statement in U.S. Patent 4,431,193 (“Nesbitt”),
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`“Reference is made to the application Ser. No. 155,658, of Robert P. Molitor
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`issued into U.S. Pat. No. 4,274,637 which describes a number of foamable
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`compositions of a character which may be employed for one or both layers 14 and
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`16 for the golf ball of this invention.” U.S. Patent 4,321,193 at col. 3 II. 51-61. The
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`Federal Circuit held, “Nesbitt identifies with specificity both what material is being
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`incorporated by reference (foamable polymeric compositions suitable for golf ball
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`cover layers) and where it may be found (the Molitor patent).” Callaway Golf, 576
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`F.3d at 1346.
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`Rosenberg states, “one or more moveable portions 28 of the housing of the
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`computer device 10 can be included which is contacted by the user when the user
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`operates the touchpad 16 and which can provide haptic feedback. Having a
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`moveable portion of a housing for haptic feedback is described in copending patent
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`. . . application Ser. No. 09/103,281 . . . incorporated herein by reference.”
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`Petitioner Ex. 1002 at p. 9 ¶ 30. Like Nesbitt in Callaway Golf, Rosenberg
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`identifies with specificity both what material is being incorporated by reference
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`(moveable portions of the housing of the computer device and their provision of
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`haptic feedback) and where it may be found (U.S. Patent Application Ser. No.
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`09/103,281). Rosenberg discloses through the incorporated materials relating to
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`provision of haptic feedback, applicable to moveable portions and non-moveable
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`portions of the housing alike, that “force profiles can be stored in . . . a look-up
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`table of force values to be output based on the current position of the user object.”
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`Petitioner Ex. 1003 at p. 17 ll. 11-12.
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`Thus, by a preponderance of the evidence, the Rosenberg Application discloses
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`that the generated actuator signals (haptic feedback) depend in part on haptic effect
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`data in a lookup table.
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`2.2 Rosenberg anticipates Claim 2 of the ’356 patent.
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`Claim 2 recites, “The method of claim 1, wherein the actuator signal is
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`configured to cause a haptic effect to be output.” Section 2.1, supra at 2-7,
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`establishes that Rosenberg anticipates Claim 1 of the ’356 patent. Rosenberg
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`discloses “[o]ne or more actuators 86 can be coupled to the underside of the touch
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`screen 82 to provide haptic feedback such as pulses, vibrations, and textures; for
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`example, an actuator 86 can be positioned near each comer [sic] of the screen 82,
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`as shown in FIG. 8a. Other configurations of actuators can also be used. The user
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`can experience the haptic feedback through a finger or a held object such as a
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`stylus 87 that is contacting the screen 82.” The pulses, vibrations, and textures in
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`Rosenberg are actuator signals configured to cause a haptic effect to be output to
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`the screen, and onward to the user whose finger or stylus is contacting the screen.
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`//
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`//
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`//
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`2.3 Rosenberg anticipates Claim 3 of the ’356 patent.
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`Claim 3 recites, “The method of claim 1, wherein the actuator signal is
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`generated when the object contacts the touch-sensitive device at a location
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`corresponding to the graphical object.” Section 2.1, supra at 2-7, establishes that
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`Rosenberg anticipates Claim 1 of the ’356 patent. In the context of the touchpad
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`embodiment, Rosenberg teaches outputting a vibration to “signify a graphical
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`object which the cursor is currently positioned over.” Petitioner Ex. 1002 at p. 13 ¶
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`56. For example, “[a] pulse or bump force can be output when the cursor is moved
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`over . . . an icon.” Id.
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`One of skill in the art would be able to implement the invention in Claim 3 on a
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`touchscreen device using Rosenberg’s teachings in the touchpad context, given
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`Rosenberg’s statement that “features described . . . for the touchpad are equally
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`applicable to the touch screen embodiment 80.” Petitioner Ex. 1002 at p. 15 ¶ 75.
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`“A reference may . . . anticipate if the reference teaches that the disclosed
`
`components or functionalities may be combined and one of skill in the art would
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`be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., No.
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`15-1391 (Fed. Cir. March 1, 2016). Thus, Rosenberg teaches generating an
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`actuator signal (“pulse or bump force”) when the object (finger or stylus) contacts
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`the touch-sensitive device (touch screen) at a location corresponding to the
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`graphical object (“icon”).
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`2.4 Rosenberg anticipates Claim 9 of the ’356 patent.
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`Claim 9 recites, “The method of claim 1, wherein the graphical object
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`comprises a first graphical object and a second graphical object, the haptic effect
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`comprises a first haptic effect and a second haptic effect, and wherein the first
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`haptic effect is configured to be output when the object contacts the first graphical
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`object, and the second haptic effect is configured to be output when the object
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`contacts the second graphical object.”
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`Section 2.1, supra at 2-7, establishes that Rosenberg anticipates Claim 1 of the
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`’356 patent. Rosenberg discloses, “The sensations for certain menu choices can be
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`stronger than others to indicate importance or frequency of use, i.e., the most used
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`menu choices can be associated with higher-magnitude (stronger) pulses than the
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`less used menu choices.” Petitioner Ex. 1002 at p. 13 ¶ 57. The most used menu
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`choice is the first graphical object. The corresponding first haptic effect is the
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`higher-magnitude pulse configured to be output when the object such as a stylus or
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`finger contacts the most used menu choice. The less used menu choice is the
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`second graphical object. The corresponding second haptic effect is a lower-
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`magnitude pulse configured to be output when the object such as a stylus or finger
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`contacts the less used menu choice.
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`Separately, Rosenberg also teaches that “[t]he user or developer can . . .
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`preferably associate particular graphical objects with customized haptic
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`sensations.” Id. at p. 13 ¶ 59. Thus, Rosenberg’s disclosure of a plurality of
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`graphical objects with a corresponding plurality of haptic effects also suffices to
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`disclose this claim element.
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`2.5 Rosenberg anticipates Claim 10 of the ’356 patent.
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`Claim 10 recites, “The method of claim 1, wherein the haptic effect data
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`comprises a plurality of haptic effects.” Section 2.1, supra at 2-7, establishes that
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`Rosenberg anticipates Claim 1 of the ’356 patent. Rosenberg discloses, “The
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`sensations for certain menu choices can be stronger than others to indicate
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`importance or frequency of use, i.e., the most used menu choices can be associated
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`with higher-magnitude (stronger) pulses than the less used menu choices.”
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`Petitioner Ex. 1002 at p. 13 ¶ 57. Rosenberg therefore discloses a plurality of
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`haptic effects such as weaker pulses for less used menu choices and higher-
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`magnitude (stronger) pulses for most used menu choices. Separately, Rosenberg
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`also teaches that “[t]he user or developer can . . . preferably associate particular
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`graphical objects with customized haptic sensations.” Id. at p. 13 ¶ 59. This also
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`constitutes a disclosure wherein the haptic effect data comprises a plurality of
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`haptic effects.
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`2.6 Rosenberg anticipates Claim 11 of the ’356 patent.
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`Claim 11 recites, “The method of claim 1, wherein the lookup table comprises
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`one or more of input device data, position data, pressure data, or function data.”
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`10
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`Section 2.1, supra at 2-7, establishes that Rosenberg anticipates Claim 1 of the
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`’356 patent. Rosenberg discloses a “look-up table of force values to be output
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`based on the current position of the user object.” Petitioner Ex. 1003 at p. 17 ll. 11-
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`12 (incorporated by reference). Thus, Rosenberg discloses a lookup table
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`comprising position data, which satisfies “one or more of input device data,
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`position data, pressure data, or function data.”
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`2.7 Rosenberg anticipates Claim 12 of the ’356 patent.
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`2.7.1 “A system comprising: a touch sensitive input device configured to
`output a sensor signal indicating an object contacting the touch-
`sensitive input device”
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`
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`Referencing Fig. 8a, Rosenberg discloses usage of “a transparent sensor film . .
`
`. overlaid on the screen 80, where the film can detect pressure from an object
`
`contacting the film.” Petitioner Ex. 1002 at p. 15 ¶ 72. The sensor film overlaid on
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`touch screen 80, which is the touch sensitive input device, is therefore configured
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`to output a sensor signal when the film detects pressure from an object contacting
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`the film, which is indicative of an object contacting the touch-sensitive input
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`device.
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`2.7.2 “an actuator coupled to the touch-sensitive input device, the actuator
`configured to receive an actuator signal and output a haptic effect to
`the touch-sensitive surface basted at least in part on the actuator
`signal; and”
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`Rosenberg discloses that “[o]ne or more actuators 86 can be coupled to the
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`underside of the touch screen 82 to provide haptic feedback such as pulses,
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`11
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`vibrations, and textures; for example, an actuator 86 can be positioned near each
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`comer [sic] of the screen, as shown in FIG. 8a . . . The user can experience the
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`haptic feedback through a finger or a held object such as a stylus 87 that is
`
`contacting the screen 82.” Petitioner Ex. 1002 at p. 15 ¶ 74. “Furthermore, the
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`magnitude of output forces . . . can depend on the . . . interaction in the graphical
`
`environment.” Id. at p. 13 ¶ 59. Rosenberg also discloses, “The sensations for
`
`certain menu choices can be stronger than others to indicate importance or
`
`frequency of use, i.e., the most used menu choices can be associated with higher-
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`magnitude (stronger) pulses than the less used menu choices.” Petitioner Ex. 1002
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`at p. 13 ¶ 57. The actuator signal carries information about the magnitude of output
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`forces such as higher-magnitude pulses for most used menu choices. The actuators
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`receive the actuator signal and output the haptic effect—strong pulses—based at
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`least in part on the actuator signal.
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`2.7.3 “a processor in communication with the sensor and the actuator, the
`processor configured to: output a display signal configured to display
`a graphical object on the touch-sensitive input device; receive the
`sensor signal from the touch-sensitive input device; determine an
`interaction between the object contacting the touch-sensitive surface
`and the graphical object; generate the actuator signal based at least
`in part on the interaction and haptic effect data in a lookup table”
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`For purposes of anticipation, the Rosenberg disclosures have an identical
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`impact on this claim element as Claim 1 because the claim limitations are identical.
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`Thus, Petitioner refers the Board to the evidence and argument in Sections 2.1 and
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`2.2, supra at 2-7, incorporated here.
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`2.7.4 “and transmit the actuator signal to the actuator”
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`Rosenberg discloses, “One or more actuators 86 can be coupled to the underside
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`of the touch screen 82 to provide haptic feedback such as pulses, vibrations, and
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`textures; for example, an actuator 86 can be positioned near each comer [sic] of the
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`screen 82, as shown in FIG. 8a. Other configurations of actuators can also be used.
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`The user can experience the haptic feedback through a finger or a held object such
`
`as a stylus 87 that is contacting the screen 82.” Rosenberg also discloses, “The
`
`sensations for certain menu choices can be stronger than others to indicate
`
`importance or frequency of use, i.e., the most used menu choices can be associated
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`with higher-magnitude (stronger) pulses than the less used menu choices.”
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`Petitioner Ex. 1002 at p. 13 ¶ 57. The information about the strength of the pulses,
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`vibrations, and textures in Rosenberg are actuator signals transmitted to the
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`actuator.
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`2.8 Rosenberg anticipates Claim 13 of the ’356 patent.
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`Claim 13 recites, “The system of claim 12, wherein the processor is configured
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`to generate the actuator signal when the object contacts the touch-sensitive input
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`device at a location corresponding to the graphical object.” Section 2.7, supra at
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`11-13, establishes that Rosenberg anticipates Claim 12 of the ’356 patent. Claim
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`13
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`13 is the system claim counterpart of method claim 3 and recites identical claim
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`limitations. Petitioner refers the Board to the evidence and argument in Section 2.3,
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`supra at 8, incorporated here.
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`2.9 Rosenberg anticipates Claim 19 of the ’356 patent.
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`Claim 19 recites, “The system of claim 12, wherein the graphical object
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`comprises a first graphical object and a second graphical object, the haptic effect
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`comprises a first haptic effect and a second haptic effect, and wherein the first
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`haptic effect is configured to be output when the object contacts the first graphical
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`object, and the second haptic effect is configured to be output when the object
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`contacts the second graphical object.” Section 2.7, supra at 11-13, establishes that
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`Rosenberg anticipates Claim 12 of the ’356 patent. Claim 19 is the system claim
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`counterpart of method claim 9 and recites identical claim limitations. Petitioner
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`refers the Board to the evidence and argument in Section 2.4, supra at 9,
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`incorporated here.
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`2.10
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`Rosenberg anticipates Claim 20 of the ’356 patent.
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`Claim 20 recites, “The system of claim 12, wherein the haptic effect data
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`comprises a plurality of haptic effects.” Section 2.7, supra at 11-13, establishes
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`that Rosenberg anticipates Claim 12 of the ’356 patent. Claim 20 is the system
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`claim counterpart of method claim 10 and recites identical claim limitations.
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`Petitioner refers the Board to the evidence and argument in Section 2.5, supra at
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`10, incorporated here.
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`2.11
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`Rosenberg anticipates Claim 21 of the ’356 patent.
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`Claim 21 recites, “The system of claim 12, wherein the lookup table comprises
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`one or more of input device data, position data, pressure data, or function data.”
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`Section 2.7, supra at 11-13, establishes that Rosenberg anticipates Claim 12 of the
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`’356 patent. Claim 21 is the system claim counterpart of method claim 11 and
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`recites identical claim limitations. Petitioner refers the Board to the evidence and
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`argument in Section 2.6, supra at 10, incorporated here.
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`2.12
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`Rosenberg anticipates Claim 22 of the ’356 patent.
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`Claim 22 is a software claim which recites a computer-readable medium
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`comprising program code for performing identical claim limitations disclosed in
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`dependent method claim 2 or system claim 12. The Rosenberg reference is directed
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`exclusively to computer systems and devices. There is no serious counter to the
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`position that every teaching in Rosenberg is directed to program code to achieve
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`the various functional claim limitations. See Petitioner Ex. 1002 at p. 7 ¶ 11
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`(referring to haptic feedback enabled software); p. 13 ¶ 59 (“The user or developer
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`can also preferably associate particular graphical objects with customized haptic
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`sensations.”); id. at p. 13 ¶ 61 (“A software designer may want to allow a user to
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`be able to select options or a software function by positioning a cursor over an area
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`on the screen using the touchpad, but not require pressing a physical button or
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`tapping the touchpad to actually select the option.”) Without program code, none
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`of Rosenberg’s teachings have any practical import. Petitioner refers the Board to
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`evidence and argument in Sections 2.1, 2.2, and 2.7, supra at 2-7, 11-13.
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`2.13
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`Rosenberg anticipates Claim 23 of the ’356 patent.
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`Claim 23 is a software claim which recites, “The computer-readable medium of
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`claim 22, wherein the actuator signal is generated when the object contacts the
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`touch-sensitive device at a location corresponding to the graphical object.” These
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`claim limitations are identical to those in Claims 3 and 13. Petitioner refers the
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`Board to evidence and argument in Sections 2.3 and 2.8, supra at 8, 13.
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`2.14
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`Rosenberg anticipates Claim 25 of the ’356 patent.
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`Claim 25 is a software claim which recites, “The computer-readable medium of
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`claim 22, wherein the haptic effect data comprises a plurality of haptic effects.”
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`These claim limitations are identical to those in Claims 10 and 20. Petitioner refers
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`the Board to evidence and argument in Sections 2.5 and 2.10, supra at 10, 14.
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`2.15
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`Rosenberg anticipates Claim 26 of the ’356 patent.
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`Claim 26 is a software claim which recites, “The computer-readable medium of
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`claim 22, wherein the lookup table comprises one or more of input device data,
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`position data, pressure data, or function data.” These claim limitations are identical
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`to those in Claims 11 and 21. Petitioner refers the Board to evidence and argument
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`in Sections 2.6, 2.11, supra at 10, 14.
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`3. Rosenberg and Simon render obvious Claim 5, 7, 15, and 17 of the ’356
`patent.
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`Claims 5 and 15 depend on anticipated claims 1 and 12 and add the further
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`claim limitation “wherein the display signal is configured to display a keypad
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`comprising a plurality of softkeys.” Claims 7 and 17 depend on claims 5 and 15
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`and add the further limitation, “wherein the plurality of softkeys comprises one
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`softkey for each digit from 0 to 9.”
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`Rosenberg discloses all claim limitations for independent claims 1 and 12.
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`Supra at 2-7, 11-13. IBM’s User Manual for its Simon PDA (“Simon”) discloses a
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`display signal configured to display a keypad comprising a plurality of softkeys
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`comprising one softkey for each digit from 0 to 9.
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`“Simon has a touch-sensitive screen,” Petitioner Ex. 1005
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`p. 8, on which Simon outputs a display signal, as
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`depicted, id. at p. 9, configured to display a keypad
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`comprising a plurality of softkeys, one for each digit from
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`0 to 9. Simon teaches that “[t]o enter numbers and letters
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`. . . touch the desired . . . number [or] letter . . . using
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`either the stylus . . . or your finger.” Id. at p. 8. Thus, the
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`scope of the prior art combination of Rosenberg and
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`17
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`Simon covers claims 5, 7, 15 and 17 accorded their broadest reasonable
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`interpretation.
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`Rosenberg discloses a variety of display signals configured to display a
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`spectrum of graphical objects such as “icons, windows, menu items, graphical
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`buttons, slider bars, scroll bars” in the context of delivering varying haptic effects
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`depending on the “type of graphical object encountered.” Petitioner Ex. 1002 at p.
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`13 ¶ 59. Combining Rosenberg’s teachings with Simon’s teachings—to add a
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`keypad of softkeys from 0-9 to that long list of graphical objects—is not only a
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`matter of common sense, it is something Rosenberg itself teaches, suggests, and
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`motivates. When disclosing its touch screen embodiment, Rosenberg states,
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`“Those devices which allow a user to input information by touching a display
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`screen or readout in some fashion are primarily relevant to this embodiment of the
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`present invention. Such devices can include . . . cellular phones having touch
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`screens, etc.” Petitioner Ex. 1002 at p. 14 ¶ 71 (emphasis added). “Simon is a
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`cellular phone.” Petitioner Ex. 1005 at p. 9. “Simon has a touch-sensitive screen.”
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`Id. at p. 8.
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`While proving obviousness has not required any evidence of teaching,
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`suggestion, or motivation for about a decade, KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 415-421 (2007), it still remains a useful evidentiary device to guard
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`against hindsight bias attending any exercise in time travel to evaluate what would
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`18
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`have been obvious to an ordinarily skilled artisan two decades ago. Rosenberg’s
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`disclosure that “cellular phones having touch screens” are primarily relevant to its
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`touch screen embodiment serve as a strong teaching, suggestion, and motivation
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`that would have led an ordinarily skilled artisan to combine Rosenberg with
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`Simon, to arrive at the claimed invention.
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`4. No need for expert witnesses to resolve this challenge
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`There’s an old adage which goes, that which infringes, if later, anticipates, if
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`earlier. When Immersion sought to narrate its story of infringement to the district
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`court in the District of Delaware, it tellingly used Apple’s marketing materials
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`intended for the non-technical masses. Petitioner Ex. 1006 at p. 4 (below). If the
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`story of infringement can be narrated using advertisements aimed at the non-
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`technical masses, odds are that the flip-side of that coin—the story of
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`anticipation—can be understood and adjudicated under a preponderance standard
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`by a technically-savvy Board without expert intervention.
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`19
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`“No rule requires a Petition to be accompanied by any declaration, let alone one
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`from an expert guiding the Board as to how it should read prior art . . . Board
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`members, because of expertise, may more often find it easier to understand and
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`soundly explain the teachings and suggestions of prior art without expert
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`assistance.” Belden Inc. v. Berk-Tek LLC, Appeal No. 2014-1575, -1576 (Fed. Cir.
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`Nov. 5, 2015) (citations omitted).
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`Adjudicating patentability here does not call for even a superficial knowledge
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`of any piece of hardware or software involved in the implementation of this
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`claimed invention. That material was already in the public domain. The challenged
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`claims do not purport to make any advances in piezoelectric actuator design, for
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`example. The purported novelty here amounts to reading, on a lookup table, which
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`vibration to return to the user based on his/her interaction with a displayed image.
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`This is the stuff of user interaction and user experience. Adjudicating
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`patentability only requires an intuition attainable by being a lay consumer of
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`modern electronics. Studies have shown that two-year old toddlers in Western
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`culture possess an array of skills allowing them to interact purposefully with a
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`touch screen. Petitioner Ex. 1004. The Board is eminently qualified to adjudicate
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`patentability against a preponderance standard for these claims without expert
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`interference.
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`//
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`5. Conclusion
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`Petitioner has established a reasonable likelihood that claims 1-3, 9-13, 19-23,
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`25, and 26 of the ’356 patent are anticipated under pre-AIA 35 U.S.C. § 102(e) by
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`U.S. Patent Application No. 09/487,737 (“Rosenberg”) (Petitioner Ex. 1002), and
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`that claims 5, 7, 15, and 17 are obvious under pre-AIA 35 U.S.C. § 103(a) in light
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`of U.S. Patent Application No. 09/487,737 (“Rosenberg”) and IBM’s Users
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`Manual for the Simon PDA product (“Simon”). Thus, the Board should institute
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`Amit Agarwal (Pro Se)
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`21
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`trial.
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`Dated: March 29, 2016
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`Petitioner’s Exhibit List
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`March 29, 2016
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`Petitioner Ex. 1001
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`U.S. Patent No. 8,773,356
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`Petitioner Ex. 1002
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`U.S. Patent Application No. 09/487,737
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`Petitioner Ex. 1003
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`U.S. Patent Application No. 09/103,281
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`Ahearne C, et al, Touch-screen Technology Usage in
`Toddlers, Archives of Disease in Childhood, 22
`December 2015
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`IBM’s User Manual for the Simon PDA
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`
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`District of Delaware Complaint, Immersion v. Apple
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`Petitioner Ex. 1004
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`Petitioner Ex. 1005
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`Petitioner Ex. 1006
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`22
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`Petition for Inter Partes Review of U.S. Patent 8,773,356
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re patent of: Martin et al.
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`U.S. Patent No. 8,773,356
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`Issued: July 8, 2014
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`Title: METHOD AND
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`APPARATUS
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`FOR PROVIDING TACTILE
`SENSATIONS
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`Petition for Inter Partes Review
`Pro Se
`Real Party in Interest: Amit Agarwal
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`
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`CERTIFICATE OF SERVICE
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` The undersigned certifies, in accordance with 37 C.F.R. §§ 42.6(e)(4),
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`42.105,
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