UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`AMIT AGARWAL,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00807
`Patent No. 8,773,356
`___________________
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`IMMERSION CORPORATION’S
`
`CORRECTED PATENT OWNER PRELIMINARY RESPONSE
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`9696256
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`AMIT AGARWAL,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00807
`Patent No. 8,773,356
`___________________
`
`
`
`
`
`
`
`IMMERSION CORPORATION’S
`
`CORRECTED PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`9696256
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`TABLE OF CONTENTS
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`Case IPR2016-00807
`Patent No. 8,773,356
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`Page
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`THE BOARD SHOULD DENY INSTITUTION OF THE
`PETITION UNDER 35 U.S.C. § 325(d) ...................................................... 2
`
`A.
`
`B.
`
`C.
`
`The Same Exact Prior Art and Similar Arguments Were
`Considered by the Examiner During Original Prosecution ............... 2
`
`The Petition Does Not Present Any New Evidence ........................... 5
`
`Section 325(d) Authorizes The Board To Reject Petitions
`That Reargue Positions The Office Previously Considered............... 5
`
`III. THE ’356 PATENT ...................................................................................... 7
`
`IV. CLAIM CONSTRUCTION ......................................................................... 9
`
`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART
`(PHOSITA) ................................................................................................. 10
`
`VI. SUMMARY OF PETITIONER’S CHALLENGES .................................. 11
`
`A. Ground 1: Anticipation of Claims 1-3, 9-13, 19-23, 25 and
`26 Based on the Rosenberg ’737 Application .................................. 11
`
`B.
`
`Ground 2: Obviousness of Claims 5, 7, 15, and 17 Based on
`the Rosenberg ’737 Application and IBM Simon ............................ 11
`
`VII. THE ROSENBERG ’737 APPLICATION DOES NOT
`ANTICIPATE CLAIMS 1-3, 9-13, 19-23, 25, AND 26 OF THE
`’356 PATENT ............................................................................................. 11
`
`A.
`
`Petitioner Has Not Shown an Embodiment Arranged in the
`Same Way as Recited in the Claims of the ’356 Patent ................... 12
`
`1.
`
`The Petition Relies on Portions of Different
`Embodiments for Anticipation ............................................... 14
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`Page
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`B.
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`C.
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`2.
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`The Petition Provides No Evidence of How to
`Combine the Multiple Embodiments as Arranged in
`the Claims of the ’356 Patent ................................................. 16
`
`Petitioner Has Not Established That the Rosenberg ’737
`Application Discloses “determining an interaction between
`the object contacting the touch-sensitive input device and the
`graphical object” ............................................................................... 20
`
`Petitioner Has Not Established That the Rosenberg ’737
`Application Discloses “generating an actuator signal based at
`least in part on the interaction and haptic effect data in a
`lookup table” .................................................................................... 22
`
`1.
`
`2.
`
`The Portion of the Rosenberg ’281 Application
`Relating to a Lookup Table Was Not Incorporated by
`Reference in the Rosenberg ’737 Application ....................... 22
`
`The Rosenberg ’281 Application Does Not Disclose
`the Claimed Lookup Table ..................................................... 26
`
`VIII. PETITIONER’S OBVIOUSNESS GROUND FOR CLAIMS 5, 7,
`15, AND 17 FAILS..................................................................................... 32
`
`A. Ground 2: Obviousness of Claims 5, 7, 15, and 17 Based on
`Rosenberg ’737 and Simon .............................................................. 32
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`IX. CONCLUSION ........................................................................................... 33
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`TABLE OF AUTHORITIES
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`Case IPR2016-00807
`Patent No. 8,773,356
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`
` Page(s)
`
`Cases
`Advanced Display Sys., Inc. v. Kent State Univ.,
`212 F.3d 1272 (Fed. Cir. 2000) .......................................................................... 22
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 10
`
`Application of Saunders,
`444 F.2d 599 (C.C.P.A. 1971) ............................................................................ 26
`
`Blue Calypso LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .................................................................... 18, 19
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 22
`
`Cuozzo Speed Techs., LLC v. Michelle K. Lee,
`__ S. Ct. __, 2016 WL 3369425 (June 20, 2016) ................................................. 9
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper No. 19 (P.T.A.B. Nov. 21, 2013) .................................... 6
`
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487 (P.T.A.B. Sept. 11, 2014) ........................................................... 7
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014- 0436 (P.T.A.B. June 19, 2014) ............................................................ 7
`
`Microboards Tech., LLC d/b/a Afinia v. Stratasys Inc.,
`IPR2015-00287 (P.T.A.B. May 28, 2015) ........................................................... 6
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`Net MoneyIN, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ........................................................ 11, 13, 14, 18
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315 (P.T.A.B. July 8, 2014) .............................................................. 6
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`SK Hynix Inc. v. DSS Tech. Management, Inc.,
`IPR2016-00192 (Judge Minn Chung May 11, 2016) ................................... 18, 22
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`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702 (P.T.A.B. July 24, 2014) ............................................................ 6
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`Statutes
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`35 U.S.C. § 102 ........................................................................................................ 13
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`35 U.S.C. § 314(a) ............................................................................................. 19, 33
`
`35 U.S.C. §316(e) .................................................................................................... 11
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`35 U.S.C. § 325(d) ............................................................................................passim
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`Other Authorities
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`37 C.F.R. § 42.100(b) .......................................................................................... 9, 10
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`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) ........................................................ 6
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`U.S. Patent No. 6,429,846 ...................................................................................... 2, 4
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`EXHIBIT LIST
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`Declaration of Joseph M. Lipner in Support of Immersion's
`Unopposed Motion for Pro Hac Vice Admission
`Patent Owner's Proposed Protective Order
`
`Unredacted Transcript of Telephonic Hearing (Friday, May 20,
`2016)
`Redacted Transcript of Telephonic Hearing (Friday, May 20,
`2016)
`File History of US Patent Application No. 13/362,356
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`U.S. Patent No. 6,429,846 to Rosenberg (“’846 patent”), Issued
`from U.S. Application No. 09/487,737
`Rosenberg Patent Application Publication US 2008/0068350
`(“Rosenberg ’350 Publication”)
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (Statement of Sen.
`Kyl)
`Corrected Declaration of Nathan J. Delson, Ph.D.
`
`
`
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`Immersion
`Ex. 2001
`Immersion
`Ex. 2002
`Immersion
`Ex. 2003
`Immersion
`Ex. 2004
`Immersion
`Ex. 2005
`Immersion
`Ex. 2006
`Immersion
`Ex. 2007
`Immersion
`Ex. 2008
`Immersion
`Ex. 2009
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner Amit Agarwal did not submit a statement of material facts in this
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`Petition. Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a), and no
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`facts are admitted.
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`I.
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`INTRODUCTION
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`Immersion Corporation (“Immersion”) submits that the Patent Trial and
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`Appeal Board (“Board”) should deny Petitioner Amit Agarwal’s petition for inter
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`partes review (“Petition”) and not institute review of U.S. Patent No. 8,773,356
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`(“’356 patent”) for at least four independent reasons. First, the Petition should be
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`rejected under 35 U.S.C. § 325(d) because it raises the same exact prior art
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`disclosure (U.S. Application No. 09/487,737, the “Rosenberg ’737 Application”)
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`that was before the Patent Office during the original prosecution and the same
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`arguments that the Patent Office considered and rejected. Second, the Petition fails
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`to establish that the Rosenberg ’737 Application discloses each and every element
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`of the claims of the ’356 patent, including “determining an interaction between the
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`object contacting the touch-sensitive input device and the graphical object” and
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`“generating an actuator signal based at least in part on the interaction and haptic
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`effect data in a lookup table” as recited in claim 1 (and similar language in other
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`independent claims). Third, the Petition picks and chooses from multiple different
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`embodiments without providing any evidence – including expert testimony – of
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`how the alleged disclosures should be arranged or combined in the same way as
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`the claims of the ’356 patent. Fourth, the Petition concedes that it relies on a
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`portion of another patent application for the “haptic effect data in a lookup table”
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`claim limitation, offering an incorrect argument based on incorporation by
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`reference. The disclosure that Petitioner cites with respect to a lookup table was
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`not incorporated by reference in the ’737 Application. The Petition should be
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`denied and trial should not be instituted.
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`II. THE BOARD SHOULD DENY INSTITUTION OF THE PETITION
`UNDER 35 U.S.C. § 325(d)
`A. The Same Exact Prior Art and Similar Arguments Were
`Considered by the Examiner During Original Prosecution
`
`The Petition should be denied for the threshold reason that the Petition relies
`
`on an anticipation challenge based on the same exact prior art and the same
`
`arguments that the Patent Office considered during the original prosecution. The
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`Petition raises a single ground of invalidity in challenging claims 1-3, 9-13, 19-23,
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`25, and 26: anticipation by the Rosenberg ’737 Application(Ex. 1002). Pet., at 1.
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`Multiple references with the same or substantially similar disclosure as the
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`Rosenberg ’737 Application were before the examiner during prosecution of the
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`’356 patent (Ex. 2005-131, ’356 Prosecution History):
`
`(1) U.S. Patent No. 6,429,846 to Rosenberg (“Rosenberg ’846 patent”)
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`(Ex. 2006). The Rosenberg ’846 patent is the patent that resulted
`
`from the Rosenberg ’737 Application. The Rosenberg ’846 patent has
`
`the same disclosure as the Rosenberg ’737 Application. Delson Decl.
`
`(Ex. 2009) ¶¶ 32-35.
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`(2) Rosenberg Patent Application Publication US 2008/0068350
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`(“Rosenberg ’350 Publication”) (Ex. 2007). The Rosenberg ’350
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`Publication is the publication of the second continuation of the
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`Rosenberg ’737 Application. The Rosenberg ’350 Publication has
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`substantially the same disclosure as the Rosenberg ’737 Application.
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`Delson Decl. (Ex. 2009) ¶¶ 36-38.
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`In fact, the Rosenberg ’350 Publication was substantively addressed by the
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`examiner during the prosecution of the ’356 patent. In an Office Action dated
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`September 18, 2013, the examiner rejected claims 1-20 as being anticipated by the
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`Rosenberg ’350 Publication. Ex. 2005-231 to -236. On February 2, 2014,
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`Immersion filed a Response to the Office Action and amended claim 1 to add the
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`claim language “and haptic effect data in a lookup table.” Ex. 2005-261.
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`Independent claims 10 and 18 were similarly amended. Ex. 2005-263, -265. In
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`the Response, Immersion distinguished the Rosenberg ’350 Publication, stating
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`“Rosenberg may discuss outputting haptic effects based on user inputs (or
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`graphical objects), but it does not discuss determining which specific haptic
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`effect to output for given a user input (or graphical object) based on data in a
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`lookup table.” Ex. 2005-258. Upon considering Immersion’s amendment to the
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`claims and response distinguishing the Rosenberg ’350 Publication, the examiner
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`issued a Notice of Allowance. Ex. 2005-273. Thus, the same challenge presented
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`by this Petition was considered and rejected by the examiner during the original
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`prosecution of the ’356 patent.
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`Petitioner further asserts that the lookup table limitation of the ’356 patent
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`was anticipated by the disclosure from another Rosenberg application, Application
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`Serial No. 09/103,281 (“Rosenberg ’281 Application”), which Petitioner alleges
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`was incorporated by reference in the Rosenberg ’737 Application. Pet., at 6 (citing
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`Ex. 1002 , ¶ 30). Immersion disagrees that the disclosure of the Rosenberg ’281
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`Application relied upon by Petitioner was incorporated by reference into the
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`Rosenberg ’737 Application, as discussed in Section VII.C.1 below. However,
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`even accepting Petitioner’s position for the sake of argument, the same
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`incorporation by reference was before the examiner during prosecution of the ’356
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`patent in the Rosenberg ’846 patent. Ex. 2006, Col. 5:56-63. Thus, any disclosure
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`from the Rosenberg ’281 Application that Petitioner may argue was incorporated
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`into the Rosenberg ’737 Application was also before the examiner during
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`prosecution of the ’356 patent that was substantively considered by the examiner
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`and successfully distinguished.
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`The Petition’s only other invalidity ground is based on obviousness of
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`dependent claims 5, 7, 15, and 17 over the ’737 Application and the Simon
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`reference. Pet., at 1. But the Simon reference is being cited only for its alleged
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`disclosure of softkeys for digits 0 to 9 (claimed in the dependent claims). Pet., at
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`17-19. The Petition’s arguments regarding the Simon reference do not present new
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`issues or cure the deficiencies in the disclosure of the Rosenberg ’737 Application
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`that the Patent Office rejected during the original prosecution.
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`The Petition Does Not Present Any New Evidence
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`B.
`The Petition also does not cite any new evidence that was not before the
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`examiner during prosecution of the application that matured into the ’356 patent.
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`Petitioner did not submit an expert declaration with the Petition. As a result, there
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`is nothing new for the Board to consider. Because the Petition (1) advances the
`
`same prior art and arguments that were before and considered by the examiner and
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`(2) fails to cite to any expert declaration or any new evidence, the Board should
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`deny the Petition as duplicative under 35 U.S.C. § 325(d) and decline to institute
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`trial.
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`C.
`
`Section 325(d) Authorizes The Board To Reject Petitions That
`Reargue Positions The Office Previously Considered
`
`Under 35 U.S.C. § 325(d), Congress vested the Board with broad discretion
`
`to reject petitions for inter partes review that repeat the same or substantially the
`
`same prior art and arguments already presented to the USPTO. 35 U.S.C. § 325(d)
`
`(“In determining whether to institute or order a proceeding under this chapter,
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`chapter 30, or chapter 31, the Director may take into account whether, and reject
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`the petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.”). The legislative history
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`confirms that Congress specifically intended to avoid duplicative proceedings. For
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`instance, Senator Jon Kyl stated that Section 325(d) “allows the Patent Office to
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`reject any request for a proceeding, including a request for ex parte reexamination,
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`if the same or substantially the same prior art or arguments previously were
`
`presented to the Office with respect to that patent.” 157 Cong. Rec. S1042 (daily
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`ed. Mar. 1, 2011) (Statement of Sen. Kyl). Ex. 2008-9. Congress therefore made
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`the institution of IPR proceedings discretionary so the Board could deny requests
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`for repetitive proceedings. 35 U.S.C. § 325(d); Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., IPR2013-00324, Paper No. 19, at 5 (P.T.A.B. Nov. 21,
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`2013) (Board’s discretion is “guided” by § 325(d)).
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`The Board has repeatedly and consistently exercised its discretion to deny
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`petitions that rely on the same prior art to challenge the same claims. See, e.g.,
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`Microboards Tech., LLC d/b/a Afinia v. Stratasys Inc., IPR2015-00287 (Paper No.
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`13, at 12) (P.T.A.B. May 28, 2015) (declining to institute inter partes review based
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`on anticipatory reference because the same prior art reference, and specifically the
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`same question of the reference’s disclosure, was previously considered by the
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`Office during prosecution); Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
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`IPR2014-00315 (Paper No. 14, at 12-13) (P.T.A.B. July 8, 2014) (declining to
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`institute inter partes review because the same prior art and substantially the same
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`arguments were previously considered by the Office during prosecution); Unified
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`Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-00702 (Paper No. 13, at 7)
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`(P.T.A.B. July 24, 2014); Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487 (Paper
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`No. 8, at 6) (P.T.A.B. Sept. 11, 2014); Medtronic, Inc. v. Robert Bosch Healthcare
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`Sys., Inc., IPR2014- 0436 (Paper 17, at 12) (P.T.A.B. June 19, 2014).
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`Granting the Petition and instituting a proceeding would unnecessarily
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`burden the Board, waste the resources of the Office and also harass Immersion.
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`The Petition should be rejected pursuant to the Board’s discretion under 35 U.S.C.
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`§ 325(d).
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`III. THE ’356 PATENT
`The ’356 patent is entitled “Method and Apparatus for Providing Tactile
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`Sensations.” The ’356 patent claims priority to a non-provisional application (via
`
`several continuation applications) dated November 1, 2002, which in turn claims
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`priority to two provisional applications, the earliest of which was filed on
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`November 1, 2001. The ’356 patent relates to providing tactile sensations to a user
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`interacting (e.g., using his or her finger) with graphical objects displayed on a
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`touchscreen in mobile electronic devices such as mobile phones and PDAs. The
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`’356 patent teaches, among other things, systems and methods in which the mobile
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`electronic device displays on the touchscreen one or more graphical objects (such
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`as, for example, menus, softkeys of a keypad, etc.). See, e.g., Col. 11:11-63
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`(describing an embodiment in which a user touches and interacts with graphical
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`objects on a display and a controller provides a corresponding tactile sensation).
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`The user can contact the touch-sensitive touchscreen with an object (e.g., a finger)
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`at a desired location where a graphical object is being displayed, and the device
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`determines an interaction between the object contacting the touchscreen and the
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`graphical object. The device generates an actuator signal for providing tactile
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`sensations to the user based at least in part on the user’s interaction with the
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`graphical object on the touchscreen and haptic effect data in a lookup table stored
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`in a memory of the device. The tactile sensation, for example, provides a cue to
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`the user interacting with graphical objects displayed on the touchscreen.
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`The specification describes how the lookup table allows the system to
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`associate tactile sensations with different interactions on the device. “In one
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`embodiment, this information is in the form of associations among the detected
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`input data, the functions of the electronic device or apparatus, and the tactile
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`sensations.” Col. 14:21-25. “The controller, using the data obtained from
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`monitoring the input device, reads the table and obtains the associated function and
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`tactile sensation information.” Col. 14:33-35. Thus, the lookup table contains
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`haptic effect data corresponding to various interactions between the object
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`contacting the touchscreen (e.g., the user’s finger) and graphical objects displayed
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`on the touchscreen. “The storage memory includes a table in which input signals
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`are associated with various haptic feedback signals. This is explained more fully
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`in relation to Figs. 9-10.” Col. 7:67-Col. 8:3. Figure 9 shows an embodiment of a
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`lookup table.
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`
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`The lookup table facilitates associating different interactions with haptic
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`effect data for different tactile sensations. Delson Decl. (Ex. 2009) ¶ 23. For
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`example, the system can obtain the haptic effect data for Tactile Sensation 9 that is
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`associated with the user’s interaction with a graphical object on the touchscreen
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`using the lookup table. Neither the Rosenberg ’737 Application nor the Rosenberg
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`’281 Application discloses the lookup table limitation as claimed in the ’356
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`patent.
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`IV. CLAIM CONSTRUCTION
`“During inter partes review, claims are given their “broadest reasonable
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`construction in light of the specification of which [they] appear.” 37 C.F.R.
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`§ 42.100(b).” Cuozzo Speed Techs., LLC v. Michelle K. Lee, __ S. Ct. __, 2016
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`WL 3369425, at *4 (June 20, 2016). The standard for claim construction at the
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`Patent Office is different from that used during a U.S. District Court litigation. See
`
`In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004); 37
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`C.F.R. § 42.100(b). Immersion expressly reserves the right to argue a different
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`claim construction in litigation for any term of the ’356 patent, as appropriate in
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`that proceeding.
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`Petitioner has indicated that claim interpretation is not needed. Pet., at 1.
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`Immersion is not proposing any claim constructions at this time but reserves the
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`right to respond to any claim constructions that may be presented or adopted by the
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`Board.
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`V.
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`PERSON HAVING ORDINARY SKILL IN THE ART (PHOSITA)
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`The Petition does not set forth a level of ordinary skill in the art. A
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`PHOSITA at the time of the invention of the ’356 patent would have at least a
`
`Bachelor’s of Science degree in an engineering discipline such as Mechanical
`
`Engineering or Computer Science, or at least two years’ experience working with,
`
`for example, human machine interface systems, graphical user interfaces, haptic
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`feedback systems, robotics, biomechanics, or mobile devices, or equivalent
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`embedded systems. Delson Decl. (Ex. 2009) ¶ 27.
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`VI. SUMMARY OF PETITIONER’S CHALLENGES
`A. Ground 1: Anticipation of Claims 1-3, 9-13, 19-23, 25 and 26
`Based on the Rosenberg ’737 Application
`In an inter partes review, “the petitioner [has] the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
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`§316(e). The Petition does not carry this burden.
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`Petitioner’s first ground of invalidity is based entirely on anticipation by the
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`Rosenberg ’737 Application. However, in order to anticipate a claim, a prior art
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`reference not only must show all of the limitations claimed, but must show all of
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`those limitations arranged or combined in the same way as recited in the claim.
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`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The
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`Rosenberg ’737 Application does not contain such disclosure and cannot anticipate
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`claims 1-3, 9-13, 19-23, 25 and 26. Thus, ground 1 of the Petition fails.
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`B. Ground 2: Obviousness of Claims 5, 7, 15, and 17 Based on the
`Rosenberg ’737 Application and IBM Simon
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`Petitioner’s second invalidity ground relates only to dependent claims 5, 7,
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`15, and 17. Pet., at 1. As discussed below, Petitioner’s second invalidity ground
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`fails for at least the same reasons as discussed with respect to Petitioner’s first
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`invalidity ground.
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`VII. THE ROSENBERG ’737 APPLICATION DOES NOT ANTICIPATE
`CLAIMS 1-3, 9-13, 19-23, 25, AND 26 OF THE ’356 PATENT
`
`Petitioner fails to show that the Rosenberg ’737 Application (with or without
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`the portion of the Rosenberg ’281 Application that Petitioner contends is
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`incorporated by reference) teaches a single embodiment that anticipates claims 1-3,
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`9-13, 19-23, 25, and 26 of the ’356 patent. Because there is no such embodiment,
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`the Petition instead presents a flawed analysis based on picking, choosing, and
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`combining various disclosures of three different embodiments not directly related
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`to each other. Moreover, the Petition is devoid of any analysis or expert opinion of
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`how the disparate embodiments can be combined or arranged as in the claims. See
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`Section VII.A.
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`Even if it were permissible to pick and choose snippets of disclosure
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`regarding multiple embodiments (and it is not), Petitioner also has not established
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`that the Rosenberg ’737 Application discloses at least the limitations “determining
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`an interaction between the object contacting the touch-sensitive input device and
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`the graphical object” and “generating an actuator signal based at least in part on the
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`interaction and haptic effect data in a lookup table” in claim 1 (and similar
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`limitations in claims 12 and 22) of the ’356 patent. See Sections VII.B.-C.
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`Petitioner has not established anticipation of claims 1-3, 9-13, 19-23, 25, and 26.
`
`A.
`
`Petitioner Has Not Shown an Embodiment Arranged in the Same
`Way as Recited in the Claims of the ’356 Patent
`
`In order to show anticipation, Petitioner must show that the Rosenberg ’737
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`Application contains all the limitations of the claims arranged or combined in the
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`same way as in the claims. “[U]nless a reference discloses within the four corners
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`Patent No. 8,773,356
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`of the document not only all of the limitations claimed but also all of the
`
`limitations arranged or combined in the same way as recited in the claim, it cannot
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`be said to prove prior invention of the thing claimed and, thus, cannot anticipate
`
`under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
`
`(Fed. Cir. 2008).
`
`Net MoneyIN explains that anticipation cannot be shown by stitching
`
`embodiments together, as Petitioner improperly seeks to do in the Petition. In Net
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`MoneyIN, the claim at issue recited an Internet payment system comprising five
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`“links.” Net MoneyIN, 545 F.3d at 1368. The prior art reference disclosed two
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`separate “protocols.” The district court had concluded that neither protocol taught
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`all five links, but that there could be anticipation because the separate protocols
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`together taught all five links. The Federal Circuit reversed, holding there was no
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`anticipation.
`
`Thus, it is not enough that the prior art reference discloses part
`of the claimed invention, which an ordinary artisan might supplement
`to make the whole, or that it includes multiple, distinct teachings that
`the artisan might somehow combine to achieve the claimed invention.
`See Arkley, 455 F.2d at 587 (“[T]he [prior art] reference must clearly
`and unequivocally disclose the claimed [invention] or direct those
`skilled in the art to the [invention] without any need for picking,
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`choosing, and combining various disclosures not directly related to
`each other by the teachings of the cited reference.”)
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`Id. at 1371.
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`The Federal Circuit held that the district court was “wrong to combine parts
`
`of the separate protocols shown in the [prior art] reference in concluding that [the
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`claim] was anticipated.” Id. More specifically, “[n]either of these protocols
`
`contains all five links arranged or combined in the same way as claimed in the ’737
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`patent. Thus, although the [prior art] reference might anticipate a claim directed to
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`either of the two protocols disclosed, it cannot anticipate the system of claim 23.”
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`Id.
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`1.
`
`The Petition Relies on Portions of Different Embodiments
`for Anticipation
`The Petition presents the same defective analysis found improper in Net
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`MoneyIN. To assert anticipation, the Petition weaves together citations from
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`different embodiments discussed in the Rosenberg ’737 Application and the
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`Rosenberg ’281 Application. Indeed, a review of the citations confirms that
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`Petitioner has cited to three separate embodiments:
`
` Embodiment 1: A laptop embodiment having a touchpad 16
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`(mislabeled as 18 in Fig. 1) described in the Rosenberg ’737
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`Application. Ex. 1002 (Rosenberg ’737 Application), Fig. 1; ¶ 0021.
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` Embodiment 2: A touchscreen embodiment as shown in Figures 8a
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`and 8b of the Rosenberg ’737 Application. Ex. 1002 (Rosenberg ’737
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`Application), Figs. 8a, 8b. Id. ¶ 0020, 0071, 0072.
`
` Embodiment 3: A force feedback system having a host computer
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`system 12 and an interface device 14 that includes a user object 34
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`(e.g., joystick, mouse, etc.) manipulated by a user described in Figure
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`1 of the Rosenberg ’281 Application. Ex. 1003 (Rosenberg ’281
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`Application).
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`The chart below shows how the Petition picks and chooses from portions of
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`the Rosenberg ’737 Application and the Rosenberg ’281 Application to supply
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`various elements of claim 1 of the ’356 patent and how the Petition splits elements
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`(such as element d):
`
`Claim 1
`(’356 Patent)
`1. A method, comprising:
`[a] outputting a display signal
`configured to display a graphical object
`on a touch-sensitive input device;
`[b] receiving a sensor signal from the
`touch-sensitive input device, the sensor
`signal indicating an object contacting
`the touch-sensitive input device;
`[c] determining an interaction between
`the object contacting the touch-sensitive
`input device and the graphical object;
`
`Petition’s Mix And Match
`
`
`Rosenberg ’737 Application
`touchscreen embodiment – Fig. 8a. Pet.
`at 2-3.
`Rosenberg ’737 Application
`touchscreen embodiment – Fig. 8a. Pet.
`at 3.
`
`Rosenberg ’737 Application touchpad
`embodiment – Fig. 1. Pet. at 3-5.
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`and
`[d1] generating an actuator signal based
`at least in part on the interaction
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`[d2] and haptic effect data in a lookup
`table.
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`Rosenberg ’737 Application
`touchscreen embodiment – Fig. 8a. Pet.
`at 5.
`Rosenberg ’281 Application user object
`34 (e.g., joystick, mouse, etc.) – Fig. 1.
`Pet. at 5-7.
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`
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`2.
`
`The Petition Provides No Evidence of How to Combine the
`Multiple Embodiments as Arranged in the Claims of the
`’356 Patent
`
`There is no single embodiment in the Rosenberg ’737 Application that
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`discloses all limitations of independent claims 1, 12, and 22 of the ’356 patent.
`
`Delson Decl. (Ex. 2009) ¶¶ 46-51. This is conceded in the Petition. Pet., at 2-7.
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`The Petition mechanically and discretely picks and chooses from the multiple
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`embodiments of the Rosenberg ’737 Application (and the Rosenberg ’281
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`Application, by alleged incorporation). Pet. at 2-7 (for claim 1). The Petition fails
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`to provide any analysis of how the discrete citations to different embodiments of
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`the Rosenberg ’737 Application can be combined or arranged in the same way as
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`recited in the claims. Furthermore, the Petition fails to provide any expert
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`testimony about how the three different embodiments can be combined or arranged
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`in the same way as recited in the claims.
`
`Claim 1[a] of the ’356 patent recites “outputting a display signal configured
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`to display a graphical object on a touch-sen
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