`571-272-7822
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` Paper 7
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` Entered: January 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
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`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01372
`Patent 8,659,571 B2
`____________
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`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
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`IPR2016-01372
`Patent 8,659,571 B2
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`I. INTRODUCTION
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
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`an inter partes review of claims 1–7, 12–18, and 23–29 (the “challenged
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`claims”) of U.S. Patent No. 8,659,571 B2 (Ex. 1001, “the ’571 patent”).
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`Immersion Corporation (“Patent Owner”) filed a Preliminary Response
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`(Paper 6, “Prelim. Resp.”).
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`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides that an inter partes review may not be
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`instituted unless the information presented in the Petition “shows that there
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`is a reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” For the reasons described
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`below, we determine that Petitioner has established a reasonable likelihood
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`of prevailing in showing the unpatentability of claims 1–4, 6, 23–26, and 28.
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`We, however, determine that Petitioner has not established a reasonable
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`likelihood of prevailing in showing the unpatentability of claims 5, 7, 12–18,
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`27, and 29. Accordingly, we institute an inter partes review only as to
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`claims 1–4, 6, 23–26, and 28 of the ’571 patent.
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`II. BACKGROUND
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`A. Real Party In Interest
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`Apple Inc. identifies itself as the real-party-in-interest. Pet. 1.
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`B. Related Proceedings
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`According to the parties, the ’571 patent is the subject of the
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`following proceedings: (1) Immersion Corp. v. Apple Inc., No. 1:16-cv-
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`00077 (D. Del.); and (2) In the Matter of: Certain Mobile Electronic Devices
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`IPR2016-01372
`Patent 8,659,571 B2
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`Incorporating Haptics (Including Smartphones and Smartwatches) and
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`Components Thereof, ITC Investigation No. 337-TA-990 (USITC), which
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`has been consolidated with In the Matter of: Certain Mobile and Portable
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`Electronic Devices Incorporating Haptics (Including Smartphones and
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`Laptops) and Components Thereof, ITC Investigation No. 337-TA-1004
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`(USITC). Pet. 1–2; Paper 4, 2.
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`III. THE ’571 PATENT
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`A. Described Invention
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`The ’571 patent describes a system and method for producing a
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`dynamic haptic effect based on a gesture signal and a device sensor signal.
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`Ex. 1001, Abstract, col. 1, l. 66–col. 2, l. 5. According to the ’571 patent, a
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`dynamic haptic effect is a haptic effect that evolves over time as it responds
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`to input parameters, such as a gesture signal or a device sensor signal. Id. at
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`col. 2, ll. 64–66, col. 3, ll. 12–15.
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`Figure 1 of the ’571 patent is reproduced below.
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`Figure 1 depicts a block diagram of haptically-enabled system 10 in an
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`exemplary embodiment of the ’571 patent. Id. at col. 3, ll. 63–64. As shown
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`in Figure 1 above, system 10 includes touch-sensitive surface 11 and may
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`also include mechanical keys or buttons 13. Id. at col. 3, ll. 64–67. Further,
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`system 10 includes a haptic feedback system that generates vibrations on
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`system 10, e.g., on touch surface 11. Id. at col. 3, l. 67–col. 4, l. 3. As also
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`illustrated in Figure 1, the haptic feedback system includes processor 12,
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`which is coupled to memory 20 and actuator drive circuit 16, which, in turn,
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`is coupled to haptic actuator 18. Id. at col. 4, ll. 4–6.
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`Touch surface 11 recognizes touches and also may recognize the
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`position and the magnitude or pressure of the touches on the surface. Id. at
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`col. 4, ll. 41–43. The data corresponding to the touches is sent to processor
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`12, which interprets the touches and generates haptic effect signals. Id. at
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`col. 4, ll. 43–46. Touch surface 11 may detect multi-touch contacts and may
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`be capable of distinguishing between multiple touches that occur at the same
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`time. Id. at col. 4, ll. 49–51.
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`According to the ’571 patent, a gesture is any movement of the body
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`that conveys meaning or user intent. Id. at col. 3, ll. 34–35. Simple
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`gestures, such as a “finger on” or “finger off” gesture, may be combined to
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`form more complex gestures, for example, a “tapping” or “swiping” gesture.
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`Id. at col. 3, ll. 35–49. In addition, any number of simple or complex
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`gestures may be combined to form other gestures, such as gestures based on
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`multiple finger contacts. Id. at col. 3, ll. 52–56.
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`Dynamic haptic effects are produced by changing a haptic effect
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`according to an interaction parameter, which may be derived from a gesture
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`using information such as the position, direction, and velocity of the gesture.
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`Id. at col. 10, ll. 24–29. An interaction parameter may also be derived from
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`device sensor data, such as the device acceleration, gyroscopic, or ambient
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`information. Id. at col. 11, ll. 4–6. Additionally, an interaction parameter
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`may incorporate a mathematical model related to a real-world physical
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`effect, such as gravity, acceleration, friction, or inertia. Id. at col. 12, ll. 38–
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`40. Further, an interaction parameter may optionally incorporate an
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`animation index to correlate the haptic effect to an animation displayed on
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`the device. Id. at col. 12, ll. 45–50. Once an interaction parameter is
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`generated from one or more of these sources, a drive signal is applied to a
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`haptic actuator according to the interaction parameter. Id. at col. 15, ll. 3–9.
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`B. Illustrative Claim
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`Of the challenged claims, claims 1, 12, and 23 are independent.
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`Claim 1 is illustrative of the challenged claims and is reproduced below:
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`1.
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`A method of producing a haptic effect comprising:
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`receiving a first gesture signal;
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`receiving a second gesture signal;
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`generating a dynamic interaction parameter using the first
`gesture signal and the second gesture signal; and
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`applying a drive signal to a haptic output device according
`to the dynamic interaction parameter.
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`Ex. 1001, col. 16, ll. 8–14.
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`IV. PETITIONER’S CHALLENGES
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`A. Prior Art Cited in Petitioner’s Challenges
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`Petitioner cites the following references in its challenges to
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`patentability.
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`Reference and Relevant Date
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`Designation
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`Exhibit No.
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`U.S. Patent Application Pub. No.
`2010/0156818 Al (June 24, 2010)
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`Burrough1
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`Ex. 1005
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`U.S. Patent No. 5,734,373 (Mar. 31, 1998) Rosenberg ’373 Ex. 1004
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`U.S. Patent No. 6,429,846 (Aug. 6, 2002) Rosenberg ’846 Ex. 1006
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`B. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability (Pet. 3):
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`Claims Challenged
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`Statutory Basis
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`Reference(s)
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`1–7, 12–18, and 23–29
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`§ 103(a)
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`Burrough
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`1, 2, 4–7, 12, 13, 15–18, 23,
`24, and 26–29
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`§ 103(a)
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`Rosenberg ’373
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`3, 14, and 25
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`§ 103(a)
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`Rosenberg ’373 and
`Rosenberg ’846
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`V. CLAIM CONSTRUCTION
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
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`1 For clarity and ease of reference, we only list the first named inventor.
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding that 37 C.F.R.
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`§ 42.100(b) “represents a reasonable exercise of the rulemaking authority
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`that Congress delegated to the . . . Office”). Under the broadest reasonable
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`interpretation (BRI) standard, and absent any special definitions, claim terms
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`generally are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art, in view of the specification. In
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`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
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`definitions for claim terms or phrases must be set forth with reasonable
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`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
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`(Fed. Cir. 1994). A particular embodiment appearing in the written
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`description generally is not incorporated into a claim if the claim language is
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`broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
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`Cir. 1993).
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`Petitioner proposes constructions for three terms, namely, “gesture
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`signal,” “vector signal,” and “module.” Pet. 8–12. Petitioner discusses four
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`additional terms, including “dynamic interaction parameter,” but does not
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`propose constructions for these terms. Instead, Petitioner contends that
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`Patent Owner should be held to Patent Owner’s claim construction positions
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`for these terms expressly stated or implied from its infringement allegations
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`in the related proceeding at the ITC. Id. at 9–11. Patent Owner disputes the
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`constructions for five of these seven terms, namely, “gesture signal,”
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`“dynamic interaction parameter,” “physical model,” “module,” and
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`“generating a dynamic interaction parameter using . . . an animation.”
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`Prelim. Resp. 8–18. For purposes of this Decision, we need only to construe
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`the terms “gesture signal,” “dynamic interaction parameter,” and “module.”
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`See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999) (only those terms that are in controversy need to be
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`construed, and only to the extent necessary to resolve the controversy).
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`A. “gesture signal”
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`Petitioner contends that the term “gesture signal” should be construed
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`to encompass “a signal indicating user interaction with a user interface
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`device.” Pet. 8. Patent Owner, on the other hand, argues that this term
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`should be interpreted to mean “an electronic signal, representing a
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`recognized movement of the body that conveys meaning or user intent.”
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`Prelim. Resp. 8.
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`The parties acknowledge that the ’571 patent provides a description of
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`a “gesture” in the following sentence: “[a] gesture is any movement of the
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`body that conveys meaning or user intent.” Ex. 1001, col. 3, ll. 34–35; see
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`Pet. 8, Prelim. Resp. 8 (citing Ex. 1001, col. 3, ll. 34–35). For purposes of
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`this Decision, we determine that this sentence provides a lexicographic
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`definition for the term “gesture.” First, the form of the sentence is
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`definitional in that the term “gesture” is followed by a definitional
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`description—“is any movement of the body that conveys meaning or user
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`intent.” Ex. 1001, col. 3, ll. 34–35 (emphasis added). See Sinorgchem Co.,
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`Shandong v. Int’l Trade Comm’n, 511 F.3d 1136 (Fed. Cir. 2007) (The use
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`of the word “is” in the specification may “signify that a patentee is serving
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`as its own lexicographer.” (citation omitted)). Second, the description of a
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`“gesture” in the cited sentence is broader than, but consistent with, other
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`descriptions found in the Specification. For example, the Specification
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`describes that “[a] gesture can also be any form of hand movement
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`recognized by a device having an accelerometer, gyroscope, or other motion
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`sensor, and converted to electronic signals.” Ex. 1001, col. 3, ll. 56–59.
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`As described in the Specification and indicated by the plain language
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`of the claim term, a “gesture signal” is simply a signal indicating a
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`“gesture.” See, e.g., id. at col. 10, ll. 36–43 (describing that multiple inputs
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`in time from a finger being swiped across a touch screen indicate the
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`positions of the contact point of the finger moving along the touch screen in
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`a swipe gesture). In other words, a “gesture signal” is simply “a signal
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`indicating a movement of the body that conveys meaning or user intent.”
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`To the extent Petitioner contends that the term “gesture signal” means
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`“a signal indicating user interaction with a user interface device” (see Pet.
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`8), Petitioner’s argument is unpersuasive because Petitioner does not explain
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`why the express definition of the term “gesture” provided in the
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`Specification should be disregarded. Although Petitioner argues that the
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`broadest reasonable interpretation of the term “gesture signal” must
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`encompass the description in the Specification of the use of various user
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`interface devices that “produce gesture signals,” such as a touch sensitive
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`surface, mouse, or joystick (id.), Petitioner’s argument goes to the source of
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`a “gesture signal” and does not address what a “gesture” is.
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`Patent Owner’s proposed definition of the term “gesture signal”—“an
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`electronic signal, representing a recognized movement of the body that
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`conveys meaning or user intent”—incorporates the definition of “gesture”
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`found in the Specification but further limits the term “gesture signal” in the
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`following two aspects: (1) a “gesture signal” must be limited to an
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`“electronic” signal (Prelim. Resp. 8 (citing Ex. 1001, col. 3, ll. 56–59)), and
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`(2) a “gesture signal” must represent a “recognized” movement of the body
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`(id. at 8–11). Considering the first aspect regarding an “electronic” signal,
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`Patent Owner’s argument is unpersuasive because the passage cited by
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`Patent Owner indicates that it is describing an exemplary embodiment. See
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`Ex. 1001, col. 3, ll. 56–59 (“A gesture can also be any form of hand
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`movement recognized by a device . . . and converted to electronic signals.”)
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`(emphasis added). A particular embodiment appearing in the written
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`description is generally not incorporated into a claim if the claim language is
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`broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc.,
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`358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). Further, “it is
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`improper to read limitations from a preferred embodiment described in the
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`specification—even if it is the only embodiment—into the claims absent a
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`clear indication in the intrinsic record that the patentee intended the claims
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`to be so limited.” Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338,
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`1341 (Fed. Cir. 2014). Patent Owner does not identify, nor do we discern,
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`an explicit intent in the intrinsic record to limit the “gesture signal” recited in
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`the claims to “electronic” signals described in the preferred embodiments of
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`the ’571 patent.
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`Next, Patent Owner’s contention that a “gesture signal” represents “a
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`recognized movement of the body” simply makes the unremarkable
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`statement that the movements of user input are recognized by the system or
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`the device described in the ’571 patent. See Ex. 1001, col. 3, ll. 36–59
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`(describing various movements of a finger or a hand recognized by the
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`device), col. 4, ll. 41–43 (describing the touch surface recognizing touches,
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`as well as the position and magnitude or pressure of the touches, on the
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`surface). If a feature is not necessary to give meaning to what the inventor
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`means by a claim term, it would be “extraneous” and should not be read into
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`the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
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`1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum
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`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). At this preliminary stage, the
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`record presented shows that adding the word “recognized” to modify the
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`phrase “movement of the body” is not necessary to give meaning to the term
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`“gesture signal.” It is no more necessary to do so than it is necessary to
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`similarly modify the word “signal” to require explicitly that signals are
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`“recognized” by the system or the device to give meaning to the term
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`“gesture signal.”
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`In support of its proposed construction, Patent Owner argues that, in
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`various embodiments described in the Specification, what sorts of
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`movements are recognized as gestures, e.g., complex, multi-touch gestures,
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`depends on the capability or the implementation of a particular system
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`pertaining to the embodiments. Prelim. Resp. 8–11. Patent Owner’s
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`argument is unpersuasive because it does not correspond to the language of
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`Patent Owner’s proposed construction, which is that a “gesture signal”
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`represents “a recognized movement of the body,” not “a movement of the
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`body recognized as a gesture.”
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`In a related argument, Patent Owner asserts that a positional
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`translation input is not necessarily a gesture because the patentee
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`distinguished mere position information from a gesture signal during the
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`prosecution of a predecessor application to the ’571 patent. Prelim. Resp. 11
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`(citing Ex. 2003, 9). Similar to Patent Owner’s unpersuasive argument
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`discussed above, Patent Owner’s contention amounts to an argument that
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`only those movements recognized as a gesture constitute a “gesture signal,”
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`which does not track the language of the construction proposed by Patent
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`Owner.
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`On this record, and for purposes of this Decision, we preliminarily
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`construe “gesture signal” to mean “a signal indicating a movement of the
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`body that conveys meaning or user intent” based upon the express definition
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`of “gesture” provided in the Specification.
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`B. “dynamic interaction parameter”
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`Petitioner does not propose a construction for the term “dynamic
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`interaction parameter” but, instead, argues that Patent Owner should be held
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`to a construction at least as broad as the construction Patent Owner advanced
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`in the related ITC proceeding, which, according to Petitioner, was “an
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`interaction parameter that changes over time or reacts in real time.” Pet. 9
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`(citing Ex. 1010, 2). Patent Owner argues that the term “dynamic interaction
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`parameter” should be construed to mean a “parameter that changes over time
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`or reacts in real time based on a user’s interaction with a device,” which,
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`although differing from the language quoted by Petitioner by the addition of
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`the phrase “based on a user’s interaction with a device,” was the
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`construction Patent Owner in fact proposed in the related ITC proceeding.2
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`Prelim. Resp. 14–15 (citing Ex. 2008, 6). Patent Owner further contends
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`that Petitioner’s proposed construction of the term at the ITC also included
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`the phrase “based on a user’s interaction with a device,” and that Petitioner
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`2 Patent Owner argues that the construction Petitioner quoted and attributed
`to Patent Owner is outdated. Prelim. Resp. 15 n.1.
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`hence would presumably agree to the addition of the phrase in the definition
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`of the term “dynamic interaction parameter.” Id. at 15.
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`On this record, and for purposes of this Decision, we adopt Patent
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`Owner’s proposed construction and preliminarily interpret “dynamic
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`interaction parameter” to mean “a parameter that changes over time or reacts
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`in real time based on a user’s interaction with a device.”
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`C. “module”
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`Claim 12 recites, in relevant part, “a drive module electronically
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`coupled to the haptic output device for receiving a first gesture signal,
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`receiving a second gesture signal, and generating a dynamic interaction
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`parameter using the first gesture signal and the second gesture signal” (the
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`“drive module limitation”). Ex. 1001, col. 16, ll. 53–57. The term “drive
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`module” also is recited in challenged claims 15–18, which depend from
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`claim 12. Petitioner contends that the term “module” recited in these claims
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`should be construed to mean “a set of instructions executed by a processor.”
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`Pet. 11. Patent Owner disagrees and asserts that the term “drive module”
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`should be interpreted as “a circuit or other hardware component that
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`generates drive signals for a haptic output device.” Prelim. Resp. 17. The
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`parties, however, do not address the issue of whether the “drive module
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`limitation” quoted above should be interpreted as a means-plus-function
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`limitation under 35 U.S.C. § 112 ¶ 6.3 Despite the parties’ failure to address
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`3 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). Because the ’571 patent has an effective filing date prior
`to September 16, 2012, the effective date of § 4(c) of the AIA, we refer to
`the pre-AIA version of 35 U.S.C. § 112. See AIA § 4(e).
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`the issue, we consider the applicability of § 112 ¶ 6 to the drive module
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`limitation recited in claim 12 and the limitations recited in dependent claims
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`15–18 that include the term “module” because “‘[m]odule’ is a well-known
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`nonce word that can operate as a substitute for ‘means’ in the context of
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`§ 112, para. 6.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350
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`(Fed. Cir. 2015) (en banc in relevant part).
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`1. Applicability of 35 U.S.C. § 112 ¶ 6
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`Although a claim term that does not use the word “means” triggers the
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`rebuttable presumption that 35 U.S.C. § 112 ¶ 6 does not apply, that
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`presumption can be overcome “if the claim term fails to ‘recite sufficiently
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`definite structure’ or else recites ‘function without reciting sufficient
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`structure for performing that function.’” Williamson, 792 F.3d at 1349.
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`“The standard is whether the words of the claim are understood by persons
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`of ordinary skill in the art to have a sufficiently definite meaning as the
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`name for structure.” Id.
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`The “drive module limitation” set forth above is in a format consistent
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`with traditional means-plus-function claim limitations in that it replaces the
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`term “means” with the term “module” and recites certain functions
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`performed by the “drive module”—namely, “receiving a first gesture signal,
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`receiving a second gesture signal, and generating a dynamic interaction
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`parameter using the first gesture signal and the second gesture signal.”
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`Similar to Williamson, the word “module” used in the “drive module
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`limitation” in this case does not provide any indication of structure because
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`it sets forth the same black box recitation of structure for providing the same
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`specified function as if the term “means” had been used. See Williamson,
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`792 F.3d at 1350. The prefix “drive” does not impart structure into the term
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`“module” because the claim simply states that the “drive module” can
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`perform the recited function and does not use the term “drive module” as a
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`substitute for anything that might connote a definite structure. See Media
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`Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
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`Cir. 2015) (finding that the term “compliance mechanism” invokes § 112
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`¶ 6, because the asserted claims “simply state that the ‘compliance
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`mechanism’ can perform various functions”). Furthermore, a “drive
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`module” is described in the Specification as “instructions that, when
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`executed by processor 12, generate drive signals for actuator 18.” Ex. 1001,
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`col. 4, ll. 33–35 (emphasis added). These instructions are software or
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`program instructions stored in memory. Id. at col. 4, ll. 31–32, Fig. 1.
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`Hence, the Specification describes the “drive module” in purely functional
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`terms and does not impart any structural significance to the term.
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`Patent Owner asserts that, because claim 12 recites that the “drive
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`module” is “electronically coupled” to a “haptic output device” and a “drive
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`circuit,” the “drive module” must be a hardware component capable of being
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`electronically coupled to other hardware components. Prelim. Resp. 17.
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`Patent Owner, however, does not cite, nor do we discern, an explicit
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`disclosure in the Specification that indicates that the “drive module” is a
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`hardware component or circuitry or any other physical entity having a
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`sufficiently definite structure. The only description of the “drive module”
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`provided in the Specification identifies the “drive module” as merely
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`software or program instructions for generating drive signals, stored in
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`memory and executed by a processor, as discussed above.
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`Furthermore, the fact that claim 12 recites that the “drive module” is
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`“electronically coupled” to a “haptic output device” and a “drive circuit” is
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`insufficient to avoid the application of § 112 ¶ 6 because the claim does not
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`describe how the “drive module” interacts with the “haptic output device” or
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`the “drive circuit” in a way that might inform the structural character of the
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`drive module limitation or otherwise impart structure to the “drive module”
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`as recited in the claim. See Williamson, 792 F.3d at 1351 (finding that,
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`although portions of the challenged claim describe certain inputs and outputs
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`to a “distributed learning control module” at a very high level, this was
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`insufficient to avoid means-plus-function treatment because the claim does
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`not describe how the “distributed learning control module” interacts with
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`other components in the system in a way that might inform the structural
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`character of the limitation-in-question or otherwise impart structure to the
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`“distributed learning control module” as recited in the claim). Dependent
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`claims 15–18 do not impart a structural connotation to the term “drive
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`module,” because they merely recite additional functions performed by the
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`“drive module.”
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`Accordingly, we determine that the presumption against means-plus-
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`function treatment is overcome and that § 112 ¶ 6 applies to the limitations
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`recited in claims 12 and 15–18 that include the term “drive module.”
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`b. Construction Under 35 U.S.C. § 112 ¶ 6
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`Construing a means-plus-function limitation requires first defining the
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`particular function of the limitation and then identifying the corresponding
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`structure for that function in the specification. Golight Inc. v. Wal-Mart
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`Stores Inc., 355 F.3d 1327, 1333–34 (Fed. Cir. 2004). The corresponding
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`structure of a means-plus-function limitation, however, must be “more than
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`simply a general purpose computer or microprocessor” to avoid
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`impermissible functional claiming, unless certain narrow exceptions
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`concerning generic computer functions apply. Aristocrat Techs. Austl. Pty
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`Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re
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`Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
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`2011). If the function is performed by a general purpose computer or
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`microprocessor, the specification, in general, must disclose the algorithm
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`that the computer performs to accomplish that function. Media Rights, 800
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`F.3d at 1374 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
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`1367 (Fed. Cir. 2008)); Triton Tech of Texas, LLC v. Nintendo of Am., Inc.,
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`753 F.3d 1375, 1378 (Fed. Cir. 2014) (citing Aristocrat, 521 F.3d at 1333).
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`The specification can express the algorithm in any understandable terms,
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`e.g., as a mathematical formula, in prose, as a flow chart, or in any other
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`manner that provides sufficient structure. Advanced Ground Info. Sys., Inc.
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`v. Life360, Inc., 830 F.3d 1341, 1349 (Fed. Cir. 2016) (citing Finisar Corp.
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`v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Simply
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`reciting a claimed function in the specification, and saying nothing about
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`how the computer or processor ensures that such a function is performed, is
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`not a sufficient disclosure for an algorithm which, by definition, must
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`contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574
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`F.3d 1371, 1384 (Fed. Cir. 2009).
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`The function recited in the drive module limitation of claim 12 is
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`“receiving a first gesture signal, receiving a second gesture signal, and
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`generating a dynamic interaction parameter using the first gesture signal and
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`the second gesture signal.” Addressing the function of receiving a gesture
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`signal, the Specification describes generally that the data corresponding to
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`the touches on the touch surface is sent to a processor, which interprets the
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`touches and generates haptic effect signals. Ex. 1001, col. 4, ll. 41–46. The
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`Specification also describes an exemplary embodiment of a swipe gesture
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`where multiple inputs are received from a finger being swiped across the
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`touch sensitive display. Id. at col. 10, ll. 36–43. In addition, Figure 13 and
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`accompanying text describe receiving gesture signals. Id. at col. 14, ll. 41–
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`62, Fig. 13. In these disclosures, although the Specification describes that
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`multiple inputs may be received at different times, it does not disclose a
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`well-defined or otherwise recognizable sequence of steps for receiving the
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`gesture signals by the drive module. See Blackboard, 574 F.3d at 1384.
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`Hence, the ’571 patent fails to disclose sufficient structure for performing
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`the recited function of “receiving a . . . gesture signal.” See Finisar, 523
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`F.3d at 1340.
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`Considering the function of generating a dynamic interaction
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`parameter using the first gesture signal and the second gesture signal, the
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`Specification describes generally that an interaction parameter that provides
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`dynamic haptic effects can be derived from gestures “using information such
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`as the position, direction, and velocity” of the gestures. Ex. 1001, col. 10,
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`ll. 24–33. The Specification further describes that an interaction parameter
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`is generated using a gesture difference vector, which is obtained by
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`comparing a gesture signal to a haptic effect signal. Id. at col. 14, l. 64–
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`col. 15, l. 3; Fig. 13. There is, however, no disclosure of a well-defined or
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`otherwise recognizable sequence of steps for comparing a gesture signal to a
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`haptic effect signal to produce a gesture difference vector or generating an
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`interaction parameter using the gesture difference vector.
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`According to the Specification, Table 2 provides exemplary methods
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`of “input synthesis” that may be used to generate an interaction parameter
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`from gesture signals. Id. at col. 15, ll. 3–7. Table 2 lists various methods of
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`synthesis along with a brief description of each method, such as “Additive
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`synthesis - combining inputs, typically of varying amplitudes,” “Subtractive
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`synthesis - filtering of complex signals or multiple signal inputs,” and
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`“Frequency modulation synthesis - modulating a carrier wave signal with
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`one or more operators.” The Specification, however, does not disclose any
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`well-defined or otherwise recognizable sequence of steps for the methods
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`listed in Table 2, such as steps for “combining inputs,” “varying
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`amplitudes,” “filtering of complex signals,” or “modulating a carrier wave
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`signal with . . . operators.” Absent such disclosures, we are not persuaded
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`that the Specification discloses a specific algorithm that transforms an
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`otherwise general purpose computer into a special purpose computer
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`programmed to perform the recited function of “generating a dynamic
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`interaction parameter.” Therefore, the ’571 patent fails to disclose sufficient
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`structure for performing the recited function of “generating a dynamic
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`interaction parameter.” See Blackboard, 574 F.3d at 1384; Finisar, 523 F.3d
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`at 1340.
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`Because the ’571 patent fails to disclose sufficient structure
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`corresponding to the “drive module limitation” recited in claim 12, we are
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`unable to determine the scope and meaning of claim 12. Claims 13 and 14
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`depend from claim 12 and further recite “the first or second gesture signal
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`comprises a vector signal” and “the first or second gesture signal comprises
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`an on-screen signal,” respectively. Claims 15–18 depend from claim 12 and
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`recite additional functions performed by the “drive module.” These
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`additional limitations do not cure the deficiency in base claim 12, and,
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`therefore, the scope and meaning of dependent claims 13–18 cannot be
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`determined as well.
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`VI. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
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`A. Claims 12–18
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`Petitioner contends claims 12–18 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over