Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: January 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`
`Case IPR2016-01381
`Patent 8,773,356 B2
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and MINN
`CHUNG, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: January 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`
`Case IPR2016-01381
`Patent 8,773,356 B2
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and MINN
`CHUNG, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01381
`Patent 8,773,356 B2
`
`A. Background
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26 of U.S. Patent
`
`No. 8,773,356 B2 (Ex. 1001, “the ’356 patent”). Paper 1 (“Pet.”). Patent
`
`Owner, Immersion Corporation, filed a Preliminary Response. Paper 6
`
`(“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). The standard for
`
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`
`provides that an inter partes review may not be instituted “unless the
`
`Director determines . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`After considering the Petition and Preliminary Response, we
`
`determine that Petitioner has established a reasonable likelihood of
`
`prevailing in showing the unpatentability of claims 1–3, 5, 7, 9–13, 15, 17,
`
`19–23, 25, and 26. Accordingly, we institute an inter partes review of these
`
`challenged claims.
`
`B. Related Matters
`
`The parties note the following related cases: Immersion Corp. v.
`
`Apple Inc., No. 1-16-cv-00077 (D. Del.); In the Matter of: Certain Mobile
`
`Electronic Devices Incorporating Haptics (Including Smartphones and
`
`Smartwatches) and Components Thereof, ITC Investigation No. 337-TA-
`
`990 (USITC), which has been consolidated with In the Matter of: Certain
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`Mobile and Portable Electronic Devices Incorporating Haptics (Including
`
`2
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`Patent 8,773,356 B2
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`Smartphones and Laptops) and Components Thereof, ITC Investigation No.
`
`337-TA-1004 (USITC). See Pet. 1–2; see Paper 4, 2. Additionally, a
`
`petition requesting an inter partes review of a certain subset of claims of the
`
`’356 patent was filed in Case IPR2016-00807. See Pet. 2; Paper 4, 2. In that
`
`case, we denied Petitioner’s request to institute an inter partes review as to
`
`claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25 and 26 of the ’356 patent as
`
`unpatentable under 35 U.S.C. §§ 102(e) and 103(a). Amit Agarwal v.
`
`Immersion Corp., Case IPR2016-00807 (PTAB Sept. 19, 2016) (Paper 16).
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and
`
`26 of the ’356 patent are unpatentable based on the following grounds:
`
`Reference(s)
`
`Rosenberg 7371 and
`Rosenberg 2812
`Rosenberg 737,
`Rosenberg 281, and
`Newton 2.03
`
`Statutory
`Basis
`35 U.S.C.
`§ 103(a)
`35 U.S.C.
`§ 103(a)
`
`Challenged Claim(s)
`
`1–3, 9–13, 19–23, 25, and
`26
`5, 7, 15 and 17
`
`
`1 U.S. Patent Application No. 09/487,737 (Ex. 1007).
`
`2 U.S. Patent Application No. 09/103,281 (Ex. 1013).
`
`3 Newton 2.0 User Interface Guidelines, ©1996 Apple Computer, Inc., ISBN
`0-201-48838-8, First Printing, May 1996 (Ex. 1014).
`
`3
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`Petitioner also relies on a Declaration from Patrick Baudisch, Ph.D.
`
`(Ex. 1002). Patent Owner relies on a Declaration from Nathan J. Delson,
`
`Ph.D. (Ex. 2001).
`
`D. The ’356 Patent
`
`The ’356 patent describes a system and method for providing tactile
`
`sensations to input devices, including non-mechanical input devices, such as
`
`soft-keys displayed on a screen. See Ex. 1001, Abstract; 3:10–15. Figure 5
`
`of the ’356 patent is reproduced below.
`
`
`
`Figure 5 depicts Personal Digital Assistant (PDA) 31 having pressure-
`
`sensitive touchpad 30 as an input device. Id. at 11:11–13. As shown in
`
`Figure 5, display panel 33 of PDA 31 displays software-generated buttons or
`
`keys, e.g., soft-keys 36a–36i, which provide a graphical user interface for
`
`the PDA. Id. at 11:40–43. As a graphical object, each soft-key occupies a
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`4
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`Patent 8,773,356 B2
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`distinct location on the display panel. Id. at 11:44–45. In the embodiment
`
`depicted in Figure 5, the PDA can function as a mobile telephone, and the
`
`soft-keys are arranged as a telephone keypad to provide the same
`
`functionality as the mechanical keys on a conventional telephone keypad.
`
`Id. at 11:45–48. PDA 31 also includes an actuator that generates and
`
`transmits tactile sensations to display panel 33 and touchpad 30. Id. at
`
`11:22–39; Fig. 6.
`
`When a soft-key is selected by touching touchpad 30 at an appropriate
`
`location on display panel 33, a controller determines the touched location on
`
`the display and identifies the soft-key corresponding to the touched location.
`
`Based on this information, the controller causes the actuator to provide a
`
`corresponding tactile sensation. Id. at 11:53–63. In addition, the pressure
`
`applied to a particular soft-key is detected by the controller or a separate
`
`pressure detector such that the detected pressure can be used to distinguish
`
`different inputs for soft-keys that represent multiple inputs—e.g., 2, A, B, or
`
`C for soft-key 36b. Id. at 12:6–12; Fig. 5. For such keys, each specific input
`
`corresponds to a distinct amount of pressure applied to a particular soft-key.
`
`Id. at 12:6–8.
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`5
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`Patent 8,773,356 B2
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`Figure 8 of the ’356 patent is reproduced below.
`
`
`
`Figure 8 shows a flowchart illustrating a process of detecting an input signal,
`
`the input position or location data, and the pressure data; determining the
`
`desired function corresponding to the input device and the detected data; and
`
`producing a tactile sensation corresponding to the determined function. Id.
`
`at 13:53–14:14. In steps 54 and 55 of Figure 8, the controller, having
`
`obtained the input data from the input device, accesses a memory device and
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`6
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`a database stored in the memory device, which contains information
`
`necessary to determine, based on the input data, the desired function and the
`
`corresponding tactile sensation. Id. at 14:15–20.
`
`In an embodiment, this information (i.e., the associations between the
`
`detected input data, the functions of the input device, and the corresponding
`
`tactile sensations to be generated) is maintained in a table, such as the table
`
`shown in Figure 9. Id. at 14:21–25. Figure 9 of the ’356 patent is
`
`reproduced below.
`
`
`
`Figure 9 shows a table of exemplary grouping of associations for
`
`various input devices. As shown in Figure 9, the table maintains, for each
`
`input device, the possible combinations of input signals, position data, and
`
`pressure data, as well as the specified function and the distinct tactile
`
`sensation corresponding to each combination. Id. at 14:23–30. Based on the
`
`data obtained from monitoring the input device, the controller reads the table
`
`and determines the associated function and the corresponding tactile
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`feedback. Id. at 14:32–35. The controller then causes the actuator to
`
`generate the specified tactile sensation. Id. at 11:53–66; 14:46–50.
`
`E. Illustrative Claim
`
`Claims 1, 12, and 22 are independent and are directed to a method,
`
`system, and computer-readable medium comprising program code,
`
`respectively. Claim 1 is illustrative of the challenged claims and recites:
`
`1. A method, comprising:
`
`outputting a display signal configured to display a
`graphical object on a touch-sensitive input device;
`
`receiving a sensor signal from the touch-sensitive input
`device, the sensor signal indicating an object contacting the
`touch-sensitive input device;
`
`determining an interaction between the object contacting
`the touch-sensitive input device and the graphical object; and
`
`generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table.
`
`Ex. 1001, 20:16–26.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b). We presume a claim term carries its
`
`“ordinary and customary meaning,” which is “the meaning that the term
`
`would have to a person of ordinary skill in the art in question” at the time of
`
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007) (citation and quotations omitted). This presumption, however, is
`
`rebutted when the patentee acts as his own lexicographer by giving the term
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`a particular meaning in the specification with “reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`Petitioner and Patent Owner address the claim language “generating
`
`an actuator signal based at least in part on the interaction and haptic effect
`
`data in a lookup table.” Pet. 17–19; Prelim. Resp. 5–11. Petitioner also
`
`addresses the meaning of the word “determining.” Pet. 16–17. For purposes
`
`of this decision, we need not construe explicitly any claim language to
`
`determine that there is a reasonable likelihood of Petitioner prevailing on its
`
`claim challenges. See 35 U.S.C. § 314(a); Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy.”).
`
`B. Whether Rosenberg 737 Constitutes Prior Art Under 35 U.S.C.
`§§ 102(a) and 102(b)
`
`Petitioner argues that Rosenberg 737 is prior art under 35 U.S.C.
`
`§§ 102(a) and 102(b). Pet. 20–23. In support of this, Petitioner asserts that
`
`(1) Rosenberg 737 was made publicly available as of July 26, 2001; and (2)
`
`none of the challenged claims is entitled to the November 1, 2001, filing
`
`date of U.S. Provisional Application No. 60/335,493 (Ex. 1005, “the First
`
`Provisional”). Id.
`
`Petitioner asserts that Rosenberg 737 was made publicly available on
`
`July 26, 2001, because it was listed as a priority document on the face of the
`
`PCT application published on July 26, 2001, as WO01/54109. Id. at 20–23.
`
`Citing Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir.
`
`2006), Petitioner asserts that Rosenberg 737 was made publicly available
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`because WO01/54109 “served as a roadmap to the publicly-available
`
`Rosenberg 737 as WIPO publications such as WO01/54109 are publicly
`
`available and indexed, and the subject matter of Rosenberg 737 is clearly
`
`related to the subject matter of WIPO publication WO01/54109.” Id. at 22.
`
`In support of its assertion that no claim is entitled to the filing date of
`
`the First Provisional, Petitioner argues that the First Provisional does not
`
`contain written description support for the “lookup table” recited in the
`
`independent claims. Id. at 10–15, 23. Petitioner asserts that the First
`
`Provisional “states that an unidentified ‘controller’ will ‘control the actuator
`
`output’ but does not mention the controller using haptic effect data in a
`
`lookup table to do so.” Id. at 11. Petitioner notes that the First Provisional
`
`states that it incorporates by reference U.S. Patent Application No.
`
`09/585,741 to Shahoian (Ex. 1016, “Shahoian”), which “discloses a
`
`controller that uses a lookup table.” Id. at 12. Petitioner asserts that this
`
`does not demonstrate possession of the subject matter of the independent
`
`claims of the ’356 patent for two reasons. Id. First, Petitioner asserts that
`
`the First Provisional’s alleged incorporation of Shahoian is ineffective to
`
`incorporate its lookup table. Id. at 12–13. Second, Petitioner asserts that,
`
`even if the First Provisional did incorporate the entirety of Shahoian, there is
`
`no support for combining the disclosures in a way that would “convey with
`
`reasonable clarity to those skilled in the art that the two named inventors of
`
`the First Provisional possessed the embodiment claimed as a whole a decade
`
`later by the five named inventors of the ’356 patent.” Id. at 14.
`
`Patent Owner disputes Petitioner’s assertion that Rosenberg 737 was
`
`made publicly available on July 26, 2001. Prelim. Resp. 13–15. Patent
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`Owner asserts that Petitioner cannot identify any language in WO01/54109
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`that would provide a “roadmap” to Rosenberg 737. Id. at 14. Patent Owner
`
`does not dispute Petitioner’s assertion that none of the challenged claims of
`
`the ’356 patent is entitled to the filing date of the First Provisional.
`
`On this record, we are persuaded Petitioner sufficiently demonstrates
`
`that Rosenberg 737 is prior art under 35 U.S.C. §§ 102(a) and 102(b).
`
`Bruckelmyer notes that “[t]he existence of a published abstract that would
`
`have allowed one skilled in the art exercising reasonable diligence to locate
`
`the foreign patent application and the fact that the application was classified
`
`and indexed in the patent office” has previously supported a conclusion that
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`“the application was ‘publicly accessible.’” Bruckelmyer, 445 F.3d at 1379
`
`(citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Here, WO01/54109
`
`contains a published abstract (see Ex. 1008, 1), and Patent Owner does not
`
`dispute Petitioner’s assertion that “WIPO publications such as WO01/54109
`
`are publicly available and indexed” (Pet. 22). In view of this, we determine
`
`that Petitioner has presented sufficient evidence to support a conclusion that
`
`Rosenberg 737 was made publicly available July 26, 2001. Additionally, in
`
`view of Petitioner’s arguments and evidence, we determine Petitioner has
`
`presented sufficient evidence to support a conclusion that none of the
`
`challenged claims of the ’356 patent is entitled to the filing date of the First
`
`Provisional.4
`
`
`4 Building on its assertion that Rosenberg 737 is not prior art under
`35 U.S.C. §§ 102(a) and 102(b), Patent Owner invokes 35 U.S.C.
`§ 103(c)(1) in asserting that “Rosenberg 737 is not available as an
`obviousness reference because [Patent Owner] commonly owned Rosenberg
`737 and the application that matured into the ’356 patent.” Prelim. Resp. 15.
`Because we determine that, on this record, Petitioner has demonstrated
`
`11
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`
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`C. Alleged Obviousness over Rosenberg 737 and Rosenberg 281
`
`1. Overview of Rosenberg 737
`
`Rosenberg 737 describes a touch input device, such as a touchpad or a
`
`touch screen, which is coupled to an actuator that provides haptic feedback.
`
`Ex. 1007, Abstract. The touch input device can be integrated in a housing of
`
`a computer or a handheld device. Id. at 3:19–20.5 For example, a touchpad
`
`can be placed on the housing of a portable computer separate from the
`
`display screen. Id. at 3:18. Figure 1 of Rosenberg is reproduced below.
`
`
`sufficiently that Rosenberg 737 is prior art under 35 U.S.C. §§ 102(a) and
`102(b), we find Patent Owner’s argument unpersuasive at this time.
`
`5 In our citations to Rosenberg 737, we refer to its original page numbers
`located in the lower middle portion of each page of Exhibit 1007, rather than
`the page numbers appended in the lower right hand corner by Petitioner.
`
`12
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`
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`Figure 1 depicts a portable computer including a haptic touchpad. Id. at 6:4.
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`As shown in Figure 1, touchpad 16 and buttons 26 are placed on the housing
`
`of portal computer 10, separate from display device 12 that displays
`
`graphical environment 18.6 Id. at 6:9–12, 8:25–34. In an embodiment,
`
`haptic sensations are provided to the entire touchpad 16 as a single unit. Id.
`
`at 8:13–14. In another embodiment, the touchpad comprises individually-
`
`moving portions, each of which is provided with its own actuator such that
`
`haptic sensations can be conveyed to only a particular portion of the
`
`touchpad. Id. at 8:14–16.
`
`
`6 Touchpad 16 appears to be mislabeled with number 18 in Figure 1.
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`13
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`Buttons 26 provided on the housing of the computer can be used in
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`conjunction with touchpad 16 in ways similar to how the buttons on a mouse
`
`input device are used. Id. at 8:25–30. In an embodiment, the housing of the
`
`computer in which buttons 26 are placed comprises one or more movable
`
`portions 28, as illustrated in Figure 1 above. Id. at 9:1–3; Fig. 1.
`
`Rosenberg 737 discloses that “[h]aving a moveable portion of a housing for
`
`haptic feedback is described in copending patent application serial no.
`
`09/156,802 and application no. 09/103,281, both incorporated herein by
`
`reference.” Id. at 9:3–5. The moveable portions of the housing can be used
`
`to convey haptic sensations separate from the haptic feedback provided by
`
`touchpad 16. Id. at 9:5–12. For example, a vibration of a low frequency can
`
`be conveyed through the moveable housing portions, distinct from high
`
`frequency vibrations provided on touchpad 16. Id. at 9:8–10.
`
`For touch screen input devices, one or more actuators can be coupled
`
`to the underside of a touch screen to provide haptic feedback to touch screen
`
`interactions. Id. at 22:4–7. For example, an actuator can be placed near
`
`each corner of the touch screen. Id. Regarding one touch screen
`
`embodiment, Rosenberg 737 discloses that “the touch screen 82 provides
`
`haptic feedback to the user similarly to the touchpad 16 described in
`
`previous embodiments.” Id. at 22:3–4. Rosenberg 737 also discloses
`
`“[o]ther features described above for the touchpad are equally applicable to
`
`the touch screen embodiment 80.” Id. at 22:19–20.
`
`2. Overview of Rosenberg 281
`
`Rosenberg 281 discloses that “[a] computer system in typical usage by
`
`a user displays a visual environment on a display device.” Ex. 1013, 1:14–
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`14
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`15.7 Rosenberg 281 further discloses that “[u]sing an interface device, the
`
`user can interact with the displayed environment.” Id. at 1:15. Rosenberg
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`281 adds that “[c]ommon human-computer interface devices used for such
`
`interaction include a joystick, mouse, trackball, steering wheel, stylus, tablet,
`
`pressure-sensitive sphere, or the like.” Id. at 1:18–20.
`
`Figure 1 of Rosenberg 281 is reproduced below.
`
`
`
`
`7 In our citations to Rosenberg 281, we refer to the original page numbers
`located in the lower middle portion of each page of Exhibit 1013, rather than
`the page numbers appended in the lower right corner by Petitioner.
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`Figure 1 of Rosenberg 281 shows a block diagram of force feedback-
`
`interface system 10, which includes host computer 12 and interface
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`device 14. Id. at 7:3–5. Interface device 14 includes local microprocessor
`
`26, sensors 28, actuator 30 and user object 34. Id. at 9:12–13. Sensors 28
`
`provide signals indicating “position, motion, and/or other characteristics” of
`
`user object 34. Id. at 11:23–24. Rosenberg 281 discloses that
`
`microprocessor 26 may receive signals from sensors 28 and send signals to
`
`actuator 30. Id. at 10:3. Rosenberg 281 states that “sensors 28 provide
`
`sensor signals to the microprocessor 26 indicating a position (or other
`
`information) of the user object in degrees of freedom,” and that “[t]he
`
`microprocessor may use the sensor signals in the local determination of
`
`forces to be output on the user object.” Id. at 10:23–25. Rosenberg 281
`
`further discloses that:
`
`Local memory 27, such as [random-access memory]
`and/or
`[read-only memory],
`is preferably coupled
`to
`microprocessor 26 in interface device 14 to store instructions for
`microprocessor 26 and store temporary and other data. For
`example, force profiles can be stored in memory 27, such as a
`sequence of stored force values that can be output by the
`microprocessor, or a look-up table of force values to be output
`based on the current position of the user object.
`
`Id. at 11:8–12.
`
`3. Discussion
`
`Petitioner asserts that each of claims 1–3, 9–13, 19–23, 25, and 26,
`
`citing to record evidence. Pet. 20–61. Petitioner asserts that Rosenberg 737
`
`teaches most of the limitations of independent claims 1, 12, and 22. Id. at
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`26–41, 56–57, 58–60.
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`Petitioner asserts that Rosenberg 737 teaches and renders obvious
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`“determining an interaction between the object contacting the touch-
`
`sensitive input device” and “generating an actuator signal based at least in
`
`part on the interaction.” Pet. 33–41. In connection with these assertions,
`
`Petitioner cites disclosures of Rosenberg 737 regarding haptic effects on
`
`touchpads, as well as Rosenberg 737’s disclosures of touch screen devices.
`
`Id. Petitioner asserts that Rosenberg 737 teaches the “determining an
`
`interaction” limitation, for example, in its disclosure associated with the
`
`touch screen device shown in Figures 8a and 8b. Id. at 33 (citing Ex. 1007,
`
`21:21–22). Petitioner asserts that Rosenberg 737 teaches that all of its
`
`disclosure related to touchpad embodiments, including the disclosure
`
`regarding haptic effects, “is relevant to the touch screen embodiment.” Id. at
`
`25 (citing Ex. 1007, 22:3–4, 22:19–20). Petitioner further asserts that, even
`
`if one does not interpret Rosenberg 737 in this manner, “it would have been
`
`obvious to combine the teachings of the touchpad and touch screen
`
`embodiments.” Id. (citing Ex. 1002 ¶ 65). In essence, Petitioner indicates
`
`that the haptic effects and touch screen disclosures in Rosenberg 737, in
`
`combination, teach and render obvious the limitations “determining an
`
`interaction between the object contacting the touch-sensitive input device”
`
`and “generating an actuator signal based at least in part on the interaction.”
`
`See Pet. 33–41.
`
`With respect to the “lookup table” recited in independent claims 1, 12,
`
`and 22, Petitioner cites Rosenberg 281. Id. at 41–42. Petitioner cites
`
`Rosenberg 281’s disclosure regarding storing force values in a look-up table
`
`that may be output based on the current position of the user object.
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`Ex. 1013, 11:8–12; Pet. 41. Petitioner also cites the disclosures in claims
`
`10–13 of Rosenberg 281, which recite certain aspects of haptic effects, such
`
`as “wherein said output force is a jolt correlated with the interaction of a
`
`user-controlled cursor with a graphical object displayed in a graphical user
`
`interface.” Ex. 1013, 25:10–25; Pet. 41.
`
`In view of Rosenberg 281, Petitioner asserts that “[i]t would have
`
`been obvious to a [person of ordinary skill in the art (“POSITA”)] to modify
`
`the apparatus and method disclosed in Rosenberg 737 to generate the
`
`actuator signal in part based on the interaction and haptic effect data in a
`
`lookup table.” Pet. 42. Noting that Rosenberg 737 does not specify how its
`
`processor obtains force information, Petitioner contends that a person of
`
`ordinary skill would have been motivated to look for known
`
`implementations for obtaining haptic effect data, such as storing such data in
`
`the lookup tables disclosed in Rosenberg 281. Id. at 42–43. Petitioner
`
`advances multiple reasons that a person of ordinary skill in the art would
`
`have had motivation, in view of Rosenberg 281, to use a lookup table.
`
`First, Petitioner notes that Rosenberg 737 incorporates Rosenberg 281
`
`by reference. Id. at 43–44. Second, Petitioner and Dr. Baudisch assert that:
`
`Moreover, a POSITA would have understood that obtaining
`force values from a lookup table would be more efficient than
`other alternatives, such as calculating a force value each time one
`was needed. Indeed, the use of lookup tables for repetitive tasks
`such as this is well-known in the computer-programming art.
`
`Pet. 44; Ex. 1002 ¶ 105. Third, Petitioner and Dr. Baudisch assert that
`
`using lookup tables in combination with the Rosenberg 737 disclosure
`
`“would have been both predictable and within the skill of a POSITA.”
`
`Pet. 44–47; Ex. 1002 ¶ 106. Lastly, Petitioner and Dr. Baudisch argue
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`Patent 8,773,356 B2
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`that Rosenberg 737 teaches that its disclosures could be combined
`
`with “existing haptic feedback enabled software” (Ex. 1007, 4:9–13),
`
`such as lookup tables. Pet. 47; Ex. 1007 ¶ 109.
`
` Under its proposed construction of the claims, Petitioner
`
`indicates that a lookup table with force values in it, such as the lookup
`
`table disclosed in Rosenberg 281, meets the “lookup table” required
`
`by the claims. See Pet. 17–19, 48. Petitioner and Dr. Baudisch also
`
`assert that “it would have been obvious for a POSITA to program the
`
`lookup table with the associations between the interactions and
`
`outputs discussed above and disclosed in Rosenberg 737.” Pet. 49;
`
`Ex. 1002 ¶ 111. In particular, Petitioner and Dr. Baudisch assert that:
`
`Rosenberg 737 does not disclose how the processor performs the
`function of converting the interaction into the associated output,
`such that a POSITA would have been motivated to use lookup
`tables as disclosed in Rosenberg 281. The lookup tables in
`Rosenberg 281 were programmed with the associations between
`inputs (e.g., user interactions with a joystick) and outputs (e.g.,
`associated haptic effect data) disclosed in Rosenberg 281. In
`implementing a lookup table in the system of Rosenberg 737, it
`would have been obvious for a POSITA to program the lookup
`table with the associations between the interactions and outputs
`discussed above and disclosed in Rosenberg 737. Thus, the
`interaction determined by the processor would be used as an
`index into the lookup table to find the associated force
`information so that the processor in Rosenberg 737 could
`generate the appropriate actuator signal.
`
`Pet. 48–49; Ex. 1002 ¶ 111.
`
`Petitioner’s arguments and evidence demonstrate a reasonable
`
`likelihood of establishing that it would have been obvious combine
`
`Rosenberg 737’s haptic effects and touch screen teachings with one another
`
`and with Rosenberg 281’s lookup table that associates the “interaction” with
`
`19
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`Case IPR2016-01381
`Patent 8,773,356 B2
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`haptic effects. The evidence and arguments presented by Petitioner persuade
`
`us that there is a reasonable likelihood of Petitioner establishing obviousness
`
`of claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26 over Rosenberg 737 and
`
`Rosenberg 281. At this stage, Patent Owner’s arguments to the contrary do
`
`not persuade us.
`
`Patent Owner argues that neither Rosenberg 737 nor Rosenberg 281
`
`teaches the claim limitation “generating an actuator signal based at least in
`
`part on the interaction and haptic effect data in a lookup table.” Prelim.
`
`Resp. 18–21. Patent Owner argues that Rosenberg 281’s lookup table only
`
`provides haptic effects “based on the current position of the user object,”
`
`such as the position of a mouse or joystick. Id. at 18. Patent Owner asserts
`
`that Rosenberg 281’s lookup table does not include information regarding an
`
`interaction between a user object contacting a touch-sensitive input device
`
`and a graphical object. Id. Regarding claims 10–13 of Rosenberg 281,
`
`Patent owner asserts that these claims discuss an interaction between two
`
`graphical objects—a cursor and another graphical object—not between a
`
`user object and a graphical object. Id. at 20.
`
`Patent Owner further argues that a combination implementing
`
`Rosenberg 281’s lookup table would not “generate an actuator signal based
`
`at least in part on the interaction.” Id. at 21–23. Here again, Patent Owner
`
`asserts that “Rosenberg 281’s system generates the actuator signal only
`
`based upon the position of a mouse or joystick in degrees of freedom.” Id. at
`
`21. Patent Owner further argues that “Petitioner provides no explanation
`
`how the mouse or joystick embodiments of Rosenberg 281 could be used to
`
`arrive at the challenged claims.” Id. at 23.
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`20
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`Case IPR2016-01381
`Patent 8,773,356 B2
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`At this stage, we find these arguments unpersuasive. First, Patent
`
`Owner’s argument that neither reference teaches the claim limitation is
`
`unpersuasive because it attacks Rosenberg 737 and Rosenberg 281
`
`individually, where the challenge is based on combined teachings of these
`
`references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We likewise
`
`find unpersuasive Patent Owner’s argument that bodily incorporating the
`
`lookup table of Rosenberg 281 into the system of Rosenberg 737 would not
`
`produce the claimed invention. See id. at 425 (“The test for obviousness is
`
`not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference; nor is it that the
`
`claimed invention must be expressly suggested in any one or all of the
`
`references.”). Petitioner’s arguments and evidence demonstrate a reasonable
`
`likelihood of establishing that it would have been obvious in view of
`
`Rosenberg 737 and Rosenberg 281 to implement a lookup table that includes
`
`information about the “interaction” and is capable of associating the
`
`information about the “interaction” with haptic effect data. See Pet. 48–49.8
`
`Patent Owner further argues that it would not only “be [im]possible to
`
`incorporate the teachings of Rosenberg 281 in a manner that would practice
`
`the challenged claims,”9 “a POSITA would not have had reason to combine
`
`Rosenberg 281 with Rosenberg 737 to implement a system that would even
`
`
`8 Because Petitioner has demonstrated a reasonable likelihood of
`establishing that the “lookup table” would have been obvious even under
`Patent Owner’s construction, we need not resolve the broadest reasonable
`interpretation of the “lookup table” at this stage of the proceeding.
`
`9 This too appears to be an unpersuasive argument based on presumed bodily
`incorporation of the teachings of Rosenberg 281 into the system of
`Rosenberg 737.
`
`21
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`Patent 8,773,356 B2
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`resemble the claims of the ’356 patent.” Id. at 24–25. Patent Owner argues
`
`that, contrary to Petitioner’s assertion, Rosenberg 737’s incorporation of
`
`Rosenberg 281 by reference would not provide motivation to combine the
`
`teachings of the references. Id. at 25–27. Patent Owner asserts that the
`
`incorporation by reference relates to touchpad embodiments only, not touch
`
`screen embodiments. Id. Patent Owner argues that, “[b]ased on Rosenberg
`
`737’s express teachings to apply Rosenberg 281 specifically to Rosenberg’s
`
`touchpad (i.e., non-touchscreen) embodiment, a POSITA seeking to
`
`combine these two references would have focused on applying Rosenberg
`
`281’s disclosure of a movable portion of a housing to Rosenberg 737’s
`
`touchpad embodiment.” Id. at 26. Patent Owner further contends that it is
`
`“irrelevant” whether implementing the claimed lookup table within a touch
`
`screen system “would have been within the skill of a POSITA.” Id. at 27.
`
`At this stage, we also find these arguments unpersuasive. Contrary to
`
`Patent Owner’s assertion, whether it would have been within the level of
`
`skill in the art to modify the disclosures in a manner meeting the claims,
`
`indeed, is a relevant inquiry in an obviousness evaluation. See, e.g., KSR
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary
`
`skill can implement a predictable variation, § 103 likely bars its
`
`patentability.”). We are persuaded that Rosenberg 737’s incorporation by
`
`reference of Rosenberg 281 would have led a person of ordinary skill in the
`
`art to consider Rosenberg 281 for everything it teaches by way of
`
`technology. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
`
`(Fed. Cir. 1985) (“A reference must be considered for everything it teaches
`
`by way of technology and is not limited to the particular invention it is
`
`describing and attempting to prot
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