`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`________________
`
`Case IPR2016-01381
`Patent No. 8,773,356
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`________________
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`IMMERSION CORPORATION’S
`
`PATENT OWNER RESPONSE
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`
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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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`10180151
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`PRELIMINARY STATEMENT .................................................................. 1
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`THE INVENTION OF THE '356 PATENT ................................................ 3
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`III. CLAIM CONSTRUCTION ......................................................................... 6
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`IV. GROUND 1: CLAIMS 1-3, 5, 7, 9-13, 15, 17, 19-23, 25 AND 26
`ARE NOT OBVIOUS OVER ROSENBERG 737 AND
`ROSENBERG 281...................................................................................... 12
`
`A.
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`Petitioner has provided no compelling reason for a
`POSITA to use a lookup table in the Rosenberg 737’s
`system ............................................................................................... 17
`B. When considering Rosenberg 737’s dynamic haptic
`applications along with the design factors, the evidence
`does not support the Petitioner's conclusion that a
`POSITA would have modified Rosenberg 737 with
`Rosenberg 281’s lookup table. ......................................................... 25
`Rosenberg 281’s lookup table is not the claimed lookup
`table—additional modification to that lookup table would
`be necessary. ..................................................................................... 30
`The testimony of Petitioner's expert should be given
`relatively little weight ....................................................................... 36
`
`C.
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`D.
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`V.
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`CONCLUSION ........................................................................................... 37
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 21
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 14, 21
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`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ...................................................................... 3, 12
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`EXHIBIT LIST
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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
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`Immersion Ex.
`2008
`Immersion Ex.
`2009
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`Declaration of Nathan J. Delson, Ph.D., dated October 11,
`2016
`Assignment of U.S. Patent Application Serial No. 09/487,737
`to Immersion Corporation
`Assignment of U.S. Patent No. 8,773,356 to Immersion
`Corporation
`Microsoft Computer Dictionary (5th ed. 2002) (Excerpt)
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`Declaration of Nathan J. Delson, Ph.D., dated May 31, 2017
`
`Deposition Transcript of Dr. Patrick Baudisch
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`Roudat, Rau, Sterz, Plauth, Lopes & Baudisch, Gesture
`output: Eyes-free output using a force feedback touch surface,
`CHI 2013 Conference Paper
`ITC Claim Construction Order
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`Curriculum Vitae of Nathan J. Delson, Ph.D.
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`I.
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`PRELIMINARY STATEMENT
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`Case IPR2016-01381
`Patent No. 8,773,356
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`Patent Owner Immersion Corporation (“Immersion” or “Patent Owner”)
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`submits this Response to the Board’s Decision – Institution of Inter Partes Review
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`(Paper 7) (“Institution Decision”) as requested by Apple, Inc. ("Petitioner"),
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`entered January 11, 2017, of United States Patent No. 8,773,356 (“the '356
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`patent”).
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`Petitioner argues that Rosenberg 281’s single disclosure of a lookup table
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`would have been obvious to combine with Rosenberg 737’s system. However, the
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`decision of whether to implement a lookup table into a particular system is based
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`on a complex series of factors that Petitioner’s expert admits he did not address.
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`For example, Petitioner’s expert Dr. Baudisch admits that there are numerous
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`alternatives to a lookup table that can be used to retrieving haptic effects. Dr.
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`Baudisch only considered one such alternative in his declaration. Furthermore, Dr.
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`Baudisch admits that there are many factors that a POSITA would consider in
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`determining which approach to implement in any particular system. Dr. Baudisch
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`only considered one of these many factors in his declaration. In fact, in designing
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`his own haptic feedback system, Dr. Baudisch chose an approach different than a
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`lookup table. Ex. 2005 at ¶¶ 61-62.
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`Petitioner cannot sustain its argument that implementation of the claimed
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`lookup table would have been obvious. For instance, when the factors Petitioner’s
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`own expert admits a POSITA would have considered are taken into account, the
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`claimed lookup table would be an unattractive design choice for Rosenberg 737’s
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`system, because a lookup table is ill-suited for using haptic effects that are based
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`on time-varying parameters such as velocity and frequency. Ex. 2005 at ¶¶ 55-60.
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`Furthermore, even if a POSITA had been motivated to combine Rosenberg
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`281’s lookup table with Rosenberg 737, such a combination would not arrive at the
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`limitations of the challenged claims because the haptic effects retrieved from
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`Rosenberg 281’s lookup table are based on the position of a user object (in degrees
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`of freedom) rather than on the interaction between "an object contacting a touch-
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`sensitive input device" (e.g., a user’s finger) and a graphical object, as required by
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`the ’356 patent. See IPR2016-00807 at 17 (decision denying institution of a
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`petition for review of the ‘356 patent, and explaining that the lookup table is based
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`on “the position of a mouse or joystick”). Additional and substantial modification
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`of Rosenberg 281’s lookup table would thus be necessary to satisfy the claims of
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`the ‘356 patent. Petitioner provides no reason that a POSITA would have engaged
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`in these additional modifications, which are taught by neither Rosenberg 281 nor
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`Rosenberg 737. Instead, Petitioner’s argument is based solely on impermissible
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`hindsight reconstruction of the challenged claims using the disclosure of the ‘356
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`patent a roadmap to craft their arguments. W.L. Gore & Assocs., Inc. v. Garlock,
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`Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (improper to use “that which only the
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`inventor taught . . . against its teacher.”).
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`Finally, as the Board recognized in its Institution Decision, Petitioner’s
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`arguments rely upon the credibility of the statements of its expert, Dr. Baudisch.
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`Paper No. 7 at 24 (explaining that institution is proper "viewing the conflicting
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`expert testimony . . . in the light most favorable to Petitioner"). But Dr. Baudisch’s
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`analysis should be given relatively little weight, because it did not consider the
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`very factors that Dr. Baudisch admitted a POSITA would have weighed in
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`designing a haptic feedback system.
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`II. THE INVENTION OF THE '356 PATENT
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`The ’356 patent relates to providing tactile sensations to a user interacting
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`(e.g., using his or her finger) with graphical objects displayed on a touchscreen in
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`mobile electronic devices such as mobile phones and PDAs. The ’356 patent
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`teaches, among other things, systems and methods in which the mobile electronic
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`device displays on the touchscreen one or more graphical objects (such as, for
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`example, menus, softkeys of a keypad, etc.). See, e.g., Ex. 1001 at 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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`and interact with the graphical object. The device generates an actuator signal for
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`providing a tactile sensation to the user based at least in part on the user’s
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`interaction with the graphical object and haptic effect data in a lookup table stored
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`in a memory of the device. The lookup table, among other things, associates data
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`related to interactions with haptic effect data. The tactile sensation, for example,
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`provides a cue to the user interacting with a graphical object displayed on the
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`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.” Id. at 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.” Id. at 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.” Id. at 7:678:3.
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`Figure 9, reproduced below, shows an embodiment of a lookup table.
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`The lookup table facilitates associating different interactions with haptic
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`effect data for different tactile sensations. Declaration of Nathan J. Delson, Ph.D.
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`(“Delson Decl.”) (Ex. 2005) ¶¶ 22-25.
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`Claim 1 recites:
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`A method, comprising:
`outputting a display signal configured to display a graphical
`object on a touch-sensitive input device;
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`receiving a sensor signal from the touch-sensitive input device,
`the sensor signal indicating an object contacting the touch-
`sensitive input device;
`determining the 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. (emphasis
`added)
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`The claim requires determining an interaction between an object and a
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`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.
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`III. CLAIM CONSTRUCTION
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`The claims require the limitation “generating an actuator signal based on at
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`least in part on the interaction [between the object contacting the touch-sensitive
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`input device and the graphical object] and haptic effect data in a lookup table.”
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`The Board declined to construe this term. Decision at 9. Even under the broadest
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`reasonable interpretation standard, the language of the claims themselves requires
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`that the referenced “lookup table” contain an association between the interaction
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`and haptic effect data. In other words, information about both “the interaction and
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`haptic effect data” must be in the lookup table. For example, in the underlying ITC
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`action, the Chief ALJ construed “lookup table” to mean “data structure in the form
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`of a table containing associations between interactions and haptic effect data.” Ex.
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`2008 at 30 (noting that “the lookup table contains an association between the
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`interaction and the haptic effect data, as claimed in the patent”). The interpretation
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`adopted by the ITC is also the broadest reasonable construction under the standard
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`for an inter partes review, because it is compelled by the claim language and the
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`intrinsic record.
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`First, the very wording of the claims compels an association between
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`interaction and haptic effect data. Ex. 2005 ¶¶ 31-32. Claim 1 is recited below.
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`A method, comprising:
`1.
`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. (emphasis
`added)
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`The actuator signal is based on the interaction "and" haptic effect data, not
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`based on the interaction "or" haptic effect data. Both types of data are used to
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`generate the actuator signal consequentially there must be an association between
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`the interaction and haptic effect data.
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`This construction is also supported by intrinsic evidence. Ex. 2005 ¶ 33.
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`The ’356 patent describes the lookup table as a data structure located in memory.
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`Ex. 1001 at 14:16-20 (“[T]he controller then accesses a memory device 54 in
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`which is stored at least one database containing information necessary to produce
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`the desired function in the electronic device and the predetermined tactile sensation
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`in an input device, and accesses this information 55.”) (emphasis added). The ’356
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`patent also explains that the lookup table contains associations. Id. at 14:23-25
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`(“An exemplars [sic] group of associations is represented in tabular form in FIG.
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`9.”) (emphasis added). For example, the specification teaches:
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`[B]ased upon the information in the table associated with
`Pressure 1, the controller obtains the associated function
`information for selecting the number ‘2’, and information for
`distinct tactile Sensation 13. . . . The controller uses the
`information for distinct tactile Sensation 13 to produce
`Sensation 13 in an input device 56, by for example, causing an
`actuator to cause the input device to vibrate at a frequency
`associated with Sensation 13.
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`Id. at 14:40-50 (emphasis added).
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`Figure 9, which is an embodiment of the lookup table, reflects this
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`association between Pressure 1 and Sensation13, annotated below.
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`In this example, the “PRESSURE DATA” column is associated with the
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`haptic effect data contained in the “TACTILE SENSATION” column. Ex. 2005 at
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`¶ 35. A POSITA would understand that the above example describes associating
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`data relating to an interaction with haptic effect data (“tactile sensation”). Ex.
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`2005 at ¶ 35.
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`Because the actuator signal is controlled by the haptic effect data that is
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`obtained from the lookup table, the lookup table must associate an “interaction”
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`with haptic effect data if the resulting actuator signal is to be generated “based at
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`least in part on the interaction and haptic effect data in a lookup table.” Id.
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`This claim scope was confirmed in the prosecution history of the ’356
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`patent. Ex. 2005 ¶ 36. During prosecution, the applicant added to the last
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`limitation of claim 1 “generating an actuator signal based at least in part on the
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`interaction” the words “and haptic effect data in a lookup table” to overcome a
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`rejection over the Rosenberg prior art. Ex. 1004, Page 43 (February 10, 2014
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`Applicant Response at 2). In doing so, the applicant stated:
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`Rosenberg may discuss outputting haptic effects based on user
`inputs (or graphical objects), but it does not discuss determining
`which specific haptic effect to output for given a (sic) user
`input (or graphical object) based on data in a lookup table."
`Id., Page 50 (February 10, 2014 Applicant Response, at 9)
`(emphasis added). In other words, the applicant distinguished
`the prior art because it did not disclose determining which
`haptic effect to output, based on a given interaction between the
`user and a graphical object, using a lookup table.
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`Id. at 50.
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`Petitioner incorrectly argues that “generating an actuator signal based at
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`least in part on the interaction and haptic effect data in a lookup table” should be
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`construed to mean “generating an actuator signal based at least in part on (1) the
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`interaction and (2) haptic effect data in a lookup table.” Pet. at 17. In other words,
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`Petitioner contends “the only thing the claimed lookup table must include is ‘haptic
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`effect data.’” Pet. at 18. Petitioner is incorrect.
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`As explained above, in order for the generated actuator signal to be based at
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`least in part on “the interaction” of the claim language, the ’356 patent requires that
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`the lookup table contains an association between an interaction and haptic effect
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`data. Ex. 2005 ¶ 38. Petitioner and its expert do not recognize that information
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`about “the interaction” is necessary to identify the appropriate haptic effect data to
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`output if the resulting actuator signal is to be based at least in part on the
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`interaction. Pet. 18; Ex. 2005 at ¶ 38 (explaining that the lookup table must use
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`data related to the interaction as input to obtain the resulting haptic effect data).
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`By contending the claim can be satisfied with a lookup table containing no
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`information about the interaction, Petitioner effectively’ reads out “the interaction”
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`limitation.
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`For the reasons stated above, when considered in context of the claims and
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`the intrinsic record, the broadest reasonable construction of “generating an actuator
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`signal based on at least in part on the interaction and haptic effect data in a lookup
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`table” is that the claimed “lookup table” is a “data structure in the form of a table
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`containing associations between interactions and haptic effect data.”
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`IV. GROUND 1: CLAIMS 1-3, 5, 7, 9-13, 15, 17, 19-23, 25 AND 26 ARE
`NOT OBVIOUS OVER ROSENBERG 737 AND ROSENBERG 281.
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`Petitioner’s expert admits that Rosenberg 737 is not relied upon for any
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`disclosure of a lookup table. Ex. 2006 at 31:25-32:6 ("the 737 does not disclose
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`any lookup tables"). Instead, only the Rosenberg 281 reference supposedly
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`provides the claimed lookup table. But Petitioner advances no compelling reason
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`why a POSITA would use Rosenberg 281’s lookup table, modify it substantially so
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`that it met the requirements of the ‘356 patent, and then incorporate it into
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`Rosenberg 737’s system. Petitioner’s argument amounts to saying that because a
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`lookup table arranged in one format is found in Rosenberg 281, a POSITA would
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`have found it obvious to implement a lookup table in a different format Rosenberg
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`737’s system. This is a clear case of hindsight reconstruction, which is
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`impermissible. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553
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`(Fed. Cir. 1983) (improper to use “that which only the inventor taught . . . against
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`its teacher.”).
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`In fact, the decision of whether to implement a lookup table into a particular
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`system is based on a series of factors that Petitioner’s expert admits he did not
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`address. For example, Petitioner’s expert Dr. Baudisch admits that there are
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`numerous alternatives to retrieving haptic effects. Dr. Baudisch only considered
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`one such alternative in his declaration. Furthermore, Dr. Baudisch admits that
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`there are many factors that a POSITA would consider in determining which
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`approach to implement in any particular system. Dr. Baudisch only considered one
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`of these many factors in his declaration. In fact, in designing his own haptic
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`feedback system, Dr. Baudisch chose an approach different than a lookup table.
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`Petitioner’s suggestion that implementation of a lookup table would have
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`been obvious, in the absence of consideration of the factors Petitioner’s own expert
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`admits a POSITA would have considered, rings hollow. Petitioner’s expert, Dr.
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`Baudisch, agreed that a POSITA would not always use a lookup table. Ex. 2006 at
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`19:19-20:1 ("it depends on a variety of factors"). He further testified that before
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`deciding whether a lookup table was appropriate for any specific situation, a
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`POSITA would have considered numerous requirements for a particular system
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`such as "run-time behavior" or “speed,” “available memory on the system,”
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`“maintenance” of the system, and suitability to the particular application at hand.
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`Ex. 2006 at 20:18-21:5; 52:5-9; 54:3-18. Out of all of these factors, Petitioner
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`considered only one (run-time behavior), and even in that instance the analysis was
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`so conclusory and simplified that Dr. Baudisch admitted that it was not strictly
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`true. See Pet. at 44 (contending that a "lookup table would be more efficient than
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`other alternatives"); Ex. 2002 at ¶ 105 (same); Ex. 2006 at 33:4-17 (clarifying that
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`this greater efficiency of a lookup table would only be true “[i]n some cases,” and
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`that a POSITA designing a system would have considered options other than a
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`lookup table).
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`Consideration of these factors is not a trivial point. In fact, Petitioner’s own
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`expert declined to use a lookup table in a haptic feedback system he designed. Ex.
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`2005 at ¶¶ 60-61. Thus, even if a POSITA may have had the skill necessary to
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`implement a lookup table as taught by Rosenberg 281 in the Rosenberg 737’s
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`system, Petitioner has identified no reason why a POSITA would have modified
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`Rosenberg 737 in this manner. At most, Petitioner shows that a lookup table is one
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`of many alternatives that may have been considered by a POSITA. Ex. 2005 at
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`¶ 40. But simply showing that a particular feature is “a matter of design choice” is
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`insufficient to show that a POSITA would have had reason to combine that
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`implementation with that feature with the embodiment disclosed by another
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`reference. See, e.g., IPR2015-2015-00613, Paper 11 at 15 (quoting KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 418 (2007), and explaining that it is insufficient for
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`obviousness to allege a particular combination of features would be “a matter of
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`design choice”). Indeed, Rosenberg himself did not see fit to use a lookup table in
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`the description of his Rosenberg 737 Application, despite the fact that he was
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`aware of a lookup table (from Rosenberg 281).
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`Furthermore, even if a POSITA had been motivated to combine Rosenberg
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`281’s lookup table with Rosenberg 737, such a combination would not arrive at the
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`limitations of the challenged claims under either party's construction because the
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`haptic effects retrieved from Rosenberg 281’s lookup table are based on the
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`position of a user object (in degrees of freedom) rather than on the interaction
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`between an object contacting a touch-sensitive input device and a graphical object,
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`as required by the ’356 patent. See IPR2016-00807 at 17 (decision denying
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`institution of a petition for review of the ‘356 patent, and explaining that the
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`lookup table is based on “the position of a mouse or joystick”). Indeed, in
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`Rosenberg 281, the single reference to a lookup table is contained in local memory
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`27, which is local to the interface device 14 (e.g., joystick), as shown below from
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`Figure 1 of Rosenberg 281.
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`Local memory 27, such as RAM and/or ROM, is preferably coupled
`to microprocessor 26 in interface device 14 to store instructions for
`microprocessor 26 and store temporary and other 10 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.
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`Rosenberg 281 at page 11, lines 9-12 (emphasis added).
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`The local memory 27 would have no information about any purported interaction
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`with a graphical object located on display device 20 of the separate home computer
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`system 12 because interface device 14 has no knowledge of the position of any
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`graphical object on the display device or whether the user object is interacting with
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`any graphical object. Ex. 2005 at ¶¶ 41-42. That determination occurs in the host
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`computer 12. In Rosenberg 281’s local control loop (i.e., the embodiment that
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`discusses the lookup table), the actuator signal would be generated when the user
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`physically moves the user object (such as a joystick) in any direction, irrespective
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`of whether there are graphical objects being displayed on the screen and
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`irrespective of whether the user is interacting with any of the graphical objects.
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`Ex. 2005 at ¶ 42.
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`Additional and substantial modification of Rosenberg 281’s lookup table
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`would thus be necessary to satisfy the claims of the ‘356 patent under either party's
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`proposed claim construction. Petitioner provides no reason that a POSITA would
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`have engaged in these additional modifications, which are taught by neither
`
`Rosenberg 281 nor Rosenberg 737. Instead, Petitioner’s argument is based solely
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`on impermissible hindsight reconstruction of the challenged claims using the
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`disclosure of the ‘356 patent a roadmap to craft their arguments.
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`A.
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`Petitioner has provided no compelling reason for a POSITA to use
`a lookup table in the Rosenberg 737’s system
`
`Rosenberg 737 indisputably does not disclose a lookup table. See Ex. 2006
`
`at 31:25-32:6 ("the 737 does not disclose any lookup tables"). For this reason,
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`Petitioner necessarily relies on a combination of Rosenberg 737 with Rosenberg
`
`281’s lookup table to supposedly render the challenged claims obvious.1 However,
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`1 As explained below in Section IV.C, even if Rosenberg 281’s lookup table were
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`combined with Rosenberg 737, a POSITA still would not arrive at the challenged
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`claims.
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`Petitioner’s arguments regarding motivation to combine are unpersuasive—by the
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`admission of Petitioner’s own expert, the Petition does not address the majority of
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`factors a POSITA would have needed to address in determining whether
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`implementation of a lookup table would have been desirable in a haptic feedback
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`system. See Ex. 2006 at 20:18-21:5; 52:5-9; 54:3-18 (listing various factors a
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`POSITA would have considered in determining how to implement haptic feedback
`
`in a system).
`
`At his deposition, Petitioner’s expert Dr. Baudisch admitted that there were
`
`several alternatives to using a lookup table. For example, one alternative is to “do
`
`everything in code somehow, not have a particular data structure.” Ex. 2006 at
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`20:18-21. Another alternative is to “store haptic effects as a sequence of stored
`
`force values,” which Rosenberg 281 itself teaches is an alternative to a lookup
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`table. Ex. 2006 at 34:19-35:3 (“I would assume that the person of ordinary skill in
`
`the art could do that.”); Ex. 1013 at 11:10-12 (“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.”). Another alternative, as set forth by Dr.
`
`Baudisch in his declaration, is “calculating a force value each time one was
`
`needed.” Ex. 1002 at ¶105. Calculating a force value when it is needed is
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`explicitly taught as an alternative by Rosenberg 281. See Ex. 1013 at 11:12-15
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`Case IPR2016-01381
`Patent No. 8,773,356
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`(“In addition, a local clock 29 can . . . provide timing data . . . for example, to
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`compute forces output by actuators 30 (e.g., forces dependent on calculated
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`velocities or other time dependent factors).”); Ex. 2005 ¶ 45.
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`With the exception of calculating a force value each time one is needed,
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`Petitioner does not address any alternatives to using a lookup table or explain why
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`a POSITA would find a lookup table more efficient. See Pet. at 44; Ex. 1002 at
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`¶ 105. For instance, neither Petitioner nor its expert addresses the relative
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`efficiency of a lookup table to not using a particular data structure, or simply
`
`storing the haptic effects as a sequence of stored force values. Id.; Ex. 2005 ¶ 46.
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`Furthermore, the one alternative that Petitioner actually does address is done
`
`in a wholly conclusory fashion, without any of the analysis that Dr. Baudisch
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`admits a POSITA would have needed to consider in determining whether a lookup
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`table was an appropriate solution for a given application. Indeed, as Dr. Baudisch
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`admits, Petitioner’s assertion that “a POSITA would have understood that
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`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” (Pet. at
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`44) is simply not accurate. As Dr. Baudisch explained at his deposition, whether
`
`using a lookup table would be suitable for any particular application “depends on a
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`variety of factors.” Ex. 2006 at 19:19-20:1. The factors to be considered would
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`Patent No. 8,773,356
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`include “run-time behavior” (or “speed”), “maintenance,” and various other design
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`requirements such as “available memory on the system.” Ex. 2006 at 20:22-21:5;
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`54:3-18. A POSITA would also consider “the application and the specific means
`
`available” to “determine how you would go about storing and quantizing the
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`effects.” Ex. 2006 at 55:13-17.
`
`Dr. Baudisch engaged in none of this analysis in his declaration. Ex. 2005
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`¶¶ 47-48. He did not address the memory footprint of a lookup table or compare it
`
`to any potential efficiency tradeoffs. Ex. 2006 at 33:18-22. He did not address
`
`additional maintenance requirements and complications that may be associated
`
`with adding a lookup table data structure to a system. See Ex. 2005 at ¶ 48. He
`
`did not compare tradeoffs between available memory on a system and run-time
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`behavior. Ex. 2006 at 33:18-22 (admitting “memory footprint” of various
`
`implementations not addressed in Dr. Baudisch’s declaration). Nor did Dr.
`
`Baudisch consider “the application” of Rosenberg 737 in determining whether
`
`combining Rosenberg 737 with Rosenberg 281 would have been a desirable design
`
`choice. And even regarding run-time behavior, Dr. Baudisch admitted that this
`
`factor could, in some cases, lead a POSITA to choose options other than a lookup
`
`table. Ex. 2006 at 33:4-17 (clarifying that his opinion in his declaration that “a
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`lookup table would have been more efficient than other alternatives” was only true
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`in certain instances, and that a POSITA “might consider other options as well”). In
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`fact, no evidence or explanation is provided to verify Dr. Baudisch’s conclusory
`
`assertion that a lookup table would supposedly be more efficient than other
`
`alternatives.
`
`Petitioner’s argument is not sufficient to establish obviousness. In order to
`
`support an obviousness finding, there must be a clear and explicit articulation of
`
`reasons why the claimed invention would have been obvious. KSR International
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`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A “rejection on obviousness cannot
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`be sustained with mere conclusory statements; instead, there must be some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See
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`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Federal
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`Circuit statement with approval).
`
`The necessary, articulated with some rational underpinning, is simply
`
`lacking from the Petition and corresponding expert declaration. For example,
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`Petitioner does not even address the two alternatives to a lookup t
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