UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`IMMERSION CORPORATION
`Patent Owner
`
`U.S. Patent No. 8,773,356
`Filing Date: January 31, 2012
`Issue Date: July 8, 2014
`Title: Method and Apparatus for Providing Tactile Sensations
`
`
`
`Inter Partes Review No.: (Unassigned)
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`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,773,356
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-100, ET SEQ.
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`
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`I.
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 1
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 1
`1.
`Real Party-In-Interest ................................................................. 1
`2.
`Related Matters .......................................................................... 1
`3.
`Lead and Backup Counsel ......................................................... 2
`4.
`Service Information.................................................................... 2
`Proof of Service on the Patent Owner .................................................. 2
`B.
`Power of Attorney ................................................................................ 3
`C.
`Standing ................................................................................................ 3
`D.
`Fees ....................................................................................................... 3
`E.
`III. STATEMENT OF PRECISE RELIEF REQUESTED .................................. 3
`IV. FULL STATEMENT OF REASONS FOR REQUESTED RELIEF ............ 4
`A.
`Technology Background ...................................................................... 4
`B.
`Summary of the ’356 Patent ................................................................. 5
`C.
`The ’356 Patent Prosecution History ................................................... 7
`1.
`Prosecution History of the ’356 Patent ...................................... 7
`2.
`Prosecution History of Earlier Applications .............................. 8
`D. No Claim of the ’356 Patent is Entitled to the Effective Filing
`Date of The First Provisional Application ......................................... 10
`Person of Ordinary Skill in the Art .................................................... 15
`Products Accused of Infringing the ’356 Patent ................................ 15
`Claim Construction ............................................................................ 15
`1. “determining” ................................................................................. 16
`2. “generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table” ............... 17
`H. Ground 1: Claims 1-3, 9-13, 19-23, 25-26 Are Obvious Under
`35 U.S.C. § 103(a) (pre-AIA) In Light Of Rosenberg 737 and
`Rosenberg 132 .................................................................................... 20
`
`E.
`F.
`G.
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`Table of Contents
`(continued)
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`Page
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`Rosenberg 737 is § 102(a) and (b) Prior Art ........................... 20
`1.
`Overview of Rosenberg 737 .................................................... 23
`2.
`Rosenberg 281 is § 102(a) and (b) Prior Art ........................... 26
`3.
`Detailed Analysis ..................................................................... 26
`4.
`Ground 2: Claims 5, 7, 15 and 17 Are Obvious Under 35
`U.S.C. § 103(a) (pre-AIA) In Light Of Rosenberg 737 in view
`of Rosenberg 281 and further in view of Newton 2.0 ........................ 61
`CONCLUSION ............................................................................................. 64
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`V.
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`EXHIBIT LIST
`
`Exhibit No. Description
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`1010
`
`1011
`1012
`
`1013
`
`1014
`
`1015
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`1016
`1017
`1018
`
`U.S. Patent No. 8,773,356 (“’356 patent”)
`Declaration of Patrick Baudisch
`Immersion’s Preliminary Proposed Constructions
`File History of U.S. Patent No. 8,773,356
`U.S. Provisional App. No. 60/335,493 (“First Provisional”)
`U.S. Provisional App. No. 60/399,883 (“Second Provisional”)
`Certified copy of U.S. Patent Application No. 09/487,737, as filed
`on January 19, 2000 and as published by the World Intellectual
`Property Organization on July 26, 2001 (“Rosenberg 737”)
`WO01/54109, as published by the World Intellectual Property
`Organization on July 26, 2001 (“WO 01/54109”)
`U.S. Pat No. 6,429,846 (“Rosenberg 846”)
`File History of U.S. Patent No. 7,808,488 (the “’488 patent”), filed
`as U.S. Pat. App. No. 11/693,117 (the “’117 application”)
`U.S. Pat. App. Pub. No. US2008/0068350 (“Rosenberg 350”)
`U.S. Pat. App. No. 09/253,132 to Rosenberg (issued as 6,243,078),
`which is incorporated by reference by Rosenberg 737 (“Rosenberg
`132”)
`U.S. Pat. App. No. 09/103,281 to Rosenberg (issued as 6,088,019),
`which is incorporated by reference by Rosenberg 737 (“Rosenberg
`281”)
`Newton 2.0 User Interface Guidelines, Apple Press, ISBN 0-201-
`48838-8, First Printing, May 1996 (“Newton 2.0”)
`U.S. Provisional App. No. 60/160,401 to Braun et al., which is
`incorporated by reference by Rosenberg 737 (“Braun 401”)
`U.S. Pat. App. No. 09/585,741 to Shahoian (“Shahoian 741”)
`U.S. Pat. No. 5,977,867
`U.S. Pat. No. 6,088,019
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`1019
`1020
`1021
`1022
`
`1023
`
`MPEP 8th ed. 2001, Appendix T Patent Cooperation Treaty
`MPEP 7th ed. 1998, Appendix T Patent Cooperation Treaty
`MPEP 8th ed. Revised 2004, Appendix T Patent Cooperation Treaty
`IPR2016-00807, Paper No. 15, Immersion Corporation’s Corrected
`Patent Owner Preliminary Response
`IPR2016-00807, Exhibit 2009, Corrected Declaration of Nathan J.
`Delson, Ph.D.
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`I.
`
`INTRODUCTION
`The claims of Immersion’s U.S. Patent No. 8,773,356 (the “’356
`
`patent”) challenged in this Petition are invalid over one of Immersion’s
`
`earlier patent applications, U.S. Patent App. No. 09/487,737 to Rosenberg et
`
`al. (“Rosenberg 737”), which published on January 26, 2001. During
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`prosecution of the ’356 patent, Immersion overcame a rejection of the
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`subject matter disclosed in Rosenberg 737 by adding a limitation related to a
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`lookup table. However, Rosenberg 737 incorporates by reference multiple
`
`applications that disclose lookup tables, obviating most of the challenged
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`claims. The remaining claims, directed to numbered softkeys, are rendered
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`obvious by that same combination further in view of documentation teaching
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`the numbered softkeys in Apple Newton keyboards. This combination was
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`obvious, among other reasons, because Rosenberg 737 itself contains an
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`express motivation to implement its technology in the Apple Newton.
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`II.
`
`COMPLIANCE WITH FORMAL REQUIREMENTS
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`1.
`Real Party-In-Interest
`Apple, Inc. is the real party-in-interest.
`
`2.
`Related Matters
`The ’356 patent is subject to the following three actions: 1) Certain
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`Mobile Electronic Devices Incorporating Haptics (Including Smartphones
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`and Smartwatches) and Components Thereof, U.S. International Trade
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`Commission Investigation No. 337-TA-990; 2) Immersion Corporation v.
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`Apple Inc., et al., Case No. 1:16-cv-00077 (D. Del.); and 3) IPR2016-00807
`
`(petition pending).
`
`Lead and Backup Counsel
`
`3.
`Lead counsel is James M. Heintz, Reg. No. 41,828, of DLA Piper
`
`LLP (US), 11911 Freedom Drive, Suite 300; Reston, VA 20190; Apple-
`
`Immersion-IPRs@dlapiper.com, 703-773-4148 (phone), 703-773-5200
`
`(fax). Backup counsel is Brian Erickson, Reg. No. 48,895, of DLA Piper
`
`LLP (US), 401 Congress Avenue, Suite 2500, Austin, TX 78701;
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`brian.erickson@dlapiper.com, 512-457-7059 (phone)
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`Service Information
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`4.
`Service information for lead and back-up counsel is provided in the
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`designation of lead and back-up counsel above.
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`Proof of Service on the Patent Owner
`
`B.
`As identified in the attached Certificate of Service, a copy of this
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`Petition in its entirety is being served to the Patent Owner’s attorney of
`
`record at the address listed in the USPTO’s records by overnight courier
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`pursuant to 37 C.F.R. § 42.6.
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`Power of Attorney
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`C.
`Powers of attorney are being filed with designation of counsel in
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`accordance with 37 C.F.R. § 41.10(b).
`
`Standing
`
`D.
`In accordance with 37 C.F.R. §42.104(a), Petitioner certifies that the
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`’356 patent is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the
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`patent claims on the grounds identified in this Petition.
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`Fees
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`E.
`The undersigned authorizes the Director to charge the fee specified by
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`37 C.F.R. § 42.15(a) and any additional fees that might be due in connection
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`with this Petition to Deposit Account No. 50-3266.
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`III.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`In accordance with 35 U.S.C. § 311, Petitioner requests cancelation of
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`claims 1-3, 5, 7, 9-13, 15, 17, 19-23, 25-26 of the ’356 patent in view of the
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`following grounds:
`
`A.
`
`Claims 1-3, 9-13, 19-23, 25-26 are rendered obvious under 35
`
`U.S.C. § 103(a) (pre-AIA) by U.S. Patent Application S/N 09/487,737 (Ex.
`
`1007, “Rosenberg 737.”) in view of U.S. Pat. App. No. 09/103,281, (Ex.
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`1013, “Rosenberg 281”) and the knowledge of one of ordinary skill in the
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`art at the time of the alleged invention.
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`B.
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`Claims 5, 7, 15, 17 are rendered obvious under 35 U.S.C. §
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`103(a) (pre-AIA) by Rosenberg 737 in view of Rosenberg 281 and further in
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`view of Apple Press, Newton 2.0 User Interface Guidelines, ISBN 0-201-
`
`48838-8, First Printing, May 1996 (“Newton 2.0”) and the knowledge of
`
`one of ordinary skill in the art at the time of the alleged invention.
`
`IV.
`
`FULL STATEMENT OF REASONS FOR REQUESTED
`RELIEF
`A. Technology Background
`“Haptics” generally refers to the use of the sense of touch, especially
`
`in computer systems. Ex. 1001 at 1:25-26. As the ’356 patent explains,
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`many user interfaces in electronic devices relied primarily on visual and
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`audible feedback. Id. at 1:30-42. The ’356 patent acknowledges that some
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`conventional touchpads provided tactile sensations in the form of vibratory
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`feedback to the user of the touchpad. Id. at 2:17-19. The ’356 patent also
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`acknowledges that “[o]ften, touchpads are combined with flat-panel display
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`screens that display one or more graphically generated buttons or softkeys.
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`Normally, the softkeys are visible through the touchpad.” Id. at 1:64-67.
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`According to the ’356 patent, those conventional haptic feedback systems
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`are limited and required considerable visual attention from the user. Id. at
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`2:19-23; Ex. 1002 ¶ 36.
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`Summary of the ’356 Patent
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`B.
`The ’356 patent is titled “Method and Apparatus for Providing Tactile
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`Sensations.” Ex. 1001 at cover. The ’356 patent is directed to products and
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`processes for providing tactile sensations to input devices or electronic
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`devices. Ex. 1001 at 2:27-29. Input devices can include touchpads. Id. at
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`2:29-31. In some embodiments, a display may be located beneath the
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`touchpad, making that touchpad a touch screen. Id. at 11:22-39 and Figs. 5
`
`and 6. Electronic devices can include personal digital assistants (PDAs),
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`mobile telephones, laptops, and many other types of devices. Id. at 3:15-24.
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`Tactile feedback is provided by an actuator connected to the input device or
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`the electronic device. Id. at 2:32-34. The actuator can be a variety of types,
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`including a voice coil, piezo electric, eccentric mass and moving magnet
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`actuators. Id. at 3:61-4:3; Ex. 1002 ¶ 37.
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`The ’356 patent also discloses the use of a controller that receives a
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`signal from the input device and outputs a corresponding signal to the
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`actuator to create a desired tactile sensation. Ex. 1001 at 4:47-5:3. The
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`’356 patent further discloses a “table in which input signals are associated
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`with various haptic signals” such as shown in Fig. 9 below (id. at 7:63-8:17):
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`The ’356 patent discloses how the controller uses the table of Fig. 9:
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`As shown in the table, for any given input device, a plurality of
`combinations of input signals, position data, and pressure data
`is possible, and each combination relates to a specified function
`of either the electronic device or a distinct tactile sensation.
`These combinations vary depending on the type of input device
`assigned to each input signal and the current functionality of
`that input device. The controller, using the data obtained from
`monitoring the input device, reads the tables and obtains the
`associated function and tactile feedback information.
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`Ex. 1001 at 14:26-35; Ex. 1002 ¶ 38.
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`C. The ’356 Patent Prosecution History
`1.
`Prosecution History of the ’356 Patent
`The application for the ’356 patent was filed on January 31, 2012 and
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`assigned serial number 13/362,113 (the “’113 application”). Ex. 1004 at 2.
`
`The ’113 application claimed priority to three earlier non-provisional
`
`applications and two provisional applications. Id. at 11; Ex. 1002 ¶ 39.
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`In an office action dated 9/7/13, the twenty originally filed claims
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`were rejected under 35 U.S.C. § 102(b) as being anticipated by the
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`publication of another application owned by Patent Owner, U.S. Pat. Pub.
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`No. US2008/0068350 (Exhibit 1011, “Rosenberg 350”). Ex. 1004 at 151-
`
`53 (mistyping 68350 as 60530). Rosenberg 350 is a continuation of
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`Rosenberg 737 which is asserted in this Petition. Ex. 1002 ¶ 40.
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`The applicants responded to this rejection by amending each claim to
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`include a requirement that an actuator signal be generated based at least in
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`part on “haptic effect data in a lookup table” (the “Lookup Table
`
`Limitation”). Ex. 1004 at 169-73. The applicants argued the Lookup Table
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`Limitation “may be found in the specification as filed, such as in paragraphs
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`[0043] and [0071] as well as in Figures 9 and 10.” Id. at 49. The applicants
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`also added six new claims directed toward various features of the lookup
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`table. Id. at 173-74; Ex. 1002 ¶ 41.
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`In that response, the applicants argued that Rosenberg 350 was not a
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`proper reference under 35 U.S.C. § 102(b) because it was only published on
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`March 20, 2008, which was later than the priority claimed by the ’133
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`application. Ex. 1004 at 176. The applicants admitted that Rosenberg 350
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`was a continuation of Rosenberg 737, but represented that Rosenberg 737
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`was first published on November 1, 2011, such that Rosenberg 350 was only
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`available as a reference under 35 U.S.C. § 102(e). Id. However, Rosenberg
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`737 was first published by WIPO on July 26, 2001 as the priority document
`
`for WO01/54109, such that it is also available as a reference under 35 U.S.C.
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`§§ 102(a), (b) and 103, as asserted in this Petition.
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`The applicants also asserted that the amended claims were
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`“patentable” because Rosenberg 350 did not disclose the Lookup Table
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`Limitation. Id. at 176. However, as established below, Rosenberg 737
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`incorporates by reference multiple references that disclose the Lookup Table
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`Limitation. In response to applicants’ argument, the examiner issued a
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`Notice of Allowance for all twenty six claims on 3/6/2014. Id. at 189-90.
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`The ’356 patent subsequently issued.
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`Prosecution History of Earlier Applications
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`2.
`As discussed above, the ’113 application claims priority to three
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`earlier non-provisional applications, including U.S. Pat. App. Ser. No.
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`11/693,117 (the “’117 application”); Ex. 1002 ¶ 42. Certain admissions
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`made during the prosecution of the ’117 application are relevant to this inter
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`partes review because they confirm that Rosenberg 737 discloses several
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`limitations in the challenged claims.
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`During prosecution of the ’117 application, the examiner issued a
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`rejection dated 12/29/09 over Rosenberg 350. Ex. 1010 at 693-698. In that
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`rejection, the examiner asserted that Rosenberg 350 disclosed “a touch
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`sensitive input device configured to output a signal indicating an object
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`contacting the touch sensitive input device” and a processor configured to
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`“output a display signal configured to display a graphical object on the touch
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`sensitive input device,” “receive a the sensor signal from the touch sensitive
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`input device,” “determine an interaction between the object contacting the
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`touch-sensitive input device” and “generate the actuator signal based at least
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`in part on the interaction.” Id. at 695-96; Ex. 1002 ¶ 43.
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`In response to this rejection, the applicants amended claim 1 to
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`include limitations directed toward the use of the pressure to generate an
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`actuator signal. Ex. 1010 at 718 (3/29/10 Amendment). Similar
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`amendments were made to other independent claims. The applicants also
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`made the following admissions that are relevant to potential claim
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`construction and invalidity issues in this inter partes review as follows:
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`and
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`Rosenberg discloses outputting haptic effects to a touch-
`sensitive surface upon an object contacting a graphical object;
`however, Rosenberg does not disclose outputting different
`haptic effects based on the sensed amount of pressure when an
`object contacts the touch-sensitive surface.
`
`Regarding paragraphs 71-77 of Rosenberg, this disclosure
`relates to outputting haptic effects to a touchscreen; however
`it does not disclose outputting different haptic effects based on
`different pressures exerted on the touchscreen.
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`Id. at 732 (emphasis added). Thus, the applicants admitted that Rosenberg
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`350 (which is a continuation of Rosenberg 737, relied on herein) disclosed
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`elements of the independent claims of the ’356 patent; Ex. 1002 ¶ 44-45.
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`D. No Claim of the ’356 Patent is Entitled to the Effective
`Filing Date of The First Provisional Application
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`As discussed above, the claims of the ’356 patent were amended
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`during prosecution to recite the Lookup Table Limitation. Ex. 1004 at 169-
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`73. Thus, in order for any claim of the ’356 patent to be entitled to claim
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`priority to an earlier-filed provisional application, such an earlier filed
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`application must provide 35 U.S.C. § 112 written description support for the
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`claims as amended, including the Lookup Table Limitation. See New
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`Railhead Mfg., L.L.C v. Vermeer Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir.
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`2002)(“the disclosure must show he had invented each feature that is
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`included as a claim limitation.”). In the remarks accompanying the
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`amendment, Applicant stated that the subject matter of the Lookup Table
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`Limitation was disclosed in the ’113 application “in paragraphs [0043] and
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`[0071] as well as in Figures 9 and 10.” Ex. 1004 at 49; Ex. 1002 ¶ 46.
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`The ’356 patent claims priority to two provisional applications, the
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`first of which is serial number 60/335,493 (Ex. 1005, the “First
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`Provisional”), dated Nov. 1, 2001. Ex. 1001, front cover and 1:17-20. The
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`First Provisional only names two of the five inventors named on the ’356
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`patent. Ex. 1005 at 1 (naming only Messrs. Martin and Vassallo). The First
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`Provisional states that an unidentified “controller” will “control the actuator
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`output” but does not mention the controller using haptic effect data in a
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`lookup table to do so. Ex. 1005 at 7. The First Provisional lacks any
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`disclosure corresponding to paragraphs [0043], [0071], Figure 9 or Figure
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`10, which the applicants relied on during prosecution for support for the
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`Lookup Table Limitation. Ex. 1004 at 49; see generally Ex. 1006; Ex. 1002
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`¶ 47.
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`The First Provisional incorporates by reference U.S. App. No.
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`09/585,741 to Shahoian (Exhibit 1016, “Shahoian”) in its entirety, but only
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`describes the relevance of the actuators in Shahoian. The entire paragraph in
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`the First Provisional related to Shahoian is reproduced below.
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`Ex. 1005 at 5. Thus, the First Provisional only mentions Shahoian in the
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`context of describing relevant types of actuators. Id. In addition to
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`disclosing various types of actuators, Shahoian separately discloses a
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`controller that uses a lookup table. Ex. 1016 at 36:1-5; Ex. 1002 ¶ 48.
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`This disclosure does not support the claims of the ’356 patent for two
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`independent reasons. First, the incorporation by reference is insufficient to
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`include the lookup tables in Shahoian. The Board of Patent Appeals and
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`Interferences held in Ex Parte Manzo Scott that a generic incorporation of an
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`entire disclosure—“the full disclosures of which are incorporated herein by
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`reference”—is insufficient. Ex Parte Manzo Scott, 2012 WL 6114502 at
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`*5 (Patent Tr. & App. Bd.) (2012). In Ex Parte Manzo the applicant argued
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`that it was entitled to an earlier filing date because the parent application
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`incorporated a second reference in its entirety, and that second reference
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`disclosed the claim limitation at issue. Id. at *6. The Board rejected that
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`argument and agreed with the Examiner, holding that the generic
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`incorporation by reference was insufficient because it did not “particularly
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`indicate where support for the limitation [at issue] is found.” Id. at *7
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`(citing In re de Seversky, 474 F.2d 671, 674 (CCPA 1973) for the
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`proposition that incorporation by reference requires a statement “clearly
`
`identifying the subject matter which is incorporated and where it is to be
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`found.”).
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`Second, even if the incorporation by reference were effective to paste
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`the entirety of Shahoian into the First Provisional, a POSITA would not
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`understand the two named inventors of the First Provisional to have been in
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`possession of the subject matter later claimed by the five named inventors in
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`the challenged claims in the ’356 patent. Ex. 1002 ¶ 49; Hyatt v Dudas, 492
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`F.3d 1365 at 1370 (Fed. Cir. 2007) (“Adequate written description means
`
`that, in the specification, the applicant must ‘convey with reasonable clarity
`
`to those skilled in the art that, as of the filing date sought, he or she was in
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`possession of the [claimed] invention.’”) (citing Vas-Cath, Inc. v Mahurkar,
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`935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In a combined document, there
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`would have been no support for combining anything disclosed in the
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`Shahoian-portion with anything in the First Provisional-portion, with the
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`exception of the types of actuators which are clearly identified in the
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`incorporation statement. Ex. 1002 ¶ 49. Whether such a combination may
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`have been obvious is legally insufficient to show actual possession. In re
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`Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting Lockwood v. Am.
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`Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)).
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`Importantly, as established above, Shahoian is not referenced by the
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`First Provisional when referring to the controller and how it generates an
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`actuator signal. Ex. 1005 at 5; Ex. 1002 ¶ 50. Thus, even a combined
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`document would not convey with reasonable clarity to those skilled in the art
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`that the two named inventors of the First Provisional possessed the
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`embodiment claimed as a whole a decade later by the five named inventors
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`of the ’356 patent. Ex. 1002 ¶ 50. In particular, the combined document
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`would not convey with reasonably clarity to a POSITA the claimed
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`combination of generating an actuator signal based at least in part on an
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`interaction (between an object contacting a touch-sensitive input device and
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`a graphical object displayed on that device) and haptic effect data in a
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`lookup table. Ex. 1002 ¶ 50. See Hyatt v. Dudas, 492 F.3d at 1371
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`(affirming PTO’s rejection of an applicant’s claim to an earlier priority date
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`on the basis that “While each element may individually be discussed neither
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`the specification nor drawings clearly support the claimed embodiment as a
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`whole.”) (emphasis added); cf. Karten Mgf. Corp. v. Cleveland Golf Co., 242
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`F.3d 1376, 1383 (Fed. Cir. 2001); see also IPR2012-00005, Paper 27 at 4
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`(“The Board also explained that merely indicating where each claim
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`limitation individually described in the original disclosure may be
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`insufficient to demonstrate support for the claimed subject matter as a
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`whole.”). Thus, no claim of the ’356 patent is entitled to the effective filing
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`date of the First Provisional. Ex. 1002 ¶ 51.
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`Person of Ordinary Skill in the Art
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`E.
`A person of ordinary skill in the art (“POSITA”) at the time of the
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`alleged invention of the ’356 patent would have had a Bachelors’ degree in
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`computer science or a comparable field of study, plus approximately two to
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`three years of professional experience with software engineering, haptics
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`programming, or other relevant industry experience. Additional graduate
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`education could substitute for professional experience and significant
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`experience in the field could substitute for formal education. Ex. 1002 ¶ 53.
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`Products Accused of Infringing the ’356 Patent
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`F.
`Patent Owner alleges that Petitioner’s iPhones and Apple Watches
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`infringe claims 1-3, 5, 7, 9-13, 15, 17, 19-23, 25-26 of the ’356 patent.
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`G. Claim Construction
`In accordance with 37 C.F.R. § 42.104(b)(3), Petitioner provides the
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`following statement regarding construction of the ’356 patent claims. A
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`claim subject to inter partes review receives the “broadest reasonable
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`interpretation” (“BRI”) in light of the specification. 37 C.F.R. § 42.100(b).
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`Because the BRI standard is different from that used in district court
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`litigation, PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC, 815
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`F.3d 747, 756 (Fed. Cir. 2016), the interpretation of the claims presented
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`either implicitly or explicitly herein should not be viewed as constituting
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`Petitioner’s own interpretation and/or construction of such claims for the
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`purposes of the underlying litigation. Instead, such constructions in this
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`proceeding should be viewed only as constituting an interpretation of the
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`claims under the “broadest reasonable construction” standard.
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`1.
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`“determining”
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`The claim term “determining” (claims 1, 12, 22) should be construed
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`to mean “ascertaining.” This term is part of, for example, the third step of
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`claim 1 of the ’356 patent, “determining an interaction between the object
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`contacting the touch-sensitive input device and the graphical object.”
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`Similar language exists in claims 12 and 22. This term requires construction
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`because it is susceptible to more than one meaning. “Determine” may mean
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`“to decide” but also may mean “to establish or ascertain definitely.” For
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`example, “determining” a price might be understood to refer to a merchant
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`choosing the price at which to sell an item, but may also be understood to
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`refer to a customer ascertaining the price by reading the price tag.
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`“Determining” should be construed to mean “ascertaining” an
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`interaction between the object contacting the touch-sensitive input device
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`and the graphical object. The ’356 patent discloses a controller ascertaining
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`the interaction between an object contacting the touch-sensitive input device
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`and the graphical object displayed to the user. See, e.g., Ex. 1001 at 11:53-
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`61; Ex. 1002 ¶ 59. In contrast, there is no disclosure in the ’356 patent of
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`any “determining” in the sense of causing such an interaction to occur. Id.
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`Moreover, the specification does not support or enable a construction that
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`includes causing the claimed relationship to occur. Id. Accordingly,
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`Petitioner’s construction should be adopted.
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`“generating an actuator signal based at least in part
`2.
`on the interaction and haptic effect data in a lookup table”
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`The claim phrase “generating an actuator signal based at least in part
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`on the interaction and haptic effect data in a lookup table” (claims 1, 12, 22)
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`should be construed to mean “generating an actuator signal based at least in
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`part on (1) the interaction and (2) haptic effect data in a lookup table.”
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`Nothing in the claim or the ordinary meaning of these terms requires that
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`“the interaction” also be in the lookup table or that the lookup table comprise
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`an association between the interaction and the haptic effect data. The claim
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`only requires that the actuator signal be based at least in part on both the
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`interaction and the haptic effect data—it does not require any other
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`relationship between the interaction and the haptic effect data and,
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`specifically, does not require that any “association” between the two be
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`stored in the lookup table. Nothing in the specification or file history
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`disclaims or otherwise limits the full breadth of this claim phrase. This
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`conclusion is also supported by the prosecution history, as “the interaction”
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`existed independently in the claim prior to the addition of the separate
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`requirement “and haptic effect data in a lookup table.” A POSITA would
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`understand this is the meaning of the this claim phrase based on the ordinary
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`meaning of the claim, the specification, and the file history. Ex. 1002 ¶ 60.
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`Thus, under the broadest reasonable construction, the only thing the claimed
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`lookup table must include is “haptic effect data” that is used, at least in part,
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`to generate an actuator signal.
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`In IPR2016-00807, Patent Owner proposes an improperly narrow
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`construction of this phrase as follows: “generating an actuator signal based
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`at least in part on (1) the interaction and (2) haptic effect data associated
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`with the interaction stored in a lookup table.” Patent Owner Response in
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`IPR2016-00807 at 26 (emphasis added). Ex. 1022 at 26. In the ITC
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`investigation, Patent Owner proposes a construction of “lookup table” as
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`follows: “data structure containing associations between interactions and
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`haptic effect data.” Ex. 1003 at 1 (emphasis added). As established above,
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`the broadest reasonable construction of the broader phrase, which includes
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`the term lookup table, does not include the underlined limitations improperly
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`added by Patent Owner. Patent Owner and its expert provide no support for
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`adding these limitations, other than to argue that reading in these limitations
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`is consistent with an example disclosed in the specification. Ex. 1022 at 26-
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`27; Ex. 1023 ¶ 75. It is improper to read limitations from a particular
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`embodiment into a claim that is written more broadly under the Philips
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`claim construction standard, and even more improper to do so under the
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`broadest reasonable construction standard. Superguide Corp. v. DirecTV
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`Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir.
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`2004) (“For example, a particular embodiment appearing in the written
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`description may not be read into a claim when the claim language is broader
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`than the embodiment.”). Thus, to the extent Patent Owner proposes a
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`similar, improperly narrow construction in response to this Petition, it should
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`be rejected. Regardless, as established below, the prior art asserted in this
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`petition renders the claims obvious under both Petitioner and Patent Owner’s
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`proposed constructions.
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`H. Ground 1: Claims 1-3, 9-13, 19-23, 25-26 Are Obvious
`Under 35 U.S.C. § 103(a) (pre-AIA) In Light Of Rosenberg
`737 and Rosenberg 132
`1.
`Rosenberg 737 is § 102(a) and (b) Prior Art
`U.S. Patent Application No. 09/487,737 (“Rosenberg 737”) is a
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`printed publication within the meaning of 35 U.S.C. §§ 102(a) and (b) as a
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`consequence of its publication as the priority document of a PCT application
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`on July 26, 2001.
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`Rosenberg 737 was filed on January 19, 2000 by Patent Owner and
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`eventually issued as Rosenberg 846. Ex. 1009, front cover. On January 17,
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`2001, Patent Owner filed a patent cooperation treaty (PCT) application,
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`number PCT/US01/01486, that claimed priority to Rosenberg 737. Ex.
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`1008, front cover. This PCT application was published as WO01/54109 on
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`July 26, 2001. Id.
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`When a PCT application that claims priority to an earlier national or
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`international