`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`________________
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`
`________________
`
`
`IMMERSION CORPORATION’S CORRECTED MOTION FOR
`OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`Pursuant to the Scheduling Order, Paper 8, the Parties’ Joint Stipulation to
`
`Modify Due Date 4, Paper 19, the Board's Order, Paper 27, and the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012), Patent Owner
`
`Immersion Corporation (“Immersion”) respectfully brings this corrected motion
`
`for observations on cross-examination of Apple’s expert witness, Dr. Patrick
`
`Baudisch. Immersion submits the following observations on Dr. Baudisch’s
`
`testimony:
`
`Observation # 1
`
`In Exhibit 2013, at page 54 lines 3-13, Dr. Baudisch testified: “Q: So it
`
`would be possible for two Rosenberg computers, Computer 10, to be coupled to
`
`one another? A: It certainly hasn't come up in the analysis or debate of -- or
`
`exchange of disclosures so far -- sorry -- declarations so far, but it doesn't seem to
`
`exclude that possibility.” This is relevant to Petitioner’s argument at pages 16-17
`
`of its Reply (and Dr. Baudisch's corresponding opinion at paragraph 20 of Ex.
`
`1025) that “a POSITA would understand that no look-up table was used in the
`
`system of Ex. 200[7] because the system was directly communicating the
`
`information from one user to another, which is a different system than that
`
`disclosed in Rosenberg 737 where a stored haptic effect is output.” This cross
`
`examination testimony is relevant because it shows that direct communication of
`
`102225581
`
`
`- 1 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`information from one user to another was present in Rosenberg 737 through
`
`networked computing.
`
`Observation # 2
`
`In Exhibit 2013, at page 52 line 13 through page 53 line 3, Dr. Baudisch
`
`testified that Rosenberg 737’s “host application programs that can be used with its
`
`system” can include a “video or computer game.” In Exhibit 2013, at page 54 lines
`
`15-21, Dr. Baudisch testified that he was “aware of network computer gaming
`
`before January 9, 2000,” which is the priority date of Rosenberg 737. This is
`
`relevant to Petitioner’s argument at pages 16-17 of its Reply (and Dr. Baudisch's
`
`corresponding opinion at paragraph 20 of Ex. 1025) that “a POSITA would
`
`understand that no look-up table was used in the system of Ex. 200[7] because the
`
`system was directly communicating the information from one user to another,
`
`which is a different system than that disclosed in Rosenberg 737 where a stored
`
`haptic effect is output.” This cross examination testimony is relevant because it
`
`shows that direct communication of information from one user to another was
`
`present in Rosenberg 737 through networked computer gaming.
`
`Observation # 3
`
`In Exhibit 2013, at page 12 lines 9-23, when asked whether he was aware of
`
`any examples in formal (or non-slang) English where a noun can function as an
`
`adjective, Dr. Baudisch testified: “Nothing comes to mind right now.” This
`
`10225581
`
`
`- 2 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`testimony is relevant to Petitioner’s interpretation of the claim language “based at
`
`least in part on the interaction and haptic effect data in a lookup table” at pages 2-8
`
`of its Reply (and Dr. Baudisch's corresponding opinion at paragraphs 8-11 of Ex.
`
`1025), and its argument on page 2 that “haptic effect data” was “the only ‘data’
`
`recited in the broader claim limitation at issue.” This cross-examination testimony
`
`is relevant because it demonstrates that Dr. Baudisch, in forming his interpretation
`
`of the claim language, was not aware of the possibility that the “interaction” could
`
`be an adjective modifying the word “data” in the claim language “based at least in
`
`part on the interaction and haptic effect data in a lookup table,” such that the claim
`
`requires both “interaction data” and “haptic effect data” in a lookup table.
`
`Observation # 4
`
`In Exhibit 2013, at page 16 line 10 to page 17 line 6, when asked what
`
`“comprising” means in the context of claim 1, Dr. Baudisch testified: “Having
`
`spent some time with patents, all the word ‘comprising’ tells me is what follows
`
`are claim limitations. And each one of those has to be fulfilled.” This is relevant
`
`to Petitioner’s argument at page 4 of its Reply brief (and Dr. Baudisch's
`
`corresponding opinion at paragraph 9 of Ex. 1025) that “[t]he broadest reasonable
`
`interpretation of the ‘based at least in part’ claim language encompasses any causal
`
`relationship or dependency between the recited factors and the generation of the
`
`actuator signal, particularly when viewed in light of the open-ended ‘comprising’
`
`10225581
`
`
`- 3 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`nature of the claims themselves.” This cross examination testimony is relevant
`
`because it confirms that the fact that the claim recites “comprising” does not bear
`
`on the scope of other claim language reciting what the generation of the actuator
`
`signal is “based at least in part on.”
`
`Observation # 5
`
`In Exhibit 2013, at page 19 lines 2-5, Dr. Baudisch testified that “if part of
`
`the specification practices the claim, I would refer to it as an embodiment.” In
`
`Exhibit 2013, at page 23 lines 20-22 through page 23 line 3, Dr. Baudisch testified:
`
`“Q: So how do you know that dwell to select is an embodiment? A: I guess
`
`because the specification says so. I quote, ‘in the embodiment shown,’ comma.”
`
`This is relevant to Petitioner’s argument at pages 6-7 of its Reply (and Dr.
`
`Baudisch's corresponding opinion at paragraph 10 of Ex. 1025) that “many
`
`disclosed embodiments would improperly be excluded by PO’s proposed
`
`construction.” This cross examination testimony is relevant because it
`
`demonstrates that Dr. Baudisch assumed that all discussions in the specification
`
`that use the word “embodiment” must be included within the scope of claim 1,
`
`without performing an analysis of whether a particular disclosure is or is not an
`
`embodiment of a particular claim.
`
`10225581
`
`
`- 4 -
`
`
`
`
`
`Observation # 6
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`
`In Exhibit 2013, at page 25 lines 12-19, Dr. Baudisch provided the following
`
`testimony: “Q: My question is just quite simply, is it possible that claim 1’s scope
`
`doesn’t encompass all the embodiments disclosed in the specification? A: As I
`
`tried to explain earlier, this has not been subject to my analysis. My analysis was
`
`on claim construction.” This is relevant to Petitioner’s argument at pages 6-7 of its
`
`Reply (and Dr. Baudisch's corresponding opinion at paragraph 10 of Ex. 1025) that
`
`“many disclosed embodiments would improperly be excluded by PO’s proposed
`
`construction.” This cross examination testimony is relevant because it
`
`demonstrates that Dr. Baudisch arrived at his opinion on claim construction
`
`without analyzing whether the embodiments he contends would be excluded by
`
`Patent Owner’s construction are actually within the scope of the claim 1 of the
`
`‘356 patent.
`
`Observation # 7
`
`In Exhibit 2013, at page 37 lines 2-11 and page 39 lines 6-10, Dr. Baudisch
`
`testified that Immersion’s claim construction “may or may not be” the same as a
`
`construction that requires that “every entry in the lookup table contain an
`
`association between the interaction and [] haptic effect data.” This is relevant to
`
`Petitioner’s argument at page 7 of its Reply (and Dr. Baudisch's corresponding
`
`opinion at paragraph 11 of Ex. 1025) that “PO’s proposed construction also would
`
`10225581
`
`
`- 5 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`exclude the embodiment disclosed in Figure 8 and accompanying text,” because
`
`for a single entry “the input . . . is ‘function failure.’” This cross examination
`
`testimony is relevant because it confirms that neither Patent Owner nor Dr.
`
`Baudisch put forth a construction that requires every entry in a lookup table
`
`contain an association between the interaction and haptic effect data.
`
`Observation # 8
`
`In Exhibit 2013, at page 67 lines 7-17, Dr. Baudisch testified that he agreed
`
`that “the PDA/touchscreen embodiment in Rosenberg ‘737 would have fewer
`
`options available than would be included on a personal computer screen.” This is
`
`relevant to Petitioner’s argument at page 15 of its Reply (and Dr. Baudisch's
`
`corresponding opinion at paragraph 18 of Ex. 1025) that a lookup table would not
`
`require a great deal of memory or constant modification because “a POSITA
`
`would understand that a PDA with a touchscreen disclosed in Rosenberg 737 is
`
`only going to implement a handful of menu items with associated haptic effects
`
`because of the size of the touchscreen and the user’s finger.” This cross
`
`examination testimony is relevant because it demonstrates that Petitioner and Dr.
`
`Baudisch interpret the complexity of Rosenberg 737’s PDA system to be low,
`
`contrary to Rosenberg 737’s teaching at Ex. 1007, 21:3-15 that “in some
`
`embodiments [PDA] screen 80 is as functional as any personal computer screen.”
`
`10225581
`
`
`- 6 -
`
`
`
`
`
`Observation # 9
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`
`In Exhibit 2013, at 58:25-59:10 and 161:13-18, Dr. Baudisch testified that
`
`Rosenberg 737 teaches that haptic effects can be based, at least in part, on various
`
`factors including “an object's state,” “moveable portions of the housing of the
`
`computer device,” and “the current velocity of the user’s finger.” This is relevant
`
`to Petitioner’s argument at page 15 of its Reply (and Dr. Baudisch's corresponding
`
`opinion at paragraph 18 of Ex. 1025) that a lookup table would not require a great
`
`deal of memory or constant modification because “a POSITA would understand
`
`that a PDA with a touchscreen disclosed in Rosenberg 737 is only going to
`
`implement a handful of menu items with associated haptic effects because of the
`
`size of the touchscreen and the user’s finger.” This cross examination testimony is
`
`relevant because it demonstrates the complexity of Rosenberg 737’s system.
`
`Observation # 10
`
`In Exhibit 2013, at page 64 lines 13-20, when asked “In either of your
`
`declarations, do you identify any nonlinear equations that would be needed to
`
`calculated to output haptic effect[s] in Rosenberg ‘737?” Dr. Baudisch testified “I
`
`don’t recall identifying any in my declaration.” This is relevant to Petitioner’s
`
`argument on page 15 of its Reply brief (and Dr. Baudisch's corresponding opinion
`
`at paragraph 16 of Ex. 1025) that “using a lookup table can often be faster (i.e.,
`
`more efficient) than calculating a non-linear equation based on a time varying
`
`10225581
`
`
`- 7 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`parameter.” This cross examination testimony is relevant because it demonstrates
`
`that Dr. Baudisch has not alleged that Rosenberg 737’s system would be used with
`
`nonlinear equations as implied by page 15 of Petitioner’s Reply brief.
`
`Observation # 11
`
`In Exhibit 2013, at page 74 line 8 through page 75 line 3, Dr. Baudisch
`
`testified that a number could be squared in an “arbitrarily small” number of clock
`
`cycles. Additionally, in Exhibit 2013 at page 72 lines 2-4, Dr. Baudisch testified
`
`that squaring a number is a nonlinear equation. This is relevant to Petitioner’s
`
`argument on page 15 of its Reply brief (and Dr. Baudisch's corresponding opinion
`
`at paragraph 16 of Ex. 1025) that “using a lookup table can often be faster (i.e.,
`
`more efficient) than calculating a non-linear equation based on a time varying
`
`parameter.” This cross examination testimony is relevant because it demonstrates
`
`that certain nonlinear equations such as those discussed on page 15 of Petitioner’s
`
`Reply brief could be calculated quickly without using a lookup table.
`
`Observation # 12
`
`In Exhibit 2013, at page 66 lines 13-17, Dr. Baudisch testified “Q: Did your
`
`counsel explain to you that ‘design choice’ has a special meaning? A: This has not
`
`come up, no. Please tell me about it.” This is relevant to Petitioner’s argument in
`
`its Reply at Sections IV.A and IV.B (and Dr. Baudisch's corresponding opinion at
`
`Sections IV.B and IV.C of Ex. 1025) that a lookup table “is an obvious design
`
`10225581
`
`
`- 8 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`choice.” This cross examination testimony is relevant because it demonstrates that
`
`Dr. Baudisch did not consider the correct legal standard in forming his opinion that
`
`a lookup table is a “design choice.”
`
`
`Dated: August 31, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
` /s/ Michael R. Fleming
`Michael R. Fleming, Reg. No. 67,933
`
`
`Babak Redjaian, Esq., Reg. 42,096
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`
`Attorneys for Patent Owner
`Immersion Corporation
`
`
`10225581
`
`
`- 9 -
`
`
`
`
`
`Case IPR2016-01381
`Patent No. 8,773,356
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on August 31,
`
`
`
`
`
`2017, a copy of the foregoing IMMERSION CORPORATION’S
`
`CORRECTED MOTION FOR OBSERVATIONS ON CROSS
`
`EXAMINATION was served by electronic mail, as agreed to by the parties, upon
`
`the following:
`
`
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`703-773-4148 (phone)
`703-773-5200 (fax)
`Apple-Immersion-IPRs@dlapiper.com
`
`
`Brian Erickson, Reg. No. 48,895
`DLA Piper LLP (US)
`401 Congress Avenue, Ste. 2500
`Austin, TX 78701
`512-457-7059 (phone)
`brian.erickson@dlapiper.com
`
`
`
` /s/ Susan Langworthy
`By:
` Susan Langworthy
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10275295
`
`
`
`
`
`
`
`
`