UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner
`
`v.
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`
`
`IMMERSION CORPORATION
`Patent Owner
`
`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
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`
`Case IPR2016-01381
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`PETITIONER’S RESPONSE TO PATENT OWNER’S CORRECTED
`MOTION FOR OBSERVATION ON CROSS EXAMINATION
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`WEST\278046993.1
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`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
`
`
`Case IPR2016-01381
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S CORRECTED
`MOTION FOR OBSERVATION ON CROSS EXAMINATION
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`WEST\278046993.1
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`Petitioner Apple Inc. submits the following responses to Patent Owner’s
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`Corrected Motion for Observation (Paper No. 28) regarding the August 14, 2017
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`deposition of Petitioner’s expert, Dr. Patrick Baudisch (Exhibit 2013).
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`1. Observation #1
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 54:3-13), that Rosenberg 737 does not “exclude” networked computing, does not
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`support Patent Owner’s new argument that networked computing is “present” in
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`Rosenberg 737, and is not relevant to the fact that Exhibit 2007 does not use a
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`lookup table because it merely communicates information directly to another user.
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`See Reply at 16-17 and Exhibit 1025 at ¶ 20.
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`2. Observation #2
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 52:13-53:3; 54:15-21), that he is aware of networked computer gaming, does not
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`support Patent Owner’s new argument that networked computer gaming is
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`“present” in Rosenberg 737, and is not relevant to the fact that Exhibit 2007 does
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`not use a lookup table because it merely communicates information directly to
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`another user. See Reply at 16-17 and Exhibit 1025 at ¶ 20.
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`3. Observation #3
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 12:9-23) includes Dr. Baudisch’s testimony that he assumes that a noun can
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`serve as an adjective in “some examples.” See Exhibit 2013 at 12:11-12. This
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`testimony does not support, and actually refutes, Patent Owner’s new assertion that
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`Dr. Baudisch did not consider the “possibility” that “interaction” was an adjective.
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`4. Observation #4
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 16:10-17:6) regarding the open-ended nature of “comprising” confirms the
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`breadth of the “based at least in part on” limitation. See Reply at 4; Exhibit 1025
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`at ¶ 9.
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`5. Observation #5
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 19:2-5; 23:20-23:3), regarding his understanding of the meaning of the label
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`“embodiment” in the specification, is not relevant to the stated issue, i.e., that
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`certain disclosed embodiments are within the scope of the claim under Petitioner’s
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`proposed construction and excluded by Patent Owner’s proposed construction. See
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`Reply at 6-7 and Exhibit 1025 at ¶ 10. As Dr. Baudisch testified, “I certainly did
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`analyze which parts of disclosure would be included or excluded, depending on
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`particular constructions of claim 1.” Ex. 2013 at 25:2-6.
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`6. Observation #6
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 25:12-19), regarding whether claim 1 necessarily encompasses all disclosed
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`embodiments, is not relevant to the stated issue, i.e., that certain disclosed
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`embodiments (e.g., the dwell to select embodiment) are within the scope of the
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`claim under Petitioner’s proposed construction and excluded by Patent Owner’s
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`proposed construction. See Reply at 6-7 and Exhibit 1025 at ¶ 10. As Dr.
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`Baudisch testified, “I certainly did analyze which parts of disclosure would be
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`included or excluded, depending on particular constructions of claim 1.” Ex. 2013
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`at 25:2-6; 75:11-25.
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`7. Observation #7
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 37:2-11; 39:6-10) is not relevant to the stated issue, i.e., that certain disclosed
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`embodiments (e.g., Figure 8 and accompanying text and function failure
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`embodiments) are within the scope of the claim under Petitioner’s proposed
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`construction and excluded by Patent Owner’s proposed construction. See Reply at
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`6-7 and Exhibit 1025 at ¶ 10. As Dr. Baudisch testified, “I certainly did analyze
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`which parts of disclosure would be included or excluded, depending on particular
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`constructions of claim 1.” Ex. 2013 at 25:2-6; 83:17-25.
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`8. Observation #8
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 67:7-17) includes the answer “Yes, that would be my understanding. If you look
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`at the literature in touchscreens broadly, you realize that, typically, the screen is
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`redesigned in a way that targets on the screen are enlarged so as to make
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`acquisition using a touch easier.” This testimony supports the arguments and
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`testimony at Reply at 15 and Exhibit 1025 at ¶ 18. Patent Owner’s new argument
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`that Rosenberg 737 also discloses that in “some” embodiments the PDA screen
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`could have more or different functionality is not relevant to the stated issue.
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`9. Observation #9
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 58:25-59:10; 161:13-18), regarding other embodiments in Rosenberg 737, is not
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`relevant to the stated issue, which is directed to the menu selection embodiment in
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`Rosenberg 737. See Reply at 15 and Exhibit 1025 at ¶ 18. Additionally, as Dr.
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`Baudisch testified, the additional teachings of Rosenberg 737 relate to functionality
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`that would be digitized, sequenced, and quantized such that the rate of change
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`would be “very moderate” for the computer. Exhibit 2013 at 61:25-62:12.
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`10. Observation #10
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 64:13-20), that he could not recall pointing out in his declarations where
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`nonlinear equations were “needed” is not relevant to the stated issue, as the stated
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`issue is obviousness, not inherency. See Reply at 15 and Exhibit 1025 at ¶ 16.
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`11. Observation #11
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`Patent Owner’s selected portions of Dr. Baudisch’s testimony (Exhibit 2013
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`at 72:2-4; 74:8-75:3) are not relevant to the stated issue that “using a lookup table
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`can often be faster (i.e., more efficient) than calculating . . . .” See Reply at 15 Ex.
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`1025 at ¶ 15. As Dr. Baudisch testified immediately between the two portions
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`selected by Patent Owner, the relative efficiencies of these known design choices
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`are implementation dependent and “If we talk about in the very abstract, those
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`computations can certainly be made. In contrast, the ’737 patent, for example, is
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`very different in the fact they could not be done with this computation. That would
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`much be - - would be much more amenable to a lookup table.” Exhibit 2013 at
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`73:5-25. Moreover, the testimony selected by Patent Owner relates to present-day
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`high-end processors, not processors at date of invention which could take much
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`longer. See Exhibit 2013 at 74:8-75:3.
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`12. Observation #12
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`Patent Owner’s selected portion of Dr. Baudisch’s testimony (Exhibit 2013
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`at 66:13-17) improperly truncates Dr. Baudisch’s answers by starting on the last
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`line of an answer. The full citation is Exhibit 2013 at 66:3-17, including the
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`testimony “[w]hether to compute something on the fly or whether to precompute it
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`is always an option for any engineer in software. And it’s always something you
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`consider. And I think in this particular case, the ’737 offers a good number of
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`qualities that would actually suggest that you want to use a lookup table”, such that
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`the full testimony supports the stated issue that a lookup table was an obvious
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`design choice. As Dr. Baudisch repeatedly testified, he believed the lookup tables
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`were an obvious design choice in the context of Rosenberg 737. Exhibit 2013 at
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`65:2-66:13; 78:18-79:4; 87:13-89:4. See Reply at IV.A and IV.B and Sections
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`IV.B and IV.C of Exhibit 1025.
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`Dated: September 5, 2017
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`Respectfully Submitted,
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`
`
`
`
` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Apple-Immersion-IPRs@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Brian Erickson
`Reg. No. 48,895
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`Brian.erickson@dlapiper.com
`Phone: 512-457-7059
`Fax: 512-721-2263
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`Attorneys for Petitioner Apple Inc.
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`WEST\278046993.1
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Response to Patent Owner’s Corrected Motion for Observation on Cross
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`Examination was served on September 5, 2017, via electronic mail, per agreement
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`of the parties, to counsel at the following addresses:
`
`Michael R. Fleming
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`mfleming@irell.com
`ImmersionIPR@irell.com
`
`Crawford Maclain Wells
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
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`mwells@irell.com
`
`Babak Redjaian
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`bredjaian@irell.com
`ImmersionIPR@irell.com
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`
`
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`Dated: September 5, 2017
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`Respectfully Submitted,
`
`
`
` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Apple-Immersion-IPRs@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Brian Erickson
`Reg. No. 48,895
`
`WEST\278046993.1
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`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`Brian.erickson@dlapiper.com
`Phone: 512-457-7059
`Fax: 512-721-2263
`
`Attorneys for Petitioner Apple Inc.
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`WEST\278046993.1
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