UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`APPLE INC.,
`Petitioner,
`
`v.
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`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-01381
`Patent No. 8,773,356
`___________________
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`
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`IMMERSION CORPORATION’S
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`PATENT OWNER PRELIMINARY RESPONSE
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`
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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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`10031733
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-01381
`Patent No. 8,773,356
`___________________
`
`
`
`IMMERSION CORPORATION’S
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`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`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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`10031733
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`TABLE OF CONTENTS
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`Patent No. 8,773,356
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`Page
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`THE ’356 PATENT ...................................................................................... 2
`
`III. CLAIM CONSTRUCTION ......................................................................... 5
`
`A.
`
`B.
`
`C.
`
`Immersion’s Construction is Consistent With the
`Specification and Claim Language .................................................... 6
`
`The File History Requires Immersion’s Construction ....................... 9
`
`Petitioner’s Construction Reads Out “interaction” From the
`Claims ............................................................................................... 10
`
`IV. PERSON HAVING ORDINARY SKILL IN THE ART (POSITA) ......... 11
`
`V.
`
`SUMMARY OF PETITIONER’S CHALLENGES .................................. 12
`
`A. Ground 1: Obviousness of Claims 1-3, 9-13, 19-23, 25 And
`26 Based on the Combination of Rosenberg 737 and
`Rosenberg 281 .................................................................................. 12
`
`B.
`
`Ground 2: Obviousness of Claims 5, 7, 15, and 17 ......................... 13
`
`VI.
`
`VII.
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`INSTITUTION SHOULD BE DENIED ON PETITIONER’S
`GROUNDS 1-2 BECAUSE ROSENBERG 737 IS NOT PRIOR
`ART UNDER 35 U.S.C. § 102(a) or 102(b) .............................................. 13
`
`INSTITUTION SHOULD BE DENIED ON PETITIONER’S
`GROUND 1 BECAUSE ROSENBERG 737 IN VIEW OF
`ROSENBERG 281 DOES NOT RENDER OBVIOUS CLAIMS 1-
`3, 9-13, 15, 17, 19-23, OR 25-26 ................................................................ 16
`
`A.
`
`Background of Asserted References ................................................ 16
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`1.
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`Rosenberg 737 ........................................................................ 16
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`Page
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`B.
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`C.
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`2.
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`Rosenberg 281 ........................................................................ 17
`
`Neither Rosenberg 737 Nor Rosenberg 281 Discloses
`“generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table” Under
`the Appropriate Construction. .......................................................... 18
`
`A Combination Incorporating Rosenberg 281’s Lookup
`Table Would Not “generat[e] an actuator signal based at least
`in part on the interaction” Under Either Proposed
`Construction. .................................................................................... 21
`
`D. A POSITA Would Not Have Had a Reason to Combine
`Rosenberg 737 and Rosenberg 281 to Satisfy the Challenged
`Claims. .............................................................................................. 24
`
`1.
`
`2.
`
`3.
`
`A POSITA Would Not Have Had a Reason to
`Combine Rosenberg 737 and Rosenberg 281 to
`Implement a Touch-Screen System. ...................................... 24
`
`A POSITA Would Not Have Had a Reason to
`Combine Rosenberg 737’s Touchpad and Touchscreen
`Embodiments in the Manner Petitioner Suggests. ................. 27
`
`A POSITA Would Not Have Had a Motivation to Use
`Lookup Tables to Implement the Teachings of
`Rosenberg 737. ....................................................................... 32
`
`VIII. PETITIONER’S OBVIOUSNESS GROUND FOR CLAIMS 5, 7,
`15, AND 17 FAILS..................................................................................... 33
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`IX. CONCLUSION ........................................................................................... 34
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`TABLE OF AUTHORITIES
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`Case IPR2016-01381
`Patent No. 8,773,356
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`
` Page(s)
`
`Cases
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 5
`
`Bruckelmeyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .......................................................................... 14
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .................................................................... 13, 14
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 195 L. Ed. 2d 423 (2016) ........................................................... 5
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ............................................................................ 14
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 14
`
`Rapoport v. Dement,
`254 F.3d 1053 (Fed. Cir. 2001) .......................................................................... 24
`
`In re Warsaw Orthopedic, Inc.,
`No. 2015-1050, 2016 WL 4191193 (Fed. Cir. Aug. 9, 2016) ............................ 24
`
`Statutes
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`35 U.S.C. § 102(a) ....................................................................................... 12, 13, 15
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`35 U.S.C. § 102(b) ................................................................................. 12, 13, 14, 15
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`35 U.S.C. § 103(c)(1) ..................................................................................... 1, 12, 15
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`35 U.S.C. § 314(a) ................................................................................................... 34
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`35 U.S.C. §316(e) .................................................................................................... 12
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`Rules
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`37 C.F.R. § 42.100(b) ................................................................................................ 5
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`Other Authorities
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`Microsoft Computer Dictionary 5th ed. (2002) ......................................................... 6
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`EXHIBIT LIST
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`Declaration of Nathan J. Delson, Ph.D.
`
`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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`Immersion
`Ex. 2001
`Immersion
`Ex. 2002
`Immersion
`Ex. 2003
`Immersion
`Ex. 2004
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner Apple, Inc. did not submit a statement of material facts in this
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`Petition. Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a), and no
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`facts are admitted.
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`I.
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`INTRODUCTION
`Petitioner Apple, Inc. has requested inter partes review of Immersion
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`Corporation’s U.S. Patent No. 8,773,356 (“the ’356 patent”) based on two grounds
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`of alleged obviousness. Both grounds allege obviousness based on a combination
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`of U.S. Patent Application Serial No. 09/487,737 to Rosenberg (“Rosenberg 737”)
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`and U.S. Patent Application Serial No. 09/103,281 to Rosenberg (“Rosenberg
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`281”). Both the Rosenberg 737 and Rosenberg 281 applications were assigned to
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`Immersion. Immersion submits that the Patent Trial and Appeal Board (“Board”)
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`should deny the Petition and not institute review of the ’356 patent for the reasons
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`set forth herein.1
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`First, the Petition fails to establish that Rosenberg 737 qualifies as prior art
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`based on obviousness under 35 U.S.C. § 103(c)(1) given that Rosenberg 737 and
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`the ’356 patent were commonly assigned to Immersion. Second, Petitioner’s
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`arguments are based on a claim construction for the limitation “generating an
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`actuator signal based at least in part on the interaction and haptic effect data in a
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`1 The Board has already denied a Petition for inter partes review of the ’356
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`patent, in which the petitioner alleged that the ’356 patent was anticipated by
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`Rosenberg 737 allegedly incorporating by reference Rosenberg 281. See IPR2016-
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`00807 Decision.
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`that is inconsistent with the intrinsic record, including the words of the claims
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`themselves. Third, the Petition relies on Rosenberg 281 for the “lookup table”
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`element but fails to establish that the reference to a lookup table in Rosenberg 281
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`can be combined with the system in Rosenberg 737 to render obvious the claims of
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`the ’356 patent. Because Petitioner has not shown that it is likely to establish that
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`claims of the ’356 patent are unpatentable, the Petition should be denied and trial
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`should not be instituted.
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`II. THE ’356 PATENT
`The ’356 patent is entitled “Method and Apparatus for Providing Tactile
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`Sensations.” The ’356 patent claims priority to a non-provisional application (via
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`several continuation applications) dated November 1, 2002, which in turn claims
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`priority to two provisional applications, the earliest of which was filed on
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`November 1, 2001.
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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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`at a desired location where a graphical object is being displayed, and the device
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`determines an interaction between the object contacting the touchscreen and the
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`graphical object. The device generates an actuator signal for providing tactile
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`sensations to the user based at least in part on the user’s interaction with the
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`graphical object on the touchscreen and haptic effect data in a lookup table stored
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`in a memory of the device. The tactile sensation, for example, provides a cue to
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`the user interacting with graphical objects displayed on the 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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`
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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. 2001) ¶ 24. For example, the system can obtain the haptic
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`effect data for Tactile Sensation 9 that is associated with the user’s interaction with
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`a graphical object on the touchscreen using the lookup table. Neither Rosenberg
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`737 nor Rosenberg 281 disclose the lookup table limitation as claimed in the ’356
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`patent.
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`III. CLAIM CONSTRUCTION
`During inter partes review, a patent claim is given “its broadest reasonable
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`construction in light of the specification of the patent in which it appears.” Cuozzo
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`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2133, 195 L. Ed. 2d 423 (2016)
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`(quoting 37 C.F.R. § 42.100(b)). The standard for claim construction at the Patent
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`Office is different from that used during a District Court litigation. See In re Am.
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`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004); 37 C.F.R. §
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`42.100(b).
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`Immersion contends that under the broadest reasonable interpretation
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`standard, the claim language “generating an actuator signal based on at least in part
`
`on the interaction [between the object contacting the touch-sensitive input device
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`and the graphical object] and haptic effect data in a lookup table” requires that the
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`referenced “lookup table” contain an “association between the interaction and
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`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. This interpretation is instructed by
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`the claim language and the intrinsic record.
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`Petitioner suggests that the lookup table in the context of the claim language
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`need only include “haptic effect data,” and that the claim can be practiced if the
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`lookup table contains no information whatsoever about “the interaction.” See Pet.
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`at 18. As explained in further detail below, this approach is inconsistent with the
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`practical import of the claim language, the specification, and the file history of the
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`’356 patent.
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`A.
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`Immersion’s Construction is Consistent With the Specification
`and Claim Language
`
`When considered in the context of the specification and claims, the broadest
`
`reasonable construction of “generating an actuator signal based on at least in part
`
`on the interaction and haptic effect data in a lookup table” requires the claimed
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`“lookup table” to “associate the interaction with the haptic effect data.” The
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`ordinary meaning of a “table” in the computer programming context refers to a
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`“data structure” containing related values (associations). Delson Decl. (Ex. 2001)
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`¶ 31 and Ex. 2004, Microsoft Computer Dictionary 5th ed. (2002), at 510 (“table n.
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`1. In programming, a data structure usually consisting of a list of entries, each
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`entry being identified by a unique key and containing a set of related values.”)
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`(emphasis added).
`
`The ’356 patent describes the lookup table as a data structure located in
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`memory. Ex. 1001 at 14:16-20 (“[T]he controller then accesses a memory device
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`54 in which is stored at least one database containing information necessary to
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`produce the desired function in the electronic device and the predetermined tactile
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`sensation in an input device, and accesses this information 55.”) (emphasis added).
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`The ’356 patent also explains that the lookup table contains associations. Id. at
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`14:23-25 (“An exemplars [sic] group of associations is represented in tabular form
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`in FIG. 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). Figure 9, which is an embodiment of the lookup
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`table, reflects this association between Pressure 1 and Sensation13, annotated
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`below.
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`In this example, the “PRESSURE DATA” column describes how the user object
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`(e.g., a user’s finger) interacts with a particular graphical object, and the associated
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`haptic effect data is contained in the “TACTILE SENSATION” column. Delson
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`Decl. (Ex. 2001) ¶ 33.
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`The claims require the lookup table to associate the interaction with haptic
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`effect data. Claim 1 of the ’356 patent recites:
`
`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
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`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.
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`Claim 1 requires the actuator signal to be generated based at least in part on both
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`the interaction and haptic effect data in a lookup table. As discussed above, the
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`specification teaches that the actuator signal is generated based on the haptic effect
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`data in the lookup table. ’356 patent at 14:40-50 (“The controller uses the
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`information for distinct tactile Sensation 13 to produce Sensation 13 in an input
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`device 56, by for example, causing an actuator to cause the input device to vibrate
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`at a frequency associated with Sensation 13.”) Because the actuator signal is
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`controlled by which haptic effect data is obtained from the lookup table, the lookup
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`table must associate an “interaction” with haptic effect data if the resulting actuator
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`signal is to be generated “based at least in part on the interaction and haptic effect
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`data in a lookup table.” Delson Decl. (Ex. 2001) ¶ 34.
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`The File History Requires Immersion’s Construction
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`B.
`This claim scope was confirmed in the prosecution history of the ’356
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`patent. During prosecution, the applicant added to the last limitation of claim 1
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`“generating an actuator signal based at least in part on the interaction” the words
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`“and haptic effect data in a lookup table” to overcome a rejection over the
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`Rosenberg prior art. Ex. 1004, Page 43 (February 10, 2014 Applicant Response at
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`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.
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`Id., Page 50 (February 10, 2014 Applicant Response, at 9) (emphasis added). In
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`other words, the applicant distinguished the prior art because it did not disclose
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`determining which haptic effect to output, based on a given interaction between the
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`user and a graphical object, using a lookup table.
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`C.
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`Petitioner’s Construction Reads Out “interaction” From the
`Claims
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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. Petitioner and its expert do not recognize that information about “the
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`interaction” is necessary to identify the appropriate haptic effect data to output if
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`the resulting actuator signal is to be based at least in part on the interaction. Pet.
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`18; Delson Decl. (Ex. 2001) ¶ 37 (explaining that the lookup table must use data
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`related to the interaction as input to obtain the resulting haptic effect data). By
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`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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`from the claims in a manner that would cause the last limitation of claim 1 to read:
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`“generating an actuator signal based at least in part on the interaction and haptic
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`effect data in a lookup table.”
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`For the reasons stated above, when considered in context, the broadest
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`reasonable construction of “generating an actuator signal based on at least in part
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`on the interaction and haptic effect data in a lookup table” is that the claimed
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`“lookup table” must “associate “the interaction with the haptic effect data.”
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`IV. PERSON HAVING ORDINARY SKILL IN THE ART (POSITA)
`A POSITA at the time of the invention of the ’356 patent would have at least
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`a Bachelor’s of Science degree in an engineering discipline such as Mechanical
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`Engineering or Computer Science, or at least two years’ experience working with,
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`for example, human machine interface systems, graphical user interfaces, haptic
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`feedback systems, robotics, biomechanics, or mobile devices, or equivalent
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`embedded systems. Delson Decl. (Ex. 2001) ¶ 27. The conclusions regarding
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`claim construction and validity contained herein would be the same regardless of
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`whether Immersion’s or Petitioner’s proposed level of skill is adopted.
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`V.
`
`SUMMARY OF PETITIONER’S CHALLENGES
`A. Ground 1: Obviousness of Claims 1-3, 9-13, 19-23, 25 And 26
`Based on the Combination of Rosenberg 737 and Rosenberg 281
`In an inter partes review, “the petitioner [has] the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
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`§316(e). The Petition does not carry this burden.
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`Petitioner’s first ground of invalidity is grounded on obviousness of claims
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`1-3, 9-13, 19-23, 25 and 26 based on Rosenberg 737 in view of Rosenberg 281.
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`As discussed below, Rosenberg 737 is not available as prior art under obviousness
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`(35 U.S.C. § 103(c)(1)) because Rosenberg 737 does not qualify as prior art under
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`35 U.S.C. § 102(a) or (b) and Rosenberg 737 and the ’356 patent were commonly
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`owned by Immersion at the time of the invention. Further, even if Rosenberg 737
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`were available as an obviousness reference (and it is not), as discussed below,
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`neither Rosenberg 737 nor Rosenberg 281 discloses a lookup table as properly
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`construed. Moreover, the Petition does not establish that the lookup table referred
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`to in Rosenberg 281 could be combined with the system of Rosenberg 737 to come
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`up with the claimed invention. Petitioner’s obviousness arguments also are based
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`on conflating touchscreen systems with non-touchscreen systems.
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`Therefore, Petitioner’s ground 1 invalidity argument fails.
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`B. Ground 2: Obviousness of Claims 5, 7, 15, and 17
`Petitioner’s second invalidity ground relates only to dependent claims 5, 7,
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`15, and 17. Pet. at 4. As discussed below, Petitioner’s second invalidity ground
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`fails for at least the same reasons as discussed with respect to Petitioner’s first
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`invalidity ground.
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`VI.
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`INSTITUTION SHOULD BE DENIED ON PETITIONER’S
`GROUNDS 1-2 BECAUSE ROSENBERG 737 IS NOT PRIOR ART
`UNDER 35 U.S.C. § 102(a) or 102(b)
`
`Petitioner asserts that Rosenberg 737 was a printed publication as of July 26,
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`2001 on the basis that it was part of the file history of PCT application
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`PCT/US01/01486 (published as WO01/54109). Pet. 20-22. Petitioner may not
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`rely on Rosenberg 737 for two reasons.
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`First, Petitioner has not established Rosenberg 737 as a printed publication
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`as of July 26, 2001. To be a printed publication, a reference “must have been
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`sufficiently accessible to the public interested in the art.” In re Cronyn, 890 F.2d
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`1158, 1159 (Fed. Cir. 1989). “Because there are many ways in which a reference
`
`may be disseminated to the interested public, ‘public accessibility’ has been called
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`the touchstone in determining whether a reference constitutes a ‘printed
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`publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898-99 (Fed.
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`Case IPR2016-01381
`Patent No. 8,773,356
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`Cir. 1986). A reference is publicly accessible if it is “disseminated or otherwise
`
`made available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.” Kyocera
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`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).
`
`“The decision whether a particular reference is a printed publication ‘must be
`
`approached on a case-by-case basis.” In re Cronyn, 890 F.2d at 1161 (quoting In
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`re Hall, 781 F.2d at 899).
`
`The test for whether the contents of a foreign patent publication’s file history
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`are “publicly accessible” is whether the foreign publication serves as a “roadmap”
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`to the application file. See Bruckelmeyer v. Ground Heaters, Inc., 445 F.3d 1374,
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`1379 (Fed. Cir. 2006). For example, in Bruckelmeyer (upon which Petitioner
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`relies) the Federal Circuit identified particular language that “would have led one
`
`skilled in the art to the . . . application.” Id. at 1378; see id. at 1379 (observing that
`
`the foreign publication served as “a roadmap to the application file” because it
`
`taught that one “possible use of the claimed invention” was “the same use
`
`contemplated by the methods claimed in the patents in suit”).
`
`Petitioner cannot establish that Rosenberg 737 was publicly accessible
`
`because it cannot point to any language in WIPO publication WO01/54109 that
`
`would serve as a “roadmap” to Rosenberg 737. Pet. at 20-22. Indeed, Petitioner
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`does not point to any language of the WIPO publication that even allegedly could
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`Case IPR2016-01381
`Patent No. 8,773,356
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`serve as a roadmap to the Rosenberg 737 application. Instead, Petitioner merely
`
`states that the WIPO publication would have been “publicly available and
`
`indexed,” and alleges without any evidence that Rosenberg 737 is “clearly related”
`
`to the subject matter of the WIPO publication. Pet. 22. Because Petitioner has
`
`pointed to no aspect of WO01/54109 that serves as a roadmap to Rosenberg 737, it
`
`cannot establish that Rosenberg 737 is prior art to the ’356 patent under 35 U.S.C.
`
`§ 102(a) or 102(b), as of July 26, 2001, the publication date of WO01/54109.
`
`Second, Rosenberg 737 is not available as an obviousness reference because
`
`Immersion commonly owned Rosenberg 737 and the application that matured into
`
`the ’356 patent. 35 U.S.C. 103(c)(1) (Pre-AIA) recites: “(c) (1) Subject matter
`
`developed by another person, which qualifies as prior art only under one or more
`
`of subsections (e), (f), and (g) of section 102, shall not preclude patentability under
`
`this section where the subject matter and the claimed invention were, at the time
`
`the claimed invention was made, owned by the same person or subject to an
`
`obligation of assignment to the same person.” In this case, both Rosenberg 737
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`and the invention of the ’356 patent were assigned to Patent Owner, Immersion.
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`Exhibits 2002, 2003.
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`VII. INSTITUTION SHOULD BE DENIED ON PETITIONER’S GROUND
`1 BECAUSE ROSENBERG 737 IN VIEW OF ROSENBERG 281
`DOES NOT RENDER OBVIOUS CLAIMS 1-3, 9-13, 15, 17, 19-23, OR
`25-26
`A. Background of Asserted References
`1.
`Rosenberg 737
`Rosenberg 737 teaches two distinct haptic systems (embodiments). First,
`
`Rosenberg 737 teaches a laptop embodiment having a touchpad 16 (mislabeled as
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`18 in Fig. 1). See Ex. 1007. As described by Rosenberg 737, this embodiment
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`includes a touchpad, which includes “a planar, rectangular smooth surface that can
`
`be positioned below the keyboard 14 on the housing of the computer 10.” Ex.
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`1007 at 6:25-26. In other words, Rosenberg 737’s touchpad embodiment is
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`functionally similar to modern touchpads that are used to control the cursor on a
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`laptop. Delson Decl. (Ex. 2001) ¶ 40.
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`The second embodiment of Rosenberg 737 is a touchscreen embodiment, as
`
`shown in Figures 8a and 8b of Rosenberg 737. Ex. 1007, Figs. 8a, 8b; 5:17-18,
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`21:3-20. The touchscreen embodiment, in contrast to the touchpad embodiment,
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`“allow[s] the user to input information to the computer device by physically
`
`contacting the screen 80.” Ex. 1007 at 21:15-17. In contrast to the touchpad
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`embodiment, where the “the speed of the fingertip on the touchpad correlates to the
`
`distance that the cursor is moved in the graphical environment,” (Id. at 7:20-22),
`
`the touchscreen embodiment allows the user to “select graphically-displayed
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`buttons or other graphical objects by pressing a finger or a stylus to the screen 82
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`Patent No. 8,773,356
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`at the exact location where the graphical object is displayed.” Id., 21:21-22.
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`Rosenberg 281
`
`2.
`The Petition cites to Rosenberg 281 in an attempt to make up for Rosenberg
`
`737’s undisputed lack of disclosure of “generating an actuator signal based at least
`
`in part on the interaction and haptic effect data in a lookup table.” See Pet. at 38-
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`49. The embodiment of Rosenberg 281 upon which Petitioner relies for that
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`limitation, however, does not take into account any information about an
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`“interaction” between a user object contacting the claimed touch-sensitive input
`
`device and a graphical object, as required by the claims of the ’356 patent. Delson
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`Decl. (Ex. 2001) ¶ 44; see Section III. Instead, the table in Rosenberg 281 that
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`Petitioner contends is the “lookup table” claimed in the ’356 patent derives its
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`haptic effect data solely “based on the current position of the user object” in
`
`degrees of freedom of a mouse or joystick. Ex. 1013 at 11:8-12; IPR2016-00807
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`Decision at 17. Additionally, although each challenged claim of the ’356 patent
`
`requires a touch-screen embodiment, Rosenberg 281 does not contain any
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`disclosure of touch-screens. Delson Decl. (Ex. 2001) ¶ 44.
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`B. Neither Rosenberg 737 Nor Rosenberg 281 Discloses “generating
`an actuator signal based at least in part on the interaction and
`haptic effect data in a lookup table” Under the Appropriate
`Construction.
`
`Petitioner concedes that Rosenberg 737 contains no disclosure relating to a
`
`lookup table. See Pet. 38-41. Rather, Petitioner relies on Rosenberg 737 solely for
`
`a discussion of “generating an actuator signal based at least in part on the
`
`interaction.” See id. Thus, Rosenberg 737 does not disclose “generating an
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`actuator signal based at least in part on the interaction and haptic effect data in a
`
`lookup table.”
`
`Petitioner relies entirely on Rosenberg 281 for the “lookup table” limitation.
`
`However, the lookup table referred to in Rosenberg 281 does not contain any
`
`information about an interaction between a user object contacting a touch-sensitive
`
`input device (e.g., a user’s finger) and a graphical object, as required by the claims
`
`of the ’356 patent. Instead, Rosenberg 281’s lookup table provides haptic effects
`
`only “based on the current position of the user object.” Ex. 1013 at 11:8-12. This
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`is referring to the position of the user object (e.g., joystick) in degrees of freedom.
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`Delson Decl. (Ex. 2001) ¶ 47. As the Board has previously held regarding the
`
`teaching of Rosenberg 281, “the ‘position of the user object’ mentioned in this
`
`sentence refers to the position of a mouse or j
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