PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN MOBILE AND PORTABLE
`ELECTRONIC DEVICES IN CORPORA TING
`HAPTICS (INCLUDING SMARTPHONES AND
`LAPTOPS) AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-1004
`Inv. No. 337-TA-990
`(Consolidated)
`
`ORDER 27: CONSTRUING THE TERMS OF THE ASSERTED CLAIMS OF
`THE PATENT AT ISSUE
`
`(February 2, 2017)
`
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`PUBLIC VERSION
`
`TABLE OF CONTENTS
`
`I.
`
`IL
`
`INTRODUCTION ......................................................................................................... 1
`
`IN GENERAL ................................................................................................................ 2
`
`III.
`
`RELEVANT LAW ........................................................................................................ 2
`
`IV.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................................... 5
`
`V.
`
`VI.
`
`VII.
`
`THE '051 PATENT ....................................................................................................... 7
`A.
`Overview ............................................................................................................ 7
`B.
`Claim Construction ............................................................................................ 9
`1.
`Construction of Agreed-Upon Claim Term ........................................... 9
`2.
`Construction of the Disputed Claim Terms ........................................... 9
`a)
`"stored haptic effect" ................................................................. 9
`b)
`"the entire haptic output in response to the [haptic effect]
`request consists of the [first/requested predefined] stored haptic
`effect" ....................................................................................... 12
`"digitized streamed envelope construct" ................................. 17
`
`c)
`
`THE '356 PATENT ..................................................................................................... 19
`Overview .......................................................................................................... 19
`A.
`B.
`Claim Construction .......................................................................................... 22
`1.
`Construction of the Disputed Claim Terms ......................................... 22
`a)
`"haptic effect data" .................................................................. 22
`b)
`"lookup table" .......................................................................... 26
`
`THE '488 PATENT .......................................................... :: ......................................... 31
`A.
`Overview ....................................................... .' .................................................. 31
`B.
`Claim Construction .................................. , ....................................................... 33
`Construction of the Agreed-Upon Claim Term .................................. .3 3
`1.
`a)
`"output a second tactile sensation associated with the second
`position" ................................................................................... 3 3
`Construction of the Disputed Claim Terms ......................................... 34
`)
`"4
`"
`"
`a
`pressure ................................................................................. .:'!
`b)
`"first/second baptic effect" and "first/second tactile
`sensation" ................................................................................. 3 6
`"threshold" ............................................................................... 39
`
`c)
`
`2.
`
`VIII. THE '260 PATENT ..................................................................................................... 42
`Overview .................................................................... , ..................................... 42
`A.
`B.
`Clailn Construction .......................................................................................... 43
`Construction of the Disputed Claim Terms ........................................ .43
`1.
`a)
`"pressure" ................................................................................. 4 3
`b)
`"first/second/third/fourth tactile sensation" ............................. 43
`
`1
`
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`

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`IX.
`
`X.
`
`THE '507 PATENT ..................................................................................................... 44
`A.
`Overview .......................................................................................................... 44
`B.
`Claim Construction .......................................................................................... 46
`1.
`Construction ofthe Disputed Claim Terms ........................................ .46
`a)
`"pressure" ................................................................................. 46
`b)
`"pseudo pressure" .................................................................... 48
`c)
`"determining a press if ... the change in pressure is greater
`than a change in pressure threshold" ....................................... 53
`
`THE '571 PATENT ..................................................................................................... 57
`A.
`Overview .......................................................................................................... 57
`B.
`Claim Construction .......................................................................................... 59
`1.
`Construction of the Disputed Claim Term ........................................... 59
`a)
`"dynamic interaction parameter'' ............................................. 59
`
`XI. : THE '710 PATENT ..................................................................................................... 66
`A.
`Overview .................................................................................. , ....................... 66
`B.
`Claim Construction .......................................................................................... 67
`Construction of the Undisputed Claim Term ....................................... 67
`1.
`a)
`"first/second haptic effect" ...................................................... 67
`Construction of the Disputed Claim Terms ......................................... 67
`a)
`"determine a command associated with the user input" .......... 67
`b)-
`"otherwise" .............................................................................. 71
`
`2.
`
`11
`
`IPR2016-01777 - Apple Inc.
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`PUBLIC VERSION
`
`I.
`
`INTRODUCTION
`
`Complainant Immersion Corporation ("Immersion") filed a complaint on February 11,
`
`2016. The complaint, as supplemented, alleges violations of section 337 based on the importation
`
`and sale of certain mobile electronic devices incorporating haptics and components thereof that
`
`purportedly infringe U.S. Patent Nos. 8,773,356 ("the '356 patent"); 8,619,051 ("the '051
`
`patent"); and 8,659,571 ("the '571 patent"). 81 Fed. Reg. 14,889-890 (Mar. 18, 2016). The
`
`investigation was instituted on March 18, 2016. Id. The Notice of Institution named Apple Inc.
`
`("Apple"), AT&T Mobility LLC ("AT&T"), and AT&T Inc. 1 as respondents. Id at 14,890.
`
`Inunersion filed another complaint on May 5, 2016. The complaint, as supplemented,"
`
`alleges violations of section 337 based on the importation and sale of certain mobile and portable
`
`electronic devices incorporating haptics and components thereof that purportedly infringe U.S.
`
`Patent Nos. 8,749,507 ("the '507 patent"); 7,808,488 ("the '488 patent"); 7,336,260 ("the '260
`
`patent"); and 8,581,710 ("the '710 patent"). 81 Fed. Reg. 37,210-211 (June 9, 2016). The
`
`Commission instituted the investigation on June 9, 2016. Id. Apple and AT&T (collectively,
`
`"Respondents") were named as respondents. The Notice. of Institution authorized the Chief
`
`Administrative Law Judge to "consolidate Inv. No. 337-TA-990 and this investigation if he
`
`deems it appropriate." Id at 37,211. The investigations were consolidated on June 9, 2016. (See
`
`Order No. 3.)
`
`Pursuant to Ground Rule SA, a Markman hearing was held October 18, 2016. Prior to the
`
`hearing, Immersion, Respondents, and the Commission Investigative Staff (··s1:.1ff') met and
`
`conferred in an effort to reduce the number of di,sputed claim terms to a min1mum. The parties
`
`also filed initial and reply claim construction briefs, wherein each party offered its construction
`
`1 AT&T Inc. has been terminated from this Investigation. (See Notice ofComm'n Determination J'<ot to Review an
`Initia1 Determination Terminating the Investigation as to one Respondent on the Basis of Withdrawal of the Cornpl.
`(May 4, 2016).)
`
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`for the claim terms in dispute, along with support for its proposed interpretation. After the
`
`hearing and pursuant to Order No.9, the parties submitted an updated Joint Claim-construction
`
`Chart.2
`
`II.
`
`IN GENERAL
`
`The claim terms construed in this Order are done so for the purposes of this section 337
`
`Investigation. Those terms not in dispute need not be construed, See Vanderlande Indus.
`
`Nederland BV v. Int'! Trade Comm'n, 366 F.3d 1311, 1323 (Fed. Cir. 2004) (noting that the
`
`administrative law judge need only construe disputed claim terms).
`
`III. RELEVANT LAW
`
`"An infringement analysis entails two steps. The first step is determining the meaning
`
`and scope of the patent claims asserted to be infringed. The second step is comparing the
`
`properly construed claims to the device accused of infringing.'' ~Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane) (internal citations omitted), aff'd,
`
`517 U.S. 370 (1996). Claim construction is a "matter of law exclusively for the court." Id. at.
`
`970-71. "The construction of claims is simply a way of ~laborating the normally terse claim
`
`language in order to understand and explain, but not to change, the scope of the claims."
`
`Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000).
`
`2 For convenience, the briefs and chart submitted by the parties are referred to hereafter as:
`
`CMIB
`CMRB
`RMIB
`RMRB
`SMIB
`SMRB
`JC
`
`Immersion's Initial Markman Brief
`Immersion's Reply Markman Brief
`Respondents' Initial Markman Brief
`Respondents' Reply Markman Brief
`Staffs Initial Markman Brief
`Staff's Reply Markman Brief
`Updated Joint Proposed Claim Construction Chart
`
`-2-
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`Claim construction focuses on the intrinsic evidence, which consists of the claims
`
`themselves, the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d
`
`1303, 1314 (Fed. Cir. 2005) (en bane); see also JJ1arkman, 52 F.3d at 979. As fue Federal Circuit
`
`in Phillips explained, courts must analyze each of these components to detennine the "ordinary
`
`and customary meaning of a claim term" as understood by a person of ordinary skill in the art at
`
`the time of the invention. 415 F.3d at 1313. "Such intrinsic evidence is the most significant
`
`source of the legally operative meaning of disputed claim language." Bell At!. Network Servs.,
`
`Inc. v. Covad Commc 'ns G1p., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
`
`"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention
`
`to which the patentee is entitled the right to exclude."' Phillips, 415 F.3d at 1312 (quoting
`
`lnnova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`
`2004)). "Quite apart from the written description and the prosecution history, the claims
`
`themselves provide substantial guidance as to tbe meaning of particular claims terms." Id. at
`
`1314; see also Interactive Gift Exp1·ess, Inc. v. Compuserve Inc;., 256 F.3d 1323, 1331 (Fed. Cir.
`
`2001) ("In construing claims, the analytical focus must begin and remain centered on the
`
`language of the claims themselves, for it is that language that the patentee chose to use to
`
`'particularly point[ J out and distinctly claim[ J the subject matter which the patentee regards as
`
`his invention."'). The context in which a term is used in an asserted claim can be "highly
`
`instructive." Phillips, 415 F.3d at 1314. Additionally, other claims iri the same patent, asserted
`
`or unasserted, may also provide guidance as to fue meaning of a claim term. Id.
`
`The specification "is always highly relevant to the claim construction analysis. Usually, it
`
`is dispositive; it is the single best guide to the meaning of a disputed term." Id. at J 315 (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[T]l1e specification
`
`- 3 -
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`may reveal a special definition given to a claim term by the patentee that differs from the
`
`meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Id. at
`
`1316. "In other cases, the specification may reveal an intentional disclaimer, or disavowal, of
`
`claim scope by the inventor." Id. As a general rule, however, the particular examples or
`
`embodiments discussed in the specification are not to be re,~d into the claims as limitations. Id. at
`
`1323. In the end, "[t]he construction that stays true to the claim language and most naturally
`
`aligns with the patent's description of the invention will be ... the correct construction." Id. at
`
`1316 (quoting Renishaw PLC v. Mmposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
`
`1998)).
`
`In addition to the claims and the specification, the prosecution history should be
`
`examined, if in evidence. Id. at 1317; see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`
`898, 913 (Fed. Cir. 2004). The prosecution history can "often inform the meaning of the claim
`
`language by demonstrating how the inventor understood the invention and whether the inventor
`
`limited the invention in the course of prosecution, maldng the claim scope narrower than jt
`
`would othenvise be." Phillips, 415 F.3d at 1317; see also Chiriiie v. PPG Indus. Inc., 402 F.3d
`
`1371, 1384 (Fed. Cir. 2005) ("The purpose of consulting the prosecution history in construing a
`
`claim is to 'exclude any interpretation that was disclaimed during prosecution."').
`
`Vfhen the intrinsic evidence does not establish the meaning of a claim, then extrinsic
`
`evidence (i.e., all evidence external to the patent and the prosecution history, including
`
`dictionaries, inventor testimony, expert testimony, and learned tre~tises) may be considered.
`
`Phillips, 415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent
`
`itself and its prosecution history in determining how to define claim terms. Id. at 1317. "The
`
`court may receive extrinsic evidence to educate itself about the invention and the relevant
`
`-4-
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`technology, but the court may not use extrinsic evidence to arrive at a claim construction that is
`
`clearly at odds with the construction mandated by the intrinsic evidence." Elkay Mfg. Co. v. Ebco
`
`Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999).
`
`If, after a review of the intrinsic and extrinsic evidence, a claim term remains ambiguous,
`
`the claim should be construed so as to maintain its validity. Phillips, 415 F.3d at 1327. Claims, ·
`
`however, cannot be judicially rewritten in order to fulfill the axiom of preserving their validity.
`
`See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). Thus, "if the only claim
`
`construction that is consistent with the claim's language and the written description renders the
`
`claim invalid, then the axiom does not apply and the claim is simply invalid." Id
`
`IV.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`Immersion submits that "[a] person of ordinary skill in the art for each of the asserted
`
`patents would have at least: (1) a Bachelor's of Science degree in an engineering discipline such
`
`as Mechanical Engineering or Computer Science; or (2) at least two years' experience working
`
`with human machine interface systems,· graphical user interfaces, haptic feedback systems,
`
`robotics, biomechanics, or mobile devices or equivalent embedded systems." (CMIB at 8 (citing
`
`Oliver Deel. Gjj 17).)
`
`For all of the asserted patents, Respondents propose that a person of ordinary skill in the
`
`art would have a bachelor's degree in computer science, electrical engineering or a comparable
`field of study. (RX-4 at ,r 30; RX-7 at ,r, 15, 26, 32; RX-13 at ,r 14.) In addition. Respondents
`
`assert that a person of ordinary skill in the art for the '356 and '571 patents would also have
`
`approximately two to three years of professional experience with software engineering, haptics
`
`programming, human-computer interaction, or other relevant industry experience.'' (RX-4 at ,
`
`30; RX-13 at, 14.) For the '051 and the '710 patents, Respondents believe a person of ordinary
`
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`skill in the art would have "approximately two to three years of professional experience with
`
`software engineering, hap tics pro gramthing, or other relevant industry experience." (RX-7 at ,r
`
`15; SX-2 at 3.) Their proposal for the '488, '260, and '507 patents merely substitutes "touch
`
`sensitive devices" for "haptics programming." (RX-7 at ,r,r 26, 3 2.)
`
`In Staff's view, "[g]iven the straightforward nature of the haptics technology involved
`
`during the relevant time period, it is unlikely that a person with a bachelors' degree in
`
`mechanical or electrical engineering or in computer science would have gained a significantly
`
`different understanding of the state of the art after only two years of work experience." (SMIB at
`
`9.) Staff therefore submits that the level of skill in the art is "a bachelor's degree in mechanical
`
`engineering, electrical engineering, or computer science, or at least two years' of work
`
`experience in a relevant technical field.'' (Id.)
`
`While all of the parties generally agree as to the type of education one of ordinary skill in
`
`the art would have, they disagree on the relevant experience required. (CMIB at 8; RX-4 at ,r 30;
`
`RX-7 at ,r,r 15, 26, 32; RX-13 at ,r 14; SMIB at 9.) Immersion and Staff contend that two years of
`
`relevant experience could substitute for f01mal college education, whereas Respondents believe
`
`that two years of relevant experience are needed in addition to a formal college education. (Id.)
`
`None of the parties, however, believe this minor difference · affects the construction of the
`
`disputed claim terms. (CMIB at 8 n.3; RMRB at 1; SMIB at 9.)
`
`Accordingly, the undersigned finds that one of ordinary skill in the art would have at least
`
`a bachelor's degree in mechanical engineering, electrical engineering, computer science, or a
`
`related field, and at least two years of experience in a relevant technical field.
`
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`V.
`
`THE '051 PATENT
`
`A.
`
`Overview
`
`The '051 patent, entitled "Haptic Feedback System With Stored Effects," issued on Dec.
`
`31, 2013. The '051 patent is assigned on its face to Immersion Corporation. It generally
`
`"provides advances in haptic feedback in certain mobile electronic devices (such as a cellular
`
`telephone) having a touchscreen." (2/11/16 Compl. at ,r 4.8.)
`
`The asserted claims read as follows (with the first instance of the agreed-upon tenn
`
`highlighted in italics and the disputed tenns highlighted in bold):
`
`1.
`
`2.
`
`3.
`
`5.
`
`6.
`
`7.
`
`8.
`
`A haptic feedback system comprising: a processor; a memory coupled to the processor,
`wherein the memory stores a plurality of pre-defined haptic effects; an actuator drive
`circuit coupled to the processor; and an actuator coupled to the actuator drive circuit;
`wherein the processor is adapted to output a first stored haptic effect of the pre-defined
`haptic effects in response to a haptic effect request; wherein the haptic effect request is a
`control signal generated in response to a first application that identifies the first stored
`haptic effect to be played; wherein the output causes the first stored haptic effect to be
`played; wherein the entire haptic output in response to the haptic effect request
`consists of the first stored haptic effect; wherein an application program interface (API)
`receives the haptic effect request from the first application and retrieves the requested
`first stored haptic effect, wherein the first application is registered with the API and a
`second application is also registered with the API and has access to the first stored haptic
`effect.
`·
`
`The haptic feedback system of claim 1, wherein the haptic effect request comprises an
`identity of the pre-defined haptic effect to be outputted.
`
`The hap tic feedback system of claim 1, wherein each of the plurality of pre-defined
`haptic effects are stored as a digitized streamed envelope construct.
`
`The haptic feedback system of claim 1, wherein the haptic effect request comprises a
`priority, and the first stored haptic effect is outputted based on the priority.
`
`The haptic feedback system of claim 1, wherein the first stored haptic effect is outputted
`to the actuator drive circuit, and in response the actuator drive circuit generates a haptic
`feedback signal that is applied to the actuator to generate haptic feedback.
`
`The haptic feedback system of claim 6, wherein the haptic feedback signal is based only
`on one of the predefined haptic effects.
`
`A method of generating haptic feedback comprising: receiving a request for one of a
`plurality of pre-defined stored haptic effects, wherein the request is a control signal
`
`- 7 -
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`generated in response to a first application that identifies the haptic effect out of the
`plurality of haptic effects to be played; retrieving the requested pre-defined stored haptic
`effect; generating drive signals based on the retrieved pre-defined stored haptic effect;
`and applying the drive signals to an actuator, wherein the entire haptic output in response
`to the request consists of the requested pre-defmed stored haptic effect; wherein an
`application program interface (API) receives the haptic effect request from the first
`application and retrieves the requested pre-defined stored haptic effect, wherein the first
`application is registered with the API and a second application is also registered with the
`API and has access to the requested pre-defined stored haptic effect.
`
`The method of claim 8, wherein each of the plurality of pre-defined haptic effects are
`stored as a digitized streamed envelope construct.
`
`The method of claim 8, wherein the request comprises a priority, and the one of the pre(cid:173)
`defined haptic effects is retrieved based on the priority.
`
`The method of claim 8, wherein the haptic feedback is generated from only the pre(cid:173)
`defined stored haptic effects.
`
`A non-transitory computer readable medium having instructions stored thereon that,
`when executed by a processor, causes the processor to generate haptic feedback, the
`instructions comprising: receiving a request for one of a plurality of pre-defined stored
`haptic effects, wherein the request is a control signal generated in response to a first
`application that identifies the haptic effect out of the plurality of haptic effects to be
`played; retrieving the requested pre-defined stored haptic effect; generating drive signals
`based on the retrieved pre-defined stored haptic effect; and_applying the drive signals to
`an actuator; wherein the entire haptic output in response to the request consists of the
`requested pre-defined stored haptic effect; wherein an application program interface
`(API) receives the haptic effect request from the first application and retrieves the
`requested pre-defined stored haptic effect, wherein tµe first application is registered with
`the API and a second application is also registered with the API and has access to the
`requested pre-defined stored haptic effect.
`
`The computer readable medium of claim 12, wherein each of the plurality of the pre(cid:173)
`defined haptic effects are stored as a digitized streamed envelope construct.
`
`The computer readable medium of claim 12, wherein each of the request comprises a
`priority, and the one of the pre-defined haptic effects is retrieved based on the priority.
`
`The computer readable medium of claim 12, wherein the haptic feedback is generated·
`from only the pre-defined stored haptic effects.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
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`'051 patent "avoids the need for real-time generation of the effect from high-level parameters
`
`and reduces the required processing power." (Id. at 14 (citing '051 Patent at 2:4-6).) Thus,
`
`according to Immersion, its construction "comports with the specification's description of the
`
`advantages of the '051 patent over the prior art." (Id. at 13.)
`
`Immersion argues that Respondents' proposal "improperly imports a negative limitation."_
`
`(CMIB at 14.) Immersion notes that "[a]bsent an explicit disavowal, importing negative
`
`limitations into a claim is generally disfavored." (Id. at 14 (citing Omega Eng'g Inc. v. Raytek
`
`Corp., 334 F.3d 1314, 1332-33 (Fed. Cir. 2003); CMRB at 8-9.) Immersion also argues that
`
`"Respondents' negative limitation would improperly exclude several uses of high level
`
`parameters that are contemplated in the specification." (CMIB at 14; CMRB at 4-5.)
`
`Respondents' proposal includes the language contained in Immersion's definition but
`
`adds the language "rather than from high level parameters." Respondents assert that this
`
`additional language is necessary because the "specification draws a clear and unequivocal
`
`distinction between stored haptic effects which are predefined using low-level parameters, and
`
`prior art haptic effects which are generated in real-time from hi'gh-level parameters." (RMIB at
`
`5.) According to Respondents, the specification discusses the benefits of using pre-defined low(cid:173)
`
`level haptic effects and "that distinction between the prior art and the invention must be honored
`
`in the construction of this claim tenn." (Id. at 6-7.) Respondents also argue that "the stated
`
`purpose of the invention - reducing processing power - is accomplished by using low-level
`
`parameters rather than high-level parameters, which require more processing runtime." (Id.)
`
`Staff agrees with Immersion's proposed construction but does not object to Respondents'
`
`definition. (SMIB at 24.) Staff submits that "the language 'predefined with low-level haptic
`
`parameters' unambiguously indicates that the haptic effect is not predefined with high-level
`
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`haptic parameters." (Id.) Thus, Staff believes that Respondents' additional language is
`
`unnecessary. (Id) Staff does, however, agree that "the construct containing the stored haptic
`
`effect" may contain other data that "is neither a low-level nor a high-level haptic parameter."
`
`(SMRB at 2.) Staff also notes that "it is clear that the distinction" being drawn between the
`
`invention and the prior art is that "prior art systems ... generated haptics in real time" while the
`
`claimed invention "uses predefined haptic effects." (Id. at 2.)
`
`The parties all agree that a "stored haptic effect" is a haptic effect predefined with low(cid:173)
`
`level haptic parameters such as voltage levels over time. Thus, the only dispute to be resolved is
`
`whether the language "rather than from high-level parameters" is necessary. The undersigned
`
`finds that the evidence does not supp01i adding this language to the construction.
`
`A clear disavowal of claim scope is required to imp01i negative limitations into a claim.
`
`Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) ("To
`
`disavm:v claim scope, the specification must contain expressions of manifest exclusion or
`
`restriction, representing a clear disavowal of claim scope. In general, statements about the
`
`difficulties and failures in the prior art, without more, do not act to disclaim claim scope."). Here,
`
`there is no such evidence.
`
`Respondents argue that such a disavowal can be found because the specification
`
`distinguishes the invention from an aspect of the prior art. (RMIB at 5 (citing Gemalto SA. v.
`
`HTC Cm]J., 754 F.3d 1364, 1369 (Fed. Cir. 2014).) Specifically, Respondents argue that the
`
`°'specification draws a clear and unequivocal distinction between stored haptic effects which are
`
`predefined using low-level parameters, and prior art haptic effects which are generated in real(cid:173)
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`time from high-level parameters." (Id. at 5.) Respondents ignore, however, that the distinction
`
`dravm in the specification is between haptic effects that are predefined versus haptic effects
`
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`IPR2016-01777 - Apple Inc.
`Ex.1010 - Page 14
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`

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`generated in real-time. For example, the specification states: "Some known devices modify or
`
`generate haptic effects in real-time or 'on the fly.' Although this allows a wide variety of haptic
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`effects to be generated, it may require a substantial amount of processing power and may not
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`facilitate rapid development of new devices.'' ('051 Patent at 1:54-58.) The specification notes
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`the benefit of storing haptic effects because ''[t]he stored haptic effect, unlike real-time generated
`
`haptic effects, reduces the required processing power." (Id. at 2:4-6.) Thus, contrary to what
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`Respondents argue, the specification does not clearly draw a distinction between the invention's
`
`use of haptic effects using low-level parameters versus the prior aii' s use of haptic effects using
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`high~level parameters. It. does not, for example, state that haptic effects with high-level
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`parameters cannot be stored.
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`It is possible that the inventors of the '051 patent did not
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`contemplate including pre-defined haptic effects with high-level parameters, but there is no clear
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`disavowal excluding them. Without such, it would be improper to import a negative limitation
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`into the claim.
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`Accordingly, the undersigned hereby construes the term "stored haptic effect" as "haptic
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`effect pre-defined with low-level haptic parameters such as voliage levels over time." .
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`b)
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`"the entire haptic output in response to the [haptic effect] request
`consists of the [first/requested predefined] stored haptic effect"
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`The disputed term appears in claims 1, 8, and 12 of the '051 patent. (JC at 1.) The parties
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`disagree on the proper claim construction and have proposed the following constructions:
`
`IMMERSION
`'''the haptic output is created
`from a single stored haptic
`effect, rather than by
`assembling multiple stored
`effects in real time"
`
`STAFF
`RESPONDENTS
`"the haptic output in response
`"the haptic output is created
`from a single stored haptic
`to the request is limited to a
`effect, rather than by
`single timeslot with a single
`pre-defined stored haptic
`assembling multiple stored
`effect and is not a timeline of a effects in real time"
`series of basis haptic effects''
`
`(Id.)
`
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`IPR2016-01777 - Apple Inc.
`Ex.1010 - Page 15
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`Immersion argues that its construction is consistent with the specification and prosecution
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`history. (CMIB at 16.) Immersion explains that this limitation was added during prosecution to
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`overcome a rejection as a result of U.S. Patent Pub. No. 2006/0129719 to Cruz-Hernandez ("the
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`Cruz-Hernandez application"). (Id.) According to Immersion, it sought to differentiate the '051
`
`claims from the Cruz-Hernandez application during prosecution by explaining that, in the- '051
`
`patent's invention, "the haptic output is created from a single predefined stored haptic effect"
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`rather than by assembling a series of effects generated in real-time. (Id.)
`
`Immersion argues that "Respondents' construction ... is overly narrow and improperly
`
`reads in a number of additional elements that are inconsistent with the intrinsic record." (CMIB
`
`at 17.)
`
`Immersion contends
`
`that
`
`the
`
`language used during prosecution constituted
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`"characterizations of the disclosure of the Cruz-Hernandez [application]" rather than statements
`
`about the claims of the '051 patent. (Id.) Thus, according to Immersion, these statements cannot
`
`constitute a '"clear and unmistakable' disavowal of claim scope." (Id.) Immersion also argues
`
`that "Respondents' proposed construction ... invites confusion by importing terminology that is
`
`peculiar to the Cruz-