`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v .
`
`IMMERSION CORPORATION,
`Patent Owner
`
`
`
`Case IPR2016-01777
`Patent 8,749,507
`
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`I.
`
`INTRODUCTION
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`Case IPR2016-01777
`U.S. Pat. No. 8,749,507
`
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`Pursuant to 37 CFR §42.71, Apple Inc. (“Petitioner”) respectfully requests
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`rehearing of the Decision Denying Institution of Inter Partes Review issued on
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`March 23, 2017 (Paper 7, “Decision”) denying authorization of inter partes review
`
`of claims 1-5, 9-12, and 14-17 of U.S. Patent No. 8,749,507 (the “’507 patent”)
`
`based upon Ground 1, obviousness in light of Toda in view of Shahoian. The basis
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`for this denial was Toda’s alleged failure to disclose or render obvious the
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`limitation “determining a press if: the pressure is greater than a pressure threshold,
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`the change in pressure is greater than a change in pressure threshold, and a first
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`interval has elapsed.”
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`Petitioner respectfully submits that the Board misapprehended the meaning
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`of this limitation and the disclosure of Toda.
`
`II. LEGAL STANDARDS
`A. The Standard of Review for Rehearing
`“A party dissatisfied with a decision may file a request for rehearing.” 37
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`C.F.R. § 42.71(d). Such a request must “identify all matters the party believes the
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`Board misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, an opposition, or a reply.” Id. Rehearing
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`requests are reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse
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`of discretion is found when “the decision is based on an erroneous interpretation of
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`
`
`1
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`
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`the law, on factual findings that are not supported by substantial evidence, or
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`Case IPR2016-01777
`U.S. Pat. No. 8,749,507
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`represents an unreasonable judgment in weighing relevant factors.” Gose v. United
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`States Postal Service, 451 F.3d 831, 836 (Fed. Cir. 2006) (citation omitted);
`
`Illumina, Inc. v. Trs. of Columbia Univ., IPR2013-00011, Paper 44 at 2 (PTAB
`
`May 10, 2013) (citing PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc.,
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`840 F.2d 1565, 1567 (Fed. Cir. 1988)).
`
`B.
`The Standard For Instituting An Inter Partes Review
`An inter partes review may be instituted only if “information presented in
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`the petition … and any response … shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” 35 U.S.C. § 314(a). When a trial is instituted, the Board narrows
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`issues “by authorizing the trial to proceed only on the challenged claims for which
`
`the threshold standards for the proceeding have been met.” Trial Practice Guide,
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`77 Fed. Reg. 48756, 48757 (August 14, 2012).
`
`III. CLAIM CONSTRUCTION
`A. The Board misapprehended the “determining a press ...”
`limitation to require that the first two criteria be maintained for
`the duration of the interval of the third criteria.
`
`Independent claims 1, 9, and 14 each recite, “determining a press if: the
`
`pressure is greater than a pressure threshold, the change in pressure is greater than
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`a change in pressure threshold, and a first interval has elapsed.” Ex. 1001 at claims
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`
`
`2
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`Case IPR2016-01777
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`1, 9, and 14. This limitation recites three criteria used to determine a press: (1) the
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`pressure is greater than a pressure threshold; (2) the change in pressure is greater
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`than a change in pressure threshold; and (3) a first interval has elapsed. Id. The
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`Board found that “the first two conditions must be maintained for the duration of
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`the first interval.” Decision at 5; see also id. at 14-15 (“the other two conditions—
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`i.e., the pressure exceeds the pressure threshold, and the change in pressure is
`
`greater than the change threshold—must be maintained for the duration of the first
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`interval before a press is determined”). Notably, neither party, not even the Patent
`
`Owner, has ever asked for such a narrow construction—not in this proceeding
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`governed by the broadest reasonable interpretation standard, and not in the ongoing
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`ITC proceeding governed by the Phillips standard. While this fact is not
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`dispositive, it suggests that an error in claim construction may have been made. As
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`demonstrated below, Apple respectfully submits that the Board did misapprehend
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`the broadest reasonable interpretation of this limitation.
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`“[T]he claim construction inquiry ... begins and ends in all cases with the
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`actual words of the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158
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`F.3d 1243, 1248 (Fed. Cir. 1998). The ’507 patent claims recite using three
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`independent criteria, listed above, to determine whether a press has occurred.
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`Importantly, the actual words of the claims do not specify that the first two criteria
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`must both be maintained for the entire duration of the first interval. For example,
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`
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`3
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`
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`the actual words of the claims do not recite, “the pressure is greater than a pressure
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`Case IPR2016-01777
`U.S. Pat. No. 8,749,507
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`threshold while a first interval has elapsed.” The Board apparently did not find
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`otherwise because it did not tie its construction to the actual words of the claim.
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`Decision at 5. The Board’s interpretation therefore improperly rewrites the claims.
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`Rembrandt Data Techs. LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011).
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`Nor does the specification disclose an embodiment that requires the first two
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`claimed criteria to be maintained for the duration of the claimed first interval to
`
`determine a press. The Board’s Decision denying institution states that the
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`embodiment of Figure 3 requires that the first two conditions must be maintained
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`for the duration of the first interval. Decision at 4-5. However, the embodiment of
`
`Figure 3 includes no such requirement.
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`For example, in Figure 3, the system can start the tick count in step 316
`
`(indicating the beginning of the interval), follow the “YES” branch of step 320 to
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`step 322, branch “NO” in step 322 (indicating that the change in pressure is not
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`greater than the change in pressure threshold), loop back to step 302, follow the
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`“YES” branch to step 314, follow the “YES” branch to step 320, follow the “YES”
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`branch to step 322, follow the “YES” branch to step 324 (indicating that the
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`change in pressure is now greater than the change in pressure threshold), and
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`follow the “YES” branch of step 324 (indicating that the first interval has elapsed)
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`to state 326, indicating that a press has occurred. Ex. 1001 at Fig. 3. In this
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`
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`4
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`
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`scenario, the change in pressure was not greater than the change in pressure
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`Case IPR2016-01777
`U.S. Pat. No. 8,749,507
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`threshold for part of the first interval, yet the system determined that a press had
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`occurred. Thus, Figure 3 does not mandate that the first two criteria must be
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`maintained for the duration of the first interval. Id.
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`As a second example, in Figure 3, assume that the claimed “first interval” is
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`one second and that the process of Figure 3 executes 80 times per second,
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`consistent with the patent’s disclosure of a sampling frequency of 80 Hz. Ex. 1001
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`at 5:59-61 (“The touchpad (102) reports data continuously to the processor (106) at
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`approximately 80 Hz.”), 9:3-4 (“the sampling frequency of the touchpad (102) ... is
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`about 80 Hz”). The system may first start the tick count in step 316 (indicating the
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`beginning of the interval). The system may then follow the “YES” branch from
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`step 320 to step 322, branch “NO” in step 322 (indicating that the change in
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`pressure is not greater than the change in pressure threshold), loop back to step
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`302, follow the “YES” branch to step 314, follow the “YES” branch to step 320,
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`follow the “YES” branch to step 322, and again branch “NO” in step 322
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`(indicating that the change in pressure is still not greater than the change in
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`pressure threshold). The system may repeat this loop 80 times (or more), for the
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`entire duration of the first interval. The change in pressure may then become
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`greater than the change in pressure threshold, such that step 322 branches “YES”
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`to step 324. Because the first interval of one second has elapsed, step 324 will
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`5
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`
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`branch “YES” to state 326, indicating that a press has occurred. In this scenario,
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`Case IPR2016-01777
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`the change in pressure was not greater than the change in pressure threshold at any
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`time during the first interval, yet the system determined that a press had occurred.
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`It is important to understand that these examples are not just corner cases. A
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`close examination of Figure 3 reveals that it requires that a change in pressure
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`exceed a change in pressure threshold in only one instance. This is because the
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`embodiment of Figure 3 tests for the condition of whether the first interval has
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`elapsed at step 324, only after an instance in which a change in pressure has
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`exceeded a change in pressure threshold at step 322. As a consequence of this
`
`arrangement, step 322 can result in a “no” decision any number of times after the
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`first tick count has started at step 316 (i.e., during the first interval), but even a
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`single instance in which step 322 results in a “yes” decision after the first interval
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`has elapsed at step 324 is sufficient to determine that a press has occurred at box
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`326.
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`For all of the reasons discussed above, Figure 3 does not mandate that the
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`first two criteria must be maintained for the duration of the first interval. Nor does
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`anything else in the rest of the specification. The Board’s interpretation therefore
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`is not supported by the specification, and improperly excludes from the scope of
`
`the claims the embodiments described above (among others).
`
`Even if the specification disclosed an embodiment that required the first two
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`
`
`6
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`
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`claimed criteria to be maintained for the duration of the claimed first interval to
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`determine a press (which it does not), the Board’s interpretation would constitute
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`an improper importation of that limitation into the claims because the specification
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`does not include the lexicography or clear disavowal of claim scope required to do
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`so. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`
`2012) (specification limitations may be read into the claims only “1) when a
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`patentee sets out a definition and acts as his own lexicographer, or 2) when the
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`patentee disavows the full scope of the claim term either in the specification or
`
`during prosecution”).
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`Furthermore, in the ITC Investigation referenced in the Petition, the Chief
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`ALJ has construed a portion of this limitation (“determining a press if … the
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`change in pressure is greater than a change in pressure threshold”) as “determining
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`that a press has occurred if … the magnitude of the change in pressure (positive or
`
`negative) is greater than a static or adaptive threshold for the change in pressure.”
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`Ex. 1010 at 59. The Chief ALJ, applying the Phillips standard, did not find any
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`requirement that the change in pressure must be maintained for the duration of the
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`claimed interval. Id. The Chief ALJ’s construction and his accompanying analysis
`
`of this limitation further confirm that it has no such requirement. Id. at 53-56.
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`Finally, the Board’s construction is vague because it is not clear what it
`
`means for a change in pressure to be greater than a change in pressure threshold for
`
`
`
`7
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`
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`the duration of the first interval. For example, this requirement may mean any of
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`Case IPR2016-01777
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`the following: (1) the difference between the first pressure of the interval and the
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`last pressure of the interval is greater than the threshold; (2) each pressure
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`determined during the interval is greater than some initial pressure by at least the
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`threshold amount; or (3) each pressure determined during the interval is greater
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`than the previous determined pressure. The Board’s construction therefore
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`obfuscates, rather than clarifies, the meaning of this limitation. For all these
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`reasons, Petitioner respectfully submits that the Board misapprehended the
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`broadest reasonable interpretation of this limitation. See also WesternGeco LLC v.
`
`PGS Geophysical AS, IPR2015-0313, Paper 45 at 2, 4 (PTAB Feb. 3, 2017)
`
`(granting request for rehearing where the Board misapprehended the appropriate
`
`claim construction).
`
`Petitioner previously addressed the construction of a portion of this
`
`limitation in its Petition (Paper 1) at 10, and addressed how Toda disclosed and
`
`rendered obvious this limitation in its Petition at 24-30.
`
`B.
`
`The Board misapprehended the “determining a press if ... a first
`interval has elapsed” limitation to require determining that a first
`interval has elapsed as a necessary condition of determining a
`press.
`
`The Board found that this limitation “requir[es] elapsing of a time interval as
`
`a condition to detecting a press.” Decision at 13, 17-18. In other words, the Board
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`
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`8
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`
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`appears to have found that, in order to practice this claim, a system must always
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`Case IPR2016-01777
`U.S. Pat. No. 8,749,507
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`condition the determination of a press on the passage of a first interval. Under this
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`interpretation, if a system determines a press based on the satisfaction of the three
`
`claimed criteria—(1) the pressure is greater than a pressure threshold; (2) the
`
`change in pressure is greater than a change in pressure threshold; and (3) a first
`
`interval has elapsed—but also determines a press based on the satisfaction of
`
`claimed criteria (1) and (2), and fourth unclaimed criteria, the system does not
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`practice the limitation because it does not “require” the passage of the time interval
`
`in order to determine a press. The Board misapprehended the broadest reasonable
`
`interpretation of this limitation, which requires only that there be at least one
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`scenario in which the satisfaction of these three requirements (and possibly others)
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`results in a determination of a press.
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`“The transition ‘comprising’ in a method claim indicates that the claim is
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`open-ended and allows for additional steps.” Invitrogen Corp. v. Biocrest
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`Manufacturing, L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (citations omitted); see
`
`also AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1244-45 (Fed. Cir.
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`2001) (“[w]hen a claim uses an ‘open’ transition phrase, its scope may cover
`
`devices that employ additional, unrecited elements”). Here, the claims use the
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`open-ended transitional phrase “comprising,” indicating that a system practicing
`
`the claim by determining a press based on the satisfaction of the three claimed
`
`
`
`9
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`
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`criteria is allowed to perform additional steps, such as determining the press based
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`Case IPR2016-01777
`U.S. Pat. No. 8,749,507
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`on a set of criteria different than the three listed criteria. Similarly, the claim
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`language does not expressly preclude the additional step of determining a press
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`based on a set of criteria different than the three listed criteria. Accordingly, the
`
`fact that a system, in certain scenarios, determines that a press has occurred
`
`without determining that a first interval has elapsed, does not necessarily mean that
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`the system does not satisfy this limitation. Such a system would still satisfy this
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`limitation if, in at least one other scenario, it determines that a press has occurred
`
`by determining that the three claimed criteria are satisfied. For all these reasons,
`
`Petitioner respectfully submits that the Board misapprehended the broadest
`
`reasonable interpretation of this limitation.
`
`Petitioner previously addressed the construction of a portion of this
`
`limitation in its Petition (Paper 1) at 10, and addressed how Toda disclosed and
`
`rendered obvious this limitation in its Petition at 24-30.
`
`IV. ARGUMENT
`A. The Board misapprehended that Toda discloses the limitation
`“determining a press if: the pressure is greater than a pressure
`threshold, the change in pressure is greater than a change in
`pressure threshold, and a first interval has elapsed.”
`
`Based on the proper broadest reasonable interpretation of the limitation
`
`“determining a press if: the pressure is greater than a pressure threshold, the
`
`
`
`10
`
`
`
`change in pressure is greater than a change in pressure threshold, and a first
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`Case IPR2016-01777
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`interval has elapsed,” Toda discloses this limitation. Specifically, Toda discloses a
`
`scenario where it determines a press based on the satisfaction of all three claimed
`
`criteria. With regard to criteria 1 (the pressure is greater than the pressure
`
`threshold), Toda discloses determining that the touch pressure F is greater than
`
`threshold values such as 15g and 150g during the processes illustrated in Figures
`
`11, 17, and 18-19. Ex. 1003 at 9:9-36, Fig. 11 (steps 101, 104, and 106), 11:35-39,
`
`11:61-67, Fig. 17 (steps 122 and 127), Fig. 18A (steps 101, 104, and 106), Fig.
`
`19A (steps 122 and 127); Petition at 25. With regard to criteria 2 (the change in
`
`pressure is greater than a change in pressure threshold), Toda discloses, for
`
`example, determining whether the variation δF of touch pressure is greater than
`
`10g. Ex. 1003 at 11:42-45, 11:47-52 (the step 123 “yes” branch indicates δF has
`
`sequentially exceeded 10g three times), Fig. 17 (step 123), Fig. 19A (step 123);
`
`Petition at 26.
`
`The Board did not find that Toda did not disclose determining a press based
`
`on these first two criteria. Decision at 11-16. Although the Board disfavored
`
`Petitioner’s breaking this limitation into multiple sub-headings in its Petition,
`
`Petitioner did so merely for organization and clarity, and the Petitioner nonetheless
`
`established that Toda discloses determining a press based on the satisfaction of all
`
`three criteria. Decision at 12; Petition at 24-26.
`
`
`
`11
`
`
`
`With regard to criteria 3 (a first interval has elapsed), Toda also discloses, in
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`Case IPR2016-01777
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`
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`this same scenario, determining whether a peak point has occurred within a time
`
`interval of 30 milliseconds. Ex. 1003 at 9:13-18, Fig. 11 (step 103), Fig. 18A (step
`
`103); Petition at 27. If the time interval of 30 milliseconds has elapsed, the process
`
`follows the “no” branch of Fig. 11, step 103, towards routine “3” (i.e., Fig. 17),
`
`where “Switch Inputting On” is eventually determined and, likewise, follows the
`
`“no” branch of Fig. 18A, step 103, towards routine “3'” (i.e., Figs. 19A-B), where
`
`“Switch Inputting On” also is eventually determined. Ex. 1003 at Figs. 11, 17,
`
`18A, 19A-B; Petition at 27. Thus, Toda teaches determining a press based, in part,
`
`on determining that a time interval of 30 milliseconds has passed.
`
`In this regard, the Board found that “if the time interval of 30 milliseconds
`
`elapses, ... a press ... is eventually determined.” Decision at 14. The Board
`
`therefore has already found that Toda discloses a scenario in which it determines a
`
`press based, in part, on determining that an interval of 30 milliseconds has elapsed
`
`(in addition to determining the satisfaction of the first two criteria).
`
`In summary, Toda discloses a path through Figures 11 and 17, and also
`
`through Figures 18A and 19A-B, where it determines a press based on the
`
`satisfaction of all three claimed criteria. For example, Toda discloses following
`
`the “YES” branch of step 101 in Figure 11 (criteria 1 is satisfied), then following
`
`the “NO” branch of step 103 in Figure 11 (criteria 3 is satisfied in the case that 30
`
`
`
`12
`
`
`
`ms has elapsed), following the “YES” branch of step 104 in Fig. 11 (criteria 1 is
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`satisfied again), following the “3” link to Figure 17, determining “YES” in Figure
`
`17’s step 123 (criteria 2 is satisfied), and eventually ending up in Figure 17’s state
`
`129 (a press has been detected). Ex. 1003 at Figs. 11, 17, 11:42-45, 11:47-52;
`
`Petition at 24-27. A similar path exists in Figures 18A and 19A-B. Petition at 24-
`
`27. Accordingly, Toda discloses determining a press based on the satisfaction of
`
`all three claimed criteria, and discloses this limitation.
`
`Under the broadest reasonable interpretation of this limitation, it is irrelevant
`
`that in certain other scenarios, Toda may also determine a press based on the
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`satisfaction of other criteria, as established above in the section regarding claim
`
`construction. Instead, all that matters is that Toda discloses one case in which a
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`press is determined based on the satisfaction of the three claimed criteria.
`
`Accordingly, the Board misapprehended that Toda discloses this limitation.
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`V. CONCLUSION
`For the reasons discussed above, Petitioner respectfully requests that the
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`Board revise its Decision and institute inter partes review of claims 1-5, 9-12, and
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`14-17 of the ’507 patent on the basis of Ground 1: obviousness in light of Toda in
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`view of Shahoian.
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`
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`13
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` Respectfully Submitted,
`
`
`
`/Gianni Minutoli/
`Gianni Minutoli
`Reg. No. 41,198
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`gianni.minutoli@dlapiper.com
`Phone: 703-773-4045
`Fax: 703-773-5200
`
`Robert Buergi
`Reg. No. 58,125
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`robert.buergi@dlapiper.com
`Phone: 650-833-2407
`Fax: 650-687-1144
`
`Attorneys for Petitioner Apple Inc.
`
`Dated: April 14, 2017
`
`
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`14
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`Case IPR2016-01777
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
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`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. §
`
`42.71(d) was served on April 17, 2017, via email per agreement by the parties, to
`
`counsel for the following addresses:
`
`Babak Redjaian
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`949-760-5260 (telephone)
`949-760-5200 (fax)
`
`bredjaian@irell.com
`
`ImmersionIPR@irell.com
`
`
` /Gianni Minutoli/
`Gianni Minutoli
`Reg. No. 41,198
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`gianni.minutoli@dlapiper.com
`Phone: 703-773-4045
`Fax: 703-773-5200
`
`Robert Buergi
`Reg. No. 58,125
`DLA Piper LLP (US)
`
`Michael R. Fleming
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`310-277-1010 (telephone)
`310-203-7199 (fax)
`
`mfleming@irell.com
`
`ImmersionIPR@irell.com
`
`
`
`
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`15
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`Case IPR2016-01777
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`2000 University Ave
`East Palo Alto, CA 94303
`robert.buergi@dlapiper.com
`Phone: 650-833-2407
`Fax: 650-687-1144
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`16
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