Trials@uspto.gov
`571-272-7822
`
` Paper 7
`
`
` Entered: January 11, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01372
`Patent 8,659,571 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`Immersion Ex 2003-1
`Apple v Immersion
`IPR2017-00896
`
`
`571-272-7822
`
` Paper 7
`
`
` Entered: January 11, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01372
`Patent 8,659,571 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`Immersion Ex 2003-1
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`
`an inter partes review of claims 1–7, 12–18, and 23–29 (the “challenged
`
`claims”) of U.S. Patent No. 8,659,571 B2 (Ex. 1001, “the ’571 patent”).
`
`Immersion Corporation (“Patent Owner”) filed a Preliminary Response
`
`(Paper 6, “Prelim. Resp.”).
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`
`instituted unless the information presented in the Petition “shows that there
`
`is a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasons described
`
`below, we determine that Petitioner has established a reasonable likelihood
`
`of prevailing in showing the unpatentability of claims 1–4, 6, 23–26, and 28.
`
`We, however, determine that Petitioner has not established a reasonable
`
`likelihood of prevailing in showing the unpatentability of claims 5, 7, 12–18,
`
`27, and 29. Accordingly, we institute an inter partes review only as to
`
`claims 1–4, 6, 23–26, and 28 of the ’571 patent.
`
`II. BACKGROUND
`
`A. Real Party In Interest
`
`Apple Inc. identifies itself as the real-party-in-interest. Pet. 1.
`
`B. Related Proceedings
`
`According to the parties, the ’571 patent is the subject of the
`
`following proceedings: (1) Immersion Corp. v. Apple Inc., No. 1:16-cv-
`
`00077 (D. Del.); and (2) In the Matter of: Certain Mobile Electronic Devices
`
`2
`
`Immersion Ex 2003-2
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`Incorporating Haptics (Including Smartphones and Smartwatches) and
`
`Components Thereof, ITC Investigation No. 337-TA-990 (USITC), which
`
`has been consolidated with In the Matter of: Certain Mobile and Portable
`
`Electronic Devices Incorporating Haptics (Including Smartphones and
`
`Laptops) and Components Thereof, ITC Investigation No. 337-TA-1004
`
`(USITC). Pet. 1–2; Paper 4, 2.
`
`III. THE ’571 PATENT
`
`A. Described Invention
`
`The ’571 patent describes a system and method for producing a
`
`dynamic haptic effect based on a gesture signal and a device sensor signal.
`
`Ex. 1001, Abstract, col. 1, l. 66–col. 2, l. 5. According to the ’571 patent, a
`
`dynamic haptic effect is a haptic effect that evolves over time as it responds
`
`to input parameters, such as a gesture signal or a device sensor signal. Id. at
`
`col. 2, ll. 64–66, col. 3, ll. 12–15.
`
`Figure 1 of the ’571 patent is reproduced below.
`
`
`
`3
`
`Immersion Ex 2003-3
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`Figure 1 depicts a block diagram of haptically-enabled system 10 in an
`
`exemplary embodiment of the ’571 patent. Id. at col. 3, ll. 63–64. As shown
`
`in Figure 1 above, system 10 includes touch-sensitive surface 11 and may
`
`also include mechanical keys or buttons 13. Id. at col. 3, ll. 64–67. Further,
`
`system 10 includes a haptic feedback system that generates vibrations on
`
`system 10, e.g., on touch surface 11. Id. at col. 3, l. 67–col. 4, l. 3. As also
`
`illustrated in Figure 1, the haptic feedback system includes processor 12,
`
`which is coupled to memory 20 and actuator drive circuit 16, which, in turn,
`
`is coupled to haptic actuator 18. Id. at col. 4, ll. 4–6.
`
`Touch surface 11 recognizes touches and also may recognize the
`
`position and the magnitude or pressure of the touches on the surface. Id. at
`
`col. 4, ll. 41–43. The data corresponding to the touches is sent to processor
`
`12, which interprets the touches and generates haptic effect signals. Id. at
`
`col. 4, ll. 43–46. Touch surface 11 may detect multi-touch contacts and may
`
`be capable of distinguishing between multiple touches that occur at the same
`
`time. Id. at col. 4, ll. 49–51.
`
`According to the ’571 patent, a gesture is any movement of the body
`
`that conveys meaning or user intent. Id. at col. 3, ll. 34–35. Simple
`
`gestures, such as a “finger on” or “finger off” gesture, may be combined to
`
`form more complex gestures, for example, a “tapping” or “swiping” gesture.
`
`Id. at col. 3, ll. 35–49. In addition, any number of simple or complex
`
`gestures may be combined to form other gestures, such as gestures based on
`
`multiple finger contacts. Id. at col. 3, ll. 52–56.
`
`Dynamic haptic effects are produced by changing a haptic effect
`
`according to an interaction parameter, which may be derived from a gesture
`
`4
`
`Immersion Ex 2003-4
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`using information such as the position, direction, and velocity of the gesture.
`
`Id. at col. 10, ll. 24–29. An interaction parameter may also be derived from
`
`device sensor data, such as the device acceleration, gyroscopic, or ambient
`
`information. Id. at col. 11, ll. 4–6. Additionally, an interaction parameter
`
`may incorporate a mathematical model related to a real-world physical
`
`effect, such as gravity, acceleration, friction, or inertia. Id. at col. 12, ll. 38–
`
`40. Further, an interaction parameter may optionally incorporate an
`
`animation index to correlate the haptic effect to an animation displayed on
`
`the device. Id. at col. 12, ll. 45–50. Once an interaction parameter is
`
`generated from one or more of these sources, a drive signal is applied to a
`
`haptic actuator according to the interaction parameter. Id. at col. 15, ll. 3–9.
`
`B. Illustrative Claim
`
`Of the challenged claims, claims 1, 12, and 23 are independent.
`
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`
`1.
`
`A method of producing a haptic effect comprising:
`
`receiving a first gesture signal;
`
`receiving a second gesture signal;
`
`generating a dynamic interaction parameter using the first
`gesture signal and the second gesture signal; and
`
`applying a drive signal to a haptic output device according
`to the dynamic interaction parameter.
`
`Ex. 1001, col. 16, ll. 8–14.
`
`
`5
`
`Immersion Ex 2003-5
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`IV. PETITIONER’S CHALLENGES
`
`A. Prior Art Cited in Petitioner’s Challenges
`
`Petitioner cites the following references in its challenges to
`
`patentability.
`
`Reference and Relevant Date
`
`Designation
`
`Exhibit No.
`
`U.S. Patent Application Pub. No.
`2010/0156818 Al (June 24, 2010)
`
`Burrough1
`
`Ex. 1005
`
`U.S. Patent No. 5,734,373 (Mar. 31, 1998) Rosenberg ’373 Ex. 1004
`
`U.S. Patent No. 6,429,846 (Aug. 6, 2002) Rosenberg ’846 Ex. 1006
`
`
`
`B. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`1–7, 12–18, and 23–29
`
`§ 103(a)
`
`Burrough
`
`1, 2, 4–7, 12, 13, 15–18, 23,
`24, and 26–29
`
`§ 103(a)
`
`Rosenberg ’373
`
`3, 14, and 25
`
`§ 103(a)
`
`Rosenberg ’373 and
`Rosenberg ’846
`
`
`
`V. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
`
`6
`
`Immersion Ex 2003-6
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding that 37 C.F.R.
`
`§ 42.100(b) “represents a reasonable exercise of the rulemaking authority
`
`that Congress delegated to the . . . Office”). Under the broadest reasonable
`
`interpretation (BRI) standard, and absent any special definitions, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art, in view of the specification. In
`
`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definitions for claim terms or phrases must be set forth with reasonable
`
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994). A particular embodiment appearing in the written
`
`description generally is not incorporated into a claim if the claim language is
`
`broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`
`Cir. 1993).
`
`Petitioner proposes constructions for three terms, namely, “gesture
`
`signal,” “vector signal,” and “module.” Pet. 8–12. Petitioner discusses four
`
`additional terms, including “dynamic interaction parameter,” but does not
`
`propose constructions for these terms. Instead, Petitioner contends that
`
`Patent Owner should be held to Patent Owner’s claim construction positions
`
`for these terms expressly stated or implied from its infringement allegations
`
`in the related proceeding at the ITC. Id. at 9–11. Patent Owner disputes the
`
`constructions for five of these seven terms, namely, “gesture signal,”
`
`“dynamic interaction parameter,” “physical model,” “module,” and
`
`“generating a dynamic interaction parameter using . . . an animation.”
`
`Prelim. Resp. 8–18. For purposes of this Decision, we need only to construe
`
`the terms “gesture signal,” “dynamic interaction parameter,” and “module.”
`
`7
`
`Immersion Ex 2003-7
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999) (only those terms that are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy).
`
`A. “gesture signal”
`
`Petitioner contends that the term “gesture signal” should be construed
`
`to encompass “a signal indicating user interaction with a user interface
`
`device.” Pet. 8. Patent Owner, on the other hand, argues that this term
`
`should be interpreted to mean “an electronic signal, representing a
`
`recognized movement of the body that conveys meaning or user intent.”
`
`Prelim. Resp. 8.
`
`The parties acknowledge that the ’571 patent provides a description of
`
`a “gesture” in the following sentence: “[a] gesture is any movement of the
`
`body that conveys meaning or user intent.” Ex. 1001, col. 3, ll. 34–35; see
`
`Pet. 8, Prelim. Resp. 8 (citing Ex. 1001, col. 3, ll. 34–35). For purposes of
`
`this Decision, we determine that this sentence provides a lexicographic
`
`definition for the term “gesture.” First, the form of the sentence is
`
`definitional in that the term “gesture” is followed by a definitional
`
`description—“is any movement of the body that conveys meaning or user
`
`intent.” Ex. 1001, col. 3, ll. 34–35 (emphasis added). See Sinorgchem Co.,
`
`Shandong v. Int’l Trade Comm’n, 511 F.3d 1136 (Fed. Cir. 2007) (The use
`
`of the word “is” in the specification may “signify that a patentee is serving
`
`as its own lexicographer.” (citation omitted)). Second, the description of a
`
`“gesture” in the cited sentence is broader than, but consistent with, other
`
`descriptions found in the Specification. For example, the Specification
`
`describes that “[a] gesture can also be any form of hand movement
`
`8
`
`Immersion Ex 2003-8
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`recognized by a device having an accelerometer, gyroscope, or other motion
`
`sensor, and converted to electronic signals.” Ex. 1001, col. 3, ll. 56–59.
`
`As described in the Specification and indicated by the plain language
`
`of the claim term, a “gesture signal” is simply a signal indicating a
`
`“gesture.” See, e.g., id. at col. 10, ll. 36–43 (describing that multiple inputs
`
`in time from a finger being swiped across a touch screen indicate the
`
`positions of the contact point of the finger moving along the touch screen in
`
`a swipe gesture). In other words, a “gesture signal” is simply “a signal
`
`indicating a movement of the body that conveys meaning or user intent.”
`
`To the extent Petitioner contends that the term “gesture signal” means
`
`“a signal indicating user interaction with a user interface device” (see Pet.
`
`8), Petitioner’s argument is unpersuasive because Petitioner does not explain
`
`why the express definition of the term “gesture” provided in the
`
`Specification should be disregarded. Although Petitioner argues that the
`
`broadest reasonable interpretation of the term “gesture signal” must
`
`encompass the description in the Specification of the use of various user
`
`interface devices that “produce gesture signals,” such as a touch sensitive
`
`surface, mouse, or joystick (id.), Petitioner’s argument goes to the source of
`
`a “gesture signal” and does not address what a “gesture” is.
`
`Patent Owner’s proposed definition of the term “gesture signal”—“an
`
`electronic signal, representing a recognized movement of the body that
`
`conveys meaning or user intent”—incorporates the definition of “gesture”
`
`found in the Specification but further limits the term “gesture signal” in the
`
`following two aspects: (1) a “gesture signal” must be limited to an
`
`“electronic” signal (Prelim. Resp. 8 (citing Ex. 1001, col. 3, ll. 56–59)), and
`
`9
`
`Immersion Ex 2003-9
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`(2) a “gesture signal” must represent a “recognized” movement of the body
`
`(id. at 8–11). Considering the first aspect regarding an “electronic” signal,
`
`Patent Owner’s argument is unpersuasive because the passage cited by
`
`Patent Owner indicates that it is describing an exemplary embodiment. See
`
`Ex. 1001, col. 3, ll. 56–59 (“A gesture can also be any form of hand
`
`movement recognized by a device . . . and converted to electronic signals.”)
`
`(emphasis added). A particular embodiment appearing in the written
`
`description is generally not incorporated into a claim if the claim language is
`
`broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc.,
`
`358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). Further, “it is
`
`improper to read limitations from a preferred embodiment described in the
`
`specification—even if it is the only embodiment—into the claims absent a
`
`clear indication in the intrinsic record that the patentee intended the claims
`
`to be so limited.” Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338,
`
`1341 (Fed. Cir. 2014). Patent Owner does not identify, nor do we discern,
`
`an explicit intent in the intrinsic record to limit the “gesture signal” recited in
`
`the claims to “electronic” signals described in the preferred embodiments of
`
`the ’571 patent.
`
`Next, Patent Owner’s contention that a “gesture signal” represents “a
`
`recognized movement of the body” simply makes the unremarkable
`
`statement that the movements of user input are recognized by the system or
`
`the device described in the ’571 patent. See Ex. 1001, col. 3, ll. 36–59
`
`(describing various movements of a finger or a hand recognized by the
`
`device), col. 4, ll. 41–43 (describing the touch surface recognizing touches,
`
`as well as the position and magnitude or pressure of the touches, on the
`
`10
`
`Immersion Ex 2003-10
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`surface). If a feature is not necessary to give meaning to what the inventor
`
`means by a claim term, it would be “extraneous” and should not be read into
`
`the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). At this preliminary stage, the
`
`record presented shows that adding the word “recognized” to modify the
`
`phrase “movement of the body” is not necessary to give meaning to the term
`
`“gesture signal.” It is no more necessary to do so than it is necessary to
`
`similarly modify the word “signal” to require explicitly that signals are
`
`“recognized” by the system or the device to give meaning to the term
`
`“gesture signal.”
`
`In support of its proposed construction, Patent Owner argues that, in
`
`various embodiments described in the Specification, what sorts of
`
`movements are recognized as gestures, e.g., complex, multi-touch gestures,
`
`depends on the capability or the implementation of a particular system
`
`pertaining to the embodiments. Prelim. Resp. 8–11. Patent Owner’s
`
`argument is unpersuasive because it does not correspond to the language of
`
`Patent Owner’s proposed construction, which is that a “gesture signal”
`
`represents “a recognized movement of the body,” not “a movement of the
`
`body recognized as a gesture.”
`
`In a related argument, Patent Owner asserts that a positional
`
`translation input is not necessarily a gesture because the patentee
`
`distinguished mere position information from a gesture signal during the
`
`prosecution of a predecessor application to the ’571 patent. Prelim. Resp. 11
`
`(citing Ex. 2003, 9). Similar to Patent Owner’s unpersuasive argument
`
`11
`
`Immersion Ex 2003-11
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`discussed above, Patent Owner’s contention amounts to an argument that
`
`only those movements recognized as a gesture constitute a “gesture signal,”
`
`which does not track the language of the construction proposed by Patent
`
`Owner.
`
`On this record, and for purposes of this Decision, we preliminarily
`
`construe “gesture signal” to mean “a signal indicating a movement of the
`
`body that conveys meaning or user intent” based upon the express definition
`
`of “gesture” provided in the Specification.
`
`B. “dynamic interaction parameter”
`
`Petitioner does not propose a construction for the term “dynamic
`
`interaction parameter” but, instead, argues that Patent Owner should be held
`
`to a construction at least as broad as the construction Patent Owner advanced
`
`in the related ITC proceeding, which, according to Petitioner, was “an
`
`interaction parameter that changes over time or reacts in real time.” Pet. 9
`
`(citing Ex. 1010, 2). Patent Owner argues that the term “dynamic interaction
`
`parameter” should be construed to mean a “parameter that changes over time
`
`or reacts in real time based on a user’s interaction with a device,” which,
`
`although differing from the language quoted by Petitioner by the addition of
`
`the phrase “based on a user’s interaction with a device,” was the
`
`construction Patent Owner in fact proposed in the related ITC proceeding.2
`
`Prelim. Resp. 14–15 (citing Ex. 2008, 6). Patent Owner further contends
`
`that Petitioner’s proposed construction of the term at the ITC also included
`
`the phrase “based on a user’s interaction with a device,” and that Petitioner
`
`
`2 Patent Owner argues that the construction Petitioner quoted and attributed
`to Patent Owner is outdated. Prelim. Resp. 15 n.1.
`
`12
`
`Immersion Ex 2003-12
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`hence would presumably agree to the addition of the phrase in the definition
`
`of the term “dynamic interaction parameter.” Id. at 15.
`
`On this record, and for purposes of this Decision, we adopt Patent
`
`Owner’s proposed construction and preliminarily interpret “dynamic
`
`interaction parameter” to mean “a parameter that changes over time or reacts
`
`in real time based on a user’s interaction with a device.”
`
`C. “module”
`
`Claim 12 recites, in relevant part, “a drive module electronically
`
`coupled to the haptic output device for receiving a first gesture signal,
`
`receiving a second gesture signal, and generating a dynamic interaction
`
`parameter using the first gesture signal and the second gesture signal” (the
`
`“drive module limitation”). Ex. 1001, col. 16, ll. 53–57. The term “drive
`
`module” also is recited in challenged claims 15–18, which depend from
`
`claim 12. Petitioner contends that the term “module” recited in these claims
`
`should be construed to mean “a set of instructions executed by a processor.”
`
`Pet. 11. Patent Owner disagrees and asserts that the term “drive module”
`
`should be interpreted as “a circuit or other hardware component that
`
`generates drive signals for a haptic output device.” Prelim. Resp. 17. The
`
`parties, however, do not address the issue of whether the “drive module
`
`limitation” quoted above should be interpreted as a means-plus-function
`
`limitation under 35 U.S.C. § 112 ¶ 6.3 Despite the parties’ failure to address
`
`
`3 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). Because the ’571 patent has an effective filing date prior
`to September 16, 2012, the effective date of § 4(c) of the AIA, we refer to
`the pre-AIA version of 35 U.S.C. § 112. See AIA § 4(e).
`
`13
`
`Immersion Ex 2003-13
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`the issue, we consider the applicability of § 112 ¶ 6 to the drive module
`
`limitation recited in claim 12 and the limitations recited in dependent claims
`
`15–18 that include the term “module” because “‘[m]odule’ is a well-known
`
`nonce word that can operate as a substitute for ‘means’ in the context of
`
`§ 112, para. 6.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350
`
`(Fed. Cir. 2015) (en banc in relevant part).
`
`1. Applicability of 35 U.S.C. § 112 ¶ 6
`
`Although a claim term that does not use the word “means” triggers the
`
`rebuttable presumption that 35 U.S.C. § 112 ¶ 6 does not apply, that
`
`presumption can be overcome “if the claim term fails to ‘recite sufficiently
`
`definite structure’ or else recites ‘function without reciting sufficient
`
`structure for performing that function.’” Williamson, 792 F.3d at 1349.
`
`“The standard is whether the words of the claim are understood by persons
`
`of ordinary skill in the art to have a sufficiently definite meaning as the
`
`name for structure.” Id.
`
`The “drive module limitation” set forth above is in a format consistent
`
`with traditional means-plus-function claim limitations in that it replaces the
`
`term “means” with the term “module” and recites certain functions
`
`performed by the “drive module”—namely, “receiving a first gesture signal,
`
`receiving a second gesture signal, and generating a dynamic interaction
`
`parameter using the first gesture signal and the second gesture signal.”
`
`Similar to Williamson, the word “module” used in the “drive module
`
`limitation” in this case does not provide any indication of structure because
`
`it sets forth the same black box recitation of structure for providing the same
`
`specified function as if the term “means” had been used. See Williamson,
`
`14
`
`Immersion Ex 2003-14
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`792 F.3d at 1350. The prefix “drive” does not impart structure into the term
`
`“module” because the claim simply states that the “drive module” can
`
`perform the recited function and does not use the term “drive module” as a
`
`substitute for anything that might connote a definite structure. See Media
`
`Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
`
`Cir. 2015) (finding that the term “compliance mechanism” invokes § 112
`
`¶ 6, because the asserted claims “simply state that the ‘compliance
`
`mechanism’ can perform various functions”). Furthermore, a “drive
`
`module” is described in the Specification as “instructions that, when
`
`executed by processor 12, generate drive signals for actuator 18.” Ex. 1001,
`
`col. 4, ll. 33–35 (emphasis added). These instructions are software or
`
`program instructions stored in memory. Id. at col. 4, ll. 31–32, Fig. 1.
`
`Hence, the Specification describes the “drive module” in purely functional
`
`terms and does not impart any structural significance to the term.
`
`Patent Owner asserts that, because claim 12 recites that the “drive
`
`module” is “electronically coupled” to a “haptic output device” and a “drive
`
`circuit,” the “drive module” must be a hardware component capable of being
`
`electronically coupled to other hardware components. Prelim. Resp. 17.
`
`Patent Owner, however, does not cite, nor do we discern, an explicit
`
`disclosure in the Specification that indicates that the “drive module” is a
`
`hardware component or circuitry or any other physical entity having a
`
`sufficiently definite structure. The only description of the “drive module”
`
`provided in the Specification identifies the “drive module” as merely
`
`software or program instructions for generating drive signals, stored in
`
`memory and executed by a processor, as discussed above.
`
`15
`
`Immersion Ex 2003-15
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`Furthermore, the fact that claim 12 recites that the “drive module” is
`
`“electronically coupled” to a “haptic output device” and a “drive circuit” is
`
`insufficient to avoid the application of § 112 ¶ 6 because the claim does not
`
`describe how the “drive module” interacts with the “haptic output device” or
`
`the “drive circuit” in a way that might inform the structural character of the
`
`drive module limitation or otherwise impart structure to the “drive module”
`
`as recited in the claim. See Williamson, 792 F.3d at 1351 (finding that,
`
`although portions of the challenged claim describe certain inputs and outputs
`
`to a “distributed learning control module” at a very high level, this was
`
`insufficient to avoid means-plus-function treatment because the claim does
`
`not describe how the “distributed learning control module” interacts with
`
`other components in the system in a way that might inform the structural
`
`character of the limitation-in-question or otherwise impart structure to the
`
`“distributed learning control module” as recited in the claim). Dependent
`
`claims 15–18 do not impart a structural connotation to the term “drive
`
`module,” because they merely recite additional functions performed by the
`
`“drive module.”
`
`Accordingly, we determine that the presumption against means-plus-
`
`function treatment is overcome and that § 112 ¶ 6 applies to the limitations
`
`recited in claims 12 and 15–18 that include the term “drive module.”
`
`b. Construction Under 35 U.S.C. § 112 ¶ 6
`
`Construing a means-plus-function limitation requires first defining the
`
`particular function of the limitation and then identifying the corresponding
`
`structure for that function in the specification. Golight Inc. v. Wal-Mart
`
`Stores Inc., 355 F.3d 1327, 1333–34 (Fed. Cir. 2004). The corresponding
`
`16
`
`Immersion Ex 2003-16
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`structure of a means-plus-function limitation, however, must be “more than
`
`simply a general purpose computer or microprocessor” to avoid
`
`impermissible functional claiming, unless certain narrow exceptions
`
`concerning generic computer functions apply. Aristocrat Techs. Austl. Pty
`
`Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re
`
`Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
`
`2011). If the function is performed by a general purpose computer or
`
`microprocessor, the specification, in general, must disclose the algorithm
`
`that the computer performs to accomplish that function. Media Rights, 800
`
`F.3d at 1374 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
`
`1367 (Fed. Cir. 2008)); Triton Tech of Texas, LLC v. Nintendo of Am., Inc.,
`
`753 F.3d 1375, 1378 (Fed. Cir. 2014) (citing Aristocrat, 521 F.3d at 1333).
`
`The specification can express the algorithm in any understandable terms,
`
`e.g., as a mathematical formula, in prose, as a flow chart, or in any other
`
`manner that provides sufficient structure. Advanced Ground Info. Sys., Inc.
`
`v. Life360, Inc., 830 F.3d 1341, 1349 (Fed. Cir. 2016) (citing Finisar Corp.
`
`v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Simply
`
`reciting a claimed function in the specification, and saying nothing about
`
`how the computer or processor ensures that such a function is performed, is
`
`not a sufficient disclosure for an algorithm which, by definition, must
`
`contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574
`
`F.3d 1371, 1384 (Fed. Cir. 2009).
`
`The function recited in the drive module limitation of claim 12 is
`
`“receiving a first gesture signal, receiving a second gesture signal, and
`
`generating a dynamic interaction parameter using the first gesture signal and
`
`17
`
`Immersion Ex 2003-17
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`the second gesture signal.” Addressing the function of receiving a gesture
`
`signal, the Specification describes generally that the data corresponding to
`
`the touches on the touch surface is sent to a processor, which interprets the
`
`touches and generates haptic effect signals. Ex. 1001, col. 4, ll. 41–46. The
`
`Specification also describes an exemplary embodiment of a swipe gesture
`
`where multiple inputs are received from a finger being swiped across the
`
`touch sensitive display. Id. at col. 10, ll. 36–43. In addition, Figure 13 and
`
`accompanying text describe receiving gesture signals. Id. at col. 14, ll. 41–
`
`62, Fig. 13. In these disclosures, although the Specification describes that
`
`multiple inputs may be received at different times, it does not disclose a
`
`well-defined or otherwise recognizable sequence of steps for receiving the
`
`gesture signals by the drive module. See Blackboard, 574 F.3d at 1384.
`
`Hence, the ’571 patent fails to disclose sufficient structure for performing
`
`the recited function of “receiving a . . . gesture signal.” See Finisar, 523
`
`F.3d at 1340.
`
`Considering the function of generating a dynamic interaction
`
`parameter using the first gesture signal and the second gesture signal, the
`
`Specification describes generally that an interaction parameter that provides
`
`dynamic haptic effects can be derived from gestures “using information such
`
`as the position, direction, and velocity” of the gestures. Ex. 1001, col. 10,
`
`ll. 24–33. The Specification further describes that an interaction parameter
`
`is generated using a gesture difference vector, which is obtained by
`
`comparing a gesture signal to a haptic effect signal. Id. at col. 14, l. 64–
`
`col. 15, l. 3; Fig. 13. There is, however, no disclosure of a well-defined or
`
`otherwise recognizable sequence of steps for comparing a gesture signal to a
`
`18
`
`Immersion Ex 2003-18
`Apple v Immersion
`IPR2017-00896
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
`
`
`
`haptic effect signal to produce a gesture difference vector or generating an
`
`interaction parameter using the gesture difference vector.
`
`According to the Specification, Table 2 provides exemplary methods
`
`of “input synthesis” that may be used to generate an interaction parameter
`
`from gesture signals. Id. at col. 15, ll. 3–7. Table 2 lists various methods of
`
`synthesis along with a brief description of each method, such as “Additive
`
`synthesis - combining inputs, typically of varying amplitudes,” “Subtractive
`
`synthesis - filtering of complex signals or multiple signal inputs,” and
`
`“Frequency modulation synthesis - modulating a carrier wave signal with
`
`one or more operators.” The Specification, however, does not disclose any
`
`well-defined or otherwise recognizable sequence of steps for the methods
`
`listed in Table 2, such as steps for “combining inputs,” “varying
`
`amplitudes,” “filtering of complex signals,” or “modulating a carrier wave
`
`signal with . . . operators.” Absent such disclosures, we are not persuaded
`
`that the Specification discloses a specific algorithm that transforms an
`
`otherwise general purpose computer into a special purpose computer
`
`programmed to perform the recited function of “generating a dynamic
`
`interaction parameter.” Therefore, the ’571 patent fails to disclose sufficient
`
`structure for performing the recited function of “
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
