`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2017-00896
`Patent No. 8,659,571
`___________________
`
`
`
`IMMERSION CORPORATION’S
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................ 1 
`
`THIS ENTIRE PETITION SHOULD BE DENIED UNDER 35
`U.S.C. § 325(d) ............................................................................................ 4 
`
`IN THE ALTERNATIVE AT LEAST GROUNDS 4 AND 5
`SHOULD DENIED UNDER 35 U.S.C. § 325(d) ....................................... 7 
`
`IV.  THE INVENTION OF THE ‘571 PATENT .............................................. 10 
`
`V. 
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................ 12 
`
`VI.  CLAIM CONSTRUCTION ....................................................................... 12 
`
`A. 
`
`B. 
`
`“gesture signal” (claims 1-7, 23-29) ................................................ 12 
`
`“dynamic interaction parameter” (claims 1, 4-7, 12, 15-
`18, 23, 26-29) ................................................................................... 13 
`
`C. 
`
`“vector signal” (claims 2, 13, 24) ..................................................... 14 
`
`VII.  GROUND 1: CLAIMS 1-4, 7, 23-26 AND 29 ARE NOT OBVIOUS
`OVER POUPYREV ................................................................................... 14 
`
`A. 
`
`Poupyrev Does Not Disclose or Render Obvious Claim 1 .............. 14 
`
`Poupyrev Does ............................................................................................ 14 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Poupyrev Does Not Disclose or Render Obvious Claim 2 .............. 21 
`
`Poupyrev Does Not Disclose or Render Obvious Claim 3 .............. 23 
`
`Poupyrev Does Not Disclose or Render Obvious Claim 4 .............. 23 
`
`Poupyrev Does Not Disclose or Render Obvious Claim 7 .............. 24 
`
`Poupyrev Does Not Disclose or Render Obvious Claims
`23-26 or 29 ....................................................................................... 26 
`
`VIII.  GROUNDS 2-3: CLAIMS 5-6 AND 27-28 ARE NOT OBVIOUS IN
`VIEW OF POUPYREV AND OTHER REFERENCES. .......................... 26 
`
`
`
`
`- ii -
`
`
`
`

`

`IX.  CONCLUSION ........................................................................................... 27 
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`
`
`- iii -
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
` Page(s)
`
`Cases
`Akamai Technologies, Inc. v. Limelight Networks, Inc.,
`IPR2017-00358 (PTAB May 2, 2017) .............................................. 2, 4, 5, 6, 7, 8
`
`Immersion Corp. v. Apple et al.,
`Nos. 1-16-cv-00077 and 1:16-cv-00325 (D. Del.) ............................................... 1
`
`In the Matter of: Certain Mobile and Portable Electronic Devices
`Incorporating Haptics (Including Smartphones and Laptops) and
`Components Thereof,
`ITC Investigation Nos. 337-TA-990 and -1004 ................................................... 1
`
`Statutes
`
`35 U.S.C. § 314(a) ................................................................................................. 4, 7
`
`35 U.S.C. § 325(d) ................................................................................. 1, 4, 7, 10, 27
`
`Other Authorities
`
`37 C.F.R. § 42.108(a) ................................................................................................. 7
`
`
`
`
`
`
`
`
`
`
`- iv -
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`EXHIBIT LIST
`
`
`
`Immersion
`Ex. 2001
`
`Immersion
`Ex. 2002
`
`Notice of Filing Transcript of April 6, 2017 Telephonic Hearing
`
`Respondents’ Joint Notice of Prior Art, dated May 25, 2016
`
`Immersion
`Ex. 2003
`
`Board Institution Decision in IPR2016-01372, January 11, 2017,
`Paper No. 7
`
`Immersion
`Ex. 2004
`
`Deposition Transcript of Dr. Patrick M. Baudisch, May 18, 2017
`
`Immersion
`Ex. 2005
`
`August 2, 2012 Applicant Remarks in Prosecution of U.S. Patent
`No. 8,279,193
`
`Immersion
`Ex. 2006
`
`Immersion
`Ex. 2007
`
`Curriculum Vitae of Yon Visell, Ph.D.
`
`Declaration of Yon Visell, Ph.D.
`
`
`
`- v -
`
`
`
`
`
`
`
`
`

`

`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`Petitioner Apple, Inc. did not submit a statement of material facts in this
`
`Petition. Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a), and no
`
`facts are admitted.
`
`
`
`
`
`
`- vi -
`
`
`
`

`

`I.
`
`INTRODUCTION
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`Patent Owner Immersion Corporation (“Immersion” or “Patent Owner”)
`
`submits that the Patent Trial and Appeal Board (“Board”) should deny the petition
`
`for inter partes review (“Petition”) submitted by Petitioner Apple, Inc.
`
`(“Petitioner”) and not institute inter partes review of United States Patent No.
`
`8,659,571 (Ex. 1001, “the ‘571 patent”).
`
`The entire Petition should be denied under 35 U.S.C. § 325(d) to stop the
`
`Petitioner’s pattern of filing serial petitions against the Patent Owner’s patent
`
`portfolio. The ‘571 patent along with U.S. Patent Nos. 8,619,051 (the “‘051
`
`patent”); 8,773,356 (the “‘356 patent”); 8,581,710 (the “‘710 patent”); 8,749,507
`
`(the “‘507 patent”); 7,336,260 (the “‘260 patent”) and 7,808,488 (the “‘488
`
`patent”) are the subject of the following cases: Immersion Corp. v. Apple et al.,
`
`Nos. 1-16-cv-00077 and 1:16-cv-00325 (D. Del.) (stayed); In the Matter of:
`
`Certain Mobile and Portable Electronic Devices Incorporating Haptics (Including
`
`Smartphones and Laptops) and Components Thereof, ITC Investigation Nos. 337-
`
`TA-990 and -1004 (consolidated).
`
`Apple has filed two petitions, sequential in time, for each patent asserted in
`
`the aforementioned proceedings. The IPR petitions and dates for each patent are
`
`listed below.
`
`
`
`
`- 1 -
`
`
`
`

`

`IPR #1
`Case No.
`IPR2016-01371
`IPR2016-01372
`IPR2016-01381
`IPR2016-01603
`IPR2016-01777
`IPR2016-01884
`IPR2016-01907
`
`Filed
`
`7-7-16
`7-7-16
`7-8-16
`8-12-16
`9-12-16
`9-23-16
`9-29-16
`
`Board
`Decision
`1-11-17
`1-11-17
`1-11-17
`2-23-17
`4-27-17
`4-3-17
`4-3-17
`
`Patent
`
`‘051
`‘571
`‘356
`‘710
`‘507
`‘260
`‘488
`
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`Filed
`
`IPR #2
`Case No.
`IPR2017-00887 2-10-17
`IPR2017-00896 2-12-17
`IPR2017-00897 2-12-17
`IPR2017-01368 5-4-17
`IPR2017-01310 4-21-17
`IPR2017-01369 5-4-17
`IPR2017-01371 5-4-17
`
`In each instance Apple waited for the Patent Owner to file a preliminary
`
`response and/or the Board to make a decision before crafted a new, serial petition.
`
`Apple filed the second Petition in this case on February 12, 2017, about four
`
`months after receiving Patent Owner’s Preliminary Response and over a month
`
`after the Board’s decision in IPR2017-01372. Moreover, Apple was aware of the
`
`primary prior art references in this Petition well before the filing of its first IPR
`
`Petition (IPR2016-01372) back on July 7, 2016.
`
`This type of gamesmanship imposes an inequity on the Patent Owner.
`
`Akamai Technologies, Inc. v. Limelight Networks, Inc., IPR2017-00358, (PTAB
`
`May 2, 2017) (Paper 9) at 12 (“We do not take lightly denying a petition on
`
`grounds unrelated to its substantive patentability challenges. Here, however,
`
`Petitioner’s strategy of adjusting its challenge in a second Petition based on the
`
`Board’s feedback in an earlier Institution Decision imposes inequities on Patent
`
`
`
`
`- 2 -
`
`
`
`

`

`Owner. Further, inter partes review proceedings ‘are not to be used as tools for
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`harassment or a means to prevent market entry through repeated litigation and
`
`administrative attacks on the validity of a patent. Doing so would frustrate the
`
`purpose of the section as providing quick and cost effective alternatives to
`
`litigation.’”). It would be unjust to allow the Petitioner to benefit from an earlier
`
`Board decision on the ‘571 patent. This entire Petition should be denied. At a
`
`minimum Grounds 4 and 5 should be denied because the exact same prior art and
`
`arguments are being presented once again in this second Petition.
`
`Substantively, the Petition attempts to establish that certain claims of the
`
`‘571 patent are obvious based on two primary prior art references, Poupyrev and
`
`Rosenberg 373. The independent claims require applying a drive signal to a haptic
`
`output device in accordance with a dynamic interaction parameter that is generated
`
`with a first gesture signal and a second gesture signal. Petitioner adopted the
`
`Board’s construction in IPR2016-01372 that the term “gesture signal” means “a
`
`signal indicating a movement of the body that conveys meaning or user intent.”
`
`But Apple identifies only two types of supposed “gesture signals”—position and
`
`pressure readings—neither of which are capable of indicating a movement of the
`
`body that conveys meaning or user intent in Poupyrev’s system.
`
`
`
`
`- 3 -
`
`
`
`

`

`II. THIS ENTIRE PETITION SHOULD BE DENIED UNDER 35 U.S.C.
`§ 325(d)
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`Institution of an inter partes review is discretionary under 35 U.S.C. §
`
`314(a). Akamai, IPR2017-00358, (PTAB May 2, 2017) (Paper 9) at 6. The Board
`
`should exercise its discretion and deny the petition under 35 U.S.C. § 325(d),
`
`which states:
`
`[I]f another proceeding or matter involving the patent is before
`the Office, the Director may determine the manner in which the post-
`grant review or other proceeding or matter may proceed, including
`providing for the stay, transfer, consolidation, or termination of any
`such matter or proceeding. In determining whether to institute or
`order a proceeding under this chapter, chapter 30, or chapter 31, the
`Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.
`
`When deciding whether to institute a proceeding where a previous petition
`
`has been filed on the same patent, the following equitable factors should be
`
`considered:
`
`(a) whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`(b) whether the petitioner knew or should have known of the
`prior art asserted in the later petition when it filed its earlier petition;
`(c) whether at the time of filing of the later petition, the
`
`
`
`
`- 4 -
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`petitioner already received the patent owner’s preliminary response to
`the first petition or received the Board’s decision on whether to
`institute review in the earlier petition;
`(d) the length of time that elapsed between when the petitioner
`had patent owner’s or Board’s analysis on the earlier petition and
`when petitioner filed the later petition; and
`(e) whether the petitioner provides adequate explanation why
`we should permit another attack on the same claims of the same
`patent.
`
`Akamai at 9. As discussed below, all of these factors favor denial of this
`
`Petition.
`
`Whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent: The petition in the earlier IPR2016-01372 was directed
`
`to the same claims of the same patent as this Petition.
`
`Whether the petitioner knew or should have known of the prior art asserted
`
`in the later petition when it filed its earlier petition: The Petitioner knew about the
`
`primary prior art, Poupyrev, Rosenberg 373 and Rosenberg 846 before the Petition
`
`was filed. Rosenberg 373 and Rosenberg were cited as Grounds 2 and 3 for the
`
`petition in IPR2016-01372. Poupyrev was known by the Petitioner by at least May
`
`25, 2016 as evidence by the listing of Poupyrev in Respondents’ Joint Notice of
`
`Prior Art filed in the ITC proceeding. Ex. 2002 at 8.
`
`
`
`
`- 5 -
`
`
`
`

`

`Whether at the time of filing of the later petition, the petitioner already
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`received the patent owner’s preliminary response to the first petition or received
`
`the Board’s decision on whether to institute review in the earlier petition: The
`
`Petitioner received both the patent owner’s preliminary response in the first
`
`petition (dated October 13, 2016) and the Board’s Institution Decision (issued on
`
`January 11, 2017), before the filing of this Petition.
`
`The length of time that elapsed between when the petitioner had patent
`
`owner’s or Board’s analysis on the earlier petition and when petitioner filed the
`
`later petition: This Petition was filed on February 12, 2017. The Board’s decision
`
`in IPR2016-01372 issued on January 11, 2017. The Petitioner had a whole month
`
`to review the earlier decision. Additionally, the Petitioner had about 4 months to
`
`analyze the patent owner preliminary response in IPR2016-01372.
`
`Whether the petitioner provides adequate explanation why we should permit
`
`another attack on the same claims of the same patent: The Petitioner makes no
`
`arguments about why it should be permitted another attack on the same claims of
`
`the ‘571 patent. The Petition merely mentions the existence of the earlier IPR.
`
`Pet. at 1.
`
`All of the factors above are in Patent Owner’s favor. Equity demands the
`
`denial of the entire petition. The Board in Akamai expressed its concerns
`
`regarding subsequent filings after a Board decision as follows:
`
`
`
`
`- 6 -
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`Our primary concern in this proceeding, however, is not that
`“the same or substantially the same prior art or arguments previously
`were presented to the Office” as expressed in 35 U.S.C. § 325(d), but
`rather the potential inequity of Petitioner filing multiple attacks,
`adjusting along the way based on Patent Owner’s contentions and the
`Boards decision responding to a prior challenge.
`
`Akamai, IPR2017-00358, (PTAB May 2, 2017) (Paper 9) at 8.
`
`Due to the inequity of Apple filing multiple attacks and adjusting along the
`
`way as Apple learns from the Patent Owner filings and prior Board decisions,
`
`Patent Owner respectfully requests that the Board exercise its discretion under 35
`
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to institute inter partes review of
`
`the ‘571 patent.
`
`III.
`
`IN THE ALTERNATIVE AT LEAST GROUNDS 4 AND 5 SHOULD
`DENIED UNDER 35 U.S.C. § 325(d)
`
`If the entire Petition is not denied under 35 U.S.C § 325(d), then at least
`
`Grounds 4 and 5 should be denied under this statute because the Petitioner had
`
`unsuccessfully attempted to institute an inter partes review on the exact same
`
`claims under the exact same grounds in IPR2016-01372. In a decision dated
`
`January 11, 2017, a month before the filing of this Petition, the Board declined to
`
`institute review on these grounds. Ex. 2003 at 41-44. Specifically the Board found
`
`that the sensor data generated in Rosenberg 373 are not gesture signals as that term
`
`
`
`
`- 7 -
`
`
`
`

`

`has been construed by the Board. Id. Notably, the present Petition does not even
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`acknowledge the earlier decision or provide any additional arguments to overcome
`
`the Board’s earlier finding.
`
`In the IPR2016-01372 decision, the Board unequivocally rejected
`
`Petitioner’s argument that the sensor data generated in Rosenberg 373 are gesture
`
`signals because they indicate user interaction with a user object. Ex. 2003 at 42-
`
`43. The Board found that the sensor data in Rosenberg were not gesture signals
`
`because “Petitioner, however, does not explain how Rosenberg ‘373 teaches
`
`further interpreting these raw device input data to discern ‘a movement of the body
`
`that conveys meaning or user intent.’” Id. Petitioner again propounds that exact
`
`same argument in this Petition, that the raw sensor data are gesture signals. See
`
`Pet. at 48 (“In particular, because the gesture signals are continually received from
`
`sensors 28 as the user manipulates the user object 34, multiple (i.e. at least first and
`
`second) gesture signals are received from any single sensor by local
`
`microprocessor 26.”).
`
`The Akamai factors, discussed below, all lead to an undeniable conclusion
`
`that Grounds 4 and 5 should be denied as inequitable to the Patent Owner.
`
`Whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent: The petition in IPR2016-01372 was directed to the same
`
`claims of the same patent.
`
`
`
`
`- 8 -
`
`
`
`

`

`Whether the petitioner knew or should have known of the prior art asserted
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`in the later petition when it filed its earlier petition: Grounds 4 and 5 of the present
`
`Petition and Grounds 2 and 3 in the petition filed in IPR2016-01372 cite the exact
`
`same prior art, Rosenberg '373 and Rosenberg '846.
`
`Whether at the time of filing of the later petition, the petitioner already
`
`received the patent owner’s preliminary response to the first petition or received
`
`the Board’s decision on whether to institute review in the earlier petition: The
`
`Petitioner received both the patent owner’s preliminary response in the first
`
`petition and the Board’s decision not to institute on these same grounds in that
`
`petition.
`
`The length of time that elapsed between when the petitioner had patent
`
`owner’s or Board’s analysis on the earlier petition and when petitioner filed the
`
`later petition: This Petition was filed on February 12, 2017. The Board’s decision
`
`in IPR2016-01372 issued on January 11, 2017. The Petitioner had a whole month
`
`to review the earlier decision.
`
`Whether the petitioner provides adequate explanation why we should permit
`
`another attack on the same claims of the same patent: The Petition does not even
`
`acknowledge the Board’s earlier decision, let alone provide any argument or
`
`analysis why Petitioner should be allowed another bite at the apple.
`
`
`
`
`- 9 -
`
`
`
`

`

`All of the factors cited and discussed above overwhelmingly favor a denial
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`of Grounds 4 and 5. The USPTO has already considered and rejected Grounds 4
`
`and 5. These Grounds should be denied under § 325(d).
`
`IV. THE INVENTION OF THE ‘571 PATENT
`
`The ‘571 patent is directed to a novel way of producing haptic effects in
`
`electronic devices. Ex. 2007 at ¶ 32. As noted in the Background of the ‘571
`
`patent “[t]raditional architectures that provide haptic feedback only with triggered
`
`effects are available, and must be carefully designed to make sure the timing of the
`
`haptic feedback is correlated to user initiated gestures or system animations.
`
`However, because these user gestures and system animations have variable timing,
`
`the correlation to haptic feedback may be static and inconsistent and therefore less
`
`compelling to the user.” Ex. 1001 at 1:49-56; Ex. 2007 at ¶ 33. The ‘571 patent
`
`discloses a dynamic haptic effect that is created using an interaction parameter.
`
`Ex. 1001, 10:22-26. The interaction parameter is generated with gesture signals.
`
`Ex. 1001, 15:3-7. A drive signal is then applied to a haptic output device in
`
`accordance with the interaction parameter. Ex. 1001, 15:8-9, Fig. 14. By way of
`
`example, the interaction parameter can be synthesized with one of the methods
`
`shown in Table 2 reproduced below.
`
`
`
`
`- 10 -
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`
`The interaction parameter is dynamic which provides the following advantages:
`
`
`The effect of providing or modifying a dynamic haptic effect in real-
`time during and even after a user gesture is that no two gestures such
`as page turns or finger swipes will feel the same to the user. That is,
`the dynamic haptic effect will always be unique to the user gesture,
`thereby creating a greater sense [of] connectedness to the device and
`more compelling user interface experience for the user as compared to
`a simple static haptic effect provided by a trigger event.
`
`Ex. 1001, 10:62-11:3.
`
`Claim 1 recites:
`1.
`A method for producing a haptic effect comprising:
`
`receiving a first gesture signal;
`
`
`
`
`- 11 -
`
`
`
`

`

`receiving a second gesture signal;
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`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.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art for the field of the ‘571 patent 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 of
`
`experience working with human machine interface systems, graphical user
`
`interfaces, haptic feedback systems, robotics, biomechanics, or mobile devices or
`
`equivalent embedded systems. Ex. 2007 at ¶ 24. A person of ordinary skill in the
`
`art would also have experience in haptic response technology in multi-touch or
`
`multi-gesture systems. Id. The conclusion regarding claim construction and
`
`validity contained herein would be the same regardless of whether a slightly higher
`
`or lower level of skill were assumed. Id. at ¶ 25.
`
`VI. CLAIM CONSTRUCTION
`
`A.
`
`“gesture signal” (claims 1-7, 23-29)
`
`In IPR2016-01372, the Board construed gesture signal to mean “a signal
`
`indicating a movement of the body that conveys meaning or user intent.”
`
`
`
`
`- 12 -
`
`
`
`

`

`IPR2016-01372, Paper 7 at 12. For purposes of this response, Patent Owner
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`applies that construction.
`
`Furthermore, the distinction recognized by the Board between signals that do
`
`and do not indicate a movement of the body that conveys meaning or user intent
`
`was also made by the applicant during prosecution. See Ex. 2003 at 9 (August 2,
`
`2012 Applicant Remarks in prosecution of U.S. Patent No. 8,279,193, a prior
`
`patent in the same family as the ‘571 patent) (“[Prior art reference raised by the
`
`examiner] Marvit describes gestures in the context of motion sensor engagement
`
`for a handheld device. For example, input movement may be in the form of
`
`translation and/or gestures. Translation-based input focuses on a beginning point
`
`and endpoint of a motion and difference between such beginning points and
`
`endpoints.”). The applicant’s comments, in addition to the disclosure of the Marvit
`
`reference, shows that translation input is not necessarily a gesture signal because it
`
`may not indicate a movement of the body that convey the requisite meaning or user
`
`intent that the Board has held must be signified by a “gesture signal.”
`
`B.
`
`“dynamic interaction parameter” (claims 1, 4-7, 12, 15-18, 23, 26-
`29)
`
`In IPR2016-01372, the Board construed this term to mean “a parameter that
`
`changes over time or reacts in real time based on a user’s interaction with a
`
`device.” For purposes of this response, Patent Owner applies that construction.
`
`
`
`
`- 13 -
`
`
`
`

`

`C.
`
`“vector signal” (claims 2, 13, 24)
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`The parties agree that the broadest reasonable construction of “vector signal”
`
`is “a signal that includes both a magnitude and direction.” See, e.g., Petition at 5.
`
`VII. GROUND 1: CLAIMS 1-4, 7, 23-26 AND 29 ARE NOT OBVIOUS
`OVER POUPYREV
`
`A.
`
`Poupyrev Does Not Disclose or Render Obvious Claim 1
`
`Claim 1 requires “generating a dynamic interaction parameter using the first
`
`gesture signal and the second gesture signal.” The dynamic interaction parameter
`
`is generated using both “a first gesture signal and a second gesture signal.” The
`
`dynamic interaction parameter is then used to provide a haptic output (“applying a
`
`drive signal to a haptic output device according to the dynamic interaction
`
`parameter”). Inserting Petitioner’s claim construction for gesture signal, the
`
`dynamic interaction parameter must be generated with a first signal indicating a
`
`movement of the body that conveys meaning or user intent and a separate second
`
`signal indicating a movement of the body that conveys meaning or user intent.
`
`That is, a single haptic output must be based on a first signal that conveys meaning
`
`or user intent and a separate second signal that conveys meaning or a user intent.
`
`None of the examples that the Petitioner points to in Poupyrev generate a haptic
`
`output from two separate gesture signals.
`
`
`
`
`- 14 -
`
`
`
`

`

`The Petitioner first points to the detection of position and pressure as being
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`two different gesture signals. Pet. at 10. However, position readings and pressure
`
`readings, in isolation, do not indicate a movement of the body that conveys
`
`meaning or user intent in Poupyrev's sytem. Instead, Poupyrev teaches that the
`
`information necessary to indicate a movement of the body that conveys meaning or
`
`user intent is available from the GUI controller. Ex. 2007 at ¶ 42.
`
`The detection of position and pressure is performed to determine a single
`
`gesture, not two different gestures. Ex. 2007 at ¶ 45. Referring to Fig. 1
`
`reproduced below, the system described in Poupyrev includes a Graphical User
`
`Interface Controller 112 that determines whether user input is a gesture. Ex. 1013
`
`at 7:14-18 (“The GUI controller 112 determines which GUI object the user 2 is
`
`intending to interact with. Further, depending on a) the current state of the GUI
`
`object and b) pressure value applied to the GUI object, the GUI controller 112
`
`determines the appropriate change in the state of the GUI object.”); Ex. 2007 at
`
`¶ 46.
`
`
`
`
`- 15 -
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`
`
`
`
`Fig. 4 of Poupyrev, reproduced below, shows the process performed by the
`
`Graphical User Interface Controller 112 to determine “a” gesture.
`
`- 16 -
`
`
`
`
`
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`
`This process determines a position of the user finger/pen and whether such
`
`input is within a GUI element in steps 210 and 211. Ex. 1013 at 8:25-31; Ex. 2007
`
`at ¶ 47. If the input is not within a GUI element, no gesture occurs, and the process
`
`returns to step 210. Ex. 2007 at ¶ 47. Thus, in the event that the user input is not
`
`within a GUI element, pressure information is not referenced at all in the process
`
`flow. Ex. 2007 at ¶ 47.
`
`In the event that a user input is within a GUI element, the process then
`
`determines if there is a pressing event in step 212. Ex. 1013 at 8:25-31; Ex. 2007
`
`at ¶ 48. If a pressing event is recognized, it provides an indication that the user
`
`
`
`
`- 17 -
`
`
`
`

`

`intended to interact with a particular GUI element. Ex. 2007 at ¶ 48. In this case,
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`the pressing event constitutes a gesture due to the user’s intent. But in Poupyrev
`
`this determination can be made only by relying on both a position reading and a
`
`pressure reading. Ex. 2007 at ¶ 48. If only position is known, or only pressure is
`
`known, there is insufficient information to indicate a movement of the body that
`
`conveys meaning or user intent. Id. at ¶ 49. Accordingly, neither the pressure
`
`reading nor the position reading can, standing in isolation, constitute a gesture
`
`signal. Id. at ¶¶ 49-50.
`
`In the single instance where Poupyrev mentions the word “gesture,” it
`
`confirms that a single “gesture event” would encompass both position and
`
`pressure, as opposed to decomposing the “gesture event” into separate gesture
`
`signals: “Such gesture event could be for example, impulse-like increase of
`
`pressure, i.e. the user quickly presses and releases the GUI object.” Ex. 1013 at
`
`10:7-9. Thus, the haptic output generated in Fig. 4 is a function of a single gesture
`
`determination (e.g. activating a GUI element), not two different gesture signals as
`
`required by the claims of the ‘571 patent. Ex. 2007 at ¶ 51.
`
`Poupyrev’s teaching that a gesture event relies on both is consistent with
`
`other discussions in Poupyrev of “interactions” that require complex sequences of
`
`pressure and position over time in order to determine a movement of the body that
`
`conveys meaning or user intent. Ex. 1013 at 7:47-54 (discussing processing
`
`
`
`
`- 18 -
`
`
`
`

`

`“interactions” in a prior art system). These interactions cannot be arbitrarily
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`subdivided into purported “gesture signals,” because these supposed gesture
`
`signals in isolation would not indicate a movement of the body that conveys
`
`meaning or user intent in Poupyrev's system. Ex. 2007 at ¶ 52.
`
`Each of the examples in Poupyrev cited by the Petitioner does not teach that
`
`a pressure or position reading, by itself, can indicate a movement of the body that
`
`conveys meaning or user intent. For example, Petitioner alleges that Poupyrev
`
`discloses “multiple ‘pressure’ gestures,” which actually depend on both pressure
`
`and position (i.e., whether the finger is “inside of the GUI object”). Pet. at 14-15;
`
`Ex. 2007 at ¶ 53. The Petitioner also cites to a “typical touch-screen interaction,”
`
`but does not identify any pressure or position reading that indicates a movement of
`
`the body that conveys meaning or user intent that is used to generate a haptic
`
`effect. Pet. at 14; Ex. 2007 at ¶ 53.
`
`Furthermore, the Petitioner’s reference to the “typical touch-screen
`
`interaction” does not accurately describe Poupyrev’s system, because Poupyrev
`
`makes clear that this interaction describes “related art,” rather than Poupyrev’s
`
`own system. See Pet. at 14; see also Ex. 1013 at 3:58-59 (“FIG. 2. is a schematic
`
`diagram showing an example of interaction with touch screens of prior art.”
`
`(emphasis added)). The Petitioner provides no explanation for why a POSITA
`
`would have modified Poupyrev to incorporate the prior art approach expressly
`
`
`
`
`- 19 -
`
`
`
`

`

`Case IPR2017-00896
`Patent No. 8,659,571
`
`distinguished by that reference. In fact, because the prior art approach discussed in
`
`Poupyrev does not include the advantage taught by Poupyrev of “measuring
`
`pressure applied to the touch screen” and basing haptic effects on the pressure
`
`measurement, a POSITA would have actively avoided using such an approach.
`
`See, e.g., Ex. 1013 at 3:39-46; Ex. 2007 ¶ 53.
`
`The fact that the position and pressure readings in Poupyrev identified by
`
`Petitioner are not gesture signals is confirmed by Petitioner’s expert on the ‘571
`
`patent in IPR2016-01372. In a deposition for that case, Petitioner’s expert, Dr.
`
`Baudisch, stated that moving a cursor with a finger may not be a gesture because
`
`“[i]t’s not clear what the intent is.” Ex. 2004 at 51:18. Thus, both Petitioner’s
`
`expert and Patent Owner’s expert agree that there must be a discernable intent to
`
`generate a gesture signal. See Ex. 2007 ¶ 54.
`
`As explained above, pressure and position measurements are not sufficient,
`
`on their own, to indicate a movement of the body that conveys meaning or user
`
`intent in Poupyrev’s system. Instead, it is only when the information from both
`
`pressure and position are combined together in Poupyrev that an intent can be
`
`discerned. As explained above, Poupyrev expressly states that the GUI controller
`
`112 determines meaning or user intent based upon both position and pressure. Ex.
`
`1013 at 7:14-18. This is readily shown by step 214 in Fig. 4 of Poupyrev, wherein
`
`
`
`
`- 20 -
`
`
`
`

`

`a haptic output is provided based on a “pressing event” that requires both
`
`Case IPR2017-00896
`Patent No. 8,659,571
`
`
`positional information and pressure information.
`
`Because pressure and position indications in Poupyrev are not sufficient to
`
`indicate a movement of the body that conveys meaning or user intent, they cannot
`
`constitute gesture signals. Ex. 2007 at ¶ 55. For this reason, the Petitioner has
`
`failed to show that Poupyrev discloses or renders obvious “generating a dynamic
`
`interaction parameter using the first gesture signal and the second gesture signal.”
`
`The only purported “dynamic interaction parameters” pointed to by Petitioner are
`
`based solely on either pressure or position readings—in other words, under
`
`Petitioner’s mapping of the claim elements, the first and second gesture signals are
`
`either