Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: August 17, 2017
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`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 8,659,571 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
` Paper 10
`
`
` Entered: August 17, 2017
`
`
`
`
`
`
`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 8,659,571 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2017-00896
`Patent 8,659,571 B2
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`I. BACKGROUND
`A. Introduction
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Second Petition,”
`or “Second Pet.”) requesting an inter partes review of claims 1–7 and 23–29
`(the “challenged claims”) of U.S. Patent No. 8,659,571 B2 (Ex. 1001, “the
`’571 patent”). As discussed further below, the Second Petition challenges
`most of the same claims of the ’571 patent that Petitioner challenged in its
`prior petition in IPR2016-01372. Immersion Corporation (“Patent Owner”)
`filed a Preliminary Response (Paper 9, “Prelim. Resp.”).
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a). Under the circumstances of this case, for
`the reasons explained below, we exercise our discretion to not institute inter
`partes review on any of claims 1–7 and 23–29. In addition, we reject
`Petitioner’s second request for inter partes review of claims 1–7 and 23–29
`under 35 U.S.C. § 325(d) because the same prior art and substantially the
`same arguments previously were presented to the Board, by the same
`Petitioner, in IPR2016-01372.
`
`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 Incorporating Haptics (Including Smartphones and Smartwatches)
`and Components Thereof, 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
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`Components Thereof, No. 337-TA-1004 (USITC). Second Pet. 1; Paper 4,
`2. The ’571 patent is also the subject of an instituted trial proceeding in
`IPR2016-01372. Apple Inc. v. Immersion Corp., Case IPR2016-01372
`(PTAB Jan. 11, 2017) (Paper 7) (“1372 Dec. on Inst.”).
`
`C. The ’571 Patent
`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.
`
`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
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`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
`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
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`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.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 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.
`
`
`E. First Petition in IPR2016-01372
`On July 6, 2016, Petitioner filed a First Petition in IPR2016-01372
`requesting an inter partes review of claims 1–7, 12–18, and 23–29 of the
`’571 patent. Apple Inc. v. Immersion Corp., Case IPR2016-01372, Paper 1
`(“First Petition” or “First Pet.”). In the First Petition, Petitioner asserted the
`following grounds of unpatentability (First Pet. 3).
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`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`1–7, 12–18, and 23–29
`
`§ 103(a)
`
`Burrough1
`
`1, 2, 4–7, 12, 13, 15–18, 23,
`24, and 26–29
`
`§ 103(a)
`
`Rosenberg ’3732
`
`3, 14, and 25
`
`§ 103(a)
`
`Rosenberg ’373 and
`Rosenberg ’8463
`
`
`On January 11, 2017, based on the arguments and evidence presented
`in the First Petition, we instituted an inter partes review as to claims 1–4, 6,
`23–26, and 28 of the ʼ571 patent on the ground that these claims are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Burrough. 1372
`Dec. on Inst. at 45.
`We, however, declined to institute inter partes review of claims 12–18
`on any asserted ground because we were unable to determine the scope and
`meaning of certain terms recited in claims 12–18 that are governed by 35
`U.S.C. § 112 ¶ 6. Id. at 13–21. We also denied institution with respect to
`the following grounds of challenge because Petitioner did not demonstrate a
`reasonable likelihood of prevailing with respect to any of the claims
`challenged in these grounds:
`Claims 5, 7, 27, and 29 under § 103(a) as obvious over Burrough (id.
`at 36–37, 39–41);
`
`1 U.S. Patent Application Pub. No. 2010/0156818 Al (published June 24,
`2010) (“Burrough”).
`2 U.S. Patent No. 5,734,373 (issued Mar. 31, 1998) (Ex. 1004, “Rosenberg
`’373”).
`3 U.S. Patent No. 6,429,846 (issued Aug. 6, 2002) (Ex. 1006, “Rosenberg
`’846”).
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`Claims 1, 2, 4–7, 23, 24, and 26–29 under § 103(a) as obvious over
`Rosenberg ’373 (id. at 41–44); and
`Claims 3 and 25 under § 103(a) as obvious over the combination of
`Rosenberg ’373 and Rosenberg ’846 (id. at 44–45).
`
`F. Asserted Grounds of Unpatentability in the Second Petition
`On February 12, 2017, which was one month after our Decision on
`Institution in IPR2016-01372, Petitioner filed a Second Petition in this case
`requesting an inter partes review of claims 1–7 and 23–29 of the ’571
`patent. In its Second Petition, Petitioner asserts the following grounds of
`unpatentability (Second Pet. 3).
`
`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`1, 2, 4–7, 23, 24, and 26–29
`
`§ 103(a)
`
`Rosenberg ’373
`
`3 and 25
`
`1–4, 7, 23–26, and 29
`
`5 and 27
`
`6 and 28
`
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Rosenberg ’373 and
`Rosenberg ’846
`
`Poupyrev4
`
`Poupyrev and Primer5
`
`Poupyrev and Tecot6
`
`
`4 U.S. Patent No. 7,952,566 (issued May 31, 2011) (Ex. 1013, “Poupyrev”).
`5 Louis B. Rosenberg, A Force Feedback Programming Primer (Copyright
`1997) (Ex. 1017, “Primer”).
`6 Canadian Patent Application No. 2,059,893 (published Sept. 13, 1992)
`(Ex. 1015, “Tecot”).
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`II. ANALYSIS
`
`A. Discretionary Denial Under 35 U.S.C. § 325(d) of the Asserted Grounds
`Based on Rosenberg ’373 Alone or Rosenberg ’373 and Rosenberg ’846
`
`Patent Owner argues that the asserted grounds in this case based on
`Rosenberg ’373 alone and Rosenberg ’373 combined with Rosenberg ’846
`should be denied under 35 U.S.C. § 325(d) 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.” Prelim.
`Resp. 7.
`Section 325(d) provides, in pertinent part
`In determining whether to institute or order a proceeding under
`this chapter . . . 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.
`
`35 U.S.C. § 325(d) (emphases added). It is undisputed that Rosenberg ’373
`and Rosenberg ’846 asserted by Petitioner in this case are the same prior art
`references previously presented by Petitioner in IPR2016-01372. As
`discussed above, Petitioner challenges the same claims on the same grounds
`which were previously considered and denied in IPR2016-01372. See 1372
`Dec. on Inst. 41–45.
`Petitioner argues that the Second Petition is, nonetheless, proper under
`§ 325(d) because it is “only the second petition that Petitioner has filed
`regarding the ’571 patent.” Second Pet. 70. Petitioner, however, does not
`explain why circumstances presented here warrant us granting a general
`exception for a second petition addressing the same claims of the same
`patent under § 325(d). The discretionary rejection under § 325(d) is fact
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`specific, and, under appropriate circumstances, other Board panels have
`exercised their discretion to reject second challenges to the same claims of
`the same patent under § 325(d). See, e.g., Conopco, Inc. v. Proctor &
`Gamble Co., Case IPR2014-00506, slip op. at 3–4 (PTAB Dec. 10, 2014)
`(Paper 25) (Informative), and slip op. at 6 (PTAB July 7, 2014) (Paper 17)
`(rejecting a second petition because “the same or substantially the same
`prior art” previously was presented to the Board); NVIDIA Corp. v. Samsung
`Elec. Co. Ltd., Case IPR2016-00134, slip op. at 12–14 (PTAB May 4, 2016)
`(Paper 9); Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Case
`IPR2017-00765, slip op. at 12 (PTAB July 31, 2017) (Paper 7). The case for
`rejecting a second challenge to the same claims of the same patent is
`especially strong when, as is the case here, exactly the same prior art is
`presented for a second time.
`In addition, Patent Owner asserts that Petitioner again presents the
`same argument that the sensor data generated in Rosenberg ’373 are gesture
`signals, which we found to be unpersuasive in IPR2016-01372. Prelim.
`Resp. 8 (citing Second Pet. 48; 1372 Dec. on Inst. 42–43). Compared to the
`First Petition, the Second Petition includes a more detailed discussion of
`why the sensor data of Rosenberg ’373 purportedly constitute “gesture
`signals” as claimed, including how the sensor data from a joystick is
`“interpreted” to indicate the user’s intent to move a simulated race car in a
`video game. Second Pet. 44–47. Nonetheless, upon reviewing Petitioner’s
`arguments and evidence in both proceedings, we determine that the
`arguments are “substantially the same” within the meaning of § 325(d).
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`Furthermore, to the extent there are any substantive differences in the
`arguments, Petitioner does not provide any persuasive reason why the
`purported different or new arguments presented in the Second Petition could
`not have been presented in the First Petition. See Samsung Elec. Co. Ltd. v.
`Rembrandt Wireless Techs., LP, Case IPR2015-00114, slip op. at 6 (PTAB
`Jan. 28, 2015) (Paper 14) (“[I]t is more efficient for the parties and the
`Board to address a matter once rather than twice.”); ZTE Corp. v.
`ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB
`Sept. 25, 2013) (Paper 12) (“The Board is concerned about encouraging,
`unnecessarily, the filing of petitions which are partially inadequate.”).
`As discussed above, the Second Petition in this case was filed about
`one month after our Decision on Institution in IPR2016-01372 and
`challenges the same claims on the same grounds, which were denied in
`IPR2016-01372 on merits due to substantive deficiencies in Petitioner’s
`argument or evidence. To the extent Petitioner’s argument in the Second
`Petition addresses the deficiencies we identified in the First Petition, we
`decline to allow a second attack on the same claims of the same patent based
`on the same prior art in this case because, absent good cause, a subsequently
`filed petition that only corrects defects identified by a Board decision in a
`prior petition typically is not granted. See, e.g., Xactware Sols., Inc. v. Eagle
`View Techs., Inc., Case IPR2016-01775, slip op. at 6 (PTAB Apr. 18, 2017)
`(Paper 21); NetApp Inc. v. Crossroads Sys., Inc., IPR2015-00776, slip op. at
`8 (PTAB Sept. 8, 2015) (Paper 13); Butamax Advanced Biofuels LLC v.
`Gevo, Inc., Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014)
`(Paper 8).
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`Nor has Petitioner presented an adequate reason or explanation why it
`should be given the opportunity to correct defects from a prior petition. See
`Pet. 70. Petitioner cites the statement that “it is unrealistic to assume a
`second petition will not attempt to address deficiencies of an earlier petition”
`from a prior Board decision. Id. (quoting Microsoft Corp. v. Bradium Techs.
`LLC, Case IPR2016-00448, slip op. at 10 (PTAB July 25, 2016) (Paper 9)).
`Petitioner’s argument is unpersuasive because it does not explain the
`relevance of the IPR2016-00448 decision to this case. As discussed above,
`discretionary rejection under § 325(d) is fact specific, and each case depends
`on its own facts. Hence, Petitioner’s citation to the IPR2016-00448 decision
`is unpersuasive because Petitioner does not explain how the specific facts
`and circumstances of IPR2016-00448 are applicable to the circumstances
`presented in this case.
`Accordingly, based on the foregoing, and under the circumstances of
`this case, we exercise our discretion to reject Petitioner’s second request for
`inter partes review of claims 1–7 and 23–29 as obvious over Rosenberg
`’373 or as obvious over the combination of Rosenberg ’373 and Rosenberg
`’846 under 35 U.S.C. § 325(d) because the same prior art and substantially
`the same arguments previously were presented to the Board in IPR2016-
`01372.
`
`B. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`Patent Owner asserts that the entire Second Petition should be denied
`under § 325(d) because (1) it would be inequitable to Patent Owner to allow
`Petitioner’s second challenge to the same claims when Petitioner benefited
`from Patent Owner’s preliminary response and the Board’s Decision on
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`Institution in IPR2016-01372, and (2) Petitioner was aware of the primary
`prior art references asserted in the Second Petition before the filing of its
`First Petition in IPR2016-01372. Prelim. Resp. 2–7 (citing Akamai
`Technologies, Inc. v. Limelight Networks, Inc., Case IPR2017-00358 (PTAB
`May 2, 2017) (Paper 9)). We agree with Patent Owner that, in addition to
`implicating the issue of whether “the same or substantially the same prior art
`or arguments previously were presented to the Office” under § 325(d), the
`specific circumstances of this case invoke a concern, under 35 U.S.C.
`§ 314(a), over the potential inequity of Petitioner filing multiple attacks,
`adjusting along the way based on Patent Owner’s contentions and the
`Board’s decision responding to a prior challenge. See NVIDIA, slip op. at 8.
`Past Board decisions have considered the following factors as relevant
`to that concern when deciding whether to exercise their discretion to not
`institute review under 35 U.S.C. § 314(a):
`(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 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 the
`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.
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`See Akamai, slip op. at 9; Xactware Sols., Inc. v. Eagle View Techs., Inc.,
`Case IPR2017-00034, slip op. at 7–8 (PTAB April 13, 2017) (Paper 9). We
`address each of these factors in turn, but note that not all the factors need to
`weigh against institution for us to exercise our discretion under § 314(a).
`
`Petitioner Previously Filed a Petition Directed to the Same Claims of the
`Same Patent
`
`As discussed above, Petitioner’s First Petition included the challenges
`to claims 1–7 and 23–29 of the ’571 patent, which Petitioner again
`challenges in the Second Petition. Among these claims, we instituted an
`inter partes review of claims 1–4, 6, 23–26, and 28 based on the First
`Petition. 1372 Dec. on Inst. at 45. We denied institution as to claims 5, 7,
`27, and 29. Id. at 36–37, 39–41. Because Petitioner previously filed the
`First Petition directed to the same claims of the same patent, this factor
`weighs against institution.
`
`Petitioner Knew of the Prior Art Asserted in the Second Petition When It
`Filed the First Petition
`
`Out of concern for fundamental fairness, in determining whether to
`deny institution on subsequent petitions challenging the same claims of the
`same patent, we look to whether a petitioner knew or should have known of
`the prior art asserted in its later case when it filed the earlier one. See
`Conopco, Case IPR2014-00506 (Paper 25), slip op. at 4–5. Here, Petitioner
`knew of the prior art asserted in the Second Petition when it filed the First
`Petition.
`The Second Petition relies on five references—Rosenberg ’373,
`Rosenberg ’846, Poupyrev, Primer, and Tecot. Rosenberg ’373 and
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`Poupyrev are primary references in that the asserted grounds all include
`either Rosenberg ’373 or Poupyrev. Petitioner knew of Rosenberg ’373 and
`Rosenberg ’846 when it filed its First Petition because the First Petition
`asserted grounds involving those two references. Petitioner also knew of
`Poupyrev and Primer when it filed the First Petition because Petitioner
`included Poupyrev and Primer in its Notice of Prior Art filed in the related
`ITC proceeding. See Ex. 2002, 8 (identifying Poupyrev), 18 (identifying
`Primer). Further, the signature block of the Notice of Prior Art in the ITC
`proceeding indicates that the paper was submitted by Petitioner’s backup
`counsel in this proceeding prior to Petitioner’s filing of the First Petition.
`Ex. 2002, 2; Pet. 1.
`Although there is not sufficient evidence in the record before us that
`Petitioner was aware of Tecot prior to filing the First Petition, we note that
`Tecot was published on September 13, 1992. Ex. 1015, at [43]. Petitioner
`says nothing about whether it reasonably should have known about Tecot or
`why it could not have presented Tecot in the First Petition. See Second Pet.
`34–38, 70.
`Because Petitioner knew of four out of the five references, including
`the two primary references, asserted in its Second Petition when it filed its
`First Petition, and provided no explanation of why it could not have raised
`the last reference in the First Petition, this factor weighs against institution.
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`Petitioner Had Patent Owner’s Preliminary Response and the Board’s
`Institution Decision on the First Petition When Petitioner Filed the Second
`Petition
`
`Patent Owner filed its Preliminary Response to the First Petition on
`October 13, 2016. See IPR2016-01372, Paper 6. We issued our Decision on
`Institution addressing the First Petition on January 11, 2017. 1372 Dec. on
`Inst. 1. Hence, when Petitioner filed the Second Petition on February 12,
`2017 (see Second Pet. 70), Petitioner had both Patent Owner’s Preliminary
`Response and the Board’s Decision on whether to institute review
`addressing the First Petition. Consequently, this factor weighs against
`institution.
`
`The Elapsed Time Between When Petitioner Had Patent Owner’s
`Preliminary Response and the Board’s Institution Decision on the First
`Petition and When Petitioner Filed the Second Petition
`
`The delay between when Petitioner had Patent Owner’s Preliminary
`Response and the Board’s Decision on Institution addressing the First
`Petition and when Petitioner filed the Second Petition left Petitioner with
`sufficient time to take advantage of Patent Owner’s and the Board’s
`responses to the First Petition. When Petitioner filed its Second Petition on
`February 12, 2017, Petitioner had Patent Owner’s Preliminary Response to
`the First Petition for nearly four months, and our Decision on Institution
`addressing the First Petition for one month. Thus, Petitioner not only had
`the relevant materials from Patent Owner and the Board when it filed its
`Second Petition, but had ample time to take advantage of those materials in
`crafting its arguments in the Second Petition. Indeed, the Second Petition
`addresses claims 5, 7, 27, and 29, for which we denied institution in our
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`prior Decision on Institution in IPR2016-01372. See Second Pet. 26–30,
`31–34; 1372 Dec. on. Inst. 36–37, 39–41. As discussed above, the Second
`Petition also presents a second challenge to claims 1–7 and 23–29 based on
`Rosenberg ’373 alone or Rosenberg ’373 combined with Rosenberg ’846,
`which were previously denied on merits in the 1372 Decision on Institution.
`See Second Pet. 39–70; 1372 Dec. on. Inst. 41–45. As a result, this factor
`weighs against institution.
`
`Petitioner Has Not Provided an Adequate Reason Why We Should Permit
`Another Attack on the Same Claims
`
`Weighed against the factors outlined above are any non-strategic
`reasons Petitioner offers for the delay in filing its Second Petition or any
`other justification for allowing its Second Petition to go forward. Petitioner
`addresses our discretion to deny institution only briefly, citing a previous
`Board decision in IPR2016-00448 and stating that Petitioner has not
`“‘overwhelmed Patent Owner with an unreasonable number of challenges of
`patentability’ because this is only the second petition that Petitioner has filed
`regarding the ’571 patent,” and that “it is unrealistic to assume a second
`petition will not attempt to address deficiencies of an earlier petition.”
`Second Pet. 70 (quoting IPR2016-00448, Paper 9, 10). These explanations,
`without more, do not justify permitting Petitioner to gain an unfair
`advantage by waiting to file its Second Petition so that it can take advantage
`of our Decision on the First Petition. Consequently, this factor also weighs
`against institution.
`
`16
`
`
`
`IPR2017-00896
`Patent 8,659,571 B2
`
`
`Weighing the Factors for Discretionary Non-Institution Under § 314(a)
`
`We view Petitioner’s strategy—namely, withholding additional
`challenges until receiving the Board’s feedback to help shape those
`challenges—as unfair to Patent Owner. With Patent Owner’s Preliminary
`Response and the Board’s Institution Decision in the IPR2016-01372
`proceeding, and ample time to take advantage of those materials, Petitioner
`was able to use the deficiencies outlined in the 1372 Decision on Institution
`in an attempt to improve upon the First Petition. The Second Petition relies
`upon Poupyrev and Primer to account for the claim elements we found
`lacking in the asserted ground of challenge to claims 5, 7, 27, and 29 in the
`First Petition. See Second Pet. 26–30, 31–34; 1372 Dec. on. Inst. 36–37,
`39–41. In addition, as discussed above in Section II.A, compared to the First
`Petition, the Second Petition includes a more detailed discussion of why the
`sensor data of Rosenberg ’373 purportedly constitute “gesture signals” as
`claimed, including how the sensor data from a joystick is “interpreted” to
`indicate the user’s intent to move a simulated race car in a video game.
`Second Pet. 44–46. This expanded discussion appears to address the
`deficiencies of the First Petition we identified in our Decision on Institution
`in the IPR2016-01372 proceeding. See 1372 Dec. on. Inst. 41–43.
`We do not take lightly denying a petition on grounds unrelated to its
`substantive patentability challenges. Nor do we hold that multiple petitions
`against the same claims of the same patent are never permitted. Here,
`however, Petitioner’s strategy of morphing its challenges over multiple
`petitions based on the Board’s feedback imposes inequities on Patent Owner.
`Weighing the respective factors under the circumstances of this case, which,
`
`17
`
`
`
`IPR2017-00896
`Patent 8,659,571 B2
`
`
`as we explain above, all favor exercising our discretion not to institute, we
`view the prejudice to Patent Owner to be greater than that to Petitioner. We,
`therefore, decline to institute inter partes review under 35 U.S.C. § 314(a).
`
`
`III. CONCLUSION
`For all of the reasons discussed above, we exercise our discretion
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to institute review in
`this proceeding with respect to claims 1–7 and 23–29 of the ’571 patent, and
`also reject Petitioner’s request for inter partes review of claims 1–7 and 23–
`29 under 35 U.S.C. § 325(d).
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’571 patent, and no trial is instituted.
`
`
`
`
`
`
`18
`
`
`
`IPR2017-00896
`Patent 8,659,571 B2
`
`
`PETITIONER:
`
`James Heintz
`jim.heintz@dlapiper.com
`
`Robert Buergi
`robert.buergi@dlapiper.com
`
`PATENT OWNER:
`Michael Fleming
`mfleming@irell.com
`
`Babak Redjaian
`bredjaian@irell.com
`
`
`
`
`19
`
`
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