UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
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`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00897
`Patent No. 8,773,356
`___________________
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`
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`IMMERSION CORPORATION’S
`
`PATENT OWNER PRELIMINARY RESPONSE
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10175340
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00897
`Patent No. 8,773,356
`___________________
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`
`
`IMMERSION CORPORATION’S
`
`PATENT OWNER PRELIMINARY RESPONSE
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`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10175340
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION .................................................................................. 1
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`Case IPR2017-00897
`Patent 8,773,356
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`II.
`
`THIS PETITION SHOULD BE DENIED UNDER 35 U.S.C. §
`325(d) ...................................................................................................... 4
`
`III. THE PETITION SHOULD BE DENIED BECAUSE
`ESTOPPEL WILL PREVENT THE BOARD FROM FULLY
`CONSIDERING ANY OF PETITIONER’S GROUNDS ..................... 9
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`TABLE OF AUTHORITIES
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`Case IPR2015-00592
`Patent 7,075,585
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` Page(s)
`
`Cases
`Akamai Technologies, Inc. v. Limelight Networks, Inc.,
`IPR2017-00358 (PTAB May 2, 2017) ....................................... 2, 3, 4, 5, 7, 8
`
`BLD Services, LLC v. Link Technologies, LLC.,
`IPR2015-00723 (PTAB August 24, 2015) ..................................................... 8
`
`Dell Inc. v. Electronics & Telecomms. Research Institute,
`IPR2015-00549 Paper 10 ................................................................................ 9
`
`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, 8
`
`35 U.S.C. § 315(e)(1) ........................................................................................... 9
`
`35 U.S.C. § 316(a)(11) ......................................................................................... 9
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`35 U.S.C. § 325(d) ....................................................................................... 1, 4, 8
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`Other Authorities
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`37 C.F.R. § 42.23(a) ............................................................................................ 1
`
`37 C.F.R. § 42.108(a) .......................................................................................... 8
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`Case IPR2015-00592
`Patent 7,075,585
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`EXHIBIT LIST
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`Respondents’ Joint Notice of Prior Art, dated May 25, 2016
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`
`
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`Immersion
`Ex. 2001
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`Case IPR2017-00897
`Patent No. 8,773,356
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner Apple, Inc. did not submit a statement of material facts in this
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`Petition. Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a), and no
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`facts are admitted.
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`I.
`
`INTRODUCTION
`
`The Patent Trial and Appeal Board (“Board”) should deny Apple, Inc.’s
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`second petition for inter partes review (“Petition”) of U.S. Patent No. 8,773,356
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`(the “‘356 patent”) under 35 U.S.C. § 325(d) to stop Apple’s pattern of filing serial
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`petitions against Immersion Corp.’s (“Patent Owner”) patent portfolio in an effort
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`to harass Patent Owner and drive up litigation costs.
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`The ‘356 patent along with U.S. Patent Nos. 8,619,051 (the “‘051 patent”);
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`8,659,571 (the “‘571 patent”); 8,581,710 (the “‘710 patent”); 8,749,507 (the “‘507
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`patent”); 7,336,260 (the “‘260 patent”) and 7,808,488 (the “‘488 patent”) are the
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`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
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`Portable Electronic Devices Incorporating Haptics (Including Smartphones and
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`Laptops) and Components Thereof, ITC Investigation Nos. 337-TA-990 and -1004
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`(consolidated).
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`Apple has filed two petitions, sequential in time, for each patent asserted in
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`the aforementioned proceedings. The IPR petitions and dates for each patent are
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`listed below.
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`Case IPR2017-00897
`Patent No. 8,773,356
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`IPR #1
`Case No.
`IPR2016-01371
`IPR2016-01372
`IPR2016-01381
`IPR2016-01603
`IPR2016-01777
`IPR2016-01884
`IPR2016-01907
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`Filed
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`7-7-16
`7-7-16
`7-8-16
`8-12-16
`9-12-16
`9-23-16
`9-29-16
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`Board
`Decision
`1-11-17
`1-11-17
`1-11-17
`2-23-17
`4-27-17
`4-3-17
`4-3-17
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`Filed
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`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
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`Patent
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`‘051
`‘571
`‘356
`‘710
`‘507
`‘260
`‘488
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`
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`In each instance Apple waited for the Patent Owner to file a preliminary
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`response and/or the Board to make a decision before crafted a new, serial petition.
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`Apple filed the second Petition in this case on February 12, 2017, four months after
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`receiving Patent Owner’s Preliminary Response and over a month after the Board’s
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`decision. Moreover, Apple was aware of the primary references relied on in this
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`Petition (Fukumoto and Tsuji) well before the filing of its first IPR Petition
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`(IPR2016-01381) back on July 8, 2016.
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`This type of gamesmanship imposes an inequity on the Patent Owner.
`
`Akamai Technologies, Inc. v. Limelight Networks, Inc., IPR2017-00358, (PTAB
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`May 2, 2017) (Paper 9) at 12 (“We do not take lightly denying a petition on
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`grounds unrelated to its substantive patentability challenges. Here, however,
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`Petitioner’s strategy of adjusting its challenge in a second Petition based on the
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`Board’s feedback in an earlier Institution Decision imposes inequities on Patent
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`Case IPR2017-00897
`Patent No. 8,773,356
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`Owner. Further, inter partes review proceedings ‘are not to be used as tools for
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`harassment or a means to prevent market entry through repeated litigation and
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`administrative attacks on the validity of a patent. Doing so would frustrate the
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`purpose of the section as providing quick and cost effective alternatives to
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`litigation.’”). Here, Apple previously requested inter partes review of claims 1-3,
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`5, 7, 9-13, 15, 17, 19-23, 25 and 26 of the ‘356 patent on July 8, 2016. IPR2016-
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`01381, Paper 1. Patent Owner filed a Patent Owner Preliminary Response on
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`October 12, 2016. IPR2016-01381, Paper 6. In that proceeding, the Board
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`instituted trial on January 11, 2017. IPR2016-01381, Paper 7. In this proceeding,
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`and the listed proceedings above, Apple’s strategy has been to adjust its challenges
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`based on the Patent Owner arguments and on the Board’s feedback.
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`Apple’s strategy of holding back prior art and arguments in order to learn
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`from earlier Patent Owner filings and Institution Decisions imposes inequities on
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`Patent Owner. Further, inter partes review proceedings “are not to be used as tools
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`for harassment or a means to prevent market entry through repeated litigation and
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`administrative attacks on the validity of a patent. Doing so would frustrate the
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`purpose of the section as providing quick and cost effective alternatives to
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`litigation.” Akamai, IPR2017-00358, (PTAB May 2, 2017) (Paper 9) at 12. It
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`would be unjust to allow Apple to benefit from this gamesmanship of filing a serial
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`petition based on an earlier Board decision, especially when Apple was well aware
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`Case IPR2017-00897
`Patent No. 8,773,356
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`of the prior art cited in this Petition when it filed the first petition. Accordingly,
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`Patent Owner requests the Board to exercise its discretion and deny institution of
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`inter partes review.
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`II. THIS PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
`Institution of an inter partes review is discretionary under 35 U.S.C. §
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`314(a). Akamai, IPR2017-00358, (PTAB May 2, 2017) (Paper 9) at 6. The Board
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`should exercise its discretion and deny the petition under 35 U.S.C. § 325(d),
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`which states:
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`[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.
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`When deciding whether to institute a proceeding where a previous petition
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`has been filed on the same patent, the following equitable factors should be
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`considered:
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`(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 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, IPR2017-00358, (PTAB May 2, 2017) (Paper 9) at 9. As discussed
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`below, all of these factors favor denial of this petition.
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`Whether the same petitioner previously filed a petition directed to the same
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`claims of the same patent: The petition in the earlier IPR2016-01381 was directed
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`to the same claims, claims 1-3, 5, 7, 9-13, 15, 17, 19-23, 25 and 26 of the ‘356
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`patent, which is the same patent at issue in this Petition. This Petition adds three
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`dependent claim sets: dependent claims 4, 14, and 24 (same subject matter),
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`dependent claims 6 and 16 (same subject matter), and dependent claims 8 and 18
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`(same subject matter). However, these dependent claims should be given little
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`Case IPR2017-00897
`Patent No. 8,773,356
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`weight when considering the claims as a whole and that the Petition is essentially
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`directed to substantially the same claims.
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`Whether the petitioner knew or should have known of the prior art asserted
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`in the later petition when it filed its earlier petition: Apple was aware of the
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`primary prior art, Fukumoto and Tsuji, well before the first Petition (IPR2016-
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`01381) was filed back on July 8, 2016. Fukumoto is listed on page 2 of the
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`References Cited section of the ‘356 patent.
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`
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`Apple knew of the Tsuji reference by at least May 25, 2016 as evidenced by the
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`listing of this reference in Respondents’ Joint Notice of Prior Art filed in the ITC
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`proceeding, dated May 25, 2016. Ex. 2001-12 (internal page 43). On that same
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`day (May 25, 2016), Apple served an invalidity claim chart of the ‘356 patent
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`based on Tsuji.
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`Whether at the time of filing of the later petition, the petitioner already
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`received the patent owner’s preliminary response to the first petition or received
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`the Board’s decision on whether to institute review in the earlier petition: Apple
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`received both the patent owner’s preliminary response in the first petition, dated
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`Case IPR2017-00897
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`October 12, 2016, and the Board’s decision, issued on January 11, 2017, before
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`filing this Petition.
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`The length of time that elapsed between when the petitioner had patent
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`owner’s or Board’s analysis on the earlier petition and when petitioner filed the
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`later petition: This Petition was filed on February 12, 2017. The Board’s decision
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`in IPR2016-01381 issued on January 11, 2017. Apple had a whole month to
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`review the earlier decision. Additionally, Apple had four months to analyze the
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`patent owner preliminary response in IPR2016-01381.
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`Whether the petitioner provides adequate explanation why we should permit
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`another attack on the same claims of the same patent: Apple contends that this
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`second Petition is proper because it adds additional claims and is only the second
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`petition filed against this patent. Pet. at 3. However, Apple knew of the prior art
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`raised in this Petition well before it filed its first IPR petition (IPR2016-01381).
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`There is no reason Apple could not have filed this Petition long ago, and certainly
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`before the Board’s decision in the first IPR petition (IPR2016-01381). Apple
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`should not be able to dodge denial of this later filed Petition by merely adding
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`some dependent claims. Apple’s argument that this Petition is only the second
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`petition on the ‘356 patent is also unavailing. For example, the Akamai case
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`quoted above denied review of a second petition because of the unfair prejudice to
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`the Patent Owner and the waste of Board resources that would have resulted from
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`Case IPR2017-00897
`Patent No. 8,773,356
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`institution. See also BLD Services, LLC v. Link Technologies, LLC., IPR2015-
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`00723, (PTAB August 24, 2015) (Paper 7) involving only a second petition. The
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`expenditure of Board resources is especially significant given Apple’s clear
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`strategy of filing serial, follow-on Petitions for each patent asserted in the
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`underlying ITC investigation.
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`All of the Akamai factors show that this serial petition should be denied for
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`the same reasons articulated in Akami. As Akami explained:
`
`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.
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`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,
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`Patent Owner respectfully requests that the Board exercise its discretion under 35
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`U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to institute inter partes review of
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`claims 1-26 of the ‘356 patent.
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`III. THE PETITION SHOULD BE DENIED BECAUSE ESTOPPEL
`WILL PREVENT THE BOARD FROM FULLY CONSIDERING ANY
`OF PETITIONER’S GROUNDS
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`Case IPR2017-00897
`Patent No. 8,773,356
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`The Petition should be denied for the additional reason that when the Board
`
`issues a final written decision in IPR2016-01381, which is due by January 11,
`
`2018, Apple will be estopped from maintaining the vast majority of claims
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`(including all independent claims) challenged in this second Petition (IPR2017-
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`00897).
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`The Board instituted a trial on Apple’s first petition for review of the ‘356
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`patent on January 11, 2017. IPR2016-01381 at Paper 7. Under the current
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`schedule of that proceeding, the Board will reach a final written decision on the
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`instituted grounds by January 11, 2018. 35 U.S.C. § 316(a)(11). At that time,
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`Petitioner will be estopped from “maintain[ing] a proceeding before the Office
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`with respect to that claim on any ground that the petitioner raised or reasonably
`
`could have raised” in IPR2016-01381. 35 U.S.C. § 315(e)(1); see Dell Inc. v.
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`Electronics & Telecomms. Research Institute, IPR2015-00549 Paper 10 at 5-6
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`(denying IPR petition following final written decision on a first IPR, and quoting
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`Sen. Kyl in the Congressional Record that “This [estoppel] effectively bars such a
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`party or his real parties in interest or privies from later using inter partes review or
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`ex parte reexamination against the same patent”). As explained above, Petitioner
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`reasonably could have and should have raised the grounds presented in the current
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`Petition in the first IPR.
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`Patent No. 8,773,356
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`Because of the likelihood of a final written decision that would require
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`termination of this IPR (IPR2017-00897) as to a majority of the challenged claims
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`(all but a few dependent claims), the Board should exercise its discretion to deny
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`institution of a trial on the instant Petition. For example, if trial is instituted on the
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`grounds raised in the Petition, both the Board and litigant resources will be
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`expended dealing with claims which Petitioner will necessarily be unable to
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`maintain in an IPR proceeding once the Board reaches a final written decision in
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`IPR2016-01381.
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`Furthermore, the claims for which Petitioner will not be estopped consist of
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`three sets of dependent claims.1 Petitioner will be estopped as to every challenged
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`independent claim. But in order to establish the invalidity of the dependent claims,
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`Apple will necessarily have to argue and show invalidity of the independent
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`claims. This would effectively allow Apple to challenge the validity of even the
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`independent claims (regarding which Petitioner would be estopped) before the
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`Board, despite the estoppel provision. Such a result would greatly weaken the
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`preclusive effect of original IPR proceedings, and would encourage Petitioners
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`such as Apple to continue to engage in serial IPR petitions, exhausting both Board
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`1 Dependent claims 4, 14, and 24; dependent claims 6 and 16; and dependent
`claims 8 and 18, are not asserted in the ITC investigation.
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`and patent owner resources, whenever they find themselves involved in patent
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`Case IPR2017-00897
`Patent No. 8,773,356
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`litigation. Accordingly, Immersion respectfully requests that the Board authorize
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`its discretion to deny the Petition.
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`Date: May 22, 2017
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`Respectfully submitted,
`/s/ Michael R. Fleming
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`
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`Michael R. Fleming (Reg. No. 67,933)
`Babak Redjaian (Reg. No. 42,096)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Tel: (310) 277-1010
`Fax: (310) 203-7199
`Email: MFleming@irell.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on May 22, 2017,
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`a copy of the foregoing document IMMERSION CORPORATION’S PATENT
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`OWNER PRELIMINARY RESPONSE and EXHIBIT 2001 were served, by
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`Priority Mail Express upon the following:
`
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`703-773-4148 (phone)
`703-773-5200 (fax)
`Apple-Immersion-IPRs@dlapiper.com
`
`Brian Erickson, Reg. No. 48,895
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`512-457-7059 (phone)
`brian.erickson@dlapiper.com
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`
` /s/ Susan Langworthy
`By:
`Susan Langworthy
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`Page(s)
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`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
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`Pursuant to 37 C.F.R. § 42.24 (d), I certify that the present paper contains
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`2,219 words as counted by the word-processing program used to generate the
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`brief. This total does not include the tables of contents and authorities, the
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`caption page, table of exhibits, signature blocks, certificate of service, or this
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`certificate of word count.
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`Dated: May 22, 2017
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`
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`Respectfully submitted,
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`/s/ Babak Redjaian
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