Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`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 IPR2017-00897
`Patent 8,773,356 B2
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and MINN
`CHUNG, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`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 IPR2017-00897
`Patent 8,773,356 B2
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and MINN
`CHUNG, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Second Petition,”
`or “Second Pet.”) requesting an inter partes review of claims 1–26 of U.S.
`Patent No. 8,773,356 B2 (Ex. 1101, “the ’356 patent”). As discussed further
`below, the Second Petition challenges most of the same claims of the ’356
`patent that Petitioner challenged in its prior Petition filed in Case IPR2016-
`01381. Patent Owner, Immersion Corporation, filed a Corrected Preliminary
`Response. Paper 10 (“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, and
`for the reasons explained below, we exercise our discretion to not institute
`inter partes review on any of claims 1–26 of the ’356 patent.
`
`B. Related Matters
`According to the parties, the ’356 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
`Components Thereof, No. 337-TA-1004 (USITC) (“related ITC
`proceeding”). Second Pet. 1; Paper 4, 2. The ’356 patent is also the subject
`of an instituted trial proceeding in Case IPR2016-01381. Apple Inc. v.
`Immersion Corp., Case IPR2016-01381 (PTAB Jan. 11, 2017) (Paper 7)
`(“1381 Dec. on Inst.”).
`
`2
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`Fukumoto1
`
`Fukumoto and
`Roysden2
`Tsuji3
`
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–26 of the ’356 patent are
`unpatentable based on the following grounds:
`Reference(s)
`Statutory
`Challenged Claims
`Basis
`35 U.S.C.
`§ 103(a)
`35 U.S.C.
`§ 103(a)
`35 U.S.C.
`§ 103(a)
`
`1–3, 5, 9–13, 15, 18–23,
`25, and 26
`8 and 18
`
`1–7, 9–17, and 19–26
`
`D. The ’356 Patent
`The ’356 patent describes a system and method for providing tactile
`sensations to input devices, including non-mechanical input devices, such as
`soft-keys displayed on a screen. See Ex. 1101, Abstract; 3:10–15. Figure 5
`of the ’356 patent is reproduced below.
`
`
`1 International Patent Application No. WO 02/12991 A1, Pub. Feb. 14, 2002
`(Exs. 1107, 1108 (English translation)).
`2 U.S. Patent No. 5,575,576, iss. Nov. 19, 1996 (Ex. 1115).
`3 Japanese Published Application No. H11-212725, pub. Aug. 6, 1999
`(Exs. 1110, 1111 (English translation)).
`
`3
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`
`Figure 5 depicts Personal Digital Assistant (PDA) 31 having pressure-
`sensitive touchpad 30 as an input device. Id. at 11:11–13. As shown in
`Figure 5, display 33 of PDA 31 displays software-generated buttons or keys,
`e.g., soft-keys 36a–36i, which provide a graphical user interface for the
`PDA. Id. at 11:40–43. As a graphical object, each soft-key occupies a
`distinct location on the display. Id. at 11:44–45. In the embodiment
`depicted in Figure 5, the PDA can function as a mobile telephone, and the
`soft-keys are arranged as a telephone keypad to provide the same
`functionality as the mechanical keys on a conventional telephone keypad.
`Id. at 11:45–48. PDA 31 also includes an actuator that generates and
`transmits tactile sensations to display 33 and touchpad 30. Id. at 11:22–39;
`Fig. 6.
`
`4
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`When a soft-key is selected by touching touchpad 30 at an appropriate
`location on display 33, a controller determines the touched location on the
`display and identifies the soft-key corresponding to the touched location.
`Based on this information, the controller causes the actuator to provide a
`corresponding tactile sensation. Id. at 11:53–63. In addition, the pressure
`applied to a particular soft-key is detected by the controller or a separate
`pressure detector such that the detected pressure can be used to distinguish
`different inputs for soft-keys that represent multiple inputs—e.g., 2, A, B, or
`C for soft-key 36b. Id. at 12:6–12; Fig. 5. For such keys, each specific input
`corresponds to a distinct amount of pressure applied to a particular soft-key.
`Id. at 12:6–8.
`Figure 8 of the ’356 patent is reproduced below.
`
`
`
`5
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`Figure 8 shows a flowchart illustrating a process of detecting an input signal,
`the input position or location data, and the pressure data; determining the
`desired function corresponding to the input device and the detected data; and
`producing a tactile sensation corresponding to the determined function. Id.
`at 13:52–14:14. In steps 54 and 55 of Figure 8, the controller, having
`obtained the input data from the input device, accesses a memory device and
`a database stored in the memory device, which contains information
`necessary to determine, based on the input data, the desired function and the
`corresponding tactile sensation. Id. at 14:15–20.
`In an embodiment, this information—i.e., the associations between the
`detected input data, the functions of the input device, and the corresponding
`tactile sensations to be generated—is maintained in a table, such as the table
`shown in Figure 9. Id. at 14:21–25. Figure 9 of the ’356 patent is
`reproduced below.
`
`
`
`6
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`Figure 9 shows a table of exemplary grouping of associations for
`various input devices. As shown in Figure 9, the table maintains, for each
`input device, the possible combinations of input signals, position data, and
`pressure data, as well as the specified function and the distinct tactile
`sensation corresponding to each combination. Id. at 14:23–30. Based on the
`data obtained from monitoring the input device, the controller reads the table
`and determines the associated function and the corresponding tactile
`feedback. Id. at 14:32–35. The controller then causes the actuator to
`generate the specified tactile sensation. Id. at 11:53–66; 14:46–50.
`
`E. Illustrative Claim
`Claims 1, 12, and 22 are independent. Claim 1 is illustrative of the
`challenged claims and recites:
`1. A method, comprising:
`outputting a display signal configured to display a graphical
`object on a touch-sensitive input device;
`receiving a sensor signal from the touch-sensitive input device, the
`sensor signal indicating an object contacting the touch-sensitive input
`device;
`determining an interaction between the object contacting the touch-
`sensitive input device and the graphical object; and
`generating an actuator signal based at least in part on the interaction
`and haptic effect data in a lookup table.
`Ex. 1101, 20:16–26.
`
`7
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`II. ANALYSIS
`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`Patent Owner asserts that the entire Second Petition should be denied
`because (1) it would be inequitable to Patent Owner to allow Petitioner’s
`second challenge to the same claims when Petitioner had the opportunity to
`see Patent Owner’s preliminary response and the Board’s Decision on
`Institution in Case IPR2016-01381, and (2) Petitioner was aware of the
`primary prior art references asserted in the Second Petition before the filing
`of its First Petition in Case IPR2016-01381. Prelim. Resp. 4–8 (citing
`Akamai Technologies, Inc. v. Limelight Networks, Inc., Case IPR2017-00358
`(PTAB May 2, 2017) (Paper 9)). We are persuaded that 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, with the benefit of
`having seen Patent Owner’s contentions and the Board’s decision regarding
`a prior challenge by the same Petitioner to the same patent.
`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
`
`8
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`(e) whether the petitioner provides adequate explanation why we
`should permit another attack on the same claims of the same patent.
`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).
`
`Whether Petitioner Previously Filed a Petition Directed to the Same Claims
`of the Same Patent
`
`In its prior Petition, Petitioner filed a petition challenging claims 1–3,
`5, 7, 9–13, 15, 17, 19–23, 25, and 26 of the ’356 patent. See 1381 Dec. on
`Inst. at 2. Petitioner again challenges these claims in the Second Petition.
`We instituted an inter partes review of all of these claims in Case IPR2016-
`01381. 1381 Dec. on Inst. at 27. As Petitioner and Patent Owner note, the
`Second Petition additionally challenges certain dependent claims. Pet. 3;
`Prelim. Resp. 5–6. Thus, on the whole, the Second Petition overwhelmingly
`challenges the same claims as the prior Petition filed in Case IPR2016-
`01381. Accordingly, this factor weighs against institution.
`
`Whether Petitioner Knew of the Prior Art Asserted in the Second Petition
`When It Filed the Prior 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, Inc. v. Proctor & Gamble Co., Case IPR2014-00506, slip op. at 4–
`5 (PTAB Dec. 10, 2014) (Paper 25) (Informative). Here, Petitioner knew of
`
`9
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`Fukumoto and Tsuji, cited in the Second Petition, when it filed the prior
`Petition.
`As Patent Owner notes, the References Cited section on the face of
`the ’356 patent lists Fukumoto. Ex. 1101, 2; Prelim. Resp. 6. Petitioner also
`knew of Tsuji when it filed the prior Petition, as Petitioner included Tsuji in
`its Notice of Prior Art filed in the related ITC proceeding. See Ex. 2002, 12.
`Further, the signature block of the Notice of Prior Art in the related ITC
`proceeding indicates that the paper was submitted by Petitioner’s backup
`counsel in this proceeding prior to Petitioner’s filing of the prior Petition.
`Ex. 2002, 3; Pet. 1. Although there is not sufficient evidence in the record
`before us that Petitioner was aware of Roysden before to filing the prior
`Petition, Petitioner says nothing about whether it reasonably should have
`known about Roysden. See Second Pet. 3–4.
`Accordingly, because Petitioner knew of the primary references it
`uses to support its challenges, and provided no explanation of why it could
`not have raised the other reference in the prior Petition, this factor weighs
`against institution.
`
`Whether Petitioner Had Patent Owner’s Preliminary Response Or the
`Board’s Institution Decision on the Prior Petition When Petitioner Filed the
`Second Petition
`
`Patent Owner filed its preliminary response to the prior Petition on
`October 12, 2016. See Case IPR2016-01381, Paper 6. We issued our
`Decision on Institution addressing the prior Petition on January 11, 2017.
`1381 Dec. on Inst. at 1. Hence, when Petitioner filed the Second Petition on
`February 12, 2017 (see Second Pet. 96), Petitioner had both Patent Owner’s
`Preliminary Response and the Board’s Decision on whether to institute
`
`10
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`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 prior Petition. When Petitioner filed its Second Petition on
`February 12, 2017, Petitioner had Patent Owner’s Preliminary Response to
`the First Petition for four months, and our Decision on Institution addressing
`the prior 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. As a result, this factor weighs against
`institution.
`
`Whether Petitioner Has 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. Petitioner asserts
`that the Second Petition addresses additional claims based on different prior
`art. Pet. 3. Petitioner also cites a previous Board decision in Case IPR2016-
`00448 and states that Petitioner has not “‘overwhelmed Patent Owner with
`
`11
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`an unreasonable number of challenges of patentability’ because this is only
`the second petition that Petitioner has filed regarding the ’356 patent.” Id.
`Petitioner also asserts that the Second Petition challenges additional claims
`because the additional claims are asserted in the related district court
`proceeding, but were not asserted in the related ITC investigation. Id. at 3–
`4. Petitioner states that it omitted challenges of the additional claims from
`the prior Petition in order to conserve resources of the Board and the parties.
`Id.
`
`These explanations, without more, do not justify permitting Petitioner
`to wait to file its Second Petition until after it has had the advantage of
`seeing our Decision on Institution in the First Petition. Contrary to
`Petitioner’s suggestion, the decision to file two separate petitions to
`challenge the claims asserted in the related ITC and the district court would
`not appear to conserve either the Board’s or the parties’ resources. Rather, it
`would appear to expend more resources than challenging all of the claims in
`one Petition. Indeed, it would appear Petitioner could have simultaneously
`challenged all of the claims asserted in the related ITC and district court
`proceedings, as the prior Petition demonstrates Petitioner knew of both the
`ITC and the district court actions when the prior Petition was filed. See Case
`IPR2016-01381, Paper 1, 1–2. Consequently, this factor also weighs against
`institution.
`
`Weighing the Factors for Discretionary Non-Institution Under § 314(a)
`
`We view Petitioner’s strategy in this particular case as burdensome to
`Patent Owner and the Board with no persuasive explanation of why it should
`be allowed. Petitioner does not even attempt to assert that it could not have
`
`12
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`raised the challenges in the Second Petition simultaneously with the
`challenges raised in the prior Petition. And we find Petitioner’s explanation
`of why it chose to delay filing the Second Petition unpersuasive. 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, 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
`with respect to claims 1–26 of the ’356 patent.
`
`IV. ORDERS
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’356 patent, and no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`13
`
`
`
`Case IPR2017-00897
`Patent 8,773,356 B2
`
`
`PETITIONER:
`James Heintz
`jim.heintz@dlapiper.com
`
`Brian Erickson
`brian.erickson@dlapiper.com
`
`
`PATENT OWNER:
`
`Michael Fleming
`mfleming@irell.com
`
`Bakak Redjaian
`bredjaian@irell.com
`
`
`14
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
