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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 IPR2017-01310
`Patent No. 8,749,507
`___________________
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`
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`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
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`10205460
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`TABLE OF CONTENTS
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`Case IPR2017-01310
`Patent No. 8,749,507
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`Page
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`INTRODUCTION ........................................................................................ 1
`
`THE ‘507 PATENT ...................................................................................... 4
`
`PROCEDURAL HISTORY ......................................................................... 5
`
`
`I.
`
`II.
`
`III.
`
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`35 U.S.C. §§ 314(A) AND 325(D) TO DENY INSTITUTION .................. 6
`
`V.
`
`PERSON HAVING ORDINARY SKILL IN THE ART (POSITA) ......... 13
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`VI. CLAIM CONSTRUCTION ....................................................................... 14
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`VII. CLAIMS 1-18 ARE NOT OBVIOUS OVER ASTALA IN VIEW
`OF SHAHOIAN ......................................................................................... 18
`
`A. Neither Astala Nor Shahoian Discloses The “determining a
`press if: . . . the change in pressure is greater than a change in
`pressure threshold” Limitation ......................................................... 18
`
`1.
`
`2.
`
`3.
`
`Astala Consistently Teaches Determining Touch Inputs
`Based Only On Pressure And Time ....................................... 19
`
`Astala Uses “Change In Pressure” For An Entirely
`Different Purpose, Unrelated To “Determining A Press” ..... 21
`
`Petitioner’s Conclusory Obviousness Arguments Fail .......... 28
`
`Astala Contains No Disclosure Relating To Haptics, and
`Shahoian Fails to Remedy the Deficiency ....................................... 30
`
`Astala and Shahoian Do Not Render Obvious Claims 2, 10,
`and 15 ............................................................................................... 32
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`B.
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`C.
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`D. Additional Dependent Claims .......................................................... 36
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`VIII. CONCLUSION ........................................................................................... 37
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`TABLE OF AUTHORITIES
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`Case IPR2017-01310
`Patent No. 8,749,507
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` Page(s)
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`Cases
`In re. Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 29
`
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 29
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 195 L. Ed. 2d 423 (2016) ......................................................... 14
`
`PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 14
`
`Statutes
`
`35 U.S.C. § 103(a) ..................................................................................................... 2
`
`35 U.S.C. § 314(a) ......................................................................................... 7, 14, 38
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`35 U.S.C. § 325(d) ......................................................................................... 7, 12, 38
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`Other Authorities
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`37 C.F.R. § 42.100(b) .............................................................................................. 14
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`37 C.F.R. § 42.108(a) ............................................................................................... 14
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`EXHIBIT LIST
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`Declaration of Daniel Wigdor, Ph.D. in Support of Immersion
`Corporation’s Patent Owner Preliminary Response
`Curriculum Vitae of Daniel Wigdor, Ph.D.
`
`Excerpt from Immersion’s ITC Complaint (ITC Inv. No. 337-TA-
`1004/990)
`Excerpt from April 27, 2017 Hearing Transcript (International
`Trade Commission)
`Excerpt from Apple’s Invalidity Claim Chart for U.S. Patent No.
`8,749,507 Based On U.S. Patent No. 6,590,568 (Astala ‘568)
`Decision on Appeal 2009-015440 in Application 10/723,778
`(Board of Patent Appeals and Interferences)
`May 13, 2013 Applicant Arguments and Remarks Made in an
`Amendment in Application 13/441,108
`Excerpt from Exhibit 5 to December 16, 2016 Expert Report of
`Dr. Andy Cockburn regarding Invalidity
`U.S. Patent No. 4,555,952 to Jenkins
`
`Excerpt from Apple’s Supplemental Interrogatory Responses to
`Immersion’s 6th Set of Interrogatories (Nos. 98-100, 103-104),
`served September 14, 2016 in ITC Inv. No. 337-TA-1004/990
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`
`
`
`Immersion
`Ex. 2001
`Immersion
`Ex. 2002
`Immersion
`Ex. 2003
`Immersion
`Ex. 2004
`Immersion
`Ex. 2005
`Immersion
`Ex. 2006
`Immersion
`Ex. 2007
`Immersion
`Ex. 2008
`Immersion
`Ex. 2009
`Immersion
`Ex. 2010
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner Apple, Inc. did not submit a statement of material facts in this
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`
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`
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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.
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`Case IPR2017-01310
`Patent No. 8,749,507
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`INTRODUCTION
`The Patent Trial and Appeal Board (“Board”) should deny this second
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`petition for inter partes review (“Petition”) that Petitioner Apple, Inc. filed against
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`U.S. Patent No. 8,749,507 (Ex. 1101, the “‘507 patent”). Petitioner is engaged in a
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`campaign to harass Immersion Corporation (“Patent Owner”) and drive up
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`litigation costs by filing serial petitions against not only the ‘507 patent but several
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`other Immersion patents. This Petition is one of fourteen petitions Petitioner has
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`now filed against seven patents in Patent Owner’s patent portfolio. In each case,
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`including this one, Petitioner strategically waited for Patent Owner to file a
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`preliminary response and for the Board to make a decision before crafting another
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`serial petition challenging the same claims. As in Akamai Techs., Inc. v. Limelight
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`Networks, IPR2017-00358, Paper 9 at 12, the Board should exercise its discretion
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`to deny institution here of this repeat strategic petition.
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`Each of the factors articulated in Akamai favors denying institution. Apple
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`filed the second petition against the ‘507 patent on April 21, 2017, almost four
`
`months after receiving Patent Owner’s Preliminary Response and almost a month
`
`after receiving the Board’s decision denying institution of the first petition.
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`Petitioner freely admitted in ITC proceedings between Patent Owner and Petitioner
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`that it used the Board’s decision to craft the arguments in its second petition with
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`the hope of obtaining a different outcome. See Ex. 2005, 2017-04-27 Trial Tr. at
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`42:11-15 (“The other two patents, the ‘051 and the ‘507, their petitions were
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`initially denied. We’ve since, following the cues that the PTAB has given us,
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`refiled petitions for both of those and we expect those will be instituted as well.”)
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`(emphasis added). Petitioner did so even though it was well aware of the prior art
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`used in this Petition at the time it filed the first petition and had in fact already
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`developed its invalidity contentions based on that art. Petitioner’s strategy of
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`holding back prior art and arguments in order to file a second petition imposes
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`inequities on Patent Owner. Indeed, the present Petition references the Board’s
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`Institution Decision in IPR2016-01777 repeatedly over the span of many pages,
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`essentially challenging
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`the previous decision. These are precisely
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`the
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`circumstances in which institution of a serial petition like this should be denied.
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`Should the Board reach the merits, the Petition fails to establish a reasonable
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`likelihood that Petitioner would carry its burden of showing that any claim of the
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`‘507 patent is not patentable. The Petition asserts a single Ground, alleging that
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`claims 1-18 are obvious under 35 U.S.C. § 103(a) in light of Astala (Ex. 1103) in
`
`view of Shahoian (Ex. 1104) – references the PTO already considered either in
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`prosecution or earlier IPR proceedings. A comparison of the references to the ‘507
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`patent confirms that the asserted Ground lacks merit.
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`The ‘507 patent teaches a novel of way of determining whether a user
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`intended to “press” an input device such as a touchpad and providing haptic
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`feedback in response. Specifically, the ‘507 patent teaches examining data about
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`the user’s contact, including the pressure of the contact, changes in the pressure,
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`and a time interval, and determining a press if the “pressure is greater than a
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`pressure threshold,” “the change in pressure is greater than a change in pressure
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`threshold,” and “a first interval has elapsed.” Ex. 1101 at 4:47-63 & cl. 1. This
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`novel combination of considerations is absent from the prior art. Neither of
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`Petitioner’s asserted references, Astala and Shahoian, teaches determining a press
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`based on a change in pressure being greater than a change in pressure threshold.
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`Petitioner also concedes that its lead reference Astala fails to disclose a
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`required element of the ‘507 patent claims, “outputting a haptic effect” in response
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`to determining a gesture. See Ex. 1101, cl. 1. Astala contains no disclosure
`
`whatsoever regarding haptics. Petitioner argues that it would have been obvious to
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`add such a feature to Astala, based only on using hindsight to apply general
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`statements in the Shahoian reference that it would be beneficial for touchpads to
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`use haptics. This is insufficient, and Petitioner fails to identify a combination of
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`references that would actually produce the claimed invention of the ‘507 patent.
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`Petitioner’s obviousness challenges to the dependent claims of the ‘507
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`patent also are deficient. Claims 2, 10, and 15 require the use of contact data
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`“comprising both an actual pressure and a pseudo pressure.” See, e.g., Ex. 1101
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`cls. 2, 10, 15. But neither Astala nor Shahoian disclose contact data comprising a
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`“pseudo pressure.” To the contrary, both references at most describe measuring
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`only the actual pressure applied by the user to the touchpad or touchscreen.
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`Petitioner concedes that Astala fails to disclose contact data comprising a “pseudo
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`pressure,” and tries to fill this gap with arguments based on misinterpretations of
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`the Shahoian disclosure and an unreasonably broad proposed claim construction
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`that the Board should reject.
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`In short, this second Petition against the ‘507 patent can and should be
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`denied based on Petitioner’s abusive practice of making serial IPR filings. Even if
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`the Board does not exercise this discretion, the Board should nonetheless decline to
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`institute inter partes review based at least on the deficiencies in the asserted prior
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`art on which Petitioner relies for Ground 1.
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`II. THE ‘507 PATENT
`The ‘507 patent
`is entitled “Systems and Methods for Adaptive
`
`Interpretation of Input from a Touch-sensitive Input Device.” The patent arose out
`
`of Immersion’s work developing improved ways to interpret touch inputs from
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`different users of a device, such as a touchscreen on a cell phone. Because of
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`factors such as physical differences between users, different angles of finger
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`contacts, different pressures applied by different users or between different
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`touches, or finger movement across the touch surface during a press, it may be
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`difficult to determine the user’s intent. Ex. 1101 at 1:55-65; Ex. 2001 (Declaration
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`of Daniel Wigdor, Ph.D., hereinafter “Wigdor Decl.”) ¶ 17. The ‘507 patent
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`addresses these difficulties by determining a gesture using additional information
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`about a touch other than just position or pressure. For example, a press is
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`determined if the “pressure is greater than a pressure threshold,” “the change in
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`pressure is greater than a change in pressure threshold,” and “a first interval has
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`elapsed.” Ex. 1101 at cl. 1; Wigdor Decl. ¶ 17. Using these criteria, the system can
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`better determine the user’s intended gesture and provide haptic feedback in
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`response. Ex. 1101 at 4:47-63; Wigdor Decl. ¶ 17.
`
`III. PROCEDURAL HISTORY
`The ‘507 patent is one of seven patents that are the subject of the following
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`District Court and ITC cases: Immersion Corp. v. Apple Inc., et al., Nos. 1-16-cv-
`
`00077 and 1:16-cv-00325 (D. Del.) (stayed) and In the Matter of: Certain Mobile
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`and Portable Electronic Devices Incorporating Haptics (Including Smartphones
`
`and Laptops) and Components Thereof, ITC Investigation Nos. 337-TA-990 and -
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`1004 (consolidated). In addition to the ‘507 patent, the other patents at issue in one
`
`or both of these cases are U.S. Patent Nos. 8,619,051 (the “‘051 patent”);
`
`8,659,571 (the “‘571 patent”); 8,581,710 (the “‘710 patent”); 7,336,260 (the “‘260
`
`patent”); 7,808,488 (the “‘488 patent”) and 8,773,356 (the “‘356 patent”).
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`Petitioner Apple filed two petitions, sequential in time, for each patent
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`Patent Owner asserted against Apple in co-pending litigation. The chart below
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`lists each of these patents and the corresponding case number for “IPR #1,” the
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`dates for the filing of the petition and the Board’s decision in IPR#1, and case
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`number and filing date for “IPR #2.” The information for the ‘507 patent at issue
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`in this Petition is highlighted in bold.
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`Patent
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`8,619,051
`8,659,571
`8,773,356
`8,581,710
`8,749,507
`7,336,260
`7,808,488
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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
`
`Board
`Decision
`1-11-17
`7-7-16
`1-11-17
`7-7-16
`1-11-17
`7-8-16
`8-12-16 2-23-17
`9-12-16 3-23-17
`9-23-16 4-3-17
`9-29-16 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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`In each instance, Apple waited for the Patent Owner to file a preliminary
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`response and the Board to make a decision before it crafted a new, serial petition.
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`In this case, Apple filed the second Petition on April 21, 2017, almost four months
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`after receiving Patent Owner’s Preliminary Response and almost a month after the
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`Board denied institution on the first Petition. The Board denied Apple’s Request
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`for Rehearing on April 27, 2017. Apple, IPR2016-01777, Paper 9.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. §§ 314(A) AND 325(D) TO DENY INSTITUTION
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`Institution of an inter partes review is discretionary under 35 U.S.C. §
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`314(a). Akamai, IPR2017-00358, Paper 9 at 6. Because of the “potential inequity
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`of Petitioner filing multiple attacks, adjusting along the way based on Patent
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`Owner’s contentions and the Board’s decision responding to a prior challenge”
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`(id., at 8), the Board should exercise its discretion and deny the petition under 35
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`U.S.C. § 325(d).
`
`The Board has identified the following factors to consider when deciding
`
`whether to exercise its discretion not to institute review based on concerns of the
`
`inequity that results from multiple petitions:
`
`(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, Paper 9 at 9.
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`
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`Here, all five factors favor denying this Petition. The same petitioner has
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`now filed two petitions directed at the same claims. Both the first petition in
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`IPR2016-01777 and the current Petition requested inter partes review of claims 1-
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`5, 9-12, and 14-17 of the ‘507 patent. Apple Inc. v. Immersion Corporation,
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`IPR2016-01777, Paper 1 at 3; Pet. at 3. The Board denied institution of inter
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`partes review of claims 1-5, 9-12, and 14-17 in IPR2016-01777. Apple, IPR2016-
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`01777, Paper 7 at 2. The current Petition requests inter partes review of the same
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`claims. Pet. at 3. Although the current Petition also requests inter partes review of
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`a few additional claims (6-8, 13, and 18) that were not challenged in the first
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`petition, these claims all depend from claims for which institution was denied.
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`The prior art at issue in this Petition also is not new to Petitioner. There is
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`no dispute that Petitioner was well aware of both the Astala and Shahoian
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`references asserted in this Petition when it filed the previous IPR2016-01777
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`petition. The earlier petition asserted grounds involving Shahoian, so it goes
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`without saying that Petitioner knew of Shahoian at that time. See Apple, IPR2016-
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`01777, Paper 1 at 3. Petitioner also knew of Astala when it filed the IPR2016-
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`01777 petition. Not only is Astala cited on the face of the ‘507 patent and
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`discussed at length during the prosecution history, Immersion produced Astala to
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`Petitioner in the ITC investigation on May 5, 2016 when it filed its ITC complaint
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`regarding the ‘507 patent. Ex. 2003. Petitioner did not file the first IPR petition
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`until September 12, 2016 over four months later. Apple, IPR2016-01777, Paper 1.
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`By the time the first petition was filed on September 12, 2016, Petitioner also had
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`already developed its invalidity theories based on Astala. In fact, two days after
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`the first petition was filed, Petitioner served detailed invalidity contentions about
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`Astala in the ongoing ITC investigation. Ex. 2010 (served September 14, 2016).
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`These contentions included a 19-page invalidity claim chart asserting that Astala
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`allegedly anticipated or rendered obvious (including in combination with
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`Shahoian) claims 1-5, 9-12, and 14-17 of the ‘507 patent. Ex. 2004 (Astala claim
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`chart served with Ex. 2010).
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`
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`Petitioner also had ample time to study Immersion’s Patent Owner
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`Preliminary Response and the Board’s Institution Decision in the IPR2016-01777
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`proceeding before filing the present Petition. Immersion filed its Preliminary
`
`Response to the IPR2016-01777 petition on December 27, 2016. See Apple,
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`IPR2016-01777, Paper 6. The Board issued its Institution Decision denying
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`institution on March 23, 2017. Id., Paper 7. Petitioner had Patent Owner’s
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`Preliminary Response for four months and the Board’s Institution Decision for a
`
`month before filing the current petition. These facts line up with Akamai, where
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`the Board declined institution where the second petition was filed four months
`
`after first POPR and one month after first Board decision. See Akamai, IPR2017-
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`00358, Paper 9 at 11.
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`
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`In Akamai, the Board noted that “any non-strategic reasons” offered by
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`Petitioner for the delay in filing the petition could be weighed against the factors
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`discussed above. Akamai, IPR2017-00358, Paper 9 at 11. Petitioner has presented
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`no non-strategic purpose. To the contrary, Petitioner admitted in its opening
`
`statement in the ITC investigation that its strategy in filing the second petition
`
`against the ‘507 patent was to follow the “cues” given by the Board’s institution
`
`decision with the hopes of achieving a different result. See Ex. 2005, 2017-04-27
`
`Trial Tr. at 42:11-15 (“The other two patents, the ‘051 and the ‘507, their petitions
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`were initially denied. We’ve since, following the cues that the PTAB has given
`
`us, refiled petitions for both of those and we expect those will be instituted as
`
`well.”) (emphasis added).
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`
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`Petitioner argues that this second Petition should be allowed because it raises
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`an additional prior art reference (Astala) and attacks additional claims. Pet. at 16-
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`17. These arguments are without merit. As the Board noted in Akamai,
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`substituting one prior art reference for another does not, on its own, “justify
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`permitting Petitioner to gain an unfair advantage by waiting to file the present
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`Petition so that it could utilize our Institution Decision in the earlier . .. proceeding
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`in order to craft the arguments presented in the present Petition.” Akamai,
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`IPR2017-00358, Paper 9 at 11-12. As noted above, Petitioner was well aware of
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`Astala at the time it filed the IPR2016-01777 petition and had already developed
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`its invalidity contentions based on that reference. Petitioner held back the art,
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`either deciding that the reference was not strong or that it would assert it in a
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`subsequent IPR attempt if the first one failed, as it did. If Petitioner were not
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`acting with strategic intent, it could have easily included arguments based on
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`Astala in the IPR2016-0177 petition at that time, rather than waiting months to
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`learn from Patent Owner’s arguments and the Board’s decision.
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`
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`The same is true for the few additional dependent claims Petitioner has
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`added to the current Petition. The current Petition spends only a handful of pages
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`addressing these dependent claims, which could have been addressed efficiently in
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`the earlier petition if the Astala reference had not been withheld. Petitioner’s
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`asserted justification that the few additional claims should change the outcome is
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`also belied by the fact that the current Petition challenges all claims of the ‘507
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`patent, not just the five claims unasserted in the ITC investigation that Petitioner
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`now contends it must challenge to avoid estoppel. See Pet. at 17.
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`
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`Neither of the two cases on which Petitioner relies to justify its second
`
`petition under § 325(d) supports its position. Each of these Board decisions are
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`distinguishable in critical ways. In Silicon Laboratories, the Board did permit a
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`second petition challenging additional claims beyond those denied institution in an
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`earlier petition. Silicon Labs, Inc. v. Cresta Tech. Corp., IPR2015-00615, Paper 9
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`at 24-25. However, the Board noted how in that case only two claims were being
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`challenged a second time, with the newly challenged claims “represent[ing] a
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`minority of the claims [challenged]” in the second petition. Id. at 24. Here, by
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`contrast, 13 out of 18 claims challenged in the current Petition were already
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`challenged in IPR2016-01777, where institution was denied. In Microsoft Corp. v.
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`Bradium Techs., IPR2016-00448, Paper 9, the Board declined to deny institution of
`
`a second petition because the second petition raised issues that had not been
`
`considered previously and the Board was not persuaded that Petitioner could have
`
`raised those issues in the first petition. See id. at 10-11 (“Patent Owner does not
`
`establish how Petitioner would have relied on Fuller to assert the same challenges
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`as those asserted based on Reddy as a primary reference in the instant Petition.”).
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`This is not such a case. Here, there is no question that Petitioner could have raised
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`the challenges raised in this Petition earlier. Petitioner was well aware of Astala
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`and Shahoian and had already developed the invalidity arguments based on those
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`references in the related ITC investigation.
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`
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`Moreover, Petitioner’s challenge based on Astala is not new to the PTO.
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`The Astala reference was considered during prosecution of U.S. Patent App.
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`10/723,778 (issued as U.S. 8,164,573), the parent application to the ‘507 patent.
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`Ex. 2006 at 3. In that prosecution, claims including the “change in pressure”
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`limitation of the ‘507 patent were rejected as obvious in view of the combination
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`of Astala and another reference, Gillespie. Id. After an appeal, the Board of Patent
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`Appeals and Interferences reversed the examiner’s rejection, finding that the
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`combination of Astala and Gillespie failed to teach or suggest “comparing a
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`change in pressure (delta P) to a change in pressure threshold (delta P threshold).”
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`Id. at 5. Patent Owner added the “change in pressure” claim limitation to the
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`claims of the ‘507 patent during prosecution, referring to this exact language in the
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`appeal decision in the parent application. Ex. 2007 at 8-9. The Board’s decision
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`on appeal during prosecution may well have influenced Petitioner’s strategic
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`decision not to include Astala in the first IPR petition, but the fact remains that
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`Astala is not a new reference to either Petitioner or the PTO.
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`Apple’s filing multiple attacks against the ‘507 patent and adjusting its
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`position along the way as Apple learns from the Board’s prior decisions is
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`inequitable and should not be rewarded. Patent Owner respectfully requests that
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`the Board exercise its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. §
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`42.108(a) not to institute inter partes review of claims 1-18 of the ‘507 patent.
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`V.
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`PERSON HAVING ORDINARY SKILL IN THE ART (POSITA)
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`A person of ordinary skill in the art for the field of the ‘507 patent would
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`have at least: a Bachelor of Science degree in an engineering discipline such as
`
`Mechanical Engineering or Computer Science, or at least two years of experience
`
`working with human machine interface systems, graphical user interfaces, haptic
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`feedback systems, or mobile devices or equivalent embedded systems. Wigdor
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`Decl. ¶ 19. The conclusions regarding claim construction and validity contained
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`herein would be the same regardless of whether Immersion’s or Petitioner’s
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`proposed level of skill is adopted by the Board. Wigdor Decl. ¶ 20.
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`VI. CLAIM CONSTRUCTION
`During inter partes review, a patent claim shall be given “its broadest
`
`reasonable construction in light of the specification of the patent in which it
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`appears.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2133, 195 L. Ed. 2d
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`423 (2016) (quoting 37 C.F.R. § 42.100(b)). The standard for claim construction at
`
`the Patent Office is different from that used during a United States District Court
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`litigation. See PPC Broadband, Inc., v. Corning Optical Comms. RF, LLC, 815
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`F.3d 747, 756 (Fed. Cir. 2016); 37 C.F.R. § 42.100(b). Immersion expressly
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`reserves the right to argue a different claim construction in litigation for any term
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`of the ‘507 patent, as appropriate in that proceeding.
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`In its decision denying institution of IPR2016-01777, the Board discussed
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`the meaning of the claim limitation “determining a press if: the pressure is greater
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`than a pressure threshold, the change in pressure is greater than a change in
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`pressure threshold, and a first interval has elapsed.” Apple, IPR2016-01777, Paper
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`7 at 11-16. Petitioner filed a request for rehearing, arguing that the Board
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`incorrectly construed the claim limitation in its decision. Id., Paper 8 at 1. The
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`Board denied Petitioner’s request for rehearing. Id., Paper 9.
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`Here, apparently recognizing that the asserted prior art would not render the
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`claims obvious under the Board’s interpretation in IPR2016-01777, Petitioner
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`spends five pages of the Petition arguing that the Board’s “interpretation is
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`incorrect and should not be adopted here” and that it has made an “error in claim
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`construction.” Pet. at 10. Patent Owner does not endorse the Board’s
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`interpretation or offer a claim construction of the “determining a press if . . .” term
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`in this Preliminary Response. However, it is inappropriate for Petitioner to use
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`serial petitions to re-try the same claim construction arguments with a different
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`panel of judges, making an end-run around the Board’s rules regarding requests for
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`rehearing. Petitioner’s claim construction arguments on this issue in the instant
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`petition are copied nearly verbatim from its denied request for rehearing in
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`IPR2016-01777. Compare Pet. at 9-14 with Apple, IPR2016-01777, Paper 8 at 3-
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`8. This is yet another example of Petitioner using serial petitions as a tool for
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`harassment through repeated, duplicative administrative attacks on the validity of
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`Patent Owner’s patent. See Akamai, IPR2017-00358, Paper 9 at 12-13 (declining
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`to institute inter partes review on similar grounds).
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`With respect to the claim term “pseudo pressure” in certain challenged
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`dependent claims (claims 2, 10, 15), Immersion contends that the broadest
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`reasonable interpretation is “a measure of the area of the screen contacted by an
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`object.” Wigdor Decl. ¶ 23. This construction is consistent with the surrounding
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`claim language and the specification, which make clear that “pseudo pressure” can
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`occur in input devices that utilize a variety of different touchpad technologies. Id.
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`In the context of the claimed invention, the pseudo pressure is a measure of
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`the area of the screen contacted by an object, which the ‘507 patent explains is part
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`of the “contact data” upon which a determination of pressure and change in
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`pressure is based. See, e.g., Ex. 1101 at cl. 2 (reciting “The method of claim 1,
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`wherein the contact data comprises an actual pressure and a pseudo pressure”)
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`(emphasis added); claim 1 (reciting “A method comprising: receiving contact data
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`from an input device” and then using it to “determin[e] an interaction with a
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`displayed object on a screen based on the contact data” and “determin[e] a pressure
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`and a change in pressure based on the contact data”).
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`The specification explains how the pseudo-pressure—the area of the
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`touchpad contacted by the user’s finger—may be useful in analyzing the user’s
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`motions. Ex. 1101, 3:15-19 (“In other words, the pseudo pressure or Z parameter
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`provided by the touchpad102 is not a measure of the actual vertical displacement
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`by a conductor at a single point on the touchpad 102, but rather an estimation of
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`the vertical displacement based on the size of the capacitance change.”); id. at
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`3:24-28 (“[I]f a user presses heavily against the touchpad 102 with a fleshy part of
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`the finger, the amount of touchpad 102 area covered by the finger is greater than
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`when the same part of the finger is touching lightly.”) (emphasis added); Wigdor
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`Decl. ¶ 23. That is, because the user’s finger is deformable, the finger will tend to
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`flatten out and cover a larger area of the touchpad when the user presses down
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`heavily. Wigdor Decl. ¶ 23.
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`Petitioner advances several constructions, including that “pseudo pressure”
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`should be interpreted to “include at least all indirect measures of pressure.” Pet. at
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`15. As Petitioner’s own arguments in the Petition illustrate, this construction is
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`unreasonably broad because nearly any measure of pressure can be argued to be, in
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`at least some sense, “indirect.” For example, Petitioner argues that any measure of
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`pressure involving “capacitance” or “resistance” is necessarily a “pseudo
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`pressure.” See Pet. at 16, 45. Such a result is unreasonable as it was well known
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`in the art that actual pressure could be measured, for example, by measuring the
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`deflection of a parallel plate capacitor as a res
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