Trials@uspto.gov
`571-272-7822
`
` Paper 8
`
`
` Entered: November 2, 2017
`
`
`
`
`
`
`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 8,749,507 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
` Paper 8
`
`
` Entered: November 2, 2017
`
`
`
`
`
`
`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 8,749,507 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2017-01310
`Patent 8,749,507 B2
`
`
`
`I. BACKGROUND
`A. Introduction
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Second Petition”
`or “Second Pet.”) requesting an inter partes review of claims 1–18 (the
`“challenged claims”) of U.S. Patent No. 8,749,507 B2 (Ex. 1101, “the ’507
`patent”). As discussed further below, the Second Petition challenges most of
`the same claims of the ’507 patent that Petitioner challenged in its prior
`petition filed in Case IPR2016-01777 (“First Petition” or “First Pet.”).
`Immersion Corporation (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”).
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a). Under the circumstances of this case, for
`the reasons explained below, we exercise our discretion to not institute an
`inter partes review on any of claims 1–18 of the ’507 patent.
`
`B. Related Proceedings
`According to the parties, the ’507 patent is the subject of the
`following proceedings: (1) Immersion Corp. v. Apple Inc., Nos. 1:16-cv-
`00077 and 1:16-cv-00325 (D. Del.); and (2) In re Certain Mobile and
`Portable Electronic Devices Incorporating Haptics (Including Smartphones
`and Laptops) and Components Thereof, ITC Investigation Nos. 337-TA-990
`and 337-TA-1004 (consolidated) (USITC). Second Pet. 1; Paper 6, 2.
`The ’507 patent was also the subject of the First Petition filed by
`Petitioner in Case IPR2016-01777, in which we denied institution as to
`claims 1–5, 9–12, and 14–17 of the ’507 patent. Apple Inc. v. Immersion
`
`2
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`Patent 8,749,507 B2
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`Corp., Case IPR2016-01777 (PTAB Mar. 23, 2017) (Paper 7) (“1777 Dec.
`on Inst.”).
`
`C. The ’507 Patent
`The ’507 patent describes a system and method for adaptively
`interpreting a user’s intent based on parameters supplied by a touch-sensitive
`input device. Ex. 1101, Abstract. Figure 1 of the ’507 patent is reproduced
`below.
`
`
`
`
`Figure 1 depicts an exemplary system for implementing embodiments of the
`’507 patent. Id. at col. 2, ll. 23–25, 37–39. As shown in Figure 1, touchpad
`102 senses the positions of a touch on the surface of the touchpad, and
`provides an output signal comprising position data (X and Y parameters) and
`pressure data (Z parameter) to processor 106. Id. at col. 2, ll. 41–45, col. 3,
`ll. 51–52. According to the ’507 patent, in order to address the difficulties
`faced in attempting to determine the intent of a user based on the X, Y, and
`Z parameters, the disclosed invention provides systems and methods for
`adaptive interpretation of the intent of a user of a touch-sensitive input
`device. Id. at col. 4, ll. 56–58, 64–66.
`
`3
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`Figure 3 of the ’507 patent is reproduced below.
`
`
`Figure 3 depicts a flowchart illustrating a process for detecting a finger press
`by a user on a touchpad. Id. at col. 2, ll. 28–30, col. 7, ll. 7–9. At step 302
`shown in Figure 3, the processor determines if the output signal received
`from the touchpad indicates that the pressure of a user touch exceeds an
`upper threshold. Id. at col. 8, ll. 21–22. If so, the processor checks at step
`314 if the user was touching the touchpad previously. Id. at col. 8, ll. 22–24.
`If the user was not previously touching the touchpad, the processor starts the
`first tick counter and decides the user is now touching the touchpad. Id. at
`col. 8, ll. 25–27. Once the processor concludes that the user is touching the
`touchpad, the processor compares the speed of the finger movement on the
`
`4
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`touchpad to a speed threshold value. Id. at col. 8, ll. 31–33; see also id. at
`col. 7, l. 65–col. 8, l. 4 (describing a method of determining the speed of the
`finger movement and stating that until the speed falls below a speed
`threshold the processor will not recognize a press). If the speed is less than
`the speed threshold, the change in pressure (from the previously received
`value) is compared to a change threshold. Id. at col. 8, ll. 41–42. If the
`change in pressure is determined to be greater than the change threshold at
`step 322, the processor determines whether a first interval (in the first tick
`counter) has elapsed at step 324. Id. at col. 8, ll. 44–47. If so, the processor
`concludes that the user is pressing. Id. at col. 8, ll. 47–48.
`In other words, in order to determine that a user is pressing, the
`following three conditions must be met: (1) the pressure exceeds the
`pressure threshold; (2) the change in pressure is greater than the change
`threshold; and (3) the first interval has elapsed. In the process described in
`Figure 3, the first two conditions must be maintained for the duration of the
`first interval, i.e., the user must continue to touch for the duration of the first
`interval, before a press is recognized.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1, 9, and 14 are independent.
`Claim 1 is illustrative of the challenged claims and is reproduced below.
`1.
`A method comprising:
`receiving contact data from an input device;
`determining an interaction with a displayed object on a
`screen based on the contact data;
`responsive to determining the interaction, determining a
`gesture based on the contact data comprising:
`
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`Patent 8,749,507 B2
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`determining a pressure and a change in pressure based on
`the contact data, and
`determining a press if:
`the pressure is greater than a pressure threshold,
`the change in pressure is greater than a change in
`pressure threshold, and
`a first interval has elapsed; and
`responsive to determining the gesture, outputting the
`haptic effect.
`
`Ex. 1101, col. 10, ll. 30–44.
`
`E. First Petition in IPR2016-01777
`On September 12, 2016, Petitioner filed the First Petition in Case
`IPR2016-01777 requesting an inter partes review of claims 1–5, 9–12, and
`14–17 of the ’507 patent. Apple Inc. v. Immersion Corp., Case IPR2016-
`01777, Paper 1. In the First Petition, Petitioner asserted the following
`grounds of unpatentability (First Pet. 3).
`
`Claims Challenged
`
`Statutory Basis
`
`References
`
`1–5, 9–12, and 14–17
`
`1, 9, and 14
`
`
`§ 103(a)
`
`§ 103(a)
`
`Toda1 and Shahoian2
`
`Morimura3 and Shahoian
`
`
`1 U.S. Patent No. 5,673,066 (issued Sept. 30, 1997) (“Toda”).
`2 U.S. Patent Application Pub. No. 2002/0033795 Al (published Mar. 21,
`2002) (Ex. 1104, “Shahoian”).
`3 U.S. Patent No. 6,072,474 (issued June 6, 2000) (“Morimura”).
`
`6
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`On March 23, 2017, based on the arguments and evidence presented
`in the First Petition, we denied institution as to claims 1–5, 9–12, and 14–17
`of the ’507 patent, i.e., all claims challenged in the First Petition. 1777 Dec.
`on Inst. at 19.
`
`F. Asserted Grounds of Unpatentability in the Second Petition
`On April 21, 2017, which was one month after our Decision on
`Institution in Case IPR2016-01777, Petitioner filed a Second Petition in this
`case requesting an inter partes review of claims 1–18 of the ’507 patent. In
`its Second Petition, Petitioner asserts the following ground of unpatentability
`(Second Pet. 3).
`
`Claims Challenged
`
`Statutory Basis
`
`References
`
`1–18
`
`
`§ 103(a)
`
`Astala4 and Shahoian
`
`II. ANALYSIS
`
`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`Patent Owner asserts that the 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 benefited from Patent
`Owner’s Preliminary Response and the Board’s Decision on Institution in
`Case IPR2016-01777, and (2) Petitioner was aware of the prior art
`references asserted in its Second Petition before the filing of its First Petition
`in Case IPR2016-01777. Prelim. Resp. 6–13 (citing Akamai Technologies,
`
`
`4 U.S. Patent No. 6,590,568 B1 (issued July 8, 2003) (Ex. 1103, “Astala”).
`
`7
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`Inc. v. Limelight Networks, Inc., Case IPR2017-00358 (PTAB May 2, 2017)
`(Paper 9)).
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`37 C.F.R. § 42.108(a) (stating “the Board may authorize the review to
`proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). When
`determining whether to exercise our discretion under § 314(a), we consider
`the following non-exhaustive factors:
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have
`known of it;
`3. whether at the time of filing of the second 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 first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing
`of the second petition;
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`8
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`IPR2017-01310
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`
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`slip op. 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential)5 (hereinafter,
`“General Plastic”) (citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-
`00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9)).
`A central issue addressed by the General Plastic factors is balancing
`the equities between a petitioner and a patent owner when information is
`available from prior Board proceedings for a subsequent proceeding.
`General Plastic, slip op. at 15–19. Accordingly, we use the non-exhaustive
`General Plastic factors as a framework for assessing, under the specific
`circumstances of this case, the equities of allowing the Second Petition filed
`by the same Petitioner that challenges essentially the same claims of the
`’507 patent to proceed to trial. 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).
`
`Factor 1: Whether Petitioner Previously Filed a Petition Directed to the
`Same Claims of the Same Patent
`
`As discussed above, Petitioner’s First Petition challenged claims 1–5,
`9–12, and 14–17 of the ’507 patent, which Petitioner again challenges in the
`Second Petition. As Petitioner and Patent Owner note, the Second Petition
`additionally challenges certain dependent claims—namely, dependent claims
`6–8, 13, and 18. Second Pet. 16–17; Prelim. Resp. 8. Challenges to these
`dependent claims must necessarily invoke challenges to the independent
`claims from which they depend, i.e., independent claims 1, 9, and 14. As
`
`
`5 General Plastic was designated precedential on October 18, 2017.
`
`9
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`noted above, these independent claims were challenged in the First Petition.
`Thus, on the whole, the Second Petition overwhelmingly challenges
`essentially the same claims as the First Petition filed in Case IPR2016-
`01777. Apart from asserting that it was attempting to conserve the resources
`of the Board and the parties (Second Pet. 17)—the effect of which is now
`diminished by the actual filing of the Second Petition—Petitioner does not
`provide a sufficient reason as to why it could not have addressed dependent
`claims 6–8, 13, and 18 in the First Petition. Accordingly, this factor weighs
`against institution.
`
`Factor 2: Whether Petitioner Knew of the Prior Art Asserted in the Second
`Petition When It Filed the First Petition
`
`The Second Petition relies on two references—namely, Astala and
`Shahoian. Petitioner knew of Shahoian when it filed the First Petition
`because, as discussed above, the First Petition asserted grounds involving
`Shahoian.
`As Patent Owner notes, the Reference Cited section on the face of the
`’507 patent lists Astala. Ex. 1101 at [56]; Prelim. Resp. 8. According to
`Patent Owner, it produced Astala to Petitioner in the related ITC
`investigation on May 5, 2016 when Patent Owner filed its ITC complaint
`regarding the ’507 patent. Prelim. Resp. 8 (citing Ex. 2003). On September
`14, 2016, Petitioner served a detailed invalidity claim chart based on Astala
`in the related ITC investigation. Exs. 2005, 2010. Thus, the record indicates
`that Petitioner knew of or should have known of Astala when it filed the
`First Petition on September 12, 2016.
`
`10
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`Because Petitioner knew of or should have known of both of the
`references asserted in its Second Petition when it filed its First Petition, this
`factor weighs against institution.
`
`Factor 3: Whether Petitioner Had Patent Owner’s Preliminary Response
`and the Board’s Institution Decision on the First Petition When Petitioner
`Filed the Second Petition
`
`Patent Owner filed its Preliminary Response to the First Petition on
`December 27, 2016. See Case IPR2016-01777, Paper 6. We issued our
`Decision Denying the First Petition on March 23, 2017. 1777 Dec. on Inst.
`Hence, when Petitioner filed the Second Petition on April 21, 2017 (see
`Second Pet. 64), Petitioner had both Patent Owner’s Preliminary Response
`to the First Petition and the Board’s Decision Denying the First Petition.
`Consequently, this factor weighs against institution.
`
`Factor 4: 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 to the First Petition as well as the Board’s Decision Denying the
`First Petition and when Petitioner filed the Second Petition left Petitioner
`with sufficient time to take advantage of Patent Owner’s and the Board’s
`responses to the First Petition. When Petitioner filed its Second Petition on
`April 21, 2017, Petitioner had Patent Owner’s Preliminary Response to the
`First Petition for nearly four months, and our Decision Denying the First
`Petition for one month. Thus, Petitioner not only had the relevant materials
`from Patent Owner and the Board when it filed its Second Petition, but had
`
`11
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`IPR2017-01310
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`ample time to take advantage of those materials in crafting its arguments in
`the Second Petition. As a result, this factor weighs against institution.
`
`Factor 5: Whether Petitioner Has Provided Adequate Explanation
`
`The fifth General Plastic factor is “whether the petitioner provides
`adequate explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent.” General Plastic,
`slip op. at 9, 16. A closely related factor often considered when determining
`whether to exercise our discretion under § 314(a) is “whether the petitioner
`provides adequate explanation why we should permit another attack on the
`same claims of the same patent.” Akamai, slip op. at 9; Xactware Sols., Inc.
`v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 7–8 (PTAB Apr.
`13, 2017) (Paper 9).
`Petitioner addresses our discretion to deny institution only briefly.
`Petitioner asserts that the Second Petition addresses additional claims based
`on different prior art. Second Pet. 16. Petitioner also cites a previous Board
`decision in Case IPR2016-00448 and states that Petitioner has not
`“‘overwhelmed Patent Owner with an unreasonable number of challenges of
`patentability’ because this is only the second petition that Petitioner has filed
`regarding the ’507 patent.” Id. at 17. Petitioner also asserts that the Second
`Petition challenges additional claims because the additional claims are
`asserted in the related district court proceedings, but were not asserted in the
`related ITC investigation. Id. Petitioner states that it omitted challenges of
`the additional claims from the prior Petition in order to conserve the
`resources of the Board and the parties. Id.
`
`12
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`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 Denying the First Petition. Petitioner’s stated reason for
`filing two separate petitions, i.e., to conserve resources of the Board and the
`parties, does not explain why Petitioner could not have filed the petitions at
`the same time and simultaneously challenged all of the claims asserted in the
`related ITC and district court proceedings. As the First and Second Petitions
`indicate, Petitioner knew of both the ITC and the district court actions when
`the First Petition was filed. See First Pet. 1, Second Pet. 1. Consequently,
`this factor also weighs against institution.
`
`Factors 6 and 7: Board Considerations
`
`The sixth and seventh General Plastic factors consider “the finite
`resources of the Board” and “the requirement under 35 U.S.C. § 316(a)(11)
`to issue a final determination not later than 1 year after the date on which the
`Director notices institution of review.” General Plastic, slip op. at 9–10, 16.
`We conclude that these factors are not implicated under the
`circumstances of this case, and, therefore, do not weigh for or against
`exercising our discretion.
`
`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. Additionally, Petitioner has not provided a
`persuasive explanation of why its challenges raised in the Second Petition
`should be allowed. Petitioner does not even attempt to explain why it could
`not have raised the challenges in the Second Petition simultaneously with the
`
`13
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`IPR2017-01310
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`
`challenges raised in the First 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,
`weighing the relevant factors under the circumstances of this case, which, as
`we explain above, all favor exercising our discretion not to institute, we
`view the prejudice to Patent Owner to be greater than that to Petitioner. We,
`therefore, decline to institute inter partes review under 35 U.S.C. § 314(a).
`
`
`III. CONCLUSION
`For all of the reasons discussed above, we exercise our discretion
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to institute review in
`this proceeding with respect to claims 1–18 of the ’507 patent.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’507 patent, and no trial is instituted.
`
`
`
`
`
`
`14
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`IPR2017-01310
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`
`PETITIONER:
`
`Gianni Minutoli
`Robert Buergi
`gianni.minutoli@dlapiper.com
`robert.buergi@dlapiper.com
`
`PATENT OWNER:
`Michael R. Fleming
`Babak Redjaian
`mfleming@irell.com
`bredjaian@irell.com
`
`
`
`
`
`15
`
`
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