UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner
`
`U.S. Patent No. 8,749,507
`Filing Date: April 6, 2012
`Issue Date: June 10, 2014
`
`Title: Systems And Methods For Adaptive Interpretation Of
`Input From A Touch-Sensitive Input Device
`
`Inter Partes Review No.: (Unassigned)
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,749,507
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-100, ET SEQ.
`
`Valve Exhibit 1024
`Valve v. Immersion
`
`

`

`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ....................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................ 1
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ...................... 1
`1.
`Real Party-In-Interest ............................................................... 1
`2.
`Related Matters ........................................................................ 1
`3.
`Lead and Backup Counsel ........................................................ 2
`4.
`Service Information ................................................................. 2
`Proof of Service on the Patent Owner ................................................ 2
`B.
`Power of Attorney .............................................................................. 2
`C.
`Standing ............................................................................................. 2
`D.
`Fees ................................................................................................... 3
`E.
`III. STATEMENT OF PRECISE RELIEF REQUESTED ................................. 3
`IV. FULL STATEMENT ON REASONS FOR REQUESTED RELIEF ........... 3
`A.
`Summary of the ’507 Patent ............................................................... 3
`B.
`The ’507 Patent Prosecution History .................................................. 6
`C.
`Person of Ordinary Skill in the Art..................................................... 6
`D. Apple Products Accused of Infringing the ’507 Patent ....................... 6
`E.
`Claim Construction ............................................................................ 7
`1.
`“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” (claims 1, 9, and 14) .................................................. 9
` “pressure” (claims 1-3, 9-11, 14-16) ..................................... 15
`“determining a press if … the change in pressure is
`greater than a change in pressure threshold” (claims 1, 9,
`and 14) ................................................................................... 15
`“pseudo pressure” (claims 2, 10, and 15) ............................... 15
`4.
`This Petition Should Not Be Barred by 35 U.S.C. §315(d) .............. 16
`
`2.
`3.
`
`F.
`
`
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`G. Ground 1: Claim 1-18 are Obvious Under 35 U.S.C. §103(a)
`(pre-AIA) In Light of Astala Combined with Shahoian.................... 18
`1.
`Astala is § 102(a) Prior Art .................................................... 18
`2.
`Shahoian is § 102(b) Prior Art ............................................... 19
`3.
`Limitation-by-Limitation Analysis ......................................... 19
`CONCLUSION ......................................................................................... 65
`
`V.
`
`ii
`
`

`

`EXHIBIT LIST
`
`Exhibit No.
`1101
`
`Description
`U.S. Patent No. 8,749,507 (the “’507 patent”).
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`File history of U.S. Patent No. 8,749,507.
`
`U.S. Patent No. 6,590,568 to Astala (“Astala”).
`
`U.S. Pat. App. Pub. No. 2002/0033795 to Shahoian (“Shahoian”).
`
`Patent Owner Immersion’s claim chart regarding alleged
`infringement of the ’507 patent by certain Apple iPhone products
`(Exhibit 20 to Immersion’s complaint in ITC Investigation No.
`337-TA-1004).
`
`Patent Owner Immersion’s preliminary proposed claim
`constructions in ITC Investigation No. 337-TA-1004.
`
`Claim construction order from ITC Inv. Nos. 337-TA-990
`and -1004 (consolidated).
`
`U.S. Patent No. 5,488,204 to Mead (“Mead”).
`
`U.S. Patent No. 5,734,373 to Rosenberg (“Rosenberg”).
`
`Declaration of expert Dr. Andy Cockburn (“Cockburn Decl.”).
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`The claims of Immersion’s U.S. Patent No. 8,749,507 (the “’507 patent”)
`
`challenged in this Petition are invalid over the prior art. During prosecution of the
`
`’507 patent, Immersion overcame multiple rejections of the claims by adding
`
`limitations reciting various criteria used to detect the occurrence of a gesture on a
`
`pressure-sensitive device. This gesture detection algorithm, however, was known
`
`in the art, and is disclosed by the Astala prior art reference discussed below.
`
`Additional limitations of the challenged claims are disclosed by Shahoian, a prior
`
`art Immersion patent application publication that discusses at length providing
`
`haptic feedback in response to detecting a gesture.
`
`II. COMPLIANCE WITH FORMAL REQUIREMENTS
`
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`1.
`Real Party-In-Interest
`Apple is the real party-in-interest.
`
`Related Matters
`2.
`The ’507 patent is subject to the following actions: 1) Certain Mobile and
`
`Portable Electronic Devices Incorporating Haptics (Including Smartphones and
`
`Laptops) and Components Thereof, Inv. Nos. 337-TA-990 and -1004
`
`(consolidated); 2) Immersion Corp. v. Apple Inc., et al., Nos. 1:16-cv-00077 and
`
`1:16-cv-00325 (D. Del.); and 3) Apple Inc., v. Immersion Corp., IPR2016-01777.
`
`1
`
`

`

`3.
`
`Lead and Backup Counsel
`
`Lead Counsel
`Gianni Minutoli
`Reg. No. 41,198
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`gianni.minutoli@dlapiper.com
`Phone: 703-773-4045
`Fax: 703-773-5200
`
`Backup Counsel
`Robert Buergi
`Reg. No. 58,125
`DLA Piper LLP (US)
`2000 University Ave
`East Palo Alto, CA 94303
`robert.buergi@dlapiper.com
`Phone: 650-833-2407
`Fax: 650-687-1144
`
`Service Information
`4.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above.
`
`Proof of Service on the Patent Owner
`B.
`As identified in the attached Certificate of Service, a copy of this Petition in
`
`its entirety is being served to the Patent Owner’s attorney of record at the address
`
`listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
`
`Power of Attorney
`C.
`Powers of attorney are being filed with designation of counsel in accordance
`
`with 37 C.F.R. § 41.10(b).
`
`Standing
`D.
`In accordance with 37 C.F.R. §42.104(a), Petitioner certifies that the ’507
`
`2
`
`

`

`patent is available for inter partes review and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the patent claims on
`
`the grounds identified in this Petition.
`
`Fees
`E.
`The undersigned authorizes the Director to charge the fee specified by 37
`
`C.F.R. § 42.15(a) and any additional fees that might be due in connection with this
`
`Petition to Deposit Account No. 50-3266.
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`In accordance with 35 U.S.C. § 311, Petitioner requests cancelation of
`
`claims 1-18 of the ’507 patent in view of the following grounds:
`
`
`
`A.
`
`Claims 1-18 are rendered obvious under 35 U.S.C. § 103(a) (pre-AIA)
`
`by U.S. Patent No. 6,590,568 to Astala (Ex. 1103, “Astala”) in view of U.S. Patent
`
`Publication No. 2002/0033795 to Shahoian (Ex. 1104, “Shahoian”).
`
`IV.
`
`FULL STATEMENT ON REASONS FOR REQUESTED RELIEF
`
`Summary of the ’507 Patent
`A.
`The ’507 patent is directed to systems and methods for interpreting inputs
`
`received from a touch-sensitive input device. Ex. 1101 at 1:25-27. In the only
`
`illustrated embodiment of the system, the touch-sensitive input device is a
`
`touchpad 102. Id. at 2:39-41, Fig. 1 (shown below). Other embodiments may use
`
`other touch-sensitive input devices, such as a touch panel or touch screen. Id. at
`
`3
`
`

`

`2:50-52.
`
`According to the ’507 patent, the touchpad 102 senses the position of a
`
`conductor (e.g., a finger) on the surface of the touchpad 102, and provides
`
`parameters for the determined position (X and Y) and pressure (Z) of the conductor
`
`to a processor 106. Ex. 1101 at 2:41-45, 3:51-52. Because the touchpad 102
`
`senses capacitance, it “does not sense an actual pressure.” Id. at 2:53. “Instead,
`
`the pressure reading from the touchpad 102 is a pseudo pressure” based on the
`
`amount of capacitance resulting from the conductor touching the touchpad 102. Id.
`
`at 2:54-60; 3:10-12. “In other embodiments, actual pressure may be sensed.” Id.
`
`at 2:60-61. “For example, in one embodiment, a touch screen with an attached
`
`explicit pressure sensor is utilized.” Id. at 2:61-63.
`
`The disclosed embodiments purportedly “address the difficulties faced in
`
`attempting to determine the intent of a user based on the X, Y, and Z parameters
`
`supplied by the touchpad 102.” Ex. 1101 at 4:56-58, 2:1-3. The patent’s Figure 3
`
`4
`
`

`

`shows an example of using parameters received from the touchpad 102 to detect
`
`and interpret touches on a touchpad.
`
`Id. at Fig. 3, 7:7-32, 8:5-50. Petitioner discusses Figure 3 in detail below in the
`
`section regarding claim construction.
`
`5
`
`

`

`The ’507 Patent Prosecution History
`B.
`Immersion filed the application that became the ’507 patent on April 6, 2012
`
`(Application Serial No. 13/441,108 (the “’108 application”)). Ex. 1102 at 414.
`
`The ’108 application claimed priority to an earlier non-provisional application that
`
`has a filing date of November 26, 2003. Id. at 417. During the prosecution of the
`
`’108 application, the applicant amended the claims from their original form to
`
`overcome various rejections. See, e.g., Ex. 1102 at 135-38, 102-106, 43-46.
`
`Person of Ordinary Skill in the Art
`C.
`A person of ordinary skill in the art (“POSITA”) at the time of the alleged
`
`invention of the ’507 patent (i.e., November 26, 2003) would have had a
`
`Bachelors’ degree in computer science, electrical engineering, or a comparable
`
`field of study, plus approximately two to three years of professional experience
`
`with software engineering, touch sensitive input devices, or other relevant industry
`
`experience. Additional graduate education could substitute for professional
`
`experience and significant experience in the field could substitute for formal
`
`education. Ex. 1110 (Declaration of Dr. Andy Cockburn) (“Cockburn Decl.”), ¶
`
`45.
`
`Apple Products Accused of Infringing the ’507 Patent
`D.
`In the ITC Investigation referenced above, Immersion alleges that Petitioner
`
`Apple’s iPhone 6s products infringe claims 1-5, 9-12, and 14-17 of the ’507 patent,
`
`and Patent Owner provided a public claim chart purporting to show how these
`
`6
`
`

`

`Apple products allegedly practice claims 1, 9, and 14 of the ’507 patent. Ex. 1105.
`
`Claim Construction
`E.
`In accordance with 37 C.F.R. § 42.104(b)(3), Petitioner provides the
`
`following statement regarding construction of the ’507 patent claims. A claim
`
`subject to inter partes review receives the “broadest reasonable interpretation”
`
`(“BRI”) in light of the specification. 37 C.F.R. § 42.100(b). Because the BRI
`
`standard is different from that used in district court litigation, PPC Broadband,
`
`Inc., v. Corning Optical Comms. RF, LLC, 815 F.3d 747, 756 (Fed. Cir. 2016), the
`
`interpretation of the claims presented either implicitly or explicitly herein should
`
`not be viewed as constituting Petitioner’s own interpretation and/or construction of
`
`such claims for the purposes of the underlying litigation. Instead, such
`
`constructions in this proceeding should be viewed only as constituting an
`
`interpretation of the claims under the “broadest reasonable construction” standard.
`
`In the ITC investigation referenced above, Immersion also has submitted to
`
`the ITC a claim chart showing how it believes that the ’507 patent’s independent
`
`claims allegedly encompass certain aspects of Patent Owner Apple’s products, as
`
`described above. Ex. 1105. Petitioner respectfully requests that Immersion be
`
`held to constructions of the ’507 patent claim terms at least as broad as those set
`
`forth by Immersion in this claim chart.
`
`In the ITC Investigation, Patent Owner Immersion proposed constructions of
`
`7
`
`

`

`certain claim terms in the ’507 patent. Petitioner respectfully requests that the
`
`Immersion be held to constructions of the ’507 patent claim terms at least as broad
`
`as Immersion’s proposed constructions. Immersion’s constructions are set forth in
`
`Exhibit 1106 and in the table below.
`
`Claim Term
`
`Immersion’s Proposed Construction
`
`“pressure”
`(claims 1-3, 9-11, 14-16)
`
`“determining a press if ... the
`change in pressure is greater
`than a change in pressure
`threshold”
`(claims 1, 9, 14)
`
`“application of force from a contact”
`
`“determining a press if … the change in
`pressure is greater than a static or adaptive
`threshold for the change in pressure”
`
`“pseudo pressure”
`(claims 2-3, 10-11, 15-16)
`
`“A measure of the area of the screen
`contacted by the object”
`
`Ex. 1106 at 2-3; see also Ex. 1107 at 49, 51, 56 (repeating Immersion’s proposed
`
`constructions).
`
`In the ITC investigation referenced above, the Chief ALJ has construed
`
`certain terms of the ’507 patent, as set forth below.
`
`Claim Term
`
`The Chief ALJ’s Construction
`
`“pressure”
`(claims 1-3, 9-11, 14-16)
`
`“application of force from a contact”
`
`“determining a press if ... the
`change in pressure is greater
`than a change in pressure
`
`“determining that a press has occurred if …
`the magnitude of the change in pressure
`(positive or negative) is greater than a static
`
`8
`
`

`

`threshold”
`(claims 1, 9, 14)
`
`“pseudo pressure”
`(claims 2-3, 10-11, 15-16)
`
`or adaptive threshold for the change in
`pressure”
`
`“an indirect measure of pressure”
`
`Ex. 1107 at 50, 56, 59. For the purposes of this proceeding, Petitioner respectfully
`
`requests that the Patent Owner be held to constructions of these ’507 patent claim
`
`terms at least as broad as the Chief ALJ’s constructions. Petitioner also addresses
`
`the following specific claim limitations.
`
`1.
`
`“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” (claims 1, 9, and 14)
`This limitation recites three criteria used to determine a press: (1) the
`
`pressure is greater than a pressure threshold; (2) the change in pressure is greater
`
`than a change in pressure threshold; and (3) a first interval has elapsed. Ex. 1101
`
`at, e.g., claim 1. The Patent Trial and Appeal Board (the “Board”) previously
`
`found that “the first two conditions must be maintained for the duration of the first
`
`interval.” Apple Inc. v. Immersion Corp., IPR2016-01777, Paper 7 at 4 (PTAB
`
`Mar. 23, 2017) (“Decision”); see also id. at 14-15 (“the other two conditions—i.e.,
`
`the pressure exceeds the pressure threshold, and the change in pressure is greater
`
`than the change threshold—must be maintained for the duration of the first interval
`
`before a press is determined”). Notably, neither party, not even the Patent Owner,
`
`9
`
`

`

`has ever asked for such a narrow construction—not in this proceeding governed by
`
`the broadest reasonable interpretation standard, and not in the ongoing ITC
`
`proceeding governed by the Phillips standard. While this fact is not dispositive, it
`
`suggests a possible error in claim construction. As demonstrated below, Apple
`
`respectfully submits that this interpretation is incorrect and should not be adopted
`
`here.
`
`“[T]he claim construction inquiry ... begins and ends in all cases with the
`
`actual words of the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158
`
`F.3d 1243, 1248 (Fed. Cir. 1998). The ’507 patent claims recite using three
`
`independent criteria, listed above, to determine whether a press has occurred.
`
`Importantly, the actual words of the claims do not specify that the first two criteria
`
`must both be maintained for the entire duration of the first interval. For example,
`
`the actual words of the claims do not recite, “the pressure is greater than a pressure
`
`threshold while a first interval has elapsed.” The Board apparently did not find
`
`otherwise because it did not tie its construction to the actual words of the claim.
`
`Decision at 5. The Board’s interpretation therefore improperly rewrites the claims.
`
`Rembrandt Data Techs. LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011).
`
`Nor does the specification disclose an embodiment that requires the first two
`
`claimed criteria to be maintained for the duration of the claimed first interval to
`
`determine a press. The Board’s Decision denying institution states that the
`
`10
`
`

`

`embodiment of Figure 3 requires that the first two conditions must be maintained
`
`for the duration of the first interval. Decision at 4-5. But the embodiment of
`
`Figure 3 includes no such requirement.
`
`For example, in Figure 3, the system can start the tick count in step 316
`
`(indicating the beginning of the interval), follow the “YES” branch of step 320 to
`
`step 322, branch “NO” in step 322 (indicating that the change in pressure is not
`
`greater than the change in pressure threshold), loop back to step 302, follow the
`
`“YES” branch to step 314, follow the “YES” branch to step 320, follow the “YES”
`
`branch to step 322, follow the “YES” branch to step 324 (indicating that the
`
`change in pressure is now greater than the change in pressure threshold), and
`
`follow the “YES” branch of step 324 (indicating that the first interval has elapsed)
`
`to state 326, indicating that a press has occurred. Ex. 1101 at Fig. 3. In this
`
`scenario, the change in pressure was not greater than the change in pressure
`
`threshold for part of the first interval, yet the system determined that a press had
`
`occurred. Thus, Figure 3 does not mandate that the first two criteria must be
`
`maintained for the duration of the first interval. Id.
`
`As a second example, in Figure 3, assume that the claimed “first interval” is
`
`one second and that the process of Figure 3 executes 80 times per second,
`
`consistent with the patent’s disclosure of a sampling frequency of 80 Hz. Ex. 1101
`
`at 5:59-61, 9:3-4. The system may first start the tick count in step 316 (indicating
`
`11
`
`

`

`the beginning of the interval). The system may then follow the “YES” branch
`
`from step 320 to step 322, branch “NO” in step 322 (indicating that the change in
`
`pressure is not greater than the change in pressure threshold), loop back to step
`
`302, follow the “YES” branch to step 314, follow the “YES” branch to step 320,
`
`follow the “YES” branch to step 322, and again branch “NO” in step 322
`
`(indicating that the change in pressure is still not greater than the change in
`
`pressure threshold). The system may repeat this loop 80 times (or more), for the
`
`entire duration of the first interval. The change in pressure may then become
`
`greater than the change in pressure threshold, such that step 322 branches “YES”
`
`to step 324. Because the first interval of one second has elapsed, step 324 will
`
`branch “YES” to state 326, indicating that a press has occurred. In this scenario,
`
`the change in pressure was not greater than the change in pressure threshold at any
`
`time during the first interval, yet the system determined that a press had occurred.
`
`These examples are not just corner cases. Figure 3 shows that it requires
`
`that a change in pressure exceed a change in pressure threshold in only one
`
`instance because the embodiment of Figure 3 tests for the condition of whether the
`
`first interval has elapsed at step 324, only after an instance in which a change in
`
`pressure has exceeded a change in pressure threshold at step 322. As a
`
`consequence of this arrangement, step 322 can result in a “no” decision any
`
`number of times after the first tick count has started at step 316 (i.e., during the
`
`12
`
`

`

`first interval), but even a single instance in which step 322 results in a “yes”
`
`decision after the first interval has elapsed at step 324 is sufficient to determine
`
`that a press has occurred at box 326.
`
`For all of the reasons discussed above, Figure 3 does not mandate that the
`
`first two criteria must be maintained for the duration of the first interval. Nor does
`
`anything else in the rest of the specification. The Board’s interpretation therefore
`
`is not supported by the specification, and improperly excludes from the scope of
`
`the claims the embodiments described above (among others).
`
`Even if the specification disclosed an embodiment that required the first two
`
`claimed criteria to be maintained for the duration of the claimed first interval to
`
`determine a press (which it does not), the Board’s interpretation would constitute
`
`an improper importation of that limitation into the claims because the specification
`
`does not include the lexicography or clear disavowal of claim scope required to do
`
`so. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`
`2012) (specification limitations may be read into the claims only “1) when a
`
`patentee sets out a definition and acts as his own lexicographer, or 2) when the
`
`patentee disavows the full scope of the claim term either in the specification or
`
`during prosecution”).
`
`Furthermore, in the ITC Investigation referenced above, the Chief ALJ
`
`construed a portion of this limitation (“determining a press if … the change in
`
`13
`
`

`

`pressure is greater than a change in pressure threshold”) as set forth in the table
`
`above, and did not find any requirement that the change in pressure must be
`
`maintained for the duration of the claimed interval. Ex. 1107 at 59. The Chief
`
`ALJ, applying the Phillips standard, did not find any requirement that the change
`
`in pressure must be maintained for the duration of the claimed interval. Id. The
`
`Chief ALJ’s construction and accompanying analysis of this limitation further
`
`confirm that there is no such requirement. Id. at 56-59.
`
` Finally, the Board’s construction is vague because it is not clear what it
`
`means for a change in pressure to be greater than a change in pressure threshold for
`
`the duration of the first interval. For example, this requirement may mean any of
`
`the following: (1) the difference between the first pressure of the interval and the
`
`last pressure of the interval is greater than the threshold; (2) each pressure
`
`determined during the interval is greater than some initial pressure by at least the
`
`threshold amount; or (3) each pressure determined during the interval is greater
`
`than the previous determined pressure. Cockburn Decl., ¶ 63. The Board’s
`
`construction therefore obfuscates, rather than clarifies, the meaning of this
`
`limitation. For all these reasons, Petitioner respectfully submits that the Board’s
`
`previous construction is incorrect and should not be adopted here.
`
`Rather, Petitioner respectfully requests that this limitation be construed
`
`under the broadest reasonable interpretation standard as “determining a press
`
`14
`
`

`

`based, in part, on determining that the pressure is greater than a pressure threshold,
`
`determining that the change in pressure is greater than a change in pressure
`
`threshold, and determining that a first interval has elapsed.”
`
` “pressure” (claims 1-3, 9-11, 14-16)
`2.
`In light of the Chief ALJ’s construction of “pressure,” Immersion’s public
`
`proposed construction of “pressure,” and Immersion’s public infringement
`
`contentions, Immersion should be held to a construction of “pressure” that includes
`
`force and the application of force from a contact. Ex. 1107 at 49-50; Ex. 1106 at 2;
`
`Ex. 1105 at 40-41, 58-59, 67-68 (Immersion contending that “force” satisfies
`
`various “pressure” limitations).
`
`3.
`
`“determining a press if … the change in pressure is greater
`than a change in pressure threshold” (claims 1, 9, and 14)
`Based on Immersion’s public proposed construction of “determining a press
`
`if … the change in pressure is greater than a change in pressure threshold,”
`
`Immersion should be held to a construction of this limitation that encompasses
`
`“determine a press if … the change in pressure is greater than a static or adaptive
`
`threshold for the change in pressure.” Ex. 1107 at 56; Ex. 1106 at 3.
`
`“pseudo pressure” (claims 2, 10, and 15)
`4.
`The Chief ALJ has construed “pseudo pressure” as “an indirect measure of
`
`pressure.” Ex. 1107 at 56. “Pseudo pressure” in this proceeding should therefore
`
`be interpreted to include at least all indirect measures of pressure. In addition, the
`
`15
`
`

`

`’507 patent states that “the pseudo pressure is based on the amount of capacitance
`
`resulting from the conductor touching the touchpad 102” and that “the amount of
`
`capacitance is not a direct measure of pressure but rather a pseudo pressure.” Ex.
`
`1101 at 3:10-14. Accordingly, “pseudo-pressure” should be construed to also
`
`include any measure of pressure based on capacitance, because such measures of
`
`pressure are indirect, as recognized by the ’507 patent. Cockburn Decl., ¶ 64. In
`
`addition, Immersion proposed in the ITC Investigation that “pseudo-pressure” be
`
`construed as “a measure of the area of the screen contacted by the object.” Ex.
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`1106 at 2. Thus, Immersion should be held to a construction of “pseudo-pressure”
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`that also includes a measure of such contact area. Likewise, the measure of the
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`area of the screen contacted by the object (e.g., a finger) can be used to estimate
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`pressure because as one presses harder on a screen, the object’s contact area with
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`the screen typically increases. Cockburn Decl., ¶ 65. Thus, such a contact area is
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`an indirect measure of pressure, i.e., a pseudo pressure. Id.
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`This Petition Should Not Be Barred by 35 U.S.C. §315(d)
`F.
`The Board should reject any argument by Patent Owner that the Board
`
`should deny institution of this petition under 35 U.S.C. §315(d). First, the
`
`arguments in this Petition address additional claims and entirely different prior art
`
`than the previous petition, IPR2016-01777. See, e.g., Microsoft Corp. v. Bradium
`
`Techs LLC, IPR2016-00448, Paper 9 at 10 (finding that § 315(d) did not preclude
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`16
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`

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`instituting trial on a second petition because the petition raised substantively
`
`different arguments than the previous petition). Second, Petitioner has not
`
`“overwhelmed Patent Owner with an unreasonable number of challenges of
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`patentability” because this is only the second petition that Petitioner has filed
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`regarding the ’507 patent. Id. at 9 (instituting trial in such circumstances). Third,
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`in order to conserve the resources of the Board and the private parties, Petitioner
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`limited the petition in IPR2016-01777 to the claims asserted in the ITC
`
`investigation. The ITC action is still pending and the statutory bar provided under
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`35 U.S.C. § 315(b) is not limited to asserted claims. Accordingly, Petitioner files
`
`the instant Petition to challenge additional claims in light of the (currently stayed)
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`District Court actions. This Petition aligns with the statutory goal of the America
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`Invents Act (AIA) to provide lower-cost alternatives to such litigation. The Board
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`has permitted second petitions under similar circumstances. See e.g., Silicon Labs.
`
`Inc. v. Cresta Tech. Corp., IPR2015-00615, Paper 9 at 24-25.
`
`G.
`
`Ground 1: Claim 1-18 are Obvious Under 35 U.S.C. §103(a) (pre-
`AIA) In Light of Astala Combined with Shahoian
`1.
`Astala is § 102(a) Prior Art
`U.S. Patent No. 6,590,568 (“Astala”) is prior art under 35 U.S.C. §102(a)
`
`(pre-AIA) because it is a patent (printed publication) that issued on July 8, 2003,
`
`before the earliest priority date on the face of the ’507 patent (Nov. 26, 2003), and
`
`because it has a different inventive entity than the ’507 patent. Ex. 1103 at cover
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`17
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`page.
`
`Astala relates to a method of dragging and dropping items displayed on a
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`touchscreen. Ex. 1103 at Abstract. Astala’s Figure 6(b) is shown below and
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`shows such an item (“FILE1”) displayed on a touchscreen.
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`Astala’s Figures 6(b), 6(c), and 6(d) show “FILE 1” being dragged and
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`dropped into the user directory “DIR 2.” Ex. 1103 at Figs. 6(b), 6(c), 6(d), 9:40-
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`57, 9:64-65. Astala discloses an algorithm to detect when the user is performing
`
`the drag-and-drop gesture on the touchscreen. Id. at Fig. 6(a), 9:21-65.
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`The Astala touchscreen is part of a “mobile terminal 20a.” Ex. 1103 at 8:47-
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`57, 6:23-27, Fig. 3 (showing a block diagram of mobile terminal 20a), 9:21-65,
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`2:37-47. The mobile terminal operates within Astala’s “mobile display appliance
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`(MDA) system.” Id. at 3:30-33, 6:23-27, Fig. 1. The MDA system includes an
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`MDA server that provides services such as email, calendar, notes, and online
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`shopping. Id. at 3:47-50. Users access the MDA server via the mobile terminals.
`
`18
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`

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`Id. at 3:45-47.
`
`Shahoian is § 102(b) Prior Art
`2.
`U.S. Pat. App. Pub. No. 2002/0033795 (“Shahoian”) qualifies as prior art
`
`under 35 U.S.C. § 102(b) (pre-AIA) because it was published on March 21, 2002,
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`more than one year before the earliest priority date of the face of the ’507 patent
`
`(Nov. 26, 2003).
`
`Shahoian relates to touch sensitive input devices that “output haptic
`
`feedback such as tactile sensations to the user who is physically contacting [a]
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`touchpad.” Ex. 1104, ¶ 43. Shahoian teaches outputting a haptic effect in response
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`to the detection of a gesture, such as a dragging mode, for a touch sensitive device.
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`Ex. 1104, ¶ 189. Petitioner discusses Shahoian in more detail below.
`
`3.
`
`Limitation-by-Limitation Analysis
`
`Claim 1:
`
`[1.0] A method comprising:
`Astala combined with Shahoian discloses and renders obvious a method
`
`comprising the claimed steps, as established below.
`
`[1.1] receiving contact data from an input device;
`Astala and Shahoian disclose this limitation both individually and in
`
`combination.
`
`Astala: Astala discloses that “mobile terminal 20a” includes “[h]ardware
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`78,” which includes a “touch screen controller that monitors touch screen-input
`
`19
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`

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`parameters for processing the touch inputs on the touch screen display.” Ex. 1103
`
`at 6:23-27, 8:54-56 (emphasis added). The touch-screen-input parameters are
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`contact data from the touch screen display (an input device). Cockburn Decl., ¶
`
`75.
`
`In addition, Astala discloses that in step 702 of Fig. 6(a), “a touch screen
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`input is detected” on touch screen 70, and that the touch may be made with “a
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`finger or pointed stylus.” Ex. 1103 at 9:16-18, Fig. 6(a). Astala also discloses
`
`analyzing characteristics of the touch, such as its pressure, change in pressure,
`
`movement, and so on. Id. at 9:21-65. Detecting a touch input on the touch screen
`
`and analyzing the characteristics of the touch necessarily requires receiving contact
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`data from the touchscreen. Cockburn Decl., ¶ 76. Thus, Astala also inherently
`
`discloses this limitation.
`
`Shahoian: Shahoian discloses “contact sensors in a touchscreen” and a
`
`“sensor interface” that “can be used to convert sensor signals to signals that can be
`
`interpreted by the microprocessor” (contact data from an input device). Ex. 1104
`
`at ¶ 70. Thus, Shahoian also discloses this limitation.
`
`It also would have been obvious to combine the disclosure of Shahoian with
`
`the system of Astala at least for purposes of allowing a processor to interpret and
`
`analyze signals from the touchscreen’s sensors. Cockburn Decl., ¶ 78. Motivation
`
`to do so arises from Astala’s disclosure of analyzing a touch to determine a drag-
`
`20
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`

`

`and-drop gesture, as described for limitations [1.3] and [1.5], because receiving
`
`contact data from the touch input device would be necessary to do so. Id. Doing
`
`so would have been well within the skill of a POSITA, could have been
`
`accomplished with minimal effort, and would have led to predictable results. Id.
`
`For example, Shahoian discloses that the “contact sensors” operate in a
`
`touchscreen, and Astala discloses an input device in the form of a touch screen.
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`Ex. 1104 at ¶ 70; Ex. 1103 at 9:16-20. The only difference between this limitation
`
`and the combination of Astala and Shahoian is the lack of actual combination of
`
`their disclosures in a single prior art reference. Cockbu