`
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`
`
`The Honorable Tana Lin
`
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WASHINGTON
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`IMMERSION CORPORATION,
`Plaintiff,
`
`v.
`VALVE CORPORATION,
`Defendant.
`
`
`
`Case No. 2:23-cv-00712-TL
`DEFENDANT VALVE
`CORPORATION’S
`NONINFRINGEMENT AND
`INVALIDITY CONTENTIONS
`
`
`
`
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 1
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 1 of 18
`
`

`

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`NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`Pursuant to the Order Setting Jury Trial Date and Related Dates (ECF No. 46) and Local
`Patent Rule 121, Valve Corporation (“Valve”) hereby serves these Non-Infringement and
`Invalidity Contentions (“Contentions”).
`
`I.
`
`PRELIMINARY STATEMENT AND RESERVATIONS OF RIGHTS
`In its Updated Preliminary Infringements dated October 30, 2023, Immersion
`Corporation (“Immersion”) purports to allege infringement of the following asserted patents and
`asserted claims (with independent claims identified in bold):
`● U.S. Patent No. 7,336,260 (’260 Patent): Claims 1, 2, 5, 6, 7;
`● U.S. Patent No. 8,749,507 (’507 Patent): Claims 1-8;
`● U.S. Patent No. 9,430,042 (’042 Patent): Claims 1, 2, 3, 7, 8, 9, 10, 11, 13, 14, 15, 16,
`18, 19;
`● U.S. Patent No. 9,116,546 (’546 Patent): Claims 1, 2, 3, 5, 6, 7;
`● U.S. Patent No. 10,627,907 (’907 Patent): Claims 1-7, 8-14, 15-20;
`● U.S. Patent No. 10,665,067 (’067 Patent): Claims 1, 2, 3, 5, 6, 7, 8, 11, 12, 15, 17-21;
`● U.S. Patent No. 11,175,738 (’738 Patent): Claims 1, 2, 3, 6, 14, 15, 19;
`As set forth below, the accused instrumentalities, to the extent they are discernable, do not
`infringe any asserted claim, and each asserted claim is invalid.
`These Contentions are based on information currently available to Valve. Valve’s
`investigation and analysis of prior art is, however, ongoing. Furthermore, Immersion’s
`Infringement Contentions are vague and fail to sufficiently identify the Accused
`Instrumentalities. Indeed, Immersion provides two classifications for the “Accused
`Instrumentalities”: the “Accused Handheld Instrumentalities” and the “Accused VR
`Instrumentalities,” the definitions for which mention the Steam Deck and Valve Index, then also
`mention SteamVR and Steam Input, and also “game engines” including at least Steam VR and
`Steam Input (which are not game engines). The definitions also mention “game titles.” The
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 1
`
`
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 2 of 18
`
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`definitions also refer to “corresponding software,” which is not defined, but at least includes
`SteamVR and Steam. Each defined term also includes “game titles that provide examples of the
`Asserted Claims.” Then, for each patent, Immersion references one or both defined terms, and
`refers to “certain game titles that provide non-limiting examples of infringement” that
`purportedly are in “the corresponding claim chart” for each patent. This vague and at times
`circularly defined statement fails to identify what is being accused, for each asserted claim, as
`required by Local Patent Rule 120(b). Valve reserves the right to seek appropriate relief,
`including but not limited to striking any infringement theories or accused instrumentalities not
`adequately disclosed. Valve also reserves the right to supplement or modify these Contentions
`based on continued discovery, evaluation of the scope and content of the prior art, and/or to the
`extent that Immersion is allowed to change its asserted claims or contentions.
`In addition, because the Court has not yet issued a claim construction ruling, Valve
`cannot provide complete and final invalidity contentions at this time. In the interim, Valve’s
`Contentions may be based in part on the claim interpretations apparently underlying Immersion’s
`Preliminary Infringement Contentions (“PICs”), to the extent that they are discernable. These
`Contentions are not intended to, and do not necessarily, reflect Valve’s positions as to the proper
`construction of the asserted claims. To the extent that the following Contentions reflect an
`interpretation consistent with the interpretation adopted by Immersion’s PICs, no inference is
`intended nor should any be drawn that Valve agrees with those claim constructions, and Valve
`expressly reserves its right to contest such constructions. Further, no inference is intended nor
`should any be drawn that the claim limitations satisfy 35 U.S.C. § 112, and Valve reserves the
`right to contend otherwise.
`Immersion “bears the burden of establishing that its claimed invention is entitled to an
`earlier priority date than an asserted prior art reference.” In re Magnum Oil Tools Int’l, Ltd., 829
`F.3d 1364, 1376 (Fed. Cir. 2016). “To obtain the benefit of the filing date of a parent application,
`the claims of the later-filed application must be supported by the written description in the parent
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 2
`
`
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 3 of 18
`
`

`

`
`
`
`‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the
`claimed invention as of the filing date sought.’” Anascape, Ltd. v. Nintendo of Am., Inc., 601
`F.3d 1333, 1335 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
`(Fed. Cir. 1997)).Valve reserves the right to challenge any priority date and any alleged date of
`conception and to amend these contentions upon the Court’s claim construction order,
`Immersion’s identification of asserted priority date(s), the Court’s findings concerning the
`priority date(s) of the asserted claims, information learned through discovery, or otherwise.
`
`II.
`
`NON-INFRINGEMENT
`Immersion’s PICs fail to demonstrate a plausible basis on which Immersion can carry its
`burden of proof to show that the accused products that Immersion has identified meet each of the
`asserted claims. As an initial matter, Immersion’s PICs fail sufficiently to identify each
`“Accused Device.” Immersion lists two classifications “Accused Handheld Instrumentalities”
`and “Accused VR Instrumentalities,” the definitions for both of which refer to undefined
`“corresponding software” and game titles “that provide examples of infringement of the Asserted
`Claims.” (PICs at 2-3.) Immersion then states that it has identified “certain game titles that
`provide non-limiting examples of infringement,” that purportedly are in “the corresponding claim
`chart” for each patent. (E.g., PICs at 3 (emphasis added).) The “corresponding claim chart,”
`however, does not necessarily provide contentions for each game title with respect to each and
`every element of the asserted claims. For example, the ’260 patent claim chart mentions Half-
`Life: Alyx and Aperture Hand Lab, but does not provide contentions related to those games for
`limitations [1.b] or [1.d]. Furthermore, as to various elements of each claim, Immersion’s
`contentions fail to show a plausible basis on which the claim element can be satisfied for reasons
`independent of the failure to identify the Accused Devices. Pursuant to Local Patent Rule 121(a),
`the attached Exhibits AA, BB, CC, DD, EE, FF, and GG provide further detail, on a claim-by-
`claim basis, of Valve’s response to Immersion’s PICs.
`
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`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 3
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`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 4 of 18
`
`

`

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`
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`Immersion has not properly asserted infringement under section 271(f). 35 U.S.C. §
`271(f). First, the Complaint lacks any well-pleaded facts relevant to section 271(f). The PICs,
`meanwhile, assert only conclusions. Immersion fails to identify, for example, what components
`Valve allegedly supplied from the United States, the purported manner in which they were
`supplied, or what steps Valve purportedly took to actively induce their combination abroad.
`Valve denies that Immersion has met its obligations under Local Patent Rule 120 to plead or
`disclose infringement under section 271(f).
`Immersion has not properly asserted a claim for indirect infringement under section
`271(b). A disclosure of a claim of indirect infringement requires identification of any direct
`infringement. L.P.R. 120(d). Immersion asserts that Valve indirectly infringes “to the extent that
`Valve’s users are direct infringers.” (PICs at 5.) That does not disclose any act of direct
`infringement—it merely asserts that if Valve users directly infringe, then Valve purportedly
`indirectly infringes. Moreover, the contentions fail to offer more than conclusory assertions that
`Valve induces the unidentified direct infringers. Instead, it offers only conclusions. For example,
`it identifies no instances in which Valve has allegedly encouraged third parties to develop
`features that allegedly practice each and every limitation of any asserted claim.
`Immersion has not preserved a claim of infringement under the doctrine of equivalents,
`other than for elements [1.d], [1.f], and [15.f] of the ’738 patent. Other than claims 1 and 15 of
`the ’738 patent, Immersion’s cover pleading does not identify any claims as infringed under the
`doctrine of equivalents. The exhibits to the PICs conclusorily refer to the possibility of
`infringement under the doctrine of equivalents, but Local Patent Rule 120(e) requires an
`element-by-element disclosure. With respect to claims 1 and 15 of the ’738 patent, Immersion
`has provided element-by-element contentions in its claim charts under the doctrine of equivalents
`only for elements [1.d], [1.f] and [15.f], and thus has not preserved a claim that any other
`limitations are met under the doctrine of equivalents.
`
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`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 4
`
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`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 5 of 18
`
`

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`Immersion has not satisfied the requirement that Immersion identify “specifically where
`each element of each Asserted Claim is found within each Accused Device.” L.P.R. 120(c).
`Valve broadly made source code available to Immersion for inspection, and thus to the extent
`that Immersion contends that elements of the asserted claims are found in source code, it needed
`to identify specifically where, within the source code, such elements are found. But other than
`with respect to Moondust source code, Immersion identifies source code only with broad
`citations to entire source code files. The identification of only broad source code files fails to
`meet Local Patent Rule 120(c)’s specificity requirement.
`Discovery is ongoing, claim construction is not yet completed; therefore, Valve reserves
`the right to amend and/or supplement these non-infringement contentions.
`
`III.
`
`PRIOR-ART-BASED INVALIDITY
`Identification of Prior Art
`A.
`Below, Valve provides a consolidated list identifying prior art that anticipates and/or
`renders obvious one or more claims of the asserted patents under at least one of 35 U.S.C. §§
`102(a), (b), (e), or (g) and/or 35 U.S.C. § 103, including relevant dates where presently known.
`In these Contentions, including the claim charts, any citation to a printed publication1 or other
`reference describing a prior art system should also be construed to include a reference to the
`prior art system itself. Each listed document or item became prior art at least as early as the dates
`set forth herein. Valve reserves the right to rely upon any systems, products, or prior inventions
`related to any of the references identified in these Contentions.
`Patent or Application Number
`
`Date of Filing,
`Issuance, and/or
`Publication
`July 19, 2001
`December 29, 1999
`
`U.S. Patent Application Publication No. 2001/0008849 (“Komata”)
`International Patent Application Publication No. WO 99/66997
`(“Rosenberg ’997”)
`
`
`1 Because discovery and factual development are ongoing, Valve is continuing to develop evidence as to whether the
`non-patent publications cited herein are “printed publications” within the meaning of 35 U.S.C. § 102(a). A
`reference to a non-patent reference herein is not an admission that such reference is a printed publication under §
`102(a).
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 5
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 6 of 18
`
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`August 6, 1999
`
`Japanese Unexamined Patent Application Publication No. 11-212725
`(“Tsuji”)
`July 8, 2003
`U.S. Patent No. 6,590,568 (“Astala”)
`U.S. Patent Application Publication No. 2002/0033795 (“Shahoian”) March 21, 2002
`U.S. Patent No. 6,791,536 (“Keely”)
`September 14, 2004
`U.S. Patent No. 7,256,773 (“Kolmykov-Zotov”)
`August 14, 2007
`U.S. Patent Application Publication No. 2016/0274724 (“Chang”)
`September 22, 2016
`U.S. Patent No. 5,734,373 (“Rosenberg ’373”)
`March 31, 1998
`U.S. Patent No. 6,730,863 (“Gerpheide”)
`May 4, 2004
`U.S. Patent No. 6,429,846 (“Rosenberg ’846”)
`August 6, 2002
`International Patent Application Publication No. WO 02/102616
`December 27, 2002
`(“Wang”)
`November 16, 2004
`U.S. Patent No. 6,819,990 (“Ichinose”)
`February 3, 2004
`U.S. Patent No. 6,686,911 (“Levin ’911”)
`U.S. Patent Application Publication No. 2004/0257339 (“Takahashi”) December 23, 2004
`U.S. Patent Application Publication No. 2007/0106457 (“Rosenberg
`May 10, 2007
`’457”)
`U.S. Patent Application Publication No. 2002/0120188 (“Brock”)
`U.S. Patent Application Publication No. 2007/0236450 (“Colgate”)
`U.S. Patent Application Publication No. 2006/0207978 (“Rizun”)
`U.S. Patent Application Publication No. 2004/0106916 (“Quaid”)
`U.S. Patent Application Publication No. 2012/0249474 (“Pratt”)
`U.S. Patent Application Publication No. 2012/0143182 (“Ullrich”)
`U.S. Patent Application Publication No. 2011/0046659 (“Ramstein
`’659”)
`June 13, 2013
`U.S. Patent Application Publication No. 2013/0147610 (“Grant”)
`U.S. Patent Application Publication No. 2004/0032395 (“Goldenberg”) February 19, 2004
`U.S. Patent Application Publication No. 2010/0141606 (“Bae”)
`June 10, 2010
`U.S. Patent No. 6,614,420 (“Han”)
`September 2, 2003
`U.S. Patent Application Publication No. 2007/0152988 (“Levin ’988”)
`July 5, 2007
`U.S. Patent No. 6,203,432 (“Roberts”)
`March 20, 2001
`U.S. Patent Application Publication No. 2014/0347298 (“Park”)
`November 27, 2014
`U.S. Patent Application Publication No. 2008/0055244 (“Cruz-
`March 6, 2008
`Hernandez”)
`July 24, 2012
`U.S. Patent No. 8,226,484 (“Bryant”)
`February 28, 2017
`U.S. Patent No. 9,582,077 (“Rosenberg ’077”)
`April 20, 2017
`U.S. Patent Application Publication No. 2017/0108930 (“Banerjee”)
`February 23, 2012
`U.S. Patent Application Publication No. 2012/0045742 (“Meglan”)
`December 14, 2017
`U.S. Patent Application Publication No. 2017/0354864 (“Rogers”)
`September 10, 2013
`U.S. Patent No. 8,531,319 (“Ku”)
`June 13, 2013
`U.S. Patent Application Publication No. 2013/0147728 (“Lee”)
`U.S. Patent Application Publication No. 2018/0356891 (“Murakami”) December 13, 2018
`Japanese Patent Application No. 2015-75995 (“Ono”)
`April 20, 2015
`
`August 29, 2002
`October 11, 2007
`September 21, 2006
`June 3, 2004
`October 4, 2012
`June 7, 2012
`February 24, 2011
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 6
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 7 of 18
`
`

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`December 8, 2016
`U.S. Patent Application Publication No. 2016/0357296 (“Picciotto”)
`U.S. Patent Application Publication No. 2018/0067545 (“Provancher”) March 8, 2018
`U.S. Patent Application Publication No. 2015/0061703 (“Jiang”)
`March 5, 2015
`U.S. Patent Application Publication No. 2014/0139329 (“Ramstein
`May 22, 2014
`’329”)
`U.S. Patent Application Publication No. 2008/0024459 (“Poupyrev”)
`U.S. Patent No. 8,970,513 (“Kwon”)
`
`
`January 31, 2008
`March 3, 2015
`
`Prior Art References
`
`Tang et al., “A Multilevel Input System with Force-Sensitive
`Elements,” International Journal of Human-Computer Studies, Vol.
`54, pp. 495-507 (“Tang”)
`Oboe et al., “Multi-Instrument Virtual Keyboard — The MIKEY
`Project,” Proceedings of the 2002 Conference on New Instruments for
`Musical Expression (NIME-02), (May 24-26, 2002) (“Oboe”)
`Sony PlayStation 2, Gran Turismo 3: A-spec, Namco Ridge Racer V
`(collectively referred to as the “PS2 Games”)
`Synaptics TouchPad
`BMW iDrive System that includes a Haptic Commander provided by
`Alps Alpine (“BMW iDrive”)
`Apple iPod with Click Wheel (Fourth Generation iPod) (“iPod”)
`Immersion Studio® for Automotive (ISA) and the Immersion API
`(collectively referred to as the “ISA System”)
`HALO (Haptic Assisted Locating of Obstacles) Project (“HALO”)
`U.S. Naval Aerospace Medical Research Laboratory’s Tactile Situation
`Awareness System (“TSAS”)
`Rupert, “An Instrumentation Solution for Reducing Spatial
`Disorientation Mishaps,” IEEE Engineering in Medicine and Biology
`(Mar./Apr. 2000), pp. 71-80 (“Rupert”)
`Haptic Radar
`Nintendo Wii
`Microsoft Corporation’s Sidewinder Dual Strike game controller
`(“Dual Strike”)
`Saitek Cyborg Rumble Pad (“Cyborg”)
`Xpadder
`Pinnacle Game Profiler (“Pinnacle”)
`HaptX Glove System (“HaptX”)
`Sony PlayStation VR Aim System (“PS VR Aim System”)
`Tactical Haptics Reactive Grip™ Controller (“Tactical Haptics
`System”)
`PlayStation DualShock controllers
`PlayStation DualShock 2 controllers
`
`Date
`
`February 9, 2001
`
`May 24-26, 2002
`
`2000-2001
`
`January 1997
`2001
`
`July 19, 2004
`January 8, 2003
`
`2010
`March 2004
`
`March 2000
`
`July 2006
`November 2006
`1999
`
`2008
`2010
`2013
`March 1, 2018
`May 16, 2017
`June 15, 2018
`
`1997-1998
`2000
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 7
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 8 of 18
`
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`Nintendo64 Rumble Pak
`On Semiconductor’s TOUCHLRACOMBOGEVB Evaluation Board
`(“Eval Board”)
`B.
`Anticipation
`Valve contends that the following prior art anticipates the asserted claims of the patents-
`in-suit under 35 U.S.C. § 102:
`Patent-in-Suit Prior Art
`
`April 1997
`December 13, 2016
`
`’260 patent
`’507 patent
`’042 patent
`
`’546 patent
`
`Komata, Rosenberg ’997, Tang, Tsuji, Oboe, PS2 Games
`Astala, Shahoian, Keely, Kolmykov-Zotov, Synaptics TouchPad
`Rosenberg ’846, Wang, Ichinose, Levin ’911, Takahashi, BMW iDrive, iPod,
`Immersion ISA
`Rosenberg ’457, Brock, HALO, TSAS, Rupert, Colgate, Rizun, Quaid,
`Haptic Radar, Nintendo Wii
`Grant, Goldenberg, Bae, Han, Levin ’988, Dual Strike, Cyborg, Xpadder,
`Roberts, Pinnacle
`Banerjee, Meglan, Rogers, HaptX, PS VR Aim, Tactical Haptics System
`’067 patent
`Pratt, Ku, Lee, Murakami, Ono, Picciotto, Provancher, Eval Board
`’738 patent
`Exhibits A-1–A-6, B-1–B-5, C-1–C-8, D-1–D-10, E-1–E-10, F-1–F-6, and G-1–G-8
`identify how the anticipatory prior art discloses each limitation of each asserted claim. The charts
`are exemplary only and representative of the content and teaching of the prior art; they should be
`understood in the context of each prior art reference as a whole as it would be understood by a
`person of ordinary skill in the art. Valve reserves the right to rely on other disclosures,
`particularly if Immersion contests the scope and content of the disclosures identified in the claim
`charts and/or the knowledge of one of ordinary skill in the art.
`Valve’s invalidity theories may depend on the Court’s claim constructions. In addition,
`Valve’s Contentions may also reflect implicit positions advanced by Immersion regarding the
`interpretation of any asserted claim or particular limitation. For example, Valve contends that the
`asserted claims of the ’067 patent are, on their face and as properly construed in view of the
`intrinsic evidence, limited to implementations of augmented reality and do not read on virtual
`reality systems. Immersion nonetheless appears to take the position, through its PICs and
`apparent interpretation of the asserted claims, that the asserted claims extend to virtual reality
`
`’907 patent
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 8
`
`
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 9 of 18
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`implementations. Valve disputes Immersion’s improper characterization of the claims, but to the
`extent that interpretation is accepted, then Valve contends that the asserted claims are invalid in
`view of virtual reality prior art disclosed herein. The contentions disclosed herein do not
`constitute and should not be taken as any endorsement, acquiescence, or acceptance by Valve of
`any interpretation advanced by Immersion. Valve reserves the right to amend these Contentions
`pending further developments in this case, including as to claim construction and any
`amendments to Immersion’s Infringement Contentions.
`
`Obviousness
`C.
`Valve contends that the following prior art renders obvious the asserted claims of the
`patents-in-suit under 35 U.S.C. § 103:
`Patent-in-Suit Combinations
`
`’260 patent
`
`’507 patent
`
`’042 patent
`
`’546 patent
`
`’907 patent
`
`’067 patent
`
`’738 patent
`
`Komata, Rosenberg ’997, Tang, Tsuji, Oboe, PS2 Games, alone or in
`combination with one or more of each other and/or any other prior art
`referenced in Exhibit H for any limitation of the ’260 patent
`Astala, Shahoian, Keely, Kolmykov-Zotov, Synaptics TouchPad, alone or in
`combination with one or more of each other and/or Rosenberg ’373,
`Gerpheide, Chang and/or any other prior art referenced in Exhibit H for any
`limitation of the ’507 patent
`Rosenberg ’846, Wang, Ichinose, Levin ’911, Takahashi, BMW iDrive, iPod,
`Immersion ISA, alone or in combination with one or more of each other
`and/or any other prior art referenced in Exhibit H for any limitation of the
`’042 patent
`Rosenberg ’457, Brock, HALO, TSAS, Rupert, Colgate, Rizun, Quaid,
`Haptic Radar, Nintendo Wii, alone or in combination with one or more of
`each other and/or Pratt, Ullrich, Ramstein ’659, and/or any other prior art
`referenced in Exhibit H for any limitation of the ’546 patent
`Grant, Goldenberg, Bae, Han, Levin ’988, Dual Strike, Cyborg, Xpadder,
`Roberts, Pinnacle, alone or in combination with one or more of each other
`and/or Park, Cruz-Hernandez, Komata, Bryant, Rosenberg ’077, PlayStation
`DualShock or DualShock 2 controllers, Nintendo64 Rumble Pak and/or any
`other prior art referenced in Exhibit H for any limitation of the ’907 patent
`Banerjee, Meglan, Rogers, HaptX, PS VR Aim, Tactical Haptics System,
`alone or in combination with one or more of each other and/or any other prior
`art referenced in Exhibit H for any limitation of the ’067 patent
`Pratt, Ku, Lee, Murakami, Ono, Picciotto, Provancher, Eval Board, alone or
`in combination with one or more of each other and/or Jiang, Ramstein ’329,
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 9
`
`
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 10 of 18
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`Poupyrev, Kwon, Ullrich and/or any other prior art referenced in Exhibit H
`for any limitation of the ’738 patent
`Even if not identically disclosed, a patent claim may be invalid if the differences between
`the claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having ordinary
`skill in the art to which the claimed invention pertains. The legal determination of obviousness is
`based on underlying factual questions set forth in Graham v. John Deere Co. of Kansas City:
`1. the scope and content of the prior art;
`2. differences between the prior art and the claims at issue;
`3. the level of ordinary skill in the pertinent art; and
`4. evaluation of any relevant secondary considerations.
`383 U.S. 1, 17 (1966).
`As the U.S. Supreme Court held in KSR International Co. v. Teleflex Inc., “[t]he
`combination of familiar elements according to known methods is likely to be obvious when it
`does no more than yield predictable results.” 550 U.S. 398, 416 (2007). The Supreme Court
`further held that, “[w]hen a work is available in one field of endeavor, design incentives and
`other market forces can prompt variations of it, either in the same field or a different one. If a
`person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.
`For the same reason, if a technique has been used to improve one device, and a person of
`ordinary skill in the art would recognize that it would improve similar devices in the same way,
`using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417.
`Moreover, the Supreme Court held that “in many cases a person of ordinary skill will be
`able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Indeed,
`the Supreme Court held that it is sufficient that a combination of elements was “obvious to try”
`holding that, “[w]hen there is a design need or market pressure to solve a problem and there are a
`finite number of identified, predictable solutions, a person of ordinary skill has good reason to
`pursue the known options within his or her technical grasp. If this leads to the anticipated
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 10
`
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`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 11 of 18
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`success, it is likely the product not of innovation but of ordinary skill and common sense.” Id. at
`421. “In that instance the fact that a combination was obvious to try might show that it was
`obvious under § 103.” Id. “Rigid preventative rules that deny factfinders recourse to common
`sense, however, are neither necessary under our case law nor consistent with it.” Id.
`Finally, the Supreme Court recognized that “[g]ranting patent protection to advances that
`would occur in the ordinary course without real innovation retards progress and may, in the case
`of patents combining previously known elements, deprive prior inventions of their value or
`utility.” Id. at 419.
`For the asserted patents, each group of the above-identified prior art items is directed to
`the same or similar fields of endeavor. Accordingly, one of ordinary skill in the art would have
`recognized that the results of the combinations were predictable, and would have been clearly
`motivated to modify and combine the prior art items identified above to arrive at the alleged
`inventions of the claims of the asserted patents. Exhibit H includes seven charts, one for each
`asserted patent, identifying on an element-by-element basis the combinations of prior art
`references that would have rendered the asserted claims obvious. To the extent Plaintiff contends
`any reference Valve has identified as anticipatory does not anticipate the Asserted Claims, it
`would have been obvious to modify the reference based on the knowledge of a person of
`ordinary skill in the art, or to combine or modify the reference with concepts from other prior art
`as identified in Exhibit H. For example, it would have been obvious to combine or modify any of
`Komata, Rosenberg ’997, Tang, Tsuji, Oboe, and/or PS2 Games to establish instructions causing
`a processor to “detect a first pressure on a first input device,” as required by limitation [1.a] of
`the ’260 patent. Exhibit H at 1.
`Exhibits A-1–A-6, B-1–B-5, C-1–C-8, D-1–D-10, E-1–E-10, F-1–F-6, G-1–G-8, and H
`identify how the prior art renders each limitation of each asserted claim obvious. The charts are
`exemplary only and representative of the content and teaching of the prior art; they should be
`understood in the context of each prior art reference as a whole as it would be understood by a
`
`VALVE’S NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`(2:23-CV-00712-TL) - 11
`
`
`
`
`KWUN BHANSALI LAZARUS LLP
`555 MONTGOMERY STREET, SUITE 750
`SAN FRANCISCO, CA 94111
`415.630.2350
`
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2006
`Page 12 of 18
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`person of ordinary skill in the art. Valve reserves the right to rely on other disclosures,
`particularly if Immersion contests the scope and content of the disclosures identified in the claim
`charts and/or the knowledge of one of ordinary skill in the art.
`At least the following rationales support a finding of obviousness based on the
`combinations set forth in detail below:
`
`(A)
`
`(B)
`
`(E)
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`(F)
`
`(G)
`
`Combining prior art elements according to known methods to yield predictable
`results;
`Simple substitution of one known element for another to obtain predictable
`results;
`(C) Use of known technique to improve similar devices (methods, or products) in the
`same way;
`(D) Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
`“Obvious to try”—choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success;
`Known work in one field of endeavor may prompt variations of it for use in either
`the same field or a different one based on design incentives or other market forces
`if the variations would have been predictable to one of ordinary skill in the art;
`and
`Some teaching, suggestion, or motivation in the prior art that would have led one
`of ordinary skill to modify the prior art reference or to combine prior art reference
`teachings to arrive at the claimed invention.
`Evidence of contemporaneous invention may also support a ruling that a claimed invention was
`obvious to those of skill in the art. See, e.g., Concrete Appliances Co. v. Gomery, 269 U.S. 177,
`185 (1925); Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1305–06
`(Fed. Cir. 2010). To the extent that any of the references in the claim charts are not found to
`anticipate the asserted claims, Valve contends that those claims are invalid under 35 U.S.C.
`§ 103.
`
`To the extent relevant to any issues related to Local Patent Rule 121, Valve further
`incorporates by reference its petitions for inter partes review filed in connection with the
`asserted patents, IPR2024-00477 (’