Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`
`IMMERSION CORPORATION,
`Patent Owner.
`
`
`
`__________________________________
`
`Case IPR2024-00556
`U.S. Patent No. 9,748,507
`__________________________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. §§ 311-19 AND 37 C.F.R. § 41.100, ET SEQ.
`
`
`
`
`
`
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`

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`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`BACKGROUND ............................................................................................ 3
`A.
`Immersion Corporation – A Pioneer in Haptics Technology ............... 3
`B.
`The Challenged ’507 Patent .................................................................. 6
`C.
`Prosecution History ............................................................................. 11
`III. PERSON OF ORDINARY SKILL IN THE ART (POSA) ..................... 16
`IV. CLAIM CONSTRUCTION ........................................................................ 17
`V.
`THE ASSERTED REFERENCES ............................................................. 19
`A. Astala (Ex. 1005) ................................................................................. 19
`B.
`The Shahoian Reference (Ex. 1004) ................................................... 20
`C.
`The Keely Reference (Ex. 1007) ......................................................... 21
`D. Kolmykov-Zotov Reference (Ex. 1008) ............................................. 22
`VI. ASTALA + SHAHOIAN DOES NOT DISCLOSE OR SUGGEST
`USING PRESSURE, CHANGE IN PRESSURE AND ELASPED
`TIME TO “DETERMINE A PRESS” ....................................................... 24
`A. Astala + Shahoian does not teach determining an initial press of
`the touch sensitive input device as required by the claim language
`“determining a press”. ......................................................................... 24
`Astala + Shahoian does not use a “change in pressure” to
`determine an initial press. .................................................................... 27
`VII. NEITHER KEELY NOR KOLMYKOV-ZOTOV DISCLOSE OR
`TEACH “DETERMIN[ING] A PRESS” OR “A CHANGE IN
`PRESSURE THRESHOLD” AND THEREFORE DO NOT
`RENDER THE CLAIMS UNPATENTABLE .......................................... 35
`A. Keely and Kolmykov-Zotov do not teach “determining a press”
`as required by all challenged claims, but rather describe
`identifying gestures that simulate mouse inputs. ................................ 35
`The Petition does not identify evidence relating to “determining
`a press” in the first instance but rather whether a the “hold”
`portion of a press-and-hold event has occured. ................................... 37
`
`B.
`
`B.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`B.
`
`C.
`
`VIII. INSTITUTION SHOULD BE DENIED UNDER 35 U.S.C. § 314(a)
` ....................................................................................................................... 43
`A. Whether the Court Granted a Stay or Evidence Exists That One
`May Be Granted if a Proceeding Is Instituted ..................................... 45
`Proximity of the Court’s Trial Date to the Board’s Projected
`Deadline for a Final Written Decision ................................................ 46
`Investment in the Parallel Proceeding by the Court and the
`Parties .................................................................................................. 47
`D. Overlap Between the Issues Raised in the Petition and the
`Parallel Proceeding .............................................................................. 48
`E. Whether the Petitioner and the Defendant in the Parallel
`Proceeding are the Same Party ............................................................ 49
`Other Circumstances That Impact the Board’s Exercise of
`Discretion, Including the Merits.......................................................... 49
`IX. CONCLUSION ............................................................................................ 49
`
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`F.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`
`TABLE OF AUTHORITIES
`
`CASES
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 (PTAB Mar. 20, 2020) .......................................................................... 44
`
`Apple Inc. v. Immersion Corp.,
`Case IPR2016-01371, Paper 7 (PTAB Jan. 11, 2017) .............................. 3, 33, 36
`
`Arendi S.A.R.L. v. Apple Inc., 832 F.3d (Fed. Cir. 2016) ........................................ 33
`
`Cisco Sys., Inc. v. Oyster Optics, LLC,
`IPR2021-00238, Paper 10 (PTAB Jun. 1, 2021) .......................................... 44, 48
`
`CommScope Technologies LLC, v. Dali Wireless, Inc.,
`IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) ............................................... 42
`
`In re. Am. Acad. of Sci. Tech. Ctr., 367 F.3d (Fed. Cir. 2004) ................................ 33
`
`Nidec v. Zhongshan, 868 F.3d (Fed. Cir. 2017)....................................................... 18
`
`Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Limited,
`IPR2023-00587, Paper 12 (PTAB Sept. 22, 2023) .............................................. 43
`
`STATUTES
`
`35 U.S.C. § 314(a) ................................................................................................... 42
`
`REGULATIONS
`
`77 Fed. Reg. 48680-01 (Aug. 14, 2012) .................................................................. 47
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`EXHIBIT LIST
`
`Exhibit Description
`
`Declaration of Craig Rosenberg, Ph.D. in Support of Immersion
`Corporation’s Patent Owner Preliminary Response, dated May
`15, 2024
`
`Curriculum Vitae of Craig Rosenberg, Ph.D.
`
`File History of U.S. Patent SN 10/723,778
`
`Immersion Corp. v. Valve Corp., 2:23-cv-000712-TL, Order on
`Motion to Stay Pending Jnter Partes Review, Dkt. # 69
`
`Immersion Corp. v. Valve Corp., 2:23-cv-000712-TL, Case
`Scheduling Order, Dkt. # 46
`
`Immersion Corp. v. Valve Corp., 2:23-cv-000712-TL, Valve
`Corp.’s Invalidity Contentions
`
`
`
`2001
`
`2002
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`2003
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`2004
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` Exhibit No.
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`2005
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`2006
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`
`INTRODUCTION
`Patent Owner Immersion Corporation (“Immersion”) respectfully requests
`
`I.
`
`that the Board deny institution of this Petition for inter partes review as it fails to
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`demonstrate a reasonable likelihood that Valve Corporation (“Valve”) will succeed
`
`in carrying its burden to show that the challenged claims of Immersion’s U.S. Patent
`
`No. 8,748,507 (Ex. 1001 or the “’507 Patent”) are unpatentable.
`
`The challenged ’507 Patent teaches improved methods for detecting an initial
`
`touch or press of a touch screen input device. Capacitive and resistive touch devices
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`at the time would typically detect an initial press or touch by measuring the increase
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`in capacitance or resistance caused by a user’s finger or stylus on the surface of the
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`device and approximate a touch pressure that the 507 Patent refers to as a “pseudo
`
`pressure.” To determine whether a user intended to operate a user interface element
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`by touching the screen or whether the touch was merely accidental or incidental,
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`conventional systems would compare this pseudo pressure against a predetermined
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`threshold pressure. However, because different users would press the surface with
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`different amounts of force, the capacitance or resistance would vary as the finger is
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`deformed, and user’s finger anatomy can vary (larger or smaller fingers). Thus, a
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`simple pressure comparison is prone to errors.
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`Instead, the ’507 Patent teaches a three-part test for determining whether a
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`user intended to activate a UI element or whether the touch was accidental. In
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`addition to measuring absolute pressure and time, the ’507 Patent further teaches
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`comparing a change in pressure against a change in pressure threshold to address the
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`issue relating to different users, anatomy and capacitance-resistance profiles. These
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`features are expressly recited in all the independent claims of the ’507 Patent:
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`“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
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`elapses . . . .” Ex. 1001 at 10:38-42.
`
`In contrast, the references asserted by the Petitioner to challenge the
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`patentability of the ’507 Patent are fundamentally different. Astala, Keely, and
`
`Kolmykov-Zotov all discuss methods for simulating traditional mouse inputs, such
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`as left click, right click, single-click, double-click, and drag-and-drop operations
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`using a touch sensitive input device. These references are concerned with
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`discriminating between various actions, for example when does a user intend to
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`make a left- versus right-click, a single- versus a double-click, or a selection versus
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`a drag-and-drop operation using only a stylus or finger on a touch pad. Unlike the
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`’507 Patent, these references do not teach or suggest determining whether an initial
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`touch or press is intended or accidental, and instead typically assume an initial touch
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`has occurred or use a rudimentary test to determine the initial touch such as whether
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`the stylus is making contact with the surface of the touch device.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`Not surprisingly, these fundamental differences between the disclosure and
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`claims of the ’507 Patent and the asserted references have not been bridged by the
`
`Petition, and as such, the Petitioner has not carried its burden to demonstrate at least
`
`one claim is unpatentable. Additionally, the ’507 Patent has been subject to two
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`previous IPRs, one asserting the same Astala and Shahoian references used in the
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`present challenge. In both reviews the Board denied institution. During examination
`
`of the parent application, the Board of Patent Appeals and Interferences also
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`reversed an examiner’s rejection based in part on the same features of Astala cited
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`by Petitioners in the present IPR. Ex. 2003 at 93-94, 98. Here, Petitioner relies on
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`an expert declaration that is a nearly verbatim copy of the Petition, which caused the
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`Board in the previous IPR to give little weight to the declaration or those arguments.
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`Apple Inc. v. Immersion Corp., Case IPR2016-01371, Paper 7 at 13-14 (PTAB
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`January 11, 2017). As such, the Board should deny institution.
`
`II. BACKGROUND
`Immersion Corporation – A Pioneer in Haptics Technology
`A.
`Immersion Corporation is a publicly-traded company, and since its founding
`
`30 years ago, has been the global leader in developing haptic technology as well as
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`licensing software solutions and intellectual property for enabling haptic interfaces
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`in a broad array of product markets including wearable devices, mobile ads and
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`video, mobile devices, medical applications, automotive interfaces, gaming and
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`virtual reality. Over 3 billion devices are licensed to use Immersion’s haptic
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`feedback software and intellectual property.
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`Started in 1993 by Louis Rosenberg, a pioneer in sensing interfaces and
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`feedback technology, Immersion developed and commercialized haptic innovations
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`beginning with its force feedback technology, allowing devices to provide tactile
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`sensations and resistance to user interactions, such as force feedback in input devices
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`like joysticks. Immersion was one of the first companies to release haptic joysticks,
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`computer mice and steering wheels for video games. This technology has been
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`widely used in gaming controllers, medical simulators, and other applications to
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`enhance realism and user engagement.
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`Throughout the mid- to late-1990s, Immersion continued to develop its haptic
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`technologies, eventually developing VR interfaces for specific medical procedures.
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`Using Immersion’s technology to provide realistic feedback, these systems are used
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`in medical schools around that world to train physicians in surgical procedures in a
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`realistic and safe virtual environment. Immersion also partners with manufacturers
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`and systems integrators of actuator hardware. Through these partnerships,
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`Immersion provides designs and guidance for the development of actuators that are
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`required to implement advanced haptic features.
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`Immersion, over its 30-year history, has developed and licensed haptic
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`products and IP across diverse applications, including gaming systems, medical
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`devices, automobiles, touchscreens, and mobile devices. Recently, a primary focus
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`has been developing and implementing advanced haptic effects, including effects
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`optimized for use in virtual and augmented reality (“AR/VR”) systems. Immersion
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`also has a long history of developing advanced software. For example, Immersion’s
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`TouchSense® 3000 software includes a driver package designed to operate an
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`actuator, a haptic API that programmers can use to create, launch, and modulate
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`haptic effects, a library containing more than 100 pre-defined effects, and user
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`interface support. Video game industry leaders, including Nintendo, have recognized
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`the value of Immersion’s technology and partnered with Immersion.1
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`Immersion’s industry-defining technology is used in over three billion devices
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`worldwide, including tablets, smartphones, wearables, gaming controllers, and
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`automotive interfaces. The Institute of Electrical and Electronics Engineers
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`(“IEEE”) has recognized Immersion in its annual IEEE Spectrum Patent Power
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`scorecards, which evaluate the technology world’s most valuable patent portfolios
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`by quantitative benchmarks. Immersion’s established and growing leadership in
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`haptic technology is reflected by its consistent ranking in the top 20 in its industry
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`segment.
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`1https://ir.immersion.com/news-releases/news-release-details/immersion-and-
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`nintendo-enter-agreement-bring-immersions
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`For Immersion’s technological advances in the haptics space, Immersion has
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`been awarded over 3,500 issued patents world-wide. Immersion’s patents have been
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`proven novel through multiple challenges over the years. Exclusive of those brought
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`by Petitioner Valve, Immersion’s patents have been challenged in 43 IPRs2 of which
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`only 2 cases have resulted in determinations of unpatentability.
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`The Challenged ’507 Patent
`B.
`The petition challenges U.S. Patent No. 8,749,507 titled “System and Methods
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`for Adaptive Interpretation of Input from a Touch-Sensitive Input Device.” The ’507
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`Patent was filed on April 6, 2012, and claims priority to a November 26, 2003,
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`application. Ex. 2001 at ¶ 50. The ’507 Patent addresses a problem with sensing a
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`user’s intended input using conventional touchpad and touchscreen devices. Id.
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`Touchpads, and in particular, touchscreens, allow users to interact with various
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`controls displayed on the surface of the device, for example, to reposition a cursor
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`or to actuate a control such as a click on a virtual button. Id.; Ex. 1001 at 1:46-53.
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`Unlike other types of input devices such as mice, both “changes in position on the
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`touchpad and in the pressure exerted on the surface of the touchpad must be used to
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`210 of these IPRs were denied institution, 14 of them were terminated prior to an
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`institution decision in light of settlements, while 19 of them were instituted with 17
`
`of those terminated prior to a final written decision in light of settlements.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`determine the user’s intent.” Id.; Ex. 1001 at 1:53-55. However, “conventional
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`touchpads combine position and control functionality in a way that often masks the
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`user’s intent to make a positional change to provide control input.” Id.; Ex. 1001 at
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`1:46-48. These conventional touch input devices could not accurately reflect when
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`a user was intending to make a touch input, or when the contact with the touch device
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`was accidental. Id.; Ex. 1001 at 1:55-60.
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`The reason for the above shortcomings of conventional touch devices stem
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`from the way these devices sense inputs. “Touchpads work by utilizing resistance,
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`capacitance, or membrane switches.” Ex. 2001 at ¶ 51; Ex. 1001 at 2:55-56. These
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`sensing technologies do not produce or measure pressure directly, but rather are used
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`to sense a “pseudo pressure.” Ex. 2001 at ¶ 51; Ex. 1001 at 2:54-55. “The pseudo
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`pressure may not accurately represent the amount actually exerted on the touchpad.”
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`Id. at 3:19-21. For example, the difference in the size of different user’s fingers, or
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`the difference in the way they press on the device can cause a difference in pseudo
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`pressure. Ex. 2001 at ¶ 51; Ex. 1001 at 3:40-42, 3:28-31. As explained by the ’507
`
`Patent, “the larger the surface of the conductor used on the touchpad 102, e.g. a
`
`user’s finger, the larger the change in capacitance per amount of pressure exerted.”
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`Id. at 3:22-24. “[I]f a user presses heavily against the touchpad 102 with a fleshy
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`part of the finger, the amount of the touchpad 102 covered by the finger is greater
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`than when the same part of the finger is touching lightly” Id. at 3:24-28. Further,
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`“pseudo pressure, is also greater than when the user presses heavily with a bony part
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`of a finger.” Id. at 3:28-31. The ’507 Patent provided the following factors that
`
`affect sensing touch inputs:
`
`Variables affecting the ability of a program to determine
`what a user is attempting to do include the following: the
`physical difference between users; the different angles at
`which a user may place their finger while using a
`touchpad; the variance in pressure between different users
`and between the same user; the movement of the finger
`across the touchpad while simultaneously attempting to
`perform actions on the touchpad.
`Id. at 1:58-65.
`The ’507 Patent proposes solving these problems related to whether a user has
`
`intended to make a touch input:
`
`Embodiments of the present invention 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. Examples of determining a user’s intent
`include determining when a user is tapping or pressing on
`a specific portion of a touch-sensitive input device that
`corresponds to a control displayed on the input device or
`displayed on a separate, synchronized display.
`Ex. 1001 at 4:56-63. The ’507 Patent describes using adaptive thresholds for various
`
`measured values to determine when a user has intended to provide a control input
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`via a touch sensitive device. Ex. 2001 at ¶ 54. These include “thresholds for
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`pressure, pseudo pressure, pseudo-pressure change, velocity and other measures . . .
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`Adaptive thresholds may rely on various parameters including, for example, the
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`length of time the input device has been active, the placement of the [finger] on the
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`surface of the device and the current user of the device.” Id. at 5:11-20. The ’507
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`Patent describes these thresholds as adaptable, where the system can store separate
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`sets of thresholds, can calculate and apply different thresholds on an ongoing basis,
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`and can modify thresholds based on the identity of the user. Ex. 2001 at ¶ 54; Ex.
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`1001 at 5:44-48.
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`The ’507 Patent also describes using various measures of time to determine
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`whether a user intended to make a gesture. Ex. 2001 at ¶ 55. An initial tick count is
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`employed to ascertain how long a finger remains on a screen element, which is then
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`integrated into different parts of the gesture recognition algorithm. Ex. 1001 at 6:9-
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`13. After the start of the initial tick count, the processor (106) determines the finger
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`position relative to the items displayed on the screen. Id. at 6:14-15.
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`The procedure includes checking the initial tick count to determine if the
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`finger remains on the touch input device. Id. at 6:34-48. If the finger is still on the
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`device, the system either sets a ‘move threshold’ and if not, sets a first threshold.
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`“The threshold value is then compared to the change in pseudo pressure 222.” Id.
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`The pressure or pseudo pressure is measured during the time period. Id. After the
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`system determines that a press has been made, a release tick count is started:
`
`In the process shown in FIG. 2, the first tick count is set
`when the finger goes from a non-touching to a touching
`state and is used to measure a time interval during which
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`a different (higher) set of thresholds is used because users
`typically push harder when they first touch a touchpad
`(102). The release tick count is used to measure a time
`interval following the detection of a press during which
`the finger is deemed to be pressing. During this interval,
`the processor (106) does not perform further press
`detection. In other words, the user cannot press again if the
`user is already pressing and the user cannot press any
`faster than some predetermined rate. Once the release tick
`count expires, even if the user is still pressing hard, the
`algorithm detects a press if the user presses even harder
`(provided there is still room to press harder). The use of
`these tick counts provides for the adaptability of the
`algorithm.
`Id. at 6:58-7:6.
`The claims of the ’507 Patent cover the inventive features discussed above.
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`For example, Claim 1 includes the following language:
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`1. A method comprising:
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`[1A] receiving contact data from an input device;
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`[1B] determining an interaction with a displayed object on a
`screen based on the contact data;
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`[1C] responsive to determining the interaction, determining a
`gesture based on the contact data comprising:
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`[1D] determining a pressure and a change in pressure based
`on the contact data, and
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`[1E] determining a press if:
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`[1E1] the pressure is greater than a pressure threshold,
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`[1E2] the change in pressure is greater than a change
`in pressure threshold, and
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`[1E3] a first interval has elapsed; and
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`[1F] responsive to determining the gesture, outputting the haptic
`effect.
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`The language in bold expresses that the contact data is used to determine (1)
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`a pressure, and (2) a change in pressure. Then the method uses that information plus
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`the time measurement as discussed above to determine if a press has been
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`deliberately made.
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`Prosecution History
`C.
`The application that matured into the ’507 Patent, U.S. Pat. App. S/N
`
`13/41,108, was filed on April 6, 2012, and is a continuation of U.S. Pat. App. S/N
`
`10/723,778 filed on November 26, 2003. Ex. 2001 at ¶ 58.
`
`The Patent Office issued an Office Action on July 19, 2012, rejecting all
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`claims. The Office action rejected original Claims 10-15 pursuant to 35 U.S.C. §
`
`101 and all claims based on 35 U.S.C. § 112 because “the specification does not
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`disclose how to determine a haptic effect based on the received contact data,
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`therefore the application does not provide support for ‘receiving contact data from
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`an input device; and determining whether to output a haptic effect based on the
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`contact data’ . . . .” Ex. 1002 at 53-54, Ex. 2001 at ¶59. With regard to prior art, the
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`Office Action rejected claims pursuant to 35 U.S.C. § 102(b) as anticipated by the
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`Fujita reference, and rejected additional claims based on Fujita combined with Hsu.
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`Ex. 1002 at 56; Ex. 2001 at ¶ 59.
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`In a Response dated March 19, 2012, the Applicant amended the claims to
`
`address the prior art rejections. Below is an exemplary amendment:
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`
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`Ex.1002 at 67; Ex. 2001 at ¶ 60. The amendment argued that Fujita does not disclose
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`“determining an intent based on the contact data and a displayed object on the
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`screen.” Ex. 1002 at 73; Ex. 2001 at ¶ 60.
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`
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`In a further Office Action dated December 11, 2012, the Patent Office
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`maintained the § 112 rejection stating that the specification does not disclose
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`“determin[ing] a haptic effect based on the intent and to output the haptic effect as a
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`result thereof.” Ex. 2001 at ¶ 61. The Patent Office also maintained prior art
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`rejections based on Fujita and Fujita combined with other references.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`In a Response dated May 12, 2013, the Applicant amended the claims to
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`
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`address the prior art rejections. Ex. 2001 at ¶ 62. An exemplary amendment is show
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`below:
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`
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`Notably, this amendment added the test for determining whether the press was
`
`intended or accidental via the language “determining a press if . . . .” After filing a
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`Terminal Disclaimer (Ex. 1002 at 398, 400), the claims were allowed. Ex. 2001 at ¶
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`
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`63.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`During the prosecution of the parent application, U.S. Patent Application SN
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`
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`10/723,778, the Board of Patent Appeals and Interferences directly considered
`
`whether the combination of Gillespie and Astala (the base reference for Ground 1
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`here) disclosed the limitation, “the change in pressure is greater than a change in
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`pressure threshold” – the same limitation present in all challenged independent
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`claims. Exhibit 2003 at 96; Ex. 2001 at ¶ 64. The examiner rejected claims with this
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`limitation based on two sections of Gillespie disclosing “the Z signal exceeds the
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`threshold Ztap for at least some part of the stroke” (Gillespie at 35:28-30) and “[t]o
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`perform the gesture, the finger is first brought near enough to cause cursor motion
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`without causing a virtual button press. Next, the finger pressure increases past the
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`threshold ZpushDown, causing the virtual button to be pressed” (Gillespie at 49:8-
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`12) arguing that these mentions of pressure “exceeding” and “increasing” taught this
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`claim limitation. Ex. 2001 at 6; Ex. 2001 at ¶ 64.
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`Additionally, in the Examiner’s Answer, the examiner cited the same
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`embodiment of Astala cited in the present Petition, stating that “Astala is cited to
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`teach outputting a press signal if the value of pressure of touch input is greater than
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`a pressure threshold and a first interval has elapsed (col. 9, lines 24-35).” Compare
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`Ex. 2003 at 78 (citing Astala at 9:24-35) with Pet. at 25 (citing Astala at 9:28-29,
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`9:32-34). In reply, Applicants argued that Gillespie did not disclose “the change in
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`pressure is greater than a change in pressure threshold” and further noted “the
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`Examiner apparently does not dispute that Astala does not disclose such a feature.”
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`Ex. 2003 at 87-88.
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`The BPAI agreed with Appellants, and found that merely comparing a
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`pressure value against a (single) threshold value is not the same as evaluating a
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`change in pressure against a change in pressure threshold:
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`Gillespie teaches that as a finger pressure increases past a
`threshold, a virtual button is pressed. Gillespie 49:12-13.
`The Examiner found that this “increase” in pressure is the
`same as a change in pressure. Ans. 9. However, this
`description merely teaches comparing a pressure value
`against a threshold value. As argued by Appellants, this is
`not the same as evaluating a change in pressure against a
`change in pressure threshold.
`(U.S. Patent Application SN 10/723,778 File History, Patent Board Decision) at 5.
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`Thus the BPAI found that the Examiner had failed to establish a prima facie case of
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`obviousness for the Gillespie and Astala combination. See id. Specifically, the
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`Examiner did not dispute that Astala does not disclose “the change in pressure is
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`greater than a change in pressure threshold.” Nor did the BPAI find that Astala cured
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`Gillespie’s deficiencies.
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`
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`The ’507 Patent was previously challenged by Apple, Inc. in Inter Partes
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`Review No. IPR2016-01777. Ex. 2001 at ¶ 66. In that IPR, the Board denied
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`institution. Id. The challenges included two grounds: (1) Toda in combination with
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`Shahoian, and (2) Morimura in combination with Shahoian. Ex. 1002 at 456; Ex.
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`2001 at ¶ 66. Although the Board expressly stated that it did not construe any terms
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`(Ex. 1002 at 457), the Board found that the pressure comparisons in the independent
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`claims must occur during the first interval of time:
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`
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`Id. at 454. In denying institution, the Board found that neither combination met these
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`requirements. Ex. 1002 at 462-463; Ex. 2001 at ¶ 66.
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`
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`The ’507 Patent was subsequently challenged in IPR2017-01310 by the same
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`petitioner as for the -01777 matter, and uses the same art and arguments used in
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`Ground 1 of the present Petition. However, after considering the General Plastic
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`factors, the Board denied institution pursuant to Section 314(a). Ex. 1026 at 14.
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`III. PERSON OF ORDINARY SKILL IN THE ART (POSA)
`Petitioner identifies a person of ordinary skill in the art (“POSA”) as one who
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`would have possessed a bachelor’s degree in electrical engineering, computer
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`science, or a related field, plus at least two years of industry or graduate level
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`experience with software engineering, haptics programming, and/or human-
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`computer interaction, including experience with user-interfaces and applications
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`involving touchscreens, touchpads, and related technologies. Pet. at 7 (citing Ward,
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`¶¶38-44).
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`Immersion submits that a POSA at the time of the ’507 Patent would have had
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`a bachelor’s degree in electrical engineering or computer science (or an equivalent
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`degree), and two years of practical or industry experience in the field of human
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`computer interaction (HCI), including implementation of computer-based systems
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`and software for providing haptic feedback effects to a user. Ex. 2001 at ¶¶ 33-4.
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`Also, a person could have qualified as a POSA with more formal education and less
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`practical or industry experience, or vice versa. Id. Immersion reserves the right to
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`propose a different level of skill in the art if trial is instituted. In any event, the
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`Petition fails to show that any challenged claim of the ’507 Patent is unpatentable
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`under either Petitioner’s or Immersion’s definition of a POSA.
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`IV. CLAIM CONSTRUCTION
`In the current parallel district court proceeding, Petitioner has proposed
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`constructions for the following terms, while Patent Owner maintains that the terms
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`should be afforded their plain and ordinary meaning as understood by a POSA.
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`“actual
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`“a direct measure of pressure’/“an indirect measure of
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`pressure”’/“pseudo
`pressure”
`pressure”
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`Patent Owner’s Preliminary Response
`IPR2024-00556 (U.S. Patent No. 8,749,507)
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`
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`“determining a
`“computing the difference between the current pressure and
`change in
`pressure”/“change|a prior pressure’”’/“‘a threshold for the difference betweenthe
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`in pressure
`current pressure and a prior pressure”
`threshold”
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`Claim Term
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`Petitioner’s Proposed Construction in District Court
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`
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`See EX2003 (Joint Claim Construction Statement).
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`Here, Petitioner does not propose the above terms for constructionasit did in
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`the district court, but rather proposesa different term for construction, “determining
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`a press if. .
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`. a first interval has elapsed.” See Pet. at 7-8. Petiti