Trials@uspto.gov
`571-272-7822
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` Paper 35
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` Entered: January 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01372
`Patent 8,659,571 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
` Paper 35
`
`
` Entered: January 10, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01372
`Patent 8,659,571 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2016-01372
`Patent 8,659,571 B2
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`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Apple Inc. (“Petitioner”) challenges the patentability of claims 1–4, 6, 23–
`26, and 28 of (the “challenged claims”) of U.S. Patent No. 8,659,571 B2
`(Ex. 1001, “the ’571 patent”), owned by Immersion Corporation (“Patent
`Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`With respect to the ground instituted in this trial, we have considered the
`papers submitted by the parties and the evidence cited therein. For the
`reasons discussed below, we determine Petitioner has shown by a
`preponderance of the evidence that claims 1–4, 6, 23–26, and 28 of the ’571
`patent are unpatentable.
`
`II. BACKGROUND
`A. Procedural History
`On July 7, 2016, Petitioner filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–7, 12–18, and 23–29 of the ’571 patent.
`Petitioner also filed a Declaration of Dr. Patrick Baudisch (Ex. 1002,
`“Baudisch Decl.”) in support of the Petition. Patent Owner filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”). On January 11, 2017, we
`instituted an inter partes review only as to claims 1–4, 6, 23–26, and 28 of
`the ’571 patent based on the ground that these claims are unpatentable under
`35 U.S.C. § 103(a) as obvious over Burrough1 (Paper 7, “Dec. on Inst.,” 45).
`
`
`1 U.S. Patent Application Pub. No. 2010/0156818 Al (published June 24,
`2010) (Ex. 1005, “Burrough”).
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`After institution, Patent Owner filed a Patent Owner Response (Paper
`14, “PO Resp.”), to which Petitioner filed a Reply (Paper 20, “Pet. Reply”).
`Patent Owner filed a Declaration of Yon Visell, Ph.D. (Ex. 2009, “Visell
`Decl.”) in support of its Patent Owner Response, and Petitioner filed a Reply
`Declaration of Dr. Patrick Baudisch in support of its Reply (Ex. 1014,
`“Baudisch Reply Decl.”). In addition, Patent Owner filed a Motion for
`Observations on certain cross-examination testimony of Dr. Baudisch (Paper
`27, “Obs.”), to which Petitioner filed Responses (Paper 28, “Obs. Resp.”).
`An oral hearing was held on October 5, 2017. A transcript of the hearing is
`included in the record as Paper 34 (“Tr.”).
`
`B. Related Proceedings
`According to the parties, the ’571 patent is the subject of the
`following proceedings: (1) Immersion Corp. v. Apple Inc., No. 1:16-cv-
`00077 (D. Del.); and (2) In the Matter of: Certain Mobile Electronic Devices
`Incorporating Haptics (Including Smartphones and Smartwatches) and
`Components Thereof, ITC Investigation No. 337-TA-990 (USITC), which
`has been consolidated with In the Matter of: Certain Mobile and Portable
`Electronic Devices Incorporating Haptics (Including Smartphones and
`Laptops) and Components Thereof, ITC Investigation No. 337-TA-1004
`(USITC). Pet. 1–2; Paper 4, 2.
`
`C. The ’571 Patent
`The ’571 patent describes a system and method for producing a
`dynamic haptic effect based on a gesture signal and a device sensor signal.
`Ex. 1001, Abstract, col. 1, l. 66–col. 2, l. 5. According to the ’571 patent, a
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`dynamic haptic effect is a haptic effect that evolves over time as it responds
`to input parameters, such as a gesture signal or a device sensor signal. Id. at
`col. 2, ll. 64–66, col. 3, ll. 12–15.
`Figure 1 of the ’571 patent is reproduced below.
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`Figure 1 depicts a block diagram of haptically-enabled system 10 in an
`exemplary embodiment of the ’571 patent. Id. at col. 3, ll. 63–64. As shown
`in Figure 1 above, system 10 includes touch-sensitive surface 11 and may
`also include mechanical keys or buttons 13. Id. at col. 3, ll. 64–67. Further,
`system 10 includes a haptic feedback system that generates vibrations on
`system 10 (e.g., on touch surface 11). Id. at col. 3, l. 67–col. 4, l. 3. As also
`illustrated in Figure 1, the haptic feedback system includes processor 12,
`which is coupled to memory 20 and actuator drive circuit 16, which, in turn,
`is coupled to haptic actuator 18. Id. at col. 4, ll. 4–6.
`Touch surface 11 recognizes touches and also may recognize the
`position and the magnitude or pressure of the touches on the surface. Id. at
`col. 4, ll. 41–43. The data corresponding to the touches is sent to processor
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`12, which interprets the touches and generates haptic effect signals. Id. at
`col. 4, ll. 43–46. Touch surface 11 may detect multi-touch contacts and may
`be capable of distinguishing between multiple touches that occur at the same
`time. Id. at col. 4, ll. 49–51.
`According to the ’571 patent, a gesture is any movement of the body
`that conveys meaning or user intent. Id. at col. 3, ll. 34–35. Simple
`gestures, such as a “finger on” or “finger off” gesture, may be combined to
`form more complex gestures, for example, a “tapping” or “swiping” gesture.
`Id. at col. 3, ll. 35–49. In addition, any number of simple or complex
`gestures may be combined to form other gestures, such as gestures based on
`multiple finger contacts. Id. at col. 3, ll. 52–56. Hence, multiple touch
`inputs may be received from a single gesture such as a swipe gesture
`performed on a touch sensitive display. Id. at col. 10, ll. 36–40. For
`example, when an index finger is swiped across the touch sensitive display
`during a swipe gesture, multiple inputs are received from the single swipe
`gesture, each of the multiple inputs occurring at a different time and
`indicating a different two dimensional position of the contact point of the
`index finger with the touch sensitive display. Id. at col. 10, ll. 36–43.
`Dynamic haptic effects are produced by changing a haptic effect
`according to an interaction parameter, which may be derived from a gesture
`using information such as the position, direction, and velocity of the gesture.
`Id. at col. 10, ll. 24–29. An interaction parameter also may be derived from
`device sensor data, such as the device acceleration, gyroscopic, or ambient
`information. Id. at col. 11, ll. 4–6. Additionally, an interaction parameter
`may incorporate a mathematical model related to a real-world physical
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`effect, such as gravity, acceleration, friction, or inertia. Id. at col. 12, ll. 38–
`40. Further, an interaction parameter may optionally incorporate an
`animation index to correlate the haptic effect to an animation displayed on
`the device. Id. at col. 12, ll. 45–50. Once an interaction parameter is
`generated from one or more of these sources, a drive signal is applied to a
`haptic actuator according to the interaction parameter. Id. at col. 15, ll. 3–9.
`
`D. Illustrative Claim
`Of the claims instituted in this proceeding, claims 1 and 23 are
`independent. Claim 1 is illustrative of the instituted claims and is
`reproduced below:
`1.
`A method of producing a haptic effect comprising:
`receiving a first gesture signal;
`receiving a second gesture signal;
`generating a dynamic interaction parameter using the first
`gesture signal and the second gesture signal; and
`applying a drive signal to a haptic output device according
`to the dynamic interaction parameter.
`Ex. 1001, col. 16, ll. 8–14.
`
`
`III. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard as the claim construction
`standard to be applied in an inter partes review proceeding). Under the
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`broadest reasonable interpretation standard, and absent any special
`definitions, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in view
`of the specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Any special definitions for claim terms or phrases must be set
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment appearing in
`the written description generally is not incorporated into a claim if the claim
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993).
`In our Decision on Institution, we preliminarily interpreted three claim
`terms as follows.
`
`Term
`“gesture”
`
`“gesture signal”
`
`Construction
`“a movement of the body that conveys meaning
`or user intent” (Dec. on Inst. 8–9, 12)
`“a signal indicating a gesture,” i.e., “a signal
`indicating a movement of the body that conveys
`meaning or user intent” (id. at 9, 12)
`
`“dynamic interaction
`parameter”
`
`“a parameter that changes over time or reacts in
`real time based on a user’s interaction with a
`device” (id. at 13)
`
`
`The parties do not dispute the constructions of these terms in their Patent
`Owner Response or Petitioner Reply. PO Resp. 6, 23; Pet. Reply 4–6, 19.
`Upon considering the complete record, we discern no reason to deviate from
`our preliminary constructions and, therefore, adopt the constructions of the
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`terms “gesture,” “gesture signal,” and “dynamic interaction parameter” as
`set forth above for this Final Written Decision.
`Apart from the three terms discussed above, no other claim terms need
`to be construed expressly for purposes of this Final Written Decision
`because we need only construe terms “that are in controversy, and only to
`the extent necessary to resolve the controversy.” Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
`IV. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden of persuasion never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`partes review).
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`The sole ground on which we instituted inter partes review is
`Petitioner’s challenge to clams 1–4, 6, 23–26, and 28 as obvious under 35
`U.S.C. § 103(a) over Burrough. Dec. on Inst. 45. A claim is unpatentable
`under § 103(a) if the differences between the claimed subject matter and the
`prior art are such that the subject matter, as a whole, would have been
`obvious at the time the invention was made to a person having ordinary skill
`in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). The question of obviousness is resolved on the
`basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and (4) where in
`evidence, so-called secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`
`A. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to determine the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. The person of ordinary skill in the art is a hypothetical person
`who is presumed to have known the relevant art at the time of the invention.
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the
`level of ordinary skill in the art, various factors may be considered,
`including the types of problems encountered in the art, prior art solutions to
`those problems, the sophistication of the technology, rapidity with which
`innovations are made, and educational level of active workers in the field.
`Id. In a given case, one or more factors may predominate. Id. In addition,
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`we may be guided by the level of ordinary skill in the art reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed.
`Cir. 2001).
`In our Decision on Institution, upon reviewing the parties’ proposed
`definitions of the level of skill in the art, as well as the supporting
`declarations from Dr. Baudisch and Dr. Visell (Dec. on Inst. 24–25 (citing
`Pet. 6; Ex. 1002 ¶ 38; Prelim. Resp. 5; Ex. 2001 ¶ 24)), we determined
`preliminarily that the level of skill in the art is evidenced by the prior art of
`record and the type of problems and solutions described in the ’571 patent,
`and includes experience in haptic response technology in multi-touch or
`multi-gesture systems (id. at 24–25 (citing Ex. 1001, col. 1, ll. 15–18;
`Ex. 1005, Abstract, ¶ 3)).
`The parties do not dispute the level of skill in the art in their Patent
`Owner Response or Petitioner Reply. Upon considering the complete
`record, we discern no reason to deviate from our preliminary determination
`and, therefore, adopt the definition of the level of skill in the art as set forth
`above for this Final Written Decision.
`
`B. Obviousness Over Burrough
`Petitioner contends claims 1–4, 6, 23–26, and 28 are unpatentable as
`obvious under 35 U.S.C. § 103(a) over Burrough. Pet. 12–23, 24–25, 30–
`32. Petitioner explains how Burrough renders obvious the claimed subject
`matter of each challenged claim, providing detailed discussion and specific
`citations to Burrough indicating where in the reference the claimed features
`are disclosed, or explaining how the differences between the claimed subject
`matter and the prior art are such that the subject matter would have been
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`obvious to a person of ordinary skill in the art. Id. In addition, Petitioner
`relies upon the Declaration of Dr. Baudisch to support its positions. Id.
`Upon reviewing all of the parties’ papers and supporting evidence discussed
`in those papers, we determine that Petitioner has demonstrated, by a
`preponderance of the evidence, claims 1–4, 6, 23–26, and 28 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Burrough.
`
`1. Scope and Content of the Prior Art—Overview of Burrough (Ex. 1005)
`Burrough describes a method and system for identifying multi-touch
`gestures and providing multi-haptic responses. Ex. 1005, Abstract. In an
`exemplary embodiment, Burrough discloses an electronic device including a
`touch pad that can receive a touch event from a user, a controller coupled to
`and in communication with the touch pad to analyze the user touch event,
`and a haptic device for providing a haptic effect in response to the user touch
`event. Id. ¶ 15.
`In another embodiment, Burrough discloses a touch sensitive input
`device capable of recognizing at least two substantially simultaneously
`occurring gestures using at least two different fingers as a multi-touch event.
`Id. ¶ 35. The touch sensitive device communicates with haptic actuators to
`provide haptic feedback according to a haptic profile in response to a multi-
`touch event. Id. In an aspect of the disclosed embodiment, each finger
`receives different haptic feedback depending on the location of each finger
`on the touch sensitive input device. Id.
`Burrough discloses that the relationship between a touch event and the
`corresponding haptic response can be dynamic in nature, meaning that the
`haptic profile used to respond to a touch event can be varied based on
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`various factors. Id. ¶ 51. For example, in a zoom gesture using two fingers,
`as the distance between the two fingers increases during a zoom-in, the
`haptic feedback vibration can be made faster or more intense. Id. ¶ 80.
`Figures 12C and 12D of Burrough are reproduced below.
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`Figures 12C and 12D depict two sequential steps in a zooming sequence to
`zoom in on a map of North America. Id. ¶ 82. During the zooming
`sequence, the haptic response H(d) is applied to each finger. Id. As
`indicated in Figures 12C and 12D above, the magnitude of the haptic
`response H(d) increases linearly with distance d between the fingers. Id. In
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`other words, as the two fingers move apart and the map is zoomed in, the
`haptic effect H becomes progressively stronger at each finger. Id.
`Figures 12C and 12D above also show the graphical representation
`(i.e., the graphs) of the haptic profiles H(d) for each finger used in the zoom
`gesture. As described in Burrough, the haptic profile H(d) specifies the
`relationship between the distance d between the two fingers and the
`corresponding haptic response H(d) applied to each finger.2 Id. The haptic
`profile H(d) may be a linear function, as illustrated by the linear graphs
`shown in Figures 12C and 12D reproduced above, or a nonlinear function, as
`illustrated by the nonlinear graph shown in Figure 12F (not reproduced
`herein). Id. ¶ 82, Figs. 12C, 12D, 12F. The haptic profile H(d) is presumed
`to be a linear function for a zoom gesture. Id. ¶ 82.
`
`2. Discussion —
`Differences Between the Claimed Subject Matter and the Prior Art
`a. Claim 1
`(1) Preamble
`The preamble of claim 1 recites a method of “producing a haptic
`effect.” Ex. 1001, col. 16, l. 8. We agree with Petitioner that Burrough
`teaches the preamble, because Burrough discloses “an apparatus and method
`for providing multi-touch haptic feedback” (Pet. 15 (citing Ex. 1005 ¶ 10))
`
`
`2 Although Burrough uses the symbol H(d) to denote both the haptic profile
`H(d) and the haptic response H(d), the haptic profile H(d) signifies the
`functional relationship between the haptic response and the distance d,
`whereas the haptic response H(d) represents the value or the magnitude of
`the haptic response when the distance between the fingers is at a particular
`distance (or distance value) d. Ex. 1005 ¶ 82.
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`as well as “methods of implementing gestures with associated physical
`feedback with touch sensitive devices” (id. (citing Ex. 1005 ¶ 35)).
`
`(2) Receiving a First Gesture Signal and a Second Gesture Signal
`Claim 1 recites “receiving a first gesture signal” and “receiving a
`second gesture signal.” Ex. 1001, col. 16, ll. 9–10. Petitioner asserts that
`Burrough teaches these limitations because Burrough describes a touch
`sensitive device capable of recognizing “at least two substantially
`simultaneously occurring gestures using at least two different fingers or
`other object[s]” (Pet. 13 (citing Ex. 1005 ¶ 35)), such as a multi-touch zoom
`gesture in which a first finger and a second finger are detected on the
`touchscreen at the same time, and an image, such as a map, can be zoomed
`in by moving the two fingers apart together. Id. at 13–16 (citing Ex. 1005
`¶¶ 16, 17, 35, 46, 79, 80, 81, Figs. 11, 12A–12H).
`To teach a first or second “gesture signal,” Petitioner relies on
`Burrough’s disclosure of various signals generated by the touch sensitive
`device during the zoom gesture when the first or second finger is detected on
`the touch sensitive screen, including “a touch event T” (which is initiated
`“each time an object, such as a user’s finger, is placed” on the touch
`sensitive surface), a touch signal S1 (which is generated during the touch
`event T), and “any other signal consistent with a multi-touch event.” Id. at
`15–16 (citing Ex. 1005 ¶¶ 16, 17, 46, 79, Figs. 11, 12A–12H; Ex. 1002
`¶¶ 57–60).
`Citing the testimony of Dr. Baudisch, Petitioner argues that, because
`Burrough’s sensing device generates signals representing each touch on the
`touch screen in a multi-touch event (Ex. 1005 ¶ 46), a person of ordinary
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`skill in the art would have understood that, during the zoom gesture, the
`sensing device generates a first gesture signal representing one of the two
`fingers on the touch screen, and a second gesture signal representing the
`other finger on the touch screen. Id. at 16 (citing Ex. 1002 ¶ 62).
`Although Patent Owner acknowledges that signals S are generated
`during a multi-touch event of Burrough (PO Resp. 1, 6–7 (citing Ex. 1005
`¶ 46)), Patent Owner asserts that Burrough’s signal S is not a “gesture
`signal” under our claim construction (i.e., “a signal indicating a movement
`of the body that conveys meaning or user intent,” as discussed above in
`Section III) because each signal S, “taken in isolation” (id. at 7), merely
`indicates a position of a finger touching the touch sensitive screen at a
`particular time, and, therefore, cannot “indicate a movement of the body that
`conveys meaning or user intent.” Id. at 1, 7–8 (citing Ex. 1005 ¶¶ 42, 46;
`Ex. 2009 ¶ 36).
`We do not agree with Patent Owner’s argument because Petitioner
`does not rely on Burrough’s signal S alone in isolation from other teachings
`of Burrough to teach “a first gesture signal” and “a second gesture signal,”
`as recited in claim 1. Rather, as discussed above, Petitioner relies upon
`various signals generated by the touch sensitive device during the zoom
`gesture when the first and second fingers are detected on the touch sensitive
`screen. Pet. 15–16 (citing Ex. 1005 ¶¶ 16, 46, 79, Figs. 11, 12A–12H); Pet.
`Reply 2–3 (citing Pet. 15–16). Hence, Burrough’s zoom embodiment
`teaches “a first gesture signal” and “a second gesture signal” recited in claim
`1 because, at minimum, the signal S is generated when each finger touches a
`location of a map during the zoom gesture, thereby indicating a movement
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`of the body—i.e., a finger touching a location of the touch sensitive screen—
`that conveys meaning or user intent—i.e., the user’s intent to touch the map.
`See Pet. Reply 10–11 (citing Ex. 1005 ¶ 81, Fig. 12B; Ex. 1014 ¶¶ 19, 20).
`In fact, the ’571 patent describes a similar touching—“bringing a finger into
`contact with a touch sensitive surface”—as a “finger on” gesture. Ex. 1001,
`col. 3, ll. 37–38. Similarly, during the oral argument, Patent Owner
`described the signal generated from a touching of a photograph during a
`swipe gesture disclosed in the ’571 patent as “the first gesture signal.” Tr.
`17:18–18:24. In our view, there is no patentable distinction between the
`’571 patent’s disclosure of a signal generated from touching a photograph
`during a swipe gesture and Burrough’s disclosure of touching a location on a
`map in the zoom embodiment discussed above.
`In a related argument, Patent Owner argues that Burrough’s signal S
`alone does not convey meaning or user intent because the signal could be
`from an accidental or incidental touch. Tr. 20:18–23, 22:1–7. Patent Owner
`further asserts that the cross examination testimony of Dr. Baudisch shows
`that accidental touches do not convey meaning or user intent. Obs. 3–4
`(citing Ex. 2012, 41:21–23). In a similar vein, Patent Owner argues that not
`every signal S generated from a finger movement conveys a discernable
`meaning or user intent because the intent of the finger movement may not be
`clear. PO Resp. 14.
`In response to Patent Owner’s observations, Petitioner asserts that
`Patent Owner mischaracterizes Dr. Baudisch’s testimony and that Dr.
`Baudisch did not testify that signals generated from “accidental touching”
`constitute gesture signals. Obs. Resp. 4–5 (citing Ex. 2012, 41:12–42:1).
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`Regardless of what the appropriate weight accorded to Patent Owner’s
`observation or the underlying cross examination testimony of Dr. Baudisch
`should be, we do not agree with Patent Owner’s argument because, as
`discussed above, Petitioner does not rely on Burrough’s signal S alone in
`isolation, but, rather, relies upon various signals generated in the course of a
`zoom gesture. Patent Owner’s argument is unpersuasive because Patent
`Owner does not explain, nor do we discern anything in the record that
`explains, why the signals generated by Burrough’s touch sensitive device
`during the zoom gesture should be (or may be) considered signals from
`accidental or incidental touches, or ambiguous finger movements.
`We also do not agree with Patent Owner’s argument focusing on
`Burrough’s signal S alone in isolation from other teachings of Burrough
`because nonobviousness cannot be established by attacking the individual
`teachings of a reference when the unpatentability challenge is based on a
`combination of various teachings of the reference. See In re Merck & Co.
`Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be
`established by attacking the references individually when the unpatentability
`challenge is based on a combination of prior art disclosures).
`Patent Owner further asserts that a single signal S generated during a
`zoom gesture of Burrough, individually or in isolation, does not indicate the
`user’s intent to zoom because information, such as the speed and direction of
`the finger movements and whether the distance between the two fingers are
`increasing (indicating the user intent to zoom in) or decreasing (indicating
`the intent to zoom out), can be “determined” only when a number of signals
`S (at least two sets of signals from a first and a second fingers) generated in
`
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`the course of the zoom gesture are considered collectively. PO Resp. 7
`(citing Ex. 1005 ¶¶ 42, 36; Ex. 2009 ¶ 36), 9–12 (citing Ex. 1005 ¶¶ 42, 79,
`Fig. 11; Ex. 2009 ¶¶ 40–43).
`We do not agree with Patent Owner’s argument because Petitioner
`does not rely on a single signal S individually or in isolation. Rather, as
`discussed above, Petitioner relies upon various signals, including the signals
`S, generated during the course of the zoom gesture. Pet. 15–16; Pet. Reply
`2–3. Petitioner relies on at least two sets of signals from the fingers during
`the zoom gesture of Burrough, such as the signals at two different points of
`time during the zoom gesture, as depicted in Figures 12C and 12D. Pet. 13–
`16. In its Reply, in response to Patent Owner’s argument, Petitioner
`provides a detailed discussion of the signals generated during the zoom
`gesture at time points depicted in Figures 12B and 12C of Burrough. Pet.
`Reply 7–12.
`According to Petitioner, the parties’ experts agree that when a user
`brings two fingers into contact with the touchscreen as illustrated in
`Figure 12B of Burrough, at least two signals (which Dr. Visell refers to as
`S1 and S2) are generated. Id. at 11 (citing Ex. 1014 ¶ 20; Ex. 1015, 183:8–
`17). Petitioner argues that signals S1 and S2 each constitute a “gesture
`signal” because each signal (1) indicates a movement of the user’s body (i.e.,
`bringing a finger into contact with the touchscreen) and (2) conveys meaning
`or user intent (i.e., to contact the touchscreen in a particular position). Id.
`(citing Ex. 1014 ¶ 20). Petitioner further asserts that Figure 12C of
`Burrough depicts a user moving two fingers to new positions and that the
`parties’ experts agree that at least two new signals (which Dr. Visell refers to
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`as S3 and S4) are generated when the fingers are moved to the new
`positions. Id. (citing Ex. 1014 ¶ 20; Ex. 1015, 183:8–17). Petitioner argues
`that signals S3 and S4 are each a “gesture signal” because each signal
`(1) indicates a movement of the user’s body (i.e., moving the finger to a new
`location) and (2) conveys meaning or user intent (i.e., to zoom in). Id. at
`11–12 (citing Ex. 1014 ¶ 20).
`We note that Petitioner’s argument and evidence are similar to and
`consistent with Patent Owner’s discussion of the ’571 patent’s disclosure of
`the “gesture signals” generated during a swipe gesture. During the oral
`argument, Patent Owner explained that, during the swipe gesture depicted in
`Figures 9A–9C of the ’571 patent, touching a photograph with a finger
`generates a “gesture signal” and moving the finger to a second photograph
`generates another “gesture signal” indicating the user intent to display the
`second photograph. Tr. 17:18–18:24. Similarly, we agree with Petitioner’s
`argument that the signals of Burrough identified by the parties as signals S1
`and S2 convey the user intent to touch a location of a map with each finger,
`and the signals identified by the parties as signals S3 and S4 convey the user
`intent to zoom in on the map. A similar analysis would apply to moving the
`first and second fingers to any position during the course of the zoom
`gesture. Thus, we find that the signals S generated in the course of
`Burrough’s zoom gesture teach “a first gesture signal” and “a second gesture
`signal,” as recited in claim 1.
`To the extent Patent Owner argues that each signal S generated during
`the zoom gesture must, by itself or standing alone, convey the user intent to
`zoom, we do not agree with Patent Owner’s argument because, as discussed
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`in our Decision on Institution, our interpretation of the term “gesture signal”
`does not exclude conveying meaning and user intent in conjunction with
`other gesture signals. Dec. on Inst. 26–27. This understanding is supported
`by the ’571 patent’s disclosure, which describes combining multiple gestures
`to form other gestures, such as gestures based on multiple finger contacts.
`Id. at 27 (citing Ex. 1001, col. 3, ll. 52–56). For example, a “finger on” and
`a “finger off” gestures may be combined to form a “swiping gesture.”
`Ex. 1001, col. 3, ll. 35–49, 52–56. Further, as discussed above in Section
`II.C, the ’571 patent describes that, during a swipe gesture, multiple input
`signals are received from the swipe gesture when an index finger is swiped
`across the touch sensitive display, each of the multiple inputs occurring at a
`different time and indicating a different position of the contact point of the
`index finger with the touch sensitive display. Id. at col. 10, ll. 36–43. That
`is, although each input signal indicates the user intent to touch the screen
`(indicating a “finger on” or “touch” gesture) and may not itself convey the
`user intent to swipe, in conjunction with other signals generated during the
`course of the swipe gesture, each signal indicates a movement of the body
`that conveys the user’s intent to swipe. See Pet. Reply 13 (citing Ex. 1014
`¶ 23). Similarly, a signal S received from a finger during the zoom gesture
`of Burrough, in conjunction with other signals received from the same
`finger, as well as the signals received from the other finger during the course
`of the zoom gesture, indicates a movement of the body that conveys the
`user’s intent to zoom in or zoom out. Therefore, each signal S generated by
`the first and second fingers during the course of the zoom gesture of
`Burrough need not, by itself or standing alone, convey the user intent to
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`zoom to qualify as “a first gesture signal” and “a second gesture signal”
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