Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 36
`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 IPR2016-01381
`Patent 8,773,356 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`MINN CHUNG, Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`

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`Case IPR2016-01381
`Patent 8,773,356 B2
`
`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26 of U.S. Patent
`No. 8,773,356 B2 (Ex. 1001, “the ’356 patent”). Paper 1 (“Pet.”). Patent
`Owner, Immersion Corporation, filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). In view of those submissions, we instituted an inter
`partes review of claims 1–3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26. Paper 7
`(“Institution Decision” or “Dec. on Inst.). Subsequently, Patent Owner filed
`a Patent Owner Response (Paper 13, “PO Resp.”), and Petitioner filed a
`Reply (Paper 18, “Pet. Reply”).
`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`After considering the evidence and arguments of the parties, we determine
`that Petitioner has proven by a preponderance of the evidence that claims 1–
`3, 5, 7, 9–13, 15, 17, 19–23, 25, and 26 of the ’356 patent are unpatentable.
`See 35 U.S.C. § 316(e). We issue this Final Written Decision pursuant to
`35 U.S.C. § 318(a).
`
`B. Related Matters
`The parties note the following related cases: Immersion Corp. v.
`Apple Inc., No. 1-16-cv-00077 (D. Del.); In re: 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 re: Certain Mobile and Portable
`Electronic Devices Incorporating Haptics (Including Smartphones and
`Laptops) and Components Thereof, ITC Investigation No. 337-TA-1004
`(USITC). See Pet. 1–2; see Paper 4, 2. Additionally, a petition requesting
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`Patent 8,773,356 B2
`an inter partes review of a certain subset of claims of the ’356 patent was
`filed in Case IPR2016-00807. See Pet. 2; Paper 4, 2. In that case, we denied
`Petitioner’s request to institute an inter partes review as to claims 1–3, 5, 7,
`9–13, 15, 17, 19–23, 25 and 26 of the ’356 patent as unpatentable under 35
`U.S.C. §§ 102(e) and 103(a). Amit Agarwal v. Immersion Corp., Case
`IPR2016-00807 (PTAB Sept. 19, 2016) (Paper 16).
`
`C. Instituted Grounds of Unpatentability
`We instituted a trial based on the following grounds of unpatentability
`(Dec. on Inst. 27):
`References
`
`Challenged Claim(s)
`
`Statutory
`Basis
`35 U.S.C.
`§ 103(a)
`35 U.S.C.
`§ 103(a)
`
`Rosenberg 7371 and
`Rosenberg 2812
`Rosenberg 737,
`Rosenberg 281, and
`Newton 2.03
`
`1–3, 9–13, 19–23, 25, and
`26
`5, 7, 15 and 17
`
`Petitioner also relies on declarations from Patrick Baudisch, Ph.D.
`(Exs. 1002, 1025). Patent Owner relies on a Declaration from Nathan J.
`Delson, Ph.D. (Ex. 2005).
`
`D. The ’356 Patent
`The ’356 patent describes a system and method for providing tactile
`sensations to input devices, including non-mechanical input devices, such as
`
`
`1 U.S. Patent Application No. 09/487,737 (Ex. 1007).
`2 U.S. Patent Application No. 09/103,281 (Ex. 1013).
`3 Newton 2.0 User Interface Guidelines, ©1996 Apple Computer, Inc., ISBN
`0-201-48838-8, First Printing, May 1996 (Ex. 1014).
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`soft-keys displayed on a screen. See Ex. 1001, Abstract; 3:10–15. Figure 5
`of the ’356 patent is reproduced below.
`
`
`Figure 5 depicts Personal Digital Assistant (PDA) 31 having pressure-
`sensitive touchpad 30 as an input device. Id. at 11:11–13. As shown in
`Figure 5, display panel 33 of PDA 31 displays software-generated buttons or
`keys (e.g., soft-keys 36a–36i), which provide a graphical user interface for
`the PDA. Id. at 11:40–43. As a graphical object, each soft-key occupies a
`distinct location on the display panel. Id. at 11:44–45. In the embodiment
`depicted in Figure 5, the PDA can function as a mobile telephone, and the
`soft-keys are arranged as a telephone keypad to provide the same
`functionality as the mechanical keys on a conventional telephone keypad.
`Id. at 11:45–48. PDA 31 also includes an actuator that generates and
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`transmits tactile sensations to display panel 33 and touchpad 30. Id. at
`11:22–39; Fig. 6.
`When a soft-key is selected by touching touchpad 30 at an appropriate
`location on display panel 33, a controller determines the touched location on
`the display and identifies the soft-key corresponding to the touched location.
`Based on this information, the controller causes the actuator to provide a
`corresponding tactile sensation. Id. at 11:53–63. In addition, the pressure
`applied to a particular soft-key is detected by the controller or a separate
`pressure detector, such that the detected pressure can be used to distinguish
`different inputs for soft-keys that represent multiple inputs—e.g., 2, A, B, or
`C for soft-key 36b. Id. at 12:6–12; Fig. 5. For such keys, each specific input
`corresponds to a distinct amount of pressure applied to a particular soft-key.
`Id. at 12:6–8.
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`Figure 8 of the ’356 patent is reproduced below.
`
`
`Figure 8 shows a flowchart illustrating a process of detecting an input signal,
`the input position or location data, and the pressure data; determining the
`desired function corresponding to the input device and the detected data; and
`producing a tactile sensation corresponding to the determined function. Id.
`at 13:53–14:14. In steps 54 and 55 of Figure 8, the controller, having
`obtained the input data from the input device, accesses a memory device and
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`a database stored in the memory device, which contains information
`necessary to determine, based on the input data, the desired function and the
`corresponding tactile sensation. Id. at 14:15–20.
`In an embodiment, this information (i.e., the associations between the
`detected input data, the functions of the input device, and the corresponding
`tactile sensations to be generated) is maintained in a table, such as the table
`shown in Figure 9. Id. at 14:21–25. Figure 9 of the ’356 patent is
`reproduced below.
`
`
`
`Figure 9 shows a table of exemplary grouping of associations for
`various input devices. As shown in Figure 9, the table maintains, for each
`input device, the possible combinations of input signals, position data, and
`pressure data, as well as the specified function and the distinct tactile
`sensation corresponding to each combination. Id. at 14:23–30. Based on the
`data obtained from monitoring the input device, the controller reads the table
`and determines the associated function and the corresponding tactile
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`feedback. Id. at 14:32–35. The controller then causes the actuator to
`generate the specified tactile sensation. Id. at 11:53–66; 14:46–50.
`
`E. Illustrative Claim
`Claims 1, 12, and 22 are independent and are directed to a method,
`system, and computer-readable medium comprising program code,
`respectively. Claim 1 is illustrative of the challenged claims and recites:
`1. A method, comprising:
`outputting a display signal configured to display a
`graphical object on a touch-sensitive input device;
`receiving a sensor signal from the touch-sensitive input
`device, the sensor signal indicating an object contacting the
`touch-sensitive input device;
`determining an interaction between the object contacting
`the touch-sensitive input device and the graphical object; and
`generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table.
`Ex. 1001, 20:16–26.
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). We presume a claim term carries its
`“ordinary and customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007) (citation and quotations omitted). This presumption, however, is
`rebutted when the patentee acts as his own lexicographer by giving the term
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`a particular meaning in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). For purposes of this decision, we address only certain claim
`language and only to the extent necessary to resolve the parties’ disputes
`regarding the pending grounds of unpatentability. See 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)).
`
`1. “generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table”—claim 1
`Petitioner asserts that this claim language means “generating an
`actuator signal based at least in part on (1) the interaction and (2) haptic
`effect data in a lookup table.” Pet. 17. Petitioner elaborates that “[n]othing
`in the claim or the ordinary meaning of these terms requires that ‘the
`interaction’ also be in the lookup table or that the lookup table comprise any
`association between the interaction and the haptic effect data.” Id.
`Petitioner asserts that its proposed interpretation flows from the plain
`meaning of the claim language, which Petitioner asserts is consistent with
`the intrinsic evidence. Id. at 17–18; Pet. Reply 2–8.
`Patent Owner counters that “the language of the claims themselves
`requires that the referenced ‘lookup table’ contain an association between
`the interaction and haptic effect data” (PO Resp. 6), suggesting that the
`disputed claim language refers to “interaction data” and “haptic effect data”
`(Tr. 48:7–16). Noting that the claimed method bases the actuator signal on
`both “the interaction” and “haptic effect data,” Patent Owner asserts that
`“there must be an association between the interaction and haptic effect data.”
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`Id. at 7–8. Patent Owner also asserts that the intrinsic evidence is consistent
`with its proposed construction, noting that Figure 9 of the ’356 patent
`discloses a lookup table with an association between an interaction and
`haptic effect data and asserting that the prosecution history confirms its
`proposed construction. Id. at 8–10.4
`In our view, Petitioner has the better argument regarding the proper
`claim construction. The plain meaning of the claim language comports with
`Petitioner’s proposed construction. We do not agree with Patent Owner’s
`suggestion that the claim language “the interaction and haptic effect data in a
`lookup table” refers to two types of data—namely, (1) interaction data and
`(2) haptic effect data. See Tr. 48:7–51:20. In the disputed claim language,
`the definite article “the” refers back to an element previously recited in the
`claim. The preceding portions of the claim contain only one matching,
`previously recited element, specifically the “interaction.” Ex. 1001, 20:22.
`Contrary to Patent Owner’s position, the portion of the claim preceding the
`disputed claim language does not contain recitation of “interaction data.” Id.
`at 20:15–24. Accordingly, contrary to Patent Owner’s position, the plain
`language of the claim refers to (1) “the interaction” and (2) “haptic effect
`data in a lookup table.”
`Additionally, we disagree with Patent Owner’s suggestion that the
`prosecution history of the ’356 patent indicates that the claim refers to (1)
`
`
`4 Patent Owner also notes that “in the underlying ITC action, the Chief ALJ
`construed ‘lookup table’ to mean ‘data structure in the form of a table
`containing associations between interactions and haptic effect data.’” PO
`Resp. 6–7. Regarding this, we again note that, unlike the ITC, we apply the
`broadest reasonable interpretation of claim terms in an unexpired patent.
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`interaction data and (2) haptic effect data. See Tr. 49:15–50:20. Prior to the
`amendment filed on February 10, 2014, claim 1 recited “generating an
`actuator signal based at least in part on the interaction.” Ex. 1004, 82, 200.
`Here, “the interaction” refers to the engagement between a physical object
`and a graphical object recited in the preceding claim phrase “determining an
`interaction between the object contacting the touch sensitive input device
`and the graphical object.” Id. The amendment did not revise these parts of
`claim 1; it added another input (in addition to “the interaction”) used in the
`generation of an actuator signal—haptic effect data in a lookup table. Id. at
`43. Thus, the plain meaning of the claims before and after the amendment
`conveys that “generating an actuator signal” is done based, at least in part,
`on (1) “the interaction” and (2) “haptic effect data in a lookup table.” Id. at
`43, 82, 200.
`Consistent with the plain meaning of the claim language, the
`assertions submitted with the amendment stated that:
`However, with respect to 35 U.S.C. § 102(e), Rosenberg does not
`disclose or suggest “receiving a sensor signal from the touch-
`sensitive input device, the sensor signal indicating an object
`contacting the touch-sensitive input device; determining an
`interaction between the object contacting the touch-sensitive
`input device and the graphical object; and generating an actuator
`signal based at least in part on the interaction and haptic effect
`data in a lookup table.” Rosenberg may discuss outputting haptic
`effects based on user inputs (or graphical objects), but it does not
`discuss determining which specific haptic effect to output for
`given a user input (or graphical object) based on data in a lookup
`table.
`Id. at 50. These assertions highlighted one thing—“haptic effect data in a
`lookup table”—as the distinction between the amended claim and the cited
`prior art. These assertions do not support Patent Owner’s position that the
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`claims require both interaction data and haptic effect data in the claimed
`“lookup table.”
`We also do not agree with Patent Owner’s argument that the
`Specification of the ’356 patent compels construing the disputed claim
`language as requiring that the lookup table include an association between
`the interaction and the haptic effect data. See PO Resp. 7–8. In noting that
`Figure 9 of the ’356 patent discloses a lookup table with such associations,
`Patent Owner improperly attempts to narrow the claim language from its
`plain meaning by importing limitations from one example provided in the
`disclosure. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004) (holding that “a particular embodiment appearing in the
`written description may not be read into a claim when the claim language is
`broader than the embodiment”).
`Furthermore, we do not agree with Patent Owner’s contention that the
`claimed lookup table logically must contain an association between the
`interaction and the haptic effect data to enable the claimed function. See PO
`Resp. 7–10. The claim language “generating an actuator signal based at
`least in part on the interaction and haptic effect data in a lookup table”
`specifies a very broad relationship between inputs and the output. This
`language specifies that the inputs include “the interaction” and “haptic effect
`data,” and the output is the “actuator signal.” The language “based at least
`in part on” clearly allows using any number of additional inputs and
`processing the various inputs in any number of different ways when
`generating the actuator signal. Accordingly, the method could determine the
`effect of the interaction on the actuator signal using provisions other than the
`lookup table (such as executable code), while using the lookup table for
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`other aspects of generating the actuator signal. See Pet. Reply 4–5; Ex. 1025
`¶ 9. Furthermore, even if we agreed with Patent Owner’s contention that
`“there must be an association between the interaction and the haptic effect
`data” (PO Resp. 8), that does not establish that the association must appear
`in the lookup table itself, as opposed to in some other provision that the
`method uses in combination with the lookup table to generate the actuator
`signal. Accordingly, we are not convinced that the claimed lookup table
`must contain an association between the interaction and haptic effect data.
`In view of the foregoing, we conclude that the broadest reasonable
`construction of the claim language “generating an actuator signal based at
`least in part on the interaction and haptic effect data in a lookup table”
`encompasses “generating an actuator signal based at least in part on (1) the
`interaction and (2) haptic effect data in a lookup table.” Thus, the claim
`does not require that the lookup table contain an association between the
`interaction and the haptic effect data.
`
`B. Rosenberg 737 Constitutes Prior Art Under 35 U.S.C. §§ 102(a)
`and 102(b)
`Petitioner argues that Rosenberg 737 is prior art under 35 U.S.C.
`§§ 102(a) and 102(b). Pet. 20–23. In support of this, Petitioner asserts that
`(1) Rosenberg 737 was made publicly available as of July 26, 2001; and (2)
`none of the challenged claims is entitled to the November 1, 2001, filing
`date of U.S. Provisional Application No. 60/335,493 (Ex. 1005, “the First
`Provisional”). Id. Patent Owner does not dispute these assertions. See
`generally PO Resp. 1–37. Petitioner has demonstrated by a preponderance
`of the evidence that Rosenberg 737 qualifies as prior art to the ’356 patent
`under 35 U.S.C. §§ 102(a) and 102(b). See Pet. 20–23; Ex. 1001, [60], [75],
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`1:17–20; Ex. 1002 ¶¶ 46–52; Ex. 1004, 49, 169–73; Ex. 1005, 5, 7, 9;
`Ex. 1006, generally; Ex. 1007, 1; Ex. 1008, [10], [21], [22], [30], [43];
`Ex. 1009, [10], [22], [45]; Ex. 1016, 36:1–5; Ex. 1019, T-1, T-53–T-54;
`Ex. 1020, generally; Ex. 1021, generally (cited and discussed in Dec. on
`Inst. 9–11).
`
`C. Obviousness over Rosenberg 737 and Rosenberg 281
`1. Overview of Rosenberg 737
`Rosenberg 737 describes a touch input device, such as a touchpad or a
`touch screen, which is coupled to an actuator that provides haptic feedback.
`Ex. 1007, Abstract. The touch input device can be integrated in a housing of
`a computer or a handheld device. Id. at 3:19–20.5 For example, a touchpad
`can be placed on the housing of a portable computer separate from the
`display screen. Id. at 3:18. Figure 1 of Rosenberg is reproduced below.
`
`
`
`
`5 In our citations to Rosenberg 737, we refer to its original page numbers
`located in the lower middle portion of each page of Exhibit 1007, rather than
`the page numbers appended in the lower right hand corner by Petitioner.
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`Figure 1 depicts a portable computer including a haptic touchpad. Id. at 6:4.
`As shown in Figure 1, touchpad 16 and buttons 26 are placed on the housing
`of portal computer 10, separate from display device 12 that displays
`graphical environment 18.6 Id. at 6:9–12, 8:25–34. In an embodiment,
`haptic sensations are provided to the entire touchpad 16 as a single unit. Id.
`at 8:13–14. In another embodiment, the touchpad comprises individually-
`moving portions, each of which is provided with its own actuator such that
`haptic sensations can be conveyed to only a particular portion of the
`touchpad. Id. at 8:14–16.
`Buttons 26 provided on the housing of the computer can be used in
`conjunction with touchpad 16 in ways similar to how the buttons on a mouse
`input device are used. Id. at 8:25–30. In an embodiment, the housing of the
`computer in which buttons 26 are placed comprises one or more movable
`portions 28, as illustrated in Figure 1 above. Id. at 9:1–3; Fig. 1.
`Rosenberg 737 discloses that “[h]aving a moveable portion of a housing for
`haptic feedback is described in copending patent application serial no.
`09/156,802 and application no. 09/103,281, both incorporated herein by
`reference.” Id. at 9:3–5. The moveable portions of the housing can be used
`to convey haptic sensations separate from the haptic feedback provided by
`touchpad 16. Id. at 9:5–12. For example, a vibration of a low frequency can
`be conveyed through the moveable housing portions, distinct from high
`frequency vibrations provided on touchpad 16. Id. at 9:8–10.
`For touch screen input devices, one or more actuators can be coupled
`to the underside of a touch screen to provide haptic feedback to touch screen
`
`
`6 Touchpad 16 appears to be mislabeled with number 18 in Figure 1.
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`interactions. Id. at 22:4–7. For example, an actuator can be placed near
`each corner of the touch screen. Id. Regarding one touch screen
`embodiment, Rosenberg 737 discloses that “the touch screen 82 provides
`haptic feedback to the user similarly to the touchpad 16 described in
`previous embodiments.” Id. at 22:3–4. Rosenberg 737 also discloses
`“[o]ther features described above for the touchpad are equally applicable to
`the touch screen embodiment 80.” Id. at 22:19–20.
`
`2. Overview of Rosenberg 281
`Rosenberg 281 discloses that “[a] computer system in typical usage by
`a user displays a visual environment on a display output device.” Ex. 1013,
`1:14–15.7 Rosenberg 281 further discloses that “[u]sing an interface device,
`the user can interact with the displayed environment.” Id. at 1:15.
`Rosenberg 281 adds that “[c]ommon human-computer interface devices
`used for such interaction include a joystick, mouse, trackball, steering wheel,
`stylus, tablet, pressure-sensitive sphere, or the like.” Id. at 1:18–20.
`Figure 1 of Rosenberg 281 is reproduced below.
`
`
`7 In our citations to Rosenberg 281, we refer to the original page numbers
`located in the lower middle portion of each page of Exhibit 1013, rather than
`the page numbers appended in the lower right corner by Petitioner.
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`
`Figure 1 of Rosenberg 281 shows a block diagram of force feedback-
`interface system 10, which includes host computer 12 and interface
`device 14. Id. at 7:3–5. Interface device 14 includes local microprocessor
`26, sensors 28, actuator 30 and user object 34. Id. at 9:12–13. Sensors 28
`provide signals indicating “position, motion, and/or other characteristics” of
`user object 34. Id. at 11:23–24. Rosenberg 281 discloses that
`microprocessor 26 may receive signals from sensors 28 and send signals to
`actuator 30. Id. at 10:3. Rosenberg 281 states that “sensors 28 provide
`sensor signals to the microprocessor 26 indicating a position (or other
`information) of the user object in degrees of freedom,” and that “[t]he
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`microprocessor may use the sensor signals in the local determination of
`forces to be output on the user object.” Id. at 10:23–25. Rosenberg 281
`further discloses that:
`Local memory 27, such as [random-access memory]
`and/or
`[read-only memory],
`is preferably coupled
`to
`microprocessor 26 in interface device 14 to store instructions for
`microprocessor 26 and store temporary and other data. For
`example, force profiles can be stored in memory 27, such as a
`sequence of stored force values that can be output by the
`microprocessor, or a look-up table of force values to be output
`based on the current position of the user object.
`Id. at 11:8–12.
`
`3. Discussion
`Petitioner asserts that each of claims 1–3, 9–13, 19–23, 25, and 26
`would have been obvious over Rosenberg 737 and Rosenberg 281, citing to
`record evidence. Pet. 20–61. Petitioner asserts that Rosenberg 737 teaches
`most of the limitations of independent claims 1, 12, and 22. Id. at 26–41,
`56–57, 58–60.
`Petitioner asserts that Rosenberg 737 teaches and renders obvious
`“determining an interaction between the object contacting the touch-
`sensitive input device” and “generating an actuator signal based at least in
`part on the interaction.” Pet. 33–41. In connection with these assertions,
`Petitioner cites disclosures of Rosenberg 737 regarding haptic effects on
`touchpads, as well as Rosenberg 737’s disclosures of touch screen devices.
`Id. Petitioner asserts that Rosenberg 737 teaches the “determining an
`interaction” limitation, for example, in its disclosure associated with the
`touch screen device shown in Figures 8a and 8b. Id. at 33 (citing Ex. 1007,
`21:21–22). Petitioner asserts that Rosenberg 737 teaches that all of its
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`disclosure related to touchpad embodiments, including the disclosure
`regarding haptic effects, “is relevant to the touch screen embodiment.” Id. at
`25 (citing Ex. 1007, 22:3–4, 22:19–20). Petitioner further asserts that, to the
`extent we do not interpret Rosenberg 737 in this manner, “it would have
`been obvious to combine the teachings of the touchpad and touch screen
`embodiments.” Id. (citing Ex. 1002 ¶ 65). In essence, Petitioner indicates
`that the haptic effects and touch screen disclosures in Rosenberg 737, in
`combination, teach and render obvious the limitations “determining an
`interaction between the object contacting the touch-sensitive input device”
`and “generating an actuator signal based at least in part on the interaction.”
`See Pet. 33–41.
`With respect to the “lookup table” recited in independent claims 1, 12,
`and 22, Petitioner cites Rosenberg 281. Id. at 41–42. Petitioner cites
`Rosenberg 281’s disclosure regarding storing force values in a look-up table
`that may be output based on the current position of the user object.
`Ex. 1013, 11:8–12; Pet. 41. Petitioner also cites the disclosures in claims
`10–13 of Rosenberg 281, which recite certain aspects of haptic effects, such
`as “wherein said output force is a jolt correlated with the interaction of a
`user-controlled cursor with a graphical object displayed in a graphical user
`interface.” Ex. 1013, 25:10–25; Pet. 41.
`In view of Rosenberg 281, Petitioner asserts that “[i]t would have
`been obvious to a [person of ordinary skill in the art (“POSITA”)] to modify
`the apparatus and method disclosed in Rosenberg 737 to generate the
`actuator signal in part based on the interaction and haptic effect data in a
`lookup table.” Pet. 42. Noting that Rosenberg 737 does not specify how its
`processor obtains force information, Petitioner contends that a person of
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`ordinary skill would have been motivated to look for known
`implementations for obtaining haptic effect data, such as storing such data in
`the lookup tables disclosed in Rosenberg 281. Id. at 42–43. Petitioner
`advances multiple reasons that would have prompted a person of ordinary
`skill in the art, in view of Rosenberg 281, to use a lookup table.
`First, Petitioner notes that Rosenberg 737 incorporates Rosenberg 281
`by reference. Id. at 43–44. Second, Petitioner and Dr. Baudisch assert that:
`Moreover, a POSITA would have understood that obtaining
`force values from a lookup table would be more efficient than
`other alternatives, such as calculating a force value each time one
`was needed. Indeed, the use of lookup tables for repetitive tasks
`such as this is well-known in the computer-programming art.
`Pet. 44; Ex. 1002 ¶ 105. Third, Petitioner and Dr. Baudisch assert that
`using lookup tables in combination with the Rosenberg 737 disclosure
`“would have been both predictable and within the skill of a POSITA.”
`Pet. 44–47; Ex. 1002 ¶ 106. Lastly, Petitioner and Dr. Baudisch argue
`that Rosenberg 737 teaches that its disclosures could be combined
`with “existing haptic feedback enabled software” (Ex. 1007, 4:9–13),
`such as lookup tables. Pet. 47; Ex. 1002 ¶ 109.
` Under its proposed construction of the claims, Petitioner
`indicates that a lookup table with force values in it, such as the lookup
`table disclosed in Rosenberg 281, meets the “lookup table” required
`by the claims. See Pet. 17–19, 48. Petitioner and Dr. Baudisch also
`assert that “it would have been obvious for a POSITA to program the
`lookup table with the associations between the interactions and
`outputs discussed above and disclosed in Rosenberg 737.” Pet. 49;
`Ex. 1002 ¶ 111. In particular, Petitioner and Dr. Baudisch assert that:
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`Rosenberg 737 does not disclose how the processor performs the
`function of converting the interaction into the associated output,
`such that a POSITA would have been motivated to use lookup
`tables as disclosed in Rosenberg 281. The lookup tables in
`Rosenberg 281 were programmed with the associations between
`inputs (e.g., user interactions with a joystick) and outputs (e.g.,
`associated haptic effect data) disclosed in Rosenberg 281. In
`implementing a lookup table in the system of Rosenberg 737, it
`would have been obvious for a POSITA to program the lookup
`table with the associations between the interactions and outputs
`discussed above and disclosed in Rosenberg 737. Thus, the
`interaction determined by the processor would be used as an
`index into the lookup table to find the associated force
`information so that the processor in Rosenberg 737 could
`generate the appropriate actuator signal.
`Pet. 48–49; Ex. 1002 ¶ 111.
`Patent Owner argues that Petitioner has not shown obviousness of the
`claims over Rosenberg 737 and Rosenberg 281. PO Resp. 12–37. Patent
`Owner argues that Petitioner provides “no compelling reason” that a person
`of ordinary skill in the art would have combined the teachings of the
`references. Id. at 12. Patent Owner argues that “the decision whether to
`implement a lookup table into a particular system is based on a complex
`series of factors” (id. at 1), and that “the teachings of Rosenberg 737 and
`Rosenberg 281, in light of the relevant design considerations, would have
`led a [person of ordinary skill in the art] to consider other alternatives due to
`challenges inherent in utilizing a lookup table with Rosenberg 737’s system”
`(id. at 25). In particular, Patent Owner argues that Rosenberg 737 discloses
`providing haptic effects based on time-dependent inputs, and that a lookup
`table could have drawbacks in such an environment. Id. at 25–28. In
`connection with this, Patent Owner also argues that Dr. Baudisch does not
`typically, and did not here, consider all of the factors that would affect the
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`decision to use a lookup table in a particular application. Id. at 36–37.
`Based on this, Patent Owner argues we should give relatively little weight to
`Dr. Baudisch’s testimony. Patent Owner also argues that Dr. Baudisch
`implemented a system providing haptic effects without a lookup table,
`weighing against obviousness of using a lookup table. Id. at 28–30. Patent
`Owner further argues that the lookup table disclosed by Rosenberg 281 does
`not constitute a lookup table according to the claims. Id. at 30–36.
`In response, Petitioner asserts that Patent Owner’s arguments focus
`only on certain portions of Rosenberg 737 as allegedly not suited for use
`with a lookup table. Petitioner argues that Patent Owner ignores other cited
`portions of the Rosenberg 737 that Petitioner identifies as particularly well-
`suited for use with a lookup table. Pet. Reply 10–14. Petitioner adds that,
`contrary to Patent Owner’s assertion, a lookup table can provide desirable
`performance for applications involving haptic effects generated based on
`time-dependent variables. Id. at 14–16. Petitioner also argues that the
`system Dr.