Trials@uspto.gov
`571-272-7822
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`Paper 7
`Entered: November 21, 2017
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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 IPR2017-01371
`Patent 7,808,488 B2
`____________
`
`
`
`Before BRYAN F. MOORE, PATRICK R. SCANLON, and
`MINN CHUNG, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 7
`Entered: November 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01371
`Patent 7,808,488 B2
`____________
`
`
`
`Before BRYAN F. MOORE, PATRICK R. SCANLON, and
`MINN CHUNG, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`IPR2017-01371
`Patent 7,808,488 B2
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`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Second Petition,”
`
`or “Second Pet.”) requesting an inter partes review of claims 3–8, 11–16,
`
`and 19–28 of U.S. Patent No. 7,808,488 B2 (Ex. 1101, “the ’488 patent”).
`
`As discussed further below, the claims challenged in the Second Petition
`
`cover essentially the same scope as the claims Petitioner challenged in its
`
`prior petition filed in Case IPR2016-01907 (Apple Inc. v. Immersion Corp.,
`
`Case IPR2016-01907 (filed Sept. 29, 2016) (Paper 1, “First Petition” or
`
`“First Pet.”)). Immersion Corporation (“Patent Owner”) filed a Preliminary
`
`Response (Paper 6, “Prelim. Resp.”).
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). Under the circumstances of this case, for
`
`the reasons explained below, we exercise our discretion to not institute an
`
`inter partes review as to any of claims 3–8, 11–16, and 19–28 of the ’488
`
`patent.
`
`II. BACKGROUND
`
`A. Related Matters
`
`The parties indicate that the ’488 patent is at issue in the following
`
`related cases: Immersion Corp. v. Apple Inc., Nos. 1:16-cv-00077 and 1:16-
`
`cv-00325 (D. Del.); and 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). Second Pet. 1; Paper 5, 2.
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`
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`2
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`IPR2017-01371
`Patent 7,808,488 B2
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`The ’488 patent is also the subject of an instituted trial proceeding in
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`Case IPR2016-01907. Apple Inc. v. Immersion Corp., Case IPR2016-01907
`
`(PTAB Apr. 3, 2017) (Paper 10, “1907 Dec. on Inst.”).
`
`B. The ’488 patent
`
`The ’488 patent, titled “Method and Apparatus for Providing Tactile
`
`Sensations,” issued on October 5, 2010. Ex. 1101, (54), (45). The ’488
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`patent describes a system and method for providing tactile sensations to
`
`input devices, including non-mechanical input devices, such as soft-keys
`
`displayed on a screen. Id. at Abstract; 3:3–7. In particular, the ’488 patent
`
`describes different tactile sensations to users manipulating an input device
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`such as a touchscreen, based in part on varying levels of pressure applied to
`
`the input device by the users. Id. at 5:39–58. Figure 2 of the ’488 patent is
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`reproduced below.
`
`Figure 2 depicts apparatus 60 with multiple input devices arranged as keys
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`in a key pad for a telephone or mobile telephone, including twelve fixed or
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`pre-assigned alphanumeric input buttons 10a-l, three pre-assigned function
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`buttons 11a-c, and three assignable function buttons 12a-c. Id. at 5:40–48.
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`Each of alphanumeric buttons 10 is capable of receiving multiple levels of
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`pressure, such as button 10i capable of resolving five levels of increasingly
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`greater pressure. Id. at 5:63–6:9. Pre-assigned function buttons 11 are
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`capable of resolving three levels of increasingly greater pressure. Id. at
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`6:50–53. Actuator 61 is in communication with input devices and with
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`controller 9 and is configured to provide vibrations of varying frequencies to
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`the input devices in response to signals transmitted from the controller. Id.
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`at 7:64–8:23.
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`Figure 4 of the ’488 patent is reproduced below.
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`
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`Figure 4 depicts alphanumeric input buttons or keys 10 in a mobile
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`telephone, passing through case 18 of the telephone and contacting a
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`plurality of switches 19 that are in communication with controller 9 and
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`disposed on printed circuit board (PCB) 62. Id. at 8:35–40. PCB 62 in turn
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`is in communication with actuator 61, which is a piezo-electric actuator
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`4
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`IPR2017-01371
`Patent 7,808,488 B2
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`having metal diaphragm 20 in contact with piezo-ceramic element 22. Id. at.
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`8:51–56.
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`Object 24, for example a user’s finger, selects one or more of keys 10
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`by applying pressure in direction of arrow A, causing the selected key to
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`progress through a plurality of positions such as rest position 23, second
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`position 25, third position 26, fourth position 27, and fifth position 28, as
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`greater pressure is applied to button 10. Id. at 8:61–9:1. Figure 3 of the
`
`’488 patent is reproduced below.
`
`
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`Figure 3 depicts mobile telephone 14, with controller 9, actuator 61, and
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`PCB 62 of apparatus 60 from Figure 2 encased in case 18. Id. at 8:24–28.
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`Display screen 15 displays graphical objects 16 and alphanumeric
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`information 17. Id. at 8:28–30. When user presses the “9” key/button 10i,
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`5
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`IPR2017-01371
`Patent 7,808,488 B2
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`button 10i applies pressure to switch 19a, which transmits signals to
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`controller 9. Id. at 9:15–25. Controller 9 then transmits a signal to actuator
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`61 which provides a vibration of a first pre-selected frequency to metal
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`diaphragm 20, in turn causing PCB, switches 19, and button 10 to vibrate at
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`that frequency. Id. at 9:26–39.
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`If a user applies further pressure sufficient to cause button 10i to move
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`from second level 25 to third level 26, switch 19a then transmits a second
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`signal to controller 9, which transmits a second signal to actuator 61. Id. at
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`9:40–51. Actuator 61 provides a vibration of a second pre-selected
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`frequency that is communicated through PCB 62 and switches 19 to button
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`10i. Id. at 9:51–59. Different signals are transmitted by switch 19a for each
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`level of pressure 25, 26, 26, and 28. Id. at 9:63–65.
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`C. Illustrative Claim
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`Claim 25 is the only independent claim among the challenged claims.
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`Ex. 1101, 22:41–23:6. Claims 26–28 depend from claim 25. Id. at 23:7–19.
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`Claims 3–8 depend directly or indirectly from independent claim 1, claims
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`11–16 depend directly or indirectly from independent claim 9, and claims
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`19–24 depend directly or indirectly from independent claim 17. Id. at
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`20:27–57, 21:20–50, 22:9–40. Claim 25 is illustrative of the challenged
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`claims and is reproduced below.
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`25. An apparatus comprising:
`
`at least one input device comprising a first position and a
`second position, the input device moveable to the first position
`upon application of a first pressure to the input device, and
`moveable to the second position upon application of a second
`pressure to the input device, the second pressure greater than the
`first pressure;
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`6
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`Patent 7,808,488 B2
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`at least one actuator in communication with the input
`device, the actuator configured to output tactile sensations to the
`apparatus; and
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`at least one processor in communication with the input
`device, the processor configured to:
`
`receive a first input signal from the input device, the
`first input signal associated with the first position,
`
`receive a second input signal from the input device,
`the second input signal associated with the second
`position,
`
`transmit a first actuator signal to the actuator, the
`first actuator signal configured to cause the actuator to
`output a first tactile sensation associated with the first
`position, and
`
`transmit a second actuator signal to the actuator, the
`second actuator signal configured to cause the actuator to
`output a second tactile sensation associated with the
`second position;
`
`wherein the input device comprises a pressure-sensitive
`touchpad, and the apparatus further comprises:
`
`a display panel in communication with the pressure-
`sensitive touchpad, the display panel configured to receive
`the
`tactile sensations
`from
`the pressure-sensitive
`touchpad; and
`
`at least one software-generated button configured to
`be displayed on the display panel.
`
`Id. at 22:41–23:6.
`
`D. First Petition in IPR2016-01907
`
`On September 29, 2016, Petitioner filed the First Petition in Case
`
`IPR2016-01907 requesting an inter partes review of claims 1, 2, 9, 10, 17,
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`18, and 29 of the ’488 patent. First Pet. 3, 79. In the First Petition,
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`Petitioner asserted the following grounds of unpatentability (id. at 3).
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`IPR2017-01371
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`Reference(s)
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`JP7251
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`Basis
`
`§ 103
`
`Claim(s) Challenged
`
`1, 2, 9, 10, 17, and 18
`
`Komata2 and Niedzwiecki3
`
`§ 103
`
`Komata and Rosenberg4
`
`§ 103
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`29
`
`29
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`
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`On April 3, 2017, based on the arguments and evidence presented in
`
`the First Petition, we instituted an inter partes review as to claims 1, 2, 9, 10,
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`17, and 18 of the ʼ488 patent on the ground that these claims are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over JP725 alone, and as
`
`to claim 29 of the ʼ488 patent on the ground that this claim is unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Komata and Niedzwiecki. 1907
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`Dec. on Inst. at 37–38.
`
`E. Asserted Grounds of Unpatentability in the Second Petition
`
`On May 4, 2017, which was one month and one day after our
`
`Decision on Institution in Case IPR2016-01907 was entered, Petitioner filed
`
`its Second Petition in this case requesting an inter partes review of claims
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`3–8, 11–16, and 19–28 of the ’488 patent. In its Second Petition, Petitioner
`
`asserts the following grounds of unpatentability (Second Pet. 3).
`
`
`
`
`1 Japanese Unexamined Patent Application Publication No. 11-212725,
`published Aug. 6, 1999 (Ex. 1110).
`2 U.S. Patent Application Publication No. 2001/0008849 A1, published July
`19, 2001.
`3 U.S. Patent No. 5,896,125, issued Apr. 20, 1999.
`4 U.S. Patent No. 6,088,019, issued July 11, 2000.
`
`
`
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`8
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`Patent 7,808,488 B2
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`Reference(s)
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`JP725
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`JP725 and Royson5
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`JP725 and Gettemy6
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`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claims Challenged
`
`3–6, 8, 11–14, 16,
`19–22, and 24
`7, 15, and 23
`
`25 and 26
`
`JP725, Gettemy, and Westerman7 § 103
`
`27 and 28
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`
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`III. ANALYSIS
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`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
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`Patent Owner asserts that the Second Petition should be denied
`
`because (1) it would be inequitable to Patent Owner to allow Petitioner’s
`
`second challenge to claims of essentially the same scope when Petitioner
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`benefited from Patent Owner’s Preliminary Response and the Board’s
`
`Decision on Institution in Case IPR2016-01907, and (2) Petitioner knew or
`
`should have known of the prior art references asserted in its Second Petition
`
`when filing its First Petition in Case IPR2016-01907. Prelim. Resp. 7–15
`
`(citing Akamai Technologies, Inc. v. Limelight Networks, Inc., Case
`
`IPR2017-00358 (PTAB May 2, 2017) (Paper 9)).
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a) (authorizing institution of an inter partes review under particular
`
`circumstances, but not requiring institution under any circumstances);
`
`37 C.F.R. § 42.108(a) (stating “the Board may authorize the review to
`
`proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d
`
`
`5 U.S. Patent No. 5,575,576, issued Nov. 19, 1996 (Ex. 1114).
`6 U.S. Patent No. 9,489,018 B2, issued Nov. 8, 2016 (Ex. 1112).
`7 U.S. Patent No. 6,323,846 B1, issued Nov. 27, 2001 (Ex. 1113).
`
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`1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
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`permitted, but never compelled, to institute an IPR proceeding”). When
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`determining whether to exercise our discretion under § 314(a), we consider
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`the following non-exhaustive factors:
`
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have
`known of it;
`
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to
`institute review in the first petition;
`
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing
`of the second petition;
`
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent;
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`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`
`slip op. 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential)8
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` (hereinafter,
`
`“General Plastic”) (citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-
`
`00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9)).
`
`A central issue addressed by the General Plastic factors is balancing
`
`the equities between a petitioner and a patent owner when information is
`
`
`8 General Plastic was designated precedential on October 18, 2017.
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`10
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`Patent 7,808,488 B2
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`available from prior Board proceedings for a subsequent proceeding.
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`General Plastic, slip op. at 15–19. Accordingly, we use the non-exhaustive
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`General Plastic factors as a framework for assessing, under the specific
`
`circumstances of this case, the equities of allowing the Second Petition filed
`
`by the same Petitioner that challenges claims of the same patent having
`
`essentially the same scope as the claims challenged in the First Petition to
`
`proceed to trial. We address each of these factors in turn, but note that not
`
`all the factors need to weigh against institution for us to exercise our
`
`discretion under § 314(a).
`
`Factor 1: Whether Petitioner Previously Filed a Petition Directed to the
`Same Claims of the Same Patent
`
`As discussed above, Petitioner’s First Petition challenged claims 1, 2,
`
`9, 10, 17, 18, and 29 of the ’488 patent. First Pet. 3. The Second Petition
`
`additionally challenges dependent claims 3–8, which depend from
`
`independent claim 1, claims 11–16, which depend from independent claim 9,
`
`and claims 19–24, which depend from independent claim 17. Second Pet. 3.
`
`Challenges to these dependent claims must necessarily invoke challenges to
`
`the independent claims from which they depend, i.e., independent claims 1,
`
`9, and 17. As noted above, those independent claims were challenged in the
`
`First Petition.
`
`The Second Petition also challenges claim 25, as well as claims 26–
`
`28, which depend from claim 25. Id. Claim 25 is an apparatus claim in
`
`which the first seven limitations are identical the first seven limitations of
`
`claim 29 (which was challenged in the First Petition). Compare Ex. 1101,
`
`22:41–65 (claim 25), with id. at 23:20–24:20 (claim 29). The only
`
`limitations of claim 25 that are not also recited in claim 29 read as follows:
`
`
`
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`11
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`IPR2017-01371
`Patent 7,808,488 B2
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`
`wherein the input device comprises a pressure-sensitive
`touchpad, and the apparatus further comprises:
`
`a display panel in communication with the pressure-
`sensitive touchpad, the display panel configured to receive
`the
`tactile sensations
`from
`the pressure-sensitive
`touchpad; and
`
`at least one software-generated button configured to be
`displayed on the display panel.
`
`Ex. 1101, 22:66–23:6. These limitations, however, are substantially similar
`
`to limitations found in independent claim 9, which was also challenged in
`
`the First Petition. For instance, the claim 9 limitation referred to by
`
`Petitioner as a “limitation [9.a]” recites “a touch sensitive input device
`
`configured to output a sensor signal indicating an object contacting the
`
`touch-sensitive input device and a pressure of the contact,” and this
`
`limitation is similar to the claim 25 limitation of the input device comprising
`
`a pressure-sensitive touchpad. Compare id. at 20:59–61 (claim 9), with id.
`
`at 22:66–67 (claim 25). Indeed, when asserting that this limitation of claim
`
`25 is unpatentable, Petitioner references its analysis of limitation [9.a].
`
`Second Pet. 68.
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`Likewise, the claim 9 limitation referred to by Petitioner as a
`
`“limitation [9.d]” is similar to the claim 25 limitation of a software-
`
`generated button configured to be displayed on the display panel, and
`
`Petitioner references its analysis of limitation [9.d] in asserting the
`
`unpatentability of this claim 25 limitation. Compare Ex. 1101, 21:6–7
`
`(claim 9), with id. at 23:5–6 (claim 25); Second Pet. 69.
`
`Thus, on the whole, the Second Petition overwhelmingly challenges
`
`claims covering essentially the same scope as the claims challenged in the
`
`First Petition filed in Case IPR2016-01907. Moreover, Petitioner does not
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`explain adequately why it could not have addressed dependent claims 3–8,
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`11–16, and 19–28 in the First Petition. Accordingly, this factor weighs
`
`against institution.
`
`Factor 2: Whether Petitioner Knew of the Prior Art Asserted in the Second
`Petition When It Filed the First Petition
`
`As discussed above, the Second Petition relies on four references:
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`JP725, Royson, Gettemy, and Westerman. Second Pet. 3. Petitioner knew
`
`of JP725—the primary reference in each ground asserted in the Second
`
`Petition—when it filed the First Petition because, as discussed above, the
`
`First Petition asserted a ground relying on JP725.
`
`Patent Owner argues that, on September 30, 2016, the day after the
`
`First Petition was filed, Petitioner served on Patent Owner a Notice of Prior
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`Art that listed U.S. Patent No. 7,324,093 B1 to Gettemy et al. (Ex. 2106,
`
`“Gettemy ’093”) and U.S. Patent Application Publication No. US
`
`2006/0238522 A1 to Westerman (Ex. 2107, “Westerman ’522”). Prelim.
`
`Resp. 10 (citing Ex. 2105, 38, 43). We agree with Patent Owner’s assertion
`
`that Gettemy ’093 and Gettemy both claim priority to Application No.
`
`09/728,023. Id.; see Ex. 2106, (63); Ex. 1112, (63). We also agree with
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`Patent Owner’s assertion that Westerman ’522 is a continuation of a
`
`divisional of Westerman. Prelim. Resp. 10–11; see Ex. 2107, (60); Ex.
`
`1113, (21).
`
`Thus, the record indicates that Petitioner knew or should have known
`
`of Gettemy and Westerman at the time of filing its First Petition.
`
`Although there is not sufficient evidence in the record before us that
`
`Petitioner was aware of Royson prior to filing the First Petition, Petitioner
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`says nothing about whether it reasonably should have known about Royson
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`or why it could not have presented Royson in the First Petition. See Second
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`Pet. 4.
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`Because Petitioner knew or should have known of three out of the
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`four references, including the two primary references, asserted in its Second
`
`Petition when it filed its First Petition, and provided no explanation of why it
`
`could not have raised the last reference in the First Petition, this factor
`
`weighs against institution.
`
`Factor 3: Whether Petitioner Had Patent Owner’s Preliminary Response
`and the Board’s Institution Decision on the First Petition When Petitioner
`Filed the Second Petition
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`Patent Owner filed its Preliminary Response to the First Petition on
`
`January 5, 2017. See Case IPR2016-01907, Paper 6. We issued our
`
`Decision on Institution addressing the First Petition on April 3, 2017. 1907
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`Dec. on Inst. at 1. Hence, when Petitioner filed the Second Petition on May
`
`4, 2017 (see Second Pet. 78), Petitioner had both Patent Owner’s
`
`Preliminary Response to the First Petition and the Board’s Decision on
`
`whether to institute review addressing the First Petition. Consequently, this
`
`factor weighs against institution.
`
`Factor 4: The Elapsed Time between When Petitioner Had Patent Owner’s
`Preliminary Response and the Board’s Institution Decision on the First
`Petition and When Petitioner Filed the Second Petition
`
`The delay between when Petitioner had Patent Owner’s Preliminary
`
`Response to the First Petition, as well as the Board’s Decision on Institution
`
`addressing the First Petition, and when Petitioner filed the Second Petition
`
`left Petitioner with sufficient time to take advantage of Patent Owner’s and
`
`the Board’s responses to the First Petition. When Petitioner filed its Second
`
`Petition on May 4, 2017, Petitioner had Patent Owner’s Preliminary
`
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`Response to the First Petition for one day shy of three months, and our
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`Decision on Institution addressing the First Petition for slightly over one
`
`month. Thus, Petitioner not only had the relevant materials from Patent
`
`Owner and the Board when it filed its Second Petition, but had ample time to
`
`take advantage of those materials in crafting its arguments in the Second
`
`Petition. As a result, this factor weighs against institution.
`
`Factor 5: Whether Petitioner Has Provided Adequate Explanation
`
`The fifth General Plastic factor is “whether the petitioner provides
`
`adequate explanation for the time elapsed between the filings of multiple
`
`petitions directed to the same claims of the same patent.” General Plastic,
`
`slip op. at 9, 16. A closely related factor often considered when determining
`
`whether to exercise our discretion under § 314(a) is “whether the petitioner
`
`provides adequate explanation why we should permit another attack on the
`
`same claims of the same patent.” Akamai, slip op. at 9; Xactware Sols., Inc.
`
`v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 7–8 (PTAB Apr.
`
`13, 2017) (Paper 9).
`
`Petitioner addresses our discretion to deny institution only briefly.
`
`Petitioner asserts that the Second Petition addresses claims not previously
`
`challenged. Second Pet. 4. Petitioner also cites a previous Board decision in
`
`Case IPR2016-00448 and states that Petitioner has not “‘overwhelmed
`
`Patent Owner with an unreasonable number of challenges of patentability’
`
`because this is only the second petition that Petitioner has filed regarding the
`
`’488 patent.” Id. Petitioner also asserts that the Board has permitted second
`
`petitions under similar circumstances. Id. (citing Case IPR2015-00615,
`
`Paper 9 at 24–25; Case IPR2015-00626, Paper 9 at 15–16).
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`15
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`IPR2017-01371
`Patent 7,808,488 B2
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`These explanations, without more, do not justify permitting Petitioner
`
`to wait to file its Second Petition until after it has had the advantage of
`
`seeing our Decision on Institution addressing the First Petition.
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`Consequently, this factor also weighs against institution.
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`Factors 6 and 7: Board Considerations
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`The sixth and seventh General Plastic factors consider “the finite
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`resources of the Board” and “the requirement under 35 U.S.C. § 316(a)(11)
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`to issue a final determination not later than 1 year after the date on which the
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`Director notices institution of review.” General Plastic, slip op. at 9–10, 16.
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`We conclude that these factors are not implicated under the
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`circumstances of this case, and, therefore, do not weigh for or against
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`exercising our discretion.
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`Weighing the Factors for Discretionary Non-Institution under § 314(a)
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`We view Petitioner’s strategy in this particular case as burdensome to
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`Patent Owner and the Board. Additionally, Petitioner has not provided a
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`persuasive explanation of why its challenges raised in the Second Petition
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`should be allowed. Petitioner does not even attempt to explain why it could
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`not have raised the challenges in the Second Petition simultaneously with the
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`challenges raised in the First Petition. And we find Petitioner’s explanation
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`of why it chose to delay filing the Second Petition unpersuasive. We do not
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`take lightly denying a petition on grounds unrelated to its substantive
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`patentability challenges. Nor do we hold that multiple petitions against
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`claims of the same patent that cover essentially the same scope are never
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`permitted. Here, however, weighing the relevant factors under the
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`circumstances of this case, which, as we explain above, all favor exercising
`
`
`
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`16
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`IPR2017-01371
`Patent 7,808,488 B2
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`our discretion not to institute, we view the prejudice to Patent Owner to be
`
`greater than that to Petitioner. We, therefore, decline to institute inter partes
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`review under 35 U.S.C. § 314(a).
`
`B. Conclusion
`
`For all of the reasons discussed above, we exercise our discretion
`
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to institute review in
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`this proceeding with respect to claims 3–8, 11–16, and 19–28 of the ’488
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`patent.
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`
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’488 patent, and no trial is instituted.
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`17
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`IPR2017-01371
`Patent 7,808,488 B2
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`PETITIONER:
`
`James M. Heintz
`jim.heintz@dlapiper.com
`
`Brian Erickson
`brian.erickson@dlapiper.com
`Apple-Immersion-IPRs@dlapiper.com
`
`
`PATENT OWNER:
`
`Michael R. Fleming
`mfleming@irell.com
`
`Babak Redjaian
`bredjaian@irell.com
`ImmersionIPR@irell.com
`
`
`
`
`
`18
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