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gov
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Paper 7
Entered: January 11, 2017

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.

DECISION
Granting Institution of Inter Partes Review
35 U.S.C. 314 and 37 C.F.R. 42.108

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Patent 8,773,356 B2
I. INTRODUCTION
A. Background
Apple Inc. (Petitioner) filed a Petition requesting an inter partes
review of claims 13, 5, 7, 913, 15, 17, 1923, 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.).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. 314(a); 37 C.F.R. 42.4(a). The standard for
instituting an inter partes review is set forth in 35 U.S.C. 314(a), which
provides that an inter partes review may not be instituted unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.
After considering the Petition and Preliminary Response, we
determine that Petitioner has established a reasonable likelihood of
prevailing in showing the unpatentability of claims 13, 5, 7, 913, 15, 17,
1923, 25, and 26. Accordingly, we institute an inter partes review of these
challenged claims.
B. Related Matters
The parties note the following related cases: Immersion Corp. v.
Apple Inc., No. 1-16-cv-00077 (D. Del.); In the Matter of: Certain Mobile
Electronic Devices Incorporating Haptics (Including Smartphones and
Smartwatches) and Components Thereof, ITC Investigation No. 337-TA990 (USITC), which has been consolidated with In the Matter of: Certain
Mobile and Portable Electronic Devices Incorporating Haptics (Including
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Patent 8,773,356 B2
Smartphones and Laptops) and Components Thereof, ITC Investigation No.
337-TA-1004 (USITC). See Pet. 12; see Paper 4, 2. Additionally, a
petition requesting 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 Petitioners request to institute an inter partes review as to
claims 13, 5, 7, 913, 15, 17, 1923, 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. The Asserted Grounds of Unpatentability
Petitioner contends that claims 13, 5, 7, 913, 15, 17, 1923, 25, and
26 of the 356 patent are unpatentable based on the following grounds:
Reference(s)

Statutory
Basis
1
Rosenberg 737 and 35 U.S.C.
Rosenberg 2812
103(a)
Rosenberg 737,
35 U.S.C.
Rosenberg 281, and 103(a)
Newton 2.03

Challenged Claim(s)
13, 913, 1923, 25, and
26
5, 7, 15 and 17

U.S. Patent Application No. 09/487,737 (Ex. 1007).

U.S. Patent Application No. 09/103,281 (Ex. 1013).

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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Patent 8,773,356 B2
Petitioner also relies on a Declaration from Patrick Baudisch, Ph.D.
(Ex. 1002). Patent Owner relies on a Declaration from Nathan J. Delson,
Ph.D. (Ex. 2001).
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
soft-keys displayed on a screen. See Ex. 1001, Abstract; 3:1015. Figure 5
of the 356 patent is reproduced below.

Figure 5 depicts Personal Digital Assistant (PDA) 31 having pressuresensitive touchpad 30 as an input device. Id. at 11:1113. As shown in
Figure 5, display panel 33 of PDA 31 displays software-generated buttons or
keys, e.g., soft-keys 36a36i, which provide a graphical user interface for
the PDA. Id. at 11:4043. As a graphical object, each soft-key occupies a
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Patent 8,773,356 B2
distinct location on the display panel. Id. at 11:4445. 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 11:4548. PDA 31 also includes an actuator that generates and
transmits tactile sensations to display panel 33 and touchpad 30. Id. at
11:2239; 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 11:5363. 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 inputse.g., 2, A, B, or
C for soft-key 36b. Id. at 12:612; Fig. 5. For such keys, each specific input
corresponds to a distinct amount of pressure applied to a particular soft-key.
Id. at 12:68.

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Patent 8,773,356 B2
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 13:5314:14. 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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Patent 8,773,356 B2
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 14:1520.
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 14:2125. 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 14:2330. 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 14:3235. The controller then causes the actuator to
generate the specified tactile sensation. Id. at 11:5366; 14:4650.
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, 20:1626.
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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Patent 8,773,356 B2
a particular meaning in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
Petitioner and Patent Owner address the claim language generating
an actuator signal based at least in part on the interaction and haptic effect
data in a lookup table. Pet. 1719; Prelim. Resp. 511. Petitioner also
addresses the meaning of the word determining. Pet. 1617. For purposes
of this decision, we need not construe explicitly any claim language to
determine that there is a reasonable likelihood of Petitioner prevailing on its
claim challenges. See 35 U.S.C. 314(a); Vivid Techs., Inc. v. Am. Sci. &
Engg, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ([O]nly those terms need be
construed that are in controversy, and only to the extent necessary to resolve
the controversy.).
B. Whether 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. 2023. 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.
Petitioner asserts that Rosenberg 737 was made publicly available on
July 26, 2001, because it was listed as a priority document on the face of the
PCT application published on July 26, 2001, as WO01/54109. Id. at 2023.
Citing Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir.
2006), Petitioner asserts that Rosenberg 737 was made publicly available

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Patent 8,773,356 B2
because WO01/54109 served as a roadmap to the publicly-available
Rosenberg 737 as WIPO publications such as WO01/54109 are publicly
available and indexed, and the subject matter of Rosenberg 737 is clearly
related to the subject matter of WIPO publication WO01/54109. Id. at 22.
In support of its assertion that no claim is entitled to the filing date of
the First Provisional, Petitioner argues that the First Provisional does not
contain written description support for the lookup table recited in the
independent claims. Id. at 1015, 23. Petitioner asserts that the First
Provisional states that an unidentified controller will control the actuator
output but does not mention the controller using haptic effect data in a
lookup table to do so. Id. at 11. Petitioner notes that the First Provisional
states that it incorporates by reference U.S. Patent Application No.
09/585,741 to Shahoian (Ex. 1016, Shahoian), which discloses a
controller that uses a lookup table. Id. at 12. Petitioner asserts that this
does not demonstrate possession of the subject matter of the independent
claims of the 356 patent for two reasons. Id. First, Petitioner asserts that
the First Provisionals alleged incorporation of Shahoian is ineffective to
incorporate its lookup table. Id. at 1213. Second, Petitioner asserts that,
even if the First Provisional did incorporate the entirety of Shahoian, there is
no support for combining the disclosures in a way that would convey with
reasonable clarity to those skilled in the art that the two named inventors of
the First Provisional possessed the embodiment claimed as a whole a decade
later by the five named inventors of the 356 patent. Id. at 14.
Patent Owner disputes Petitioners assertion that Rosenberg 737 was
made publicly available on July 26, 2001. Prelim. Resp. 1315. Patent
Owner asserts that Petitioner cannot identify any language in WO01/54109
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Patent 8,773,356 B2
that would provide a roadmap to Rosenberg 737. Id. at 14. Patent Owner
does not dispute Petitioners assertion that none of the challenged claims of
the 356 patent is entitled to the filing date of the First Provisional.
On this record, we are persuaded Petitioner sufficiently demonstrates
that Rosenberg 737 is prior art under 35 U.S.C. 102(a) and 102(b).
Bruckelmyer notes that [t]he existence of a published abstract that would
have allowed one skilled in the art exercising reasonable diligence to locate
the foreign patent application and the fact that the application was classified
and indexed in the patent office has previously supported a conclusion that
the application was publicly accessible. Bruckelmyer, 445 F.3d at 1379
(citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Here, WO01/54109
contains a published abstract (see Ex. 1008, 1), and Patent Owner does not
dispute Petitioners assertion that WIPO publications such as WO01/54109
are publicly available and indexed (Pet. 22). In view of this, we determine
that Petitioner has presented sufficient evidence to support a conclusion that
Rosenberg 737 was made publicly available July 26, 2001. Additionally, in
view of Petitioners arguments and evidence, we determine Petitioner has
presented sufficient evidence to support a conclusion that none of the
challenged claims of the 356 patent is entitled to the filing date of the First
Provisional.4

Building on its assertion that Rosenberg 737 is not prior art under
35 U.S.C. 102(a) and 102(b), Patent Owner invokes 35 U.S.C.
103(c)(1) in asserting that Rosenberg 737 is not available as an
obviousness reference because [Patent Owner] commonly owned Rosenberg
737 and the application that matured into the 356 patent. Prelim. Resp. 15.
Because we determine that, on this record, Petitioner has demonstrated
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C. Alleged 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 3:1920.5 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.

sufficiently that Rosenberg 737 is prior art under 35 U.S.C. 102(a) and
102(b), we find Patent Owners argument unpersuasive at this time.
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 6:912, 8:2534. In an embodiment,
haptic sensations are provided to the entire touchpad 16 as a single unit. Id.
at 8:1314. In another embodiment, the touchpad comprises individuallymoving 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 8:1416.

Touchpad 16 appears to be mislabeled with number 18 in Figure 1.

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Patent 8,773,356 B2
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 8:2530. 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 9:13; 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 9:35. The moveable portions of the housing can be used
to convey haptic sensations separate from the haptic feedback provided by
touchpad 16. Id. at 9:512. 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 9:810.
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
interactions. Id. at 22:47. 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 22:34. Rosenberg 737 also discloses
[o]ther features described above for the touchpad are equally applicable to
the touch screen embodiment 80. Id. at 22:1920.
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 device. Ex. 1013, 1:14

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Patent 8,773,356 B2
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 1:1820.
Figure 1 of Rosenberg 281 is reproduced below.

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 feedbackinterface system 10, which includes host computer 12 and interface
device 14. Id. at 7:35. Interface device 14 includes local microprocessor
26, sensors 28, actuator 30 and user object 34. Id. at 9:1213. Sensors 28
provide signals indicating position, motion, and/or other characteristics of
user object 34. Id. at 11:2324. 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
microprocessor may use the sensor signals in the local determination of
forces to be output on the user object. Id. at 10:2325. 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 11:812.
3. Discussion
Petitioner asserts that each of claims 13, 913, 1923, 25, and 26,
citing to record evidence. Pet. 2061. Petitioner asserts that Rosenberg 737
teaches most of the limitations of independent claims 1, 12, and 22. Id. at
2641, 5657, 5860.

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Petitioner asserts that Rosenberg 737 teaches and renders obvious
determining an interaction between the object contacting the touchsensitive input device and generating an actuator signal based at least in
part on the interaction. Pet. 3341. In connection with these assertions,
Petitioner cites disclosures of Rosenberg 737 regarding haptic effects on
touchpads, as well as Rosenberg 737s 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,
21:2122). Petitioner asserts that Rosenberg 737 teaches that all of its
disclosure related to touchpad embodiments, including the disclosure
regarding haptic effects, is relevant to the touch screen embodiment. Id. at
25 (citing Ex. 1007, 22:34, 22:1920). Petitioner further asserts that, even
if one does 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. 3341.
With respect to the lookup table recited in independent claims 1, 12,
and 22, Petitioner cites Rosenberg 281. Id. at 4142. Petitioner cites
Rosenberg 281s disclosure regarding storing force values in a look-up table
that may be output based on the current position of the user object.

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Ex. 1013, 11:812; Pet. 41. Petitioner also cites the disclosures in claims
1013 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, 25:1025; 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
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 4243. Petitioner
advances multiple reasons that a person of ordinary skill in the art would
have had motivation, in view of Rosenberg 281, to use a lookup table.
First, Petitioner notes that Rosenberg 737 incorporates Rosenberg 281
by reference. Id. at 4344. 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. 4447; Ex. 1002 106. Lastly, Petitioner and Dr. Baudisch argue

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that Rosenberg 737 teaches that its disclosures could be combined
with existing haptic feedback enabled software (Ex. 1007, 4:913),
such as lookup tables. Pet. 47; Ex. 1007 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. 1719, 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:
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. 4849; Ex. 1002 111.
Petitioners arguments and evidence demonstrate a reasonable
likelihood of establishing that it would have been obvious combine
Rosenberg 737s haptic effects and touch screen teachings with one another
and with Rosenberg 281s lookup table that associates the interaction with
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haptic effects. The evidence and arguments presented by Petitioner persuade
us that there is a reasonable likelihood of Petitioner establishing obviousness
of claims 13, 5, 7, 913, 15, 17, 1923, 25, and 26 over Rosenberg 737 and
Rosenberg 281. At this stage, Patent Owners arguments to the contrary do
not persuade us.
Patent Owner argues that neither Rosenberg 737 nor Rosenberg 281
teaches the claim limitation generating an actuator signal based at least in
part on the interaction and haptic effect data in a lookup table. Prelim.
Resp. 1821. Patent Owner argues that Rosenberg 281s lookup table only
provides haptic effects based on the current position of the user object,
such as the position of a mouse or joystick. Id. at 18. Patent Owner asserts
that Rosenberg 281s lookup table does not include information regarding an
interaction between a user object contacting a touch-sensitive input device
and a graphical object. Id. Regarding claims 1013 of Rosenberg 281,
Patent owner asserts that these claims discuss an interaction between two
graphical objectsa cursor and another graphical objectnot between a
user object and a graphical object. Id. at 20.
Patent Owner further argues that a combination implementing
Rosenberg 281s lookup table would not generate an actuator signal based
at least in part on the interaction. Id. at 2123. Here again, Patent Owner
asserts that Rosenberg 281s system generates the actuator signal only
based upon the position of a mouse or joystick in degrees of freedom. Id. at
21. Patent Owner further argues that Petitioner provides no explanation
how the mouse or joystick embodiments of Rosenberg 281 could be used to
arrive at the challenged claims. Id. at 23.

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At this stage, we find these arguments unpersuasive. First, Patent
Owners argument that neither reference teaches the claim limitation is
unpersuasive because it attacks Rosenberg 737 and Rosenberg 281
individually, where the challenge is based on combined teachings of these
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). We likewise
find unpersuasive Patent Owners argument that bodily incorporating the
lookup table of Rosenberg 281 into the system of Rosenberg 737 would not
produce the claimed invention. See id. at 425 (The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references.). Petitioners arguments and evidence demonstrate a reasonable
likelihood of establishing that it would have been obvious in view of
Rosenberg 737 and Rosenberg 281 to implement a lookup table that includes
information about the interaction and is capable of associating the
information about the interaction with haptic effect data. See Pet. 4849.8
Patent Owner further argues that it would not only be [im]possible to
incorporate the teachings of Rosenberg 281 in a manner that would practice
the challenged claims,9 a POSITA would not have had reason to combine
Rosenberg 281 with Rosenberg 737 to implement a system that would even
8

Because Petitioner has demonstrated a reasonable likelihood of

establishing that the lookup table would have been obvious even under
Patent Owners construction, we need not resolve the broadest reasonable
interpretation of the lookup table at this stage of the proceeding.
9

This too appears to be an unpersuasive argument based on presumed bodily

incorporation of the teachings of Rosenberg 281 into the system of
Rosenberg 737.
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resemble the claims of the 356 patent. Id. at 2425. Patent Owner argues
that, contrary to Petitioners assertion, Rosenberg 737s incorporation of
Rosenberg 281 by reference would not provide motivation to combine the
teachings of the references. Id. at 2527. Patent Owner asserts that the
incorporation by reference relates to touchpad embodiments only, not touch
screen embodiments. Id. Patent Owner argues that, [b]ased on Rosenberg
737s express teachings to apply Rosenberg 281 specifically to Rosenbergs
touchpad (i.e., non-touchscreen) embodiment, a POSITA seeking to
combine these two references would have focused on applying Rosenberg
281s disclosure of a movable portion of a housing to Rosenberg 737s
touchpad embodiment. Id. at 26. Patent Owner further contends that it is
irrelevant whether implementing the claimed lookup table within a touch
screen system would have been within the skill of a POSITA. Id. at 27.
At this stage, we also find these arguments unpersuasive. Contrary to
Patent Owners assertion, whether it would have been within the level of
skill in the art to modify the disclosures in a manner meeting the claims,
indeed, is a relevant inquiry in an obviousness evaluation. See, e.g., KSR
Intl Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (If a person of ordinary
skill can implement a predictable variation, 103 likely bars its
patentability.). We are persuaded that Rosenberg 737s incorporation by
reference of Rosenberg 281 would have led a person of ordinary skill in the
art to consider Rosenberg 281 for everything it teaches by way of
technology. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
(Fed. Cir. 1985) (A reference must be considered for everything it teaches
by way of technology and is not limited to the particular invention it is
describing and attempting to protect.). At this stage, we are not persuaded
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that such consideration would have necessarily been limited to combining
the teachings of the references in a touchpad system, as argued by Patent
Owner.
Patent Owner further argues that Petitioner cannot establish that a
POSITA would have incorporated the teachings from Rosenberg 737s
touchpad embodiment into a touchscreen implementation in a manner that
would satisfy the challenged claims. Prelim. Resp. 27. Patent Owner
argues that Petitioner does not provide an adequate explanation as to why it
would have been obvious to combine Rosenberg 737s teachings related to
touch screens with its teachings related to touchpads in the particular manner
suggested. Id. at 2731. In connection with this, Patent Owner takes issue
with Petitioners assertion that Rosenberg 737 teaches that the disclosures
associated with the touchpad embodiments also apply to the touch screen
embodiments. Id. at 2829. Patent Owner asserts that [a] POSITA would
interpret the discussion in paragraph 75 [of Rosenberg 737] as relating to
how the haptic feedback can be implemented, and not as a statement of
overall equality between touchpads and touchscreens. Id. at 29. Citing Dr.
Delsons testimony, Patent Owner advances certain reasons as to why a
person of ordinary skill in the art allegedly would not have had reason to
combine the teachings associated with the touchpad embodiments with the
teachings associated with touch screen embodiments. Id. at 2931.
Patent Owner also argues that a person of ordinary skill in the art
would not have had reason to use a lookup table in the system of Rosenberg
737. Id. at 3233. Citing Dr. Delsons testimony, Patent Owner advances
certain alleged disadvantages to using a lookup table. Id.

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At this stage, we also find these arguments unpersuasive to negate
Petitioners arguments and evidence as demonstrating a reasonable
likelihood of prevailing on its assertion of obviousness over the combination
of Rosenberg 737 and Rosenberg 281. Each party cites declarant testimony
in support of their positions regarding what Rosenberg 737 teaches, whether
a person of ordinary skill in the art would have had a sufficient reason to
combine the teachings of touchpad embodiments with teachings of touch
screen embodiments, and whether a person of ordinary skill in the art would
have had reason to use a lookup table. See Pet. 2526, 4250; Prelim. Resp.
1617, 2833. At this stage in the proceeding, the parties arguments and
evidence raise genuine issues of material fact. In such a situation, where
conflicting testimonial evidence creates a genuine issues of material fact, the
evidence must be viewed in the light most favorable to Petitioner when
deciding whether to institute an inter partes review. 37 C.F.R. 42.108(c).
Regarding Patent Owners assertions that using a lookup table would have
certain disadvantages, we further note that [t]he fact that the motivating
benefit comes at the expense of another benefit . . . should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Winner Intl Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000).
In summary, viewing the conflicting expert testimony regarding the
sufficiency of Petitioners rationale to combine in the light most favorable to
Petitioner, we determine that Petitioner has demonstrated a reasonable
likelihood of prevailing as to its assertion that claims 13, 5, 7, 913, 15, 17,
1923, 25, and 26 would have been obvious over Rosenberg 737 and
Rosenberg 281.
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Patent 8,773,356 B2
D. Alleged Obviousness over Rosenberg 737, Rosenberg 281, and
Newton 2.0
1. Overview of Newton 2.0
Newton 2.0 states that it describes how to create software products
that optimize the interaction between people and devices that use Newton
2.0 software. Ex. 1014, xxi.10 Newton 2.0 discloses that [w]herever users
can write text on a Newton device, they can type it using an on-screen
keyboard as well, and that [f]igure 6-27 shows the four keyboards that are
built into the Newton system. Id. at 6-32. Figure 6-27 of Newton is
reproduced below.

10

In our citations to Newton 2.0, we refer to the original page numbers

located in either the lower left or right hand corner of each page in Exhibit
1014, rather than those appended in the lower right hand corner by
Petitioner.
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Patent 8,773,356 B2
Figure 6-27 of Newton shows a typewriter keyboard, a numeric keyboard, a
phone keyboard, and a time/date keyboard. Id. at 6-32; Fig. 6-27.
2. Discussion
Petitioner asserts that each of claims 5, 7, 15, and 17 would have been
obvious over Rosenberg 737, Rosenberg 281, and Newton 2.0, citing record
evidence. Pet. 6164. Petitioner asserts that Newton 2.0 discloses a display
signal configured to display a keypad comprising a plurality of softkeys. Id.
at 6162. Citing Dr. Baudischs testimony, Petitioner advances certain
reasons as to why it would have been obvious to a POSITA combine this
teaching with those of Rosenberg 737 and Rosenberg 281. Id. at 6264.
Petitioners arguments and evidence demonstrate a reasonable likelihood of
establishing obviousness of claims 5, 7, 15, and 17 over Rosenberg 737,
Rosenberg 281, and Newton 2.0.
Patent Owner argues that Petitioners challenge of claims 5, 7, 15, and
17 fails because [t]he Newton 2.0 reference does not and cannot cure the
deficiencies of Rosenberg 737 and Rosenberg 281, as discussed above. We
find this argument unpersuasive for the reasons discussed above in
Section II.C.
III. CONCLUSION
Having evaluated the information presented in the Petition, its
underlying supporting evidence, and the arguments presented in Patent
Owners Preliminary Response, we determine that Petitioner has shown a
reasonable likelihood of establishing that claims 13, 5, 7, 913, 15, 17, 19
23, 25, and 26 are unpatentable. At this stage of the proceeding, we have not

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made a final determination with respect to the patentability of these
challenged claims.

IV. ORDERS
After due consideration of the record before us, it is:
ORDERED that pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted on the following grounds:
A. claims 13, 913, 1923, 25, and 26 as allegedly obvious over
Rosenberg 737 and Rosenberg 281; and
B. claims 5, 7, 15 and 17 as allegedly obvious over Rosenberg 737,
Rosenberg 281, and Newton 2.0; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial
will commence on the entry date of this decision.

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PETITIONER:
James Heintz
Brian Erickson
Apple-Immersion-IPRs@dlapiper.com
brian.erickson@dlapiper.com

PATENT OWNER:
Michael Fleming
Babak Redjaian
mfleming@irell.com
bredjaian@irell.com

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