According to the complaint filed on April 21, 2009, Craig Thorner claimed he was tricked into signing away his patent rights for a fraction of their worth. Thorner held several patents that were directed to haptic feedback technology (which concerns the vibration functions on gaming controllers), similar to those asserted by Immersion against Sony in Immersion v. Sony. His patents were part of Sony’s after-trial attempt to invalidate Immersion’s patents. The complaint alleges that after the verdict in Immersion v. Sony, Thorner was contacted by another company, Performance Designed Products LLC., that had also been targeted by Immersion. Thorner claims he ended up negotiating with PDP to license his patents to them. In that process he sought help from the same attorneys that represented Sony. Those attorneys encouraged him to accept terms that were less favorable to Thorner (including a provision that could grant a patent license to Sony, and another one accepting royalty payments that were less than he originally sought). Thorner alleges Sony and PDP were working together. He sued them for legal malpractice, and sued Sony for infringement of his patents. Thorner previously developed patents for Immersion and received payments from Sony for his work on vibrating touch technology. Specifically at issue was Thorner’s U.S. Patent No. 6,422,941 (the ‘941 patent) titled “Universal Tactile Feedback System for Computer Video Games and Simulations.

In November 2010, after conducting Markman hearings, Judge Brown of the New Jersey District Court dismissed all of Thorner’s patent claims against Sony. Judge Brown noted he was dismissing the claims in light of Thorner’s objection to the district court’s construction of “attached to said pad.” According to Judge Brown, “attached to said pad” was construed to mean “affixed to the exterior surface of the flexible pad,” and as a result Sony did not infringe the ‘941 patent. He determined Sony did not infringe the patent because “the patent claim limitation is not met with respect to their products.” The parties agreed to a stipulation of dismissal without prejudice. Sony acknowledged dismissal of the claims would not prejudice Thorner’s ability to assert the claims in the future. The court noted that if the Federal Circuit reverses or changes its construction of “attached to said pad,” the parties may reassert all claims and issues on remand.

In February 2012, the U.S. Court of Appeals for the Federal Circuit vacated the district court’s decision. The Federal Circuit reviewed the district court’s interpretation of the terms “attached” and “flexible,” noting the general rule is that claims must be given their ordinary and customary meaning unless the patentee acts as his own lexicographer or the patentee disavows the full scope of the claim. Since the term “attached” met neither of these exceptions, the Federal Circuit determined it should be given its ordinary and customary meaning that includes both internal and external attachment. The Federal Circuit disagreed with the district court’s interpretation of the term flexible (“capable of being noticeably flexed with ease”). Thorner argued the term should be given its ordinary and customary meaning that only requires the pad to be “capable of being flexed.” The Federal Circuit accepted Thorner’s interpretation and remanded the case.

In May 2013, U.S. District Judge Mary Cooper ruled that Thorner was to abide by a $300,000 settlement he had reached with Sony. She ruled the deal must stand due to the fact that Thorner would still be able to enforce patents rights in the future because the settlement gave Sony only a nonexclusive license. Thorner previously requested a settlement stay in March which was was denied due to the agreement being an enforceable contract. On August 6, 2013, the district court dismissed the case with prejudice after the parties settled.

This case, as well as Immersion v. Sony, has important implications. There has been a fair amount of court activity regarding monetizing IP rights, and patent reforms continue to loom in the background. This could lead to a more difficult environment for monetizing IP rights. Defenders have become more likely to win in recent years than they used to be. While Immersion has had a successful history in terms of IP cases in the court room, there is the possibility of increased volatility the future, on top of additional scrutiny from investors following cases such as these.