DCT

3:21-cv-00812

Taction Technology Inc v. Apple Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:21-cv-00812, S.D. Cal., 04/26/2021
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California because Apple, a California corporation, maintains a "regular and established place of business" in the district, including multiple retail stores and a "principal engineering hub" that hires engineers to work on the accused technology, and because it sells the accused products within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s iPhone and Apple Watch products, which feature the "Taptic Engine," infringe two patents related to high-fidelity, damped haptic actuators that produce planar motion.
  • Technical Context: The technology concerns advanced haptic actuators designed to provide nuanced tactile feedback in consumer electronics, improving upon older technologies that produced unwanted noise and had limited frequency response.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patented technology through multiple channels, including by allegedly purchasing and reverse-engineering Plaintiff's commercially available "Taction Kannon" headsets, through a related patent publication cited as prior art on one of Defendant's own patents, and through Plaintiff's public patent-marking website.

Case Timeline

Date Event
2014-09-24 Earliest Priority Date for '885 and '117 Patents
2016-03-16 Filing Date of Apple Patent Application Citing Related Art
2017-04-07 Apple allegedly orders Plaintiff's Kannon headsets
2018-02-24 Plaintiff's Kannon headsets allegedly shipped to Apple
2020-05-19 U.S. Patent No. 10,659,885 Issues
2020-10-27 U.S. Patent No. 10,820,117 Issues
2021-04-26 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,659,885

  • Patent Identification: U.S. Patent No. 10,659,885, "Systems and Methods for Generating Damped Electromagnetically Actuated Planar Motion for Audio-Frequency Vibrations," issued May 19, 2020. (Compl. ¶67).
  • The Invention Explained:
    • Problem Addressed: Prior art haptic actuators, such as axial shakers in headphones, created unwanted acoustic noise by plunging the earcup against the user's head and had an uneven, "peaked" frequency response that distorted audio ('885 Patent, col. 1:43-56, col. 2:1-10). Other common actuators, like Linear Resonant Actuators (LRAs), were designed for simple alerts and could only produce perceptible vibration at a single, resonant frequency, making them unsuitable for high-fidelity audio reproduction ('885 Patent, col. 2:25-34).
    • The Patented Solution: The invention is a thin, flat vibration module that generates motion in-plane—parallel to the surface of the user's skin. This "shears" the skin to create a tactile sensation while minimizing changes in air volume in the ear canal, thereby avoiding unwanted noise ('885 Patent, col. 2:50-57). The system is mechanically damped, for example with a ferrofluid, to achieve a "substantially uniform" frequency response over a wide range (e.g., 40-200 Hz), allowing for the faithful reproduction of complex, low-frequency audio signals without the "ringing" or narrow-band limitations of prior art designs ('885 Patent, Abstract; col. 9:35-41).
    • Technical Importance: This approach enabled the creation of high-fidelity tactile feedback that could be synchronized with audio, providing a more immersive experience without the acoustic interference and narrow frequency limitations of previous haptic systems ('885 Patent, col. 2:50-65).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1. (Compl. ¶95).
    • The essential elements of Claim 1 are:
      • An apparatus for imparting motion to the skin of a user, comprising: a housing;
      • a plurality of coils capable of carrying electrical current;
      • a plurality of magnets arranged in operative proximity to the plurality of coils;
      • a moving portion comprising an inertial mass and the plurality of magnets;
      • a suspension comprising a plurality of flexures that guides the moving portion in a planar motion with respect to the housing and the plurality of conductive coils;
      • wherein movement of the moving portion is damped by a ferrofluid in physical contact with at least the moving portion; and
      • wherein the ferrofluid reduces at least a mechanical resonance within the frequency range of 40-200 Hz in response to electrical signals applied to the plurality of conductive coils.
    • The complaint reserves the right to assert additional claims. (Compl. ¶129).

U.S. Patent No. 10,820,117

  • Patent Identification: U.S. Patent No. 10,820,117, "Systems and Methods for Generating Damped Electromagnetically Actuated Planar Motion for Audio-Frequency Vibrations," issued October 27, 2020. (Compl. ¶71).
  • The Invention Explained:
    • Problem Addressed: The patent identifies the same problems as its family member, the '885 Patent: prior art haptic actuators produced undesirable acoustic noise and suffered from poor fidelity due to highly resonant, narrow-band frequency responses ('117 Patent, col. 1:43-56; col. 2:1-10).
    • The Patented Solution: The '117 Patent also describes a damped, electromagnetically actuated module that produces in-plane motion to create tactile sensations parallel to the user's skin, thereby avoiding acoustic distortion ('117 Patent, col. 2:50-57). This design seeks to provide a uniform haptic response across a broad range of low frequencies suitable for audio accompaniment ('117 Patent, Abstract).
    • Technical Importance: As with the '885 Patent, this technology allows for the creation of more realistic and immersive tactile effects in electronic devices by overcoming the noise and fidelity limitations of older haptic systems ('117 Patent, col. 2:50-65).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1. (Compl. ¶135).
    • The essential elements of Claim 1 are:
      • An apparatus comprising: a housing;
      • a plurality of conductive coils capable of carrying electrical current; a plurality of magnets arranged in operative proximity to the plurality of conductive coils;
      • a moving portion comprising an inertial mass and the plurality of magnets;
      • a suspension comprising a plurality of flexures that guides the moving portion in a planar motion;
      • wherein vibration of the apparatus imparts vibrations to a user's skin;
      • wherein vibration of the apparatus is damped by a viscous ferrofluid in physical contact with at least the moving portion;
      • wherein the viscous ferrofluid reduces at least a resonance within a frequency range of 40-200 Hz;
      • wherein said moving portion includes at least a pocket that provides space for at least a magnet;
      • wherein each of said plurality of flexures is more resistant to motion transverse to a plane of the moving portion than it is to linear motion in the plane of the moving portion; and
      • wherein said housing is generally cuboid in shape.
    • The complaint reserves the right to assert additional claims. (Compl. ¶175).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are numerous models of the Apple iPhone (8, 8 Plus, X, XR, XS, XS Max, 11 series, 12 series, 2020 SE) and Apple Watch (Series 3, 4, 5, 6, SE, Nike), all of which contain Apple's "Taptic Engine" haptic actuator. (Compl. ¶24, ¶81).
  • Functionality and Market Context: The complaint alleges that Apple's Taptic Engine is a "customized haptic actuator" that provides "state-of-the-art" haptic feedback, which is "central in shaping the experience" of using Apple products. (Compl. ¶77, ¶81). Plaintiff alleges that since late 2016, these Taptic Engines have incorporated ferrofluid to "damp vibrations" and "in-plane flexures to locate and suspend the moving mass." (Compl. ¶83-84). Apple's marketing materials, cited in the complaint, describe the Taptic Engine as a "linear actuator" that provides "distinct character" to different notifications and actions. A provided visual from Apple's website shows the Taptic Engine inside an Apple Watch. (Compl. p. 13). The complaint further alleges that this advanced haptic technology enabled Apple to remove the physical home button on its iPhones and to distinguish its products from competitors. (Compl. ¶19-20).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,659,885 Infringement Allegations

The complaint provides teardown photographs of the Taptic Engine from a 2020 iPhone SE to support its infringement allegations against Claim 1. One photograph shows the disassembled coil assembly. (Compl. p. 16, ¶103). Another shows the moving portion with magnets and tungsten inserts. (Compl. p. 17, ¶107). A third shows a close-up of the flexure suspension. (Compl. p. 18, ¶109). A fourth photograph shows viscous ferrofluid, allegedly from the device, on a fingertip. (Compl. p. 19, ¶111).

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An apparatus for imparting motion to the skin of a user... The Accused Products contain Taptic Engines whose vibrations are transferred to the device housing, which imparts motion to the user's skin. ¶96, ¶99 col. 1:15-17
a housing The Taptic Engines in the Accused Products include a housing. ¶100 col. 7:19-20
a plurality of coils capable of carrying electrical current The Taptic Engines contain a plurality of electrical coils. ¶102 col. 7:25-27
a plurality of magnets arranged in operative proximity to the plurality of coils The Taptic Engines contain a plurality of magnets arranged near the coils. ¶104 col. 7:18
a moving portion comprising an inertial mass and the plurality of magnets The Taptic Engines have a moving portion containing tungsten inserts (inertial mass) and magnets. ¶106 col. 7:18-19
a suspension comprising a plurality of flexures that guides the moving portion in a planar motion... The Taptic Engines contain a suspension with flexures that guide the moving portion in a planar motion. ¶108 col. 7:19-22
...movement of the moving portion is damped by a ferrofluid in physical contact with...the moving portion The movement of the Taptic Engine's moving portion is damped by ferrofluid. ¶110 col. 8:39-42
...the ferrofluid reduces at least a mechanical resonance within the frequency range of 40-200 Hz... Plaintiff alleges "on information and belief" that the ferrofluid in the Taptic Engines performs this resonance reduction function. ¶112 col. 9:35-41
  • Identified Points of Contention:
    • Technical Questions: A primary factual dispute will likely concern the final "wherein" clause. The complaint alleges the resonance-damping function "on information and belief" (Compl. ¶112), which raises the evidentiary question of whether the ferrofluid in Apple's Taptic Engine actually performs the specific damping function as claimed. This will likely require expert testimony and technical testing of the accused devices.
    • Scope Questions: The proper construction of "planar motion" may become a point of contention. The analysis may focus on how much out-of-plane deviation is permissible before the motion is no longer considered "planar" as taught by the patent.

U.S. Patent No. 10,820,117 Infringement Allegations

The complaint uses the same set of teardown photographs from the 2020 iPhone SE to support its allegations against the '117 Patent.

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
...a moving portion includes at least a pocket that provides space for at least a magnet The moving portion of the Taptic Engine includes pockets that provide space for magnets. ¶154 col. 4:14-15
...each of said plurality of flexures is more resistant to motion transverse to a plane...than it is to linear motion... The complaint alleges that the flexures in the Taptic Engines meet this relative resistance requirement. ¶156 col. 3:42-45
...said housing is generally cuboid in shape The housing of the Taptic Engine is alleged to be generally cuboid in shape. ¶158 col. 15:3-4
  • Identified Points of Contention:
    • Technical Questions: The allegation that the accused flexures are "more resistant to motion transverse" than to in-plane motion is a specific technical assertion. This raises a key factual question that will require mechanical analysis and evidence to substantiate.
    • Scope Questions: The term "generally cuboid" is a term of degree. A potential dispute is whether the Taptic Engine's housing, with its specific contours and features, falls within the scope of this term. Similarly, the meaning of "pocket"—whether it requires a specific type of manufactured recess—could be debated.

V. Key Claim Terms for Construction

  • The Term: "planar motion" ('885 Patent, Claim 1)

  • Context and Importance: This term is fundamental to the invention's core premise of avoiding the unwanted acoustic noise associated with prior art "axial" actuators. The definition of "planar" will be critical to determining if the movement of the Taptic Engine, which may have some de minimis out-of-plane component, infringes.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification repeatedly contrasts the invention with "axial motion" that plunges an earcup ('885 Patent, col. 2:42-50), suggesting "planar" could be construed broadly to mean any motion that is not primarily axial.
    • Evidence for a Narrower Interpretation: The patent describes the motion as being "in the x-y plane of FIG. 2A" and "parallel with the surface of the side of the head" ('885 Patent, col. 2:50-54), which could support a narrower construction requiring movement substantially confined to a single plane.

  • The Term: "generally cuboid in shape" ('117 Patent, Claim 1)

  • Context and Importance: This limitation was added to the independent claim of the '117 Patent. The infringement analysis for this patent may turn on whether the Taptic Engine's physical housing meets this description. Practitioners may focus on this term because it appears to be a clear physical limitation that can be assessed visually, but the word "generally" introduces ambiguity.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The use of the word "generally" implies that the shape does not need to be a perfect geometric cuboid but can be an approximation. The patent does not provide an explicit definition, leaving room for a more expansive reading.
    • Evidence for a Narrower Interpretation: Figures in the patent, such as the housing "405" in Figure 4A, depict a fairly regular rectangular prism. A party could argue that "generally cuboid" should be construed in light of these embodiments to mean a shape that is substantially rectangular and box-like.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b). It asserts that Apple encourages infringement by providing "directions, instruction manuals, [and] guides" to end-users and by providing the "Core Haptics" API and related documentation to software developers, which allegedly instructs them on how to use the infringing Taptic Engine functionality. (Compl. ¶113-114, ¶160-161, ¶86-87).
  • Willful Infringement: The complaint alleges that Apple's infringement was and continues to be willful. It pleads pre-suit knowledge based on multiple grounds, including Apple's alleged 2017 purchase and reverse engineering of Plaintiff's commercial headsets (which were marked with a related patent), the citation of a related Taction patent publication on an Apple patent, and Plaintiff's public website listing its patents. (Compl. ¶119-126, ¶165-172). The complaint also alleges that Apple "willfully blinded itself" to the infringing nature of its products. (Compl. ¶126, ¶172).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A key evidentiary question will be one of functional performance: does the ferrofluid in Apple's Taptic Engine perform the specific function of reducing mechanical resonance in the 40-200 Hz range as required by Claim 1 of the '885 patent? Similarly, do the device's flexures meet the specific "more resistant to transverse motion" limitation of Claim 1 of the '117 patent? These are technical questions that the complaint's "information and belief" pleading leaves open for factual development.
  • A second core issue will be one of definitional scope: can terms of degree, such as "planar motion" and "generally cuboid", be construed to read on the specific implementation of Apple's Taptic Engine? The outcome of claim construction for these terms will significantly impact the infringement analysis.
  • A third question will center on knowledge and intent: assuming infringement is found, what did Apple know about the patents and when? The complaint's detailed allegations regarding Apple's alleged reverse-engineering of Plaintiff's products and awareness of related patent publications will be central to the claims for indirect and willful infringement.