Apple Inc v. Taction Technology Inc

1. Case Identification

• Case #: IPR2022-00057
• Patent #: 10,659,885
• Filed: October 21, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Taction Technology, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Vibration Module
• Brief Description: The ’885 patent describes a vibration module for providing haptic feedback in electronic devices. The apparatus includes a housing, a moving portion with magnets and an inertial mass, a plurality of conductive coils, and a suspension system with flexures that guide the moving portion in a planar motion. The movement is damped by a ferrofluid to produce a substantially uniform acceleration response over a frequency range of 40-200 Hz.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 are obvious over Miyazaki in view of Park494 and Kajiwara.

• Prior Art Relied Upon: Miyazaki (WO 2011/013570), Park494 (Patent 8,766,494), and Kajiwara (Application # 2009/0267423).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miyazaki, which describes a vibrating motor for mobile devices, taught the core structural limitations of claim 1, including a housing, coils, magnets, a moving portion, and a suspension with flexures for planar motion. Petitioner asserted that Park494, which describes a linear vibrator for mobile devices, taught the claimed damping limitation by disclosing the use of a magnetic fluid (ferrofluid) to damp the movement of a vibrating unit. Finally, Petitioner contended that Kajiwara, describing an electromagnetic exciter, taught that using a damping material reduces a mechanical resonance peak, and showed this effect at a frequency (approx. 150 Hz) that falls within the claimed 40-200 Hz range.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references to create a predictable and improved device. A POSITA would have been motivated to replace Miyazaki’s disclosed friction-based damping, which has manufacturing and wear-related drawbacks, with the well-known and more reliable ferrofluid damping taught by Park494. Furthermore, a POSITA would have been motivated to operate the resulting device in an optimal frequency range for haptics in mobile devices, looking to analogous art like Kajiwara, which taught damping effects in the 120-180 Hz range.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved substituting one known damping technique for another in a similar device architecture. Modifying the device to operate within the frequency range taught by Kajiwara would have involved only routine experimentation to yield predictable results.

Ground 2: Claims 1-19 are obvious over Miyazaki in view of Park494 and Park728.

• Prior Art Relied Upon: Miyazaki (WO 2011/013570), Park494 (’494 patent), and Park728 (Patent 8,461,728).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner relied on Miyazaki and Park494 for the same teachings as in Ground 1—Miyazaki for the base structure and Park494 for ferrofluid damping. Petitioner introduced Park728 as an alternative to Kajiwara to supply the motivation to operate within the claimed frequency range. Park728 taught a linear vibrator for providing haptic effects in mobile devices with a resonant frequency band preferably determined within 80-180 Hz, which is within the claimed 40-200 Hz range.
  • Motivation to Combine: The motivation to combine Miyazaki and Park494 remained the same as in Ground 1. Petitioner argued a POSITA would have been motivated to modify the resulting combination to operate in the specific frequency range taught by Park728. Because Miyazaki did not specify an operating frequency, a POSITA would have looked to other references like Park728, which expressly suggested the 80-180 Hz range for haptic motors in mobile devices to ensure humans can detect the vibrations well.
  • Expectation of Success: Petitioner asserted a high expectation of success. The architectural similarities between the devices in Miyazaki, Park494, and Park728 would make the combination straightforward. Adjusting the resonant frequency by modifying the mass of the weight and the strength of the suspension, as taught by Park728, was a well-known technique within the skillset of a POSITA and would have yielded the predictable result of damping within the desired frequency range.

4. Arguments Regarding Discretionary Denial

• Arguments against Fintiv Denial: Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was inappropriate. It asserted that the parallel district court litigation was in its infancy, with little investment by the parties, no claim construction positions exchanged, and no trial date set. Petitioner stated its intent to seek a stay of the litigation pending the outcome of the inter partes review (IPR), which would weigh in favor of institution.
• Arguments against §325(d) Denial: Petitioner argued that denial under §325(d) was not warranted because the asserted prior art and arguments were not the same or substantially the same as those previously presented to the patent office. Petitioner noted that Miyazaki, Park494, and Kajiwara were never considered by the examiner. While Park728 was listed on the face of the ’885 patent, it was not substantively discussed or applied during prosecution. Petitioner contended its proposed combinations were materially different from the combination considered by the examiner, which involved actuators from disparate fields (a haptic actuator for a game controller and a loudspeaker actuator) and led to operational uncertainties that are not present in Petitioner’s more analogous art combinations.

5. Relief Requested

• Petitioner requests institution of IPR for claims 1-19 of the ’885 patent and cancellation of those claims as unpatentable.