Apple Inc v. Taction Technology Inc

1. Case Identification

• Case #: IPR2022-00058
• Patent #: 10,820,117
• Filed: October 21, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Taction Technology, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Vibration Module
• Brief Description: The ’117 patent discloses a haptic vibration module for electronic devices. The apparatus includes a stationary housing with conductive coils and a moving portion with magnets and an inertial mass, all suspended by flexures that guide the moving portion in a planar motion.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miyazaki, Park494, and Kajiwara - Claims 1-15 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, a vibrating motor for mobile devices, taught the core structural elements of claim 1, including a housing, conductive coils, a moving portion with magnets and an inertial mass, and a suspension with flexures for planar motion. However, Miyazaki disclosed a friction-based damping mechanism. Park494 taught a linear vibrator that used a viscous ferrofluid (magnetic fluid) for damping. Petitioner asserted that combining these references would result in Miyazaki’s motor being damped by Park494’s superior ferrofluid method, meeting the limitation of claim 1(g). Kajiwara was added because it taught an electromagnetic exciter operating in the 120-180 Hz range and explicitly showed that using a damping material reduces resonance amplitude within this low-frequency range, satisfying the limitation of claim 1(h) requiring resonance reduction in the 40-200 Hz range.
  • Motivation to Combine: A POSITA would combine Miyazaki and Park494 to replace Miyazaki's known friction-based damping with the well-known and more consistent magnetic fluid damping taught by Park494 to improve performance and simplify manufacturing. A POSITA would further incorporate Kajiwara’s teachings to operate the combined device within a known optimal frequency range (120-180 Hz) for haptic actuators, as this was a common design goal involving only routine experimentation.
  • Expectation of Success: Petitioner contended there was a high expectation of success due to the architectural similarities between the linear actuators in all three references. Substituting one known damping method for another and tuning the operating frequency were predictable modifications for a POSITA.

Ground 2: Obviousness over Miyazaki, Park494, and Park728 - Claims 1-11 and 13-15 are obvious over Miyazaki in view of Park494 and Park728.

• Prior Art Relied Upon: Miyazaki (WO 2011/013570), Park494 (Patent 8,766,494), and Park728 (Patent 8,461,728).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a similar combination as Ground 1, with Miyazaki providing the base actuator and Park494 providing the ferrofluid damping. This ground substituted Kajiwara with Park728. Petitioner argued that Park728, which disclosed a linear vibrator for haptic effects, explicitly taught a preferable resonant frequency band of 80-180 Hz. This teaching supplied the rationale to tune the Miyazaki/Park494 device to operate within the 40-200 Hz range required by the claims. The combination of Miyazaki’s structure, Park494’s damping, and Park728’s operating frequency rendered the claims obvious.
  • Motivation to Combine: The motivation was to improve Miyazaki’s actuator with Park494’s ferrofluid damping and then optimize its performance by implementing the resonant frequency range taught by Park728. Because Miyazaki did not specify an operating frequency, a POSITA would look to analogous art like the ’728 patent, which expressly suggested the 80-180 Hz range for haptic vibrators in mobile devices.
  • Expectation of Success: Success would be expected because Park728 taught that resonant frequency could be predictably adjusted by changing the mass and suspension strength, elements already present in Miyazaki's design. The modification would involve routine optimization within the skill of a POSITA.

Ground 3: Obviousness over Miyazaki, Park494, Park728, and Kajiwara - Claim 12 is obvious over Miyazaki in view of Park494, Park728, and Kajiwara.

• Prior Art Relied Upon: Miyazaki (WO 2011/013570), Park494 (Patent 8,766,494), Park728 (Patent 8,461,728), and Kajiwara (Application # 2009/0267423).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Miyazaki, Park494, and Park728 from Ground 2, which Petitioner asserted rendered the apparatus of claim 9 obvious. Petitioner then added Kajiwara to this combination to specifically address the limitation of dependent claim 12, which required the signals applied to the coils to be "steady-state sinusoidal signals." Kajiwara explicitly taught applying an alternating driving voltage, such as a sine wave, to drive its linear actuator and showed a driving voltage signal that remained constant (steady-state) until turned off.
  • Motivation to Combine: Petitioner argued that because the primary combination of Miyazaki, Park494, and Park728 was silent on the specific waveform of the driving signal, a POSITA would have been motivated to look to other similar references, like Kajiwara, for this detail. Given the well-known use of sinusoidal signals to drive linear actuators, applying Kajiwara's teachings was a common and predictable design choice.
  • Expectation of Success: The application of a known signal type to a known actuator type would have yielded predictable results and would not have required undue experimentation.

4. Arguments Regarding Discretionary Denial

• Discretionary Denial under Fintiv: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its infancy. Key factors favoring institution included that no trial date had been set, little investment had been made in the parallel proceeding, no invalidity contentions had been served (preventing overlap), and Petitioner intended to seek a stay of the litigation.
• Discretionary Denial under §325(d): Petitioner argued against denial under §325(d), asserting that the prior art and arguments were not the same or substantially the same as those presented to the examiner during prosecution. Specifically, Petitioner noted that key references Miyazaki, Park494, and Kajiwara were never cited or considered by the examiner. While Park728 was cited on the face of the ’117 patent, it was not substantively discussed or used in any rejection.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-15 of Patent 10,820,117 as unpatentable.