Apple Inc v. Taction Technology Inc

1. Case Identification

• Case #: IPR2022-00059
• Patent #: 10,659,885
• Filed: October 21, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Taction Technology, Inc.
• Challenged Claims: 20

2. Patent Overview

• Title: Vibration Module
• Brief Description: The ’885 patent describes a vibration module for providing haptic feedback. The module includes a housing, a fixed coil, and a moving member suspended by flexures for planar motion, where the moving member contains magnets and a weight. The movement is damped by a ferrofluid to produce a substantially uniform acceleration response over a specific frequency range.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miyazaki, Park494, and Kajiwara - Claim 20 is obvious over Miyazaki in view of Park494 and Kajiwara.

• Prior Art Relied Upon: Miyazaki (Japanese PCT Application WO2011013570), 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 all structural elements of claim 20 except for the ferrofluid damping and the specific Q-factor reduction. Miyazaki disclosed a housing, planar coils, a movable portion with magnets and an inertial mass, and a suspension with flexures guiding the movable portion in a planar motion. Petitioner contended that Park494, which described a linear vibrator for mobile devices, taught the use of a ferrofluid (magnetic fluid) to damp the movement of a vibrating unit to stop it rapidly. Finally, Petitioner asserted that Kajiwara taught an electromagnetic exciter for mobile devices operating within the 120-180 Hz range, which falls within the claimed 40-200 Hz range. Kajiwara explicitly disclosed that using a damping material reduces the resonance amplitude and broadens the resonance peak, which Petitioner argued a POSITA would understand as a reduction in the Q-factor.
  • Motivation to Combine: A POSITA would combine Miyazaki and Park494 to replace Miyazaki's friction-based damping, which is prone to inconsistent performance and wear, with the well-known, simpler, and more reliable ferrofluid damping taught by Park494. Since Miyazaki did not specify an operating frequency, a POSITA would look to other references in the same field, like Kajiwara, which taught an optimal frequency range (120-180 Hz) for haptic actuators in mobile devices. Implementing the Miyazaki-Park494 motor to operate in Kajiwara’s frequency range would predictably result in the Q-factor reduction taught by Kajiwara.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved substituting one known damping mechanism for another in analogous devices. Further, modifying the operating frequency of the vibrator to fall within the optimal range taught by Kajiwara would involve only routine experimentation with predictable outcomes.

Ground 2: Obviousness over Miyazaki, Park494, and Park728 - Claim 20 is obvious over Miyazaki in view of Park494 and Park728.

• Prior Art Relied Upon: Miyazaki (Japanese PCT Application WO2011013570), Park494 (Patent 8,766,494), and Park728 (Patent 8,461,728).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the same combination of Miyazaki (for structure) and Park494 (for ferrofluid damping) as Ground 1. To teach the claimed frequency and Q-factor limitations, Petitioner substituted Kajiwara with Park728. Petitioner argued that Park728 taught a linear vibrator for providing haptic effects in mobile devices that preferably operates within a resonant frequency band of 80-180 Hz. This range overlaps with the ’885 patent’s claimed range of 40-200 Hz. Petitioner asserted that a POSITA would understand that the ferrofluid damping from Park494 would inherently reduce the Q-factor of the combined device when operated in the frequency range taught by Park728.
  • Motivation to Combine: The motivation to combine Miyazaki and Park494 was identical to that in Ground 1. A POSITA would then be motivated to look to Park728 to determine an appropriate operating frequency, as Miyazaki was silent on this point. Park728 provided an express suggestion for a resonant frequency range (80-180 Hz) for haptic motors in mobile devices, teaching this range is where humans can well detect vibrations. Applying this known optimal range to the Miyazaki-Park494 device was a logical design choice.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because all three references related to linear vibrators for haptics in mobile devices and shared similar core components. Implementing the teachings of Park728 in the Miyazaki-Park494 combination would involve routine adjustments to the mass and suspension strength, which were well within the skillset of a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was inappropriate. The parallel district court litigation was in its earliest stages, with no invalidity contentions served or claim construction conducted. Petitioner stated its intent to seek a stay and stipulated not to pursue the same invalidity grounds in district court if the IPR was instituted.
• Petitioner also contended that discretionary denial under §325(d) was improper. It argued that the asserted prior art combinations were not the same or substantially the same as what the examiner considered during prosecution. Specifically, Miyazaki, Park494, and Kajiwara were never before the examiner. While Park728 was cited on the face of the ’885 patent, it was not substantively discussed or applied in any rejection.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 20 of the ’885 patent as unpatentable.