Apple Inc v. Taction Technology Inc

1. Case Identification

• Case #: IPR2022-00060
• Patent #: 10,820,117
• Filed: October 21, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Taction Technology, Inc.
• Challenged Claims: 16-17

2. Patent Overview

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

3. Grounds for Unpatentability

Ground 1: Claim 16 is obvious over Miyazaki in view of Park494 and Bang

• Prior Art Relied Upon: Miyazaki (Japanese PCT Application WO2011013570), Park494 (Patent 8,766,494), and Bang (Application Publication 2012/0187780).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miyazaki, the primary reference, disclosed a thin vibrating motor with all the core structural elements of claim 16: a housing, fixed planar coils, and a moving portion with magnets and a weight suspended by spring-like flexures for planar motion. To meet the damping limitation, Petitioner combined Miyazaki with Park494, which taught using a magnetic fluid (ferrofluid) to damp a linear vibrator, serving as a superior alternative to Miyazaki’s friction-based damping. For the flexure-specific limitations, Petitioner turned to Bang, which taught a suspension with leaf-spring flexures having protrusions (fixing mounting parts) that lie in the same plane as the flexure to enhance stability and durability.
  • Motivation to Combine: A POSITA would combine these references to create a more robust and effective haptic actuator. First, a POSITA would replace Miyazaki’s less reliable friction-based damping with Park494’s well-known and more consistent ferrofluid damping to improve performance and simplify manufacturing. This was presented as a simple substitution of one known damping technique for another. Second, a POSITA would incorporate Bang’s flexure mounting protrusions into Miyazaki’s design to increase the stability and durability of the suspension, a straightforward modification to improve a known component.
  • Expectation of Success: Petitioner asserted a high expectation of success because the references were all in the same field of haptic actuators for mobile devices and addressed similar problems. The proposed modifications involved combining known, compatible elements (e.g., adding a known damping fluid, applying a known mounting technique to a leaf spring) to achieve predictable improvements in performance and durability.

Ground 2: Claim 17 is obvious over Miyazaki in view of Park494, Bang, and Kajiwara

• Prior Art Relied Upon: Miyazaki, Park494, Bang, and Kajiwara (Application Publication 2009/0267423).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination for claim 16 to address the additional limitations of claim 17, which requires that the ferrofluid reduce a Q-Factor of the apparatus’s response over a portion of the 40-200 Hz frequency range. Petitioner argued the base combination of Miyazaki, Park494, and Bang taught all elements of claim 16. The new reference, Kajiwara, was introduced to supply the teaching of operating a haptic motor in a specific low-frequency range and explicitly showing the Q-Factor reduction caused by damping. Kajiwara disclosed an electromagnetic exciter operating between 120-180 Hz and graphically demonstrated that adding a damping material reduces and broadens the resonance peak, which Petitioner’s expert equated to a reduction in the Q-Factor within the claimed 40-200 Hz range.
  • Motivation to Combine: While Miyazaki taught driving its motor at a predetermined frequency, it did not specify a range. A POSITA would look to analogous art like Kajiwara to determine an optimal operating frequency for haptic feedback in mobile devices. A POSITA would combine the teachings by implementing the base Miyazaki/Park494/Bang motor to operate in the 120-180 Hz range taught by Kajiwara, which was a known optimal range for haptics.
  • Expectation of Success: The combination was asserted to be predictable. Since all references taught similar haptic motors, modifying the operating frequency of the base combination to align with Kajiwara’s teachings would involve only routine experimentation. The result—that the known ferrofluid damping from Park494 would reduce the Q-factor at the operational resonant frequency taught by Kajiwara—was a predictable outcome based on fundamental physics.

Ground 3: Claim 17 is obvious over Miyazaki in view of Park494, Bang, and Park728

• Prior Art Relied Upon: Miyazaki, Park494, Bang, and Park728 (Patent 8,461,728).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative combination for claim 17, substituting Park728 for Kajiwara. As in Ground 2, the Miyazaki/Park494/Bang combination provided the foundation of a damped haptic actuator. Park728, which was cited but not substantively examined during prosecution, was used to supply the frequency range limitation. Park728 taught a linear vibrator for haptics preferably operating within an 80-180 Hz band, which falls within the claimed 40-200 Hz range.
  • Motivation to Combine: The motivation was identical to Ground 2: a POSITA building the base actuator would look to references like Park728 to identify a suitable operating frequency range for mobile device haptics. Park728 expressly suggested its 80-180 Hz band for such applications.
  • Expectation of Success: Success was expected due to the high degree of similarity between the systems. Modifying the resonant frequency of the base combination to operate within the range taught by Park728 would be a matter of routine tuning (adjusting mass and spring strength, as taught by Park728) and would predictably result in the ferrofluid damping reducing the Q-factor within that operational range.

4. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial would be improper.
• Fintiv Factors: Petitioner contended that the factors from Apple Inc. v. Fintiv, Inc. weighed in favor of institution. It argued the parallel district court litigation was in its earliest stages with no trial date set, minimal investment by the parties, and no overlap in arguments, as Petitioner stipulated not to pursue the same grounds in district court if the IPR was instituted.
• §325(d) Factors: Petitioner asserted that denial under 35 U.S.C. §325(d) was unwarranted because the prior art combinations presented were not the same or substantially the same as what the examiner previously considered. Specifically, Miyazaki, Park494, Bang, and Kajiwara were never cited or considered during prosecution. While Park728 was cited on the face of the ’117 patent, it was never substantively discussed or applied by the examiner.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 16-17 of the ’117 patent as unpatentable.