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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`TACTION TECHNOLOGY, INC.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`
`Case No.: 21-CV-812 TWR (JLB)
`
`ORDER (1) GRANTING
`DEFENDANT’S AMENDED
`MOTION FOR SUMMARY
`JUDGMENT OF NON-
`INFRINGEMENT, (2) VACATING
`REMAINING PRETRIAL AND
`TRIAL DATES AND DEADLINES,
`AND (3) DENYING AS MOOT
`REMAINING MOTIONS PENDING
`BEFORE THE UNDERSIGNED
`
`(ECF Nos. 281, 299, 350, 357, 365, 367,
`369, 371)
`
`Presently before the Court is the Amended Motion for Summary Judgment (“Mot.,”
`ECF Nos. 299 (public), ECF No. 313 (sealed)) filed by Defendant Apple Inc. (“Apple”),
`as well as the Response in Opposition (“Opp’n,” ECF Nos. 323 (public), ECF No. 333
`(sealed)) filed by Plaintiff Taction Technology, Inc. (“Taction”) and Apple’s Reply in
`Support of (“Reply,” ECF Nos. 330 (public), ECF No. 334 (sealed)) the Motion. The Court
`issued a Tentative Revised Claim Construction Order (“the Tentative Order,” ECF No.
`338) on July 11, 2023, following which Taction requested that the Court continue the
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`hearing scheduled for July 13, 2023, and permit it the opportunity to respond. (See ECF
`No. 340.) The Court granted Taction’s request, (see ECF No. 342), and the Parties filed
`Supplemental Briefs (“Def.’s Supp. Br.,” ECF No. 353; “Pl.’s Supp Br.,” ECF Nos. 356
`(public), ECF No. 363 (sealed)). The Court heard oral argument on July 27, 2023. (See
`ECF No. 360; see also ECF No. 373 (“Hearing Tr.”).) For the reasons discussed below,
`the Court GRANTS Apple’s Motion and, accordingly, VACATES the remaining Pretrial
`and Trial Dates and Deadlines (ECF No. 281) and DENIES AS MOOT the Parties’
`remaining motions pending before the undersigned.1
`BACKGROUND
`
`The Asserted Patents
`I.
`Taction is the owner and assignee of U.S. Patent No. 10,659,885 (“the ’885 Patent”)
`
`and U.S. Patent No. 10,820,117 (“the ’117 Patent”) (collectively, “the asserted patents”).
`(See ECF No. 1 (“Compl.”) ¶¶ 68, 72); see also U.S. Patent No. 10,659,885, at [73] (issued
`May 19, 2020); U.S. Patent No. 10,820,117, at [73] (issued Oct. 27, 2020). The ’885 Patent
`is entitled “Systems and Methods for Generating Damped Electromagnetically Actuated
`Planar Motion for Audio-Frequency Vibrations” and was issued on May 19, 2020. ’885
`Patent at [45], [54]. The ’117 Patent is entitled the same and was issued on October 27,
`2020. ’117 Patent at [45], [54]. The ’885 Patent and the ’117 Patent share a common
`specification, and both patents claim priority to Provisional Application No. 62/054,712
`filed on September 24, 2014. ’885 Patent at [60]; ’117 Patent at [60].
`/ / /
`
`
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`1
`Specifically, the Parties’ remaining motions pending before the undersigned are Apple’s
`Unopposed Motion to File Under Seal Portions of Apple’s Memorandum of Contentions of Fact and Law
`(ECF No. 350), Taction’s Unopposed Motion to File Portions of Its Memorandum of Law and Fact and
`Exhibit List Under Seal (ECF No. 357), Apple’s Objections to Magistrate Judge’s Order Granting Non-
`Parties’ Motion to Quash (ECF No. 344) Pursuant to Fed. R. Civ. P. 72(a) (ECF No. 367) and attendant
`Motion to Seal (ECF No. 365), and Apple’s Objections to Magistrate Judge’s Order Granting in Part and
`Denying in Part Apple’s Motion to Compel (ECF No. 348) Pursuant to Fed. R. Civ. P. 72(a) (ECF No.
`371) and attendant Motion to Seal (ECF No. 369). To the clear, this Order does not dispose of any motions
`pending before the Honorable Jill L. Burkhardt.
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`The invention described in the ’885 Patent and the ’117 Patent “relates to tactile
`
`transducers that produce bass frequency vibrations for perception by touch.” ’885 Patent
`col. 1 ll. 20–21.2 The specification of the asserted patents explains:
`Below about 200 Hz, the lower the frequency of sound, the more it is
`perceived not only by vibration of the ear drum but also by touch receptors in
`the skin. This sensation is familiar to anyone who has “felt the beat” of strong
`dance music in the chest, or through the seat of a chair, or has simply rested a
`hand on a piano. The natural stimulus is both auditory and tactile, and a true
`reproduction of it is possible only when mechanical vibration of the skin
`accompanies the acoustic waves transmitted through the air to the ear drum.
`Id. at col. 1 ll. 25–33. The specification then details the problems with the prior art audio-
`frequency tactile transducers, which include “axial shakers,” “un-damped eccentric
`rotating motors (‘ERMs’),” and “un-damped linear resonant actuators (‘LRAs’).” See id.
`at col. 1 l. 34–col. 2 l. 46. With respect to “axial shakers,” the specification explains a
`“drawback” of using axial shakers “is the production of unwanted acoustic noise.” Id. at
`col. 1 ll. 43-56. The specification further explains that this problem “is typically made
`worse by a lack of mechanical damping.” Id. at col. 2 ll. 1–2.
`With respect to ERMs and LRAs, the specification explains that they are also
`“problematic.” Id. at col. 2 ll. 11–13. Specifically, undamped “ERMs are incompatible
`with high-fidelity audio,” id. at col. 2 ll. 14–16, and the “main drawback of LRAs is the
`dependence on ‘resonance.’” Id. at col. 2 ll. 25–26. LRAs are designed for tactile alerts,
`not fidelity, and they can have a “high Q-factor” that renders those devices “useless for
`high fidelity reproduction of low frequency tactile effects” in the relevant range. See id. at
`col. 2 ll. 25–34; see also id. at col. 2 ll. 63–67 (describing a “lack of critically damping”
`and “a claimed Q-factor of 1.5 to 3” as a “drawback”). In light of these problems with the
`prior art, the specification asserts: “there exists a need for novel audio-frequency tactile
`transducers and devices.” Id. at col. 3 ll. 46–47.
`
`
`
`2
`Because the ’885 Patent and the ’117 Patent share a common specification, the Court will cite to
`only the ’885 Patent’s specification for ease of reference.
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`The asserted patents aim to overcome the problems of the prior art by disclosing “a
`thin, flat vibration module with a movable member that is electromagnetically actuated to
`produce motion in-plane.” See id. at col. 3 ll. 51–53; see also id. at col. 2 ll. 47–49. “[T]he
`module may consist of a mass and thin magnets, polarized through their thickness, where
`the mass and magnets are movably suspended inside a housing.” Id. at col. 3 ll. 63–66.
`Further, the suspension may include flexures or a ferrofluid layer. Id. at col. 3 ll. 66–67.
`In addition, “the vibration of the moving portion may be damped” using a suitable
`approach, such as the layer of ferrofluid. Id. at col. 4 ll. 6–8. The specification states:
`“Motion of the movable member can be damped so that the steady-state sinusoidal voltages
`applied to the module at different frequencies produce an acceleration response of the
`movable member that is substantially uniform over the range of 40–200 Hz.” Id. at col. 3
`ll. 53–58; see also id. at [57] (“Motion of the movable member can be damped so that the
`steady-state sinusoidal voltages applied to the module at different frequencies produce an
`acceleration response of the movable member that is substantially uniform over the range
`of 40–200 Hz.”).
`
`Independent claim 1 of the ’885 Patent recites:
`1.
`An apparatus for imparting motion to the skin of a user, the apparatus
`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
`
`/ / /
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`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.
`
`’885 Patent col. 14 ll. 48–65.
`
`Independent claim 1 of the ’117 Patent recites:
`1. 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 with respect to the housing and the plurality of conductive
`coils;
`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 in response to signals applied to the plurality of
`conductive coils;
`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.
`’117 Patent col. 14 l. 47–col. 15 l. 5.
`/ / /
`/ / /
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`Procedural History
`II.
`On April 26, 2021, Taction filed its operative Complaint against Apple, alleging
`
`infringement of the asserted patents. (See generally Compl.) Specifically, Taction alleges
`that Apple has directly infringed and induced or contributed to the infringement of the
`asserted patents by making, using, selling, and offering for sale Apple products, including
`the iPhone and Apple Watch, that implement haptics technology, (see id. ¶¶ 77, 80), which
`refers to the science of enabling interaction with technology through the sense of touch,
`such as, for example, through the use of vibrations. (See ECF No. 73 at 1.) Apple answered
`the complaint and filed counterclaims against Taction on July 8, 2021. (See generally ECF
`No. 17.)
`On August 10, 2021, the Honorable Jill L. Burkhardt issued a Scheduling Order.
`(See ECF No. 34.) On October 21, 2022, after this action was transferred to the
`undersigned, (see ECF No. 48), Apple filed before the Patent Trial and Appeal Board
`(“PTAB”) four petitions for inter partes review (“IPR”), challenging the validity of all the
`asserted claims of the asserted patents. (See ECF No. 53-1 (“Kete Decl.”) Exs. 1–4.) On
`January 26, 2022, the Court stayed the action, including further claim construction briefing,
`pending the PTAB’s decision on whether to institute the IPRs. (See ECF No. 76 at 6.) The
`PTAB issued decisions denying institution of IPR for all four IPR proceedings related to
`the asserted patents on April 18, 2022. (See generally ECF No. 97.)
`On June 2, 2022, the Court lifted the stay and reset the Claim Construction and
`Tutorial Hearing for August 18, 2022, (see generally ECF No. 98), which the Court
`subsequently continued to September 15, 2022. (See ECF No. 119.) After issuing a
`tentative ruling, (see ECF No. 122), the Court held the Markman hearing on September 15,
`2022. (See ECF No. 126.) The Court’s Claim Construction Order followed on
`September 28, 2022. (See generally ECF No. 141.)
`Fact discovery closed on February 10, 2023, (see ECF No. 174 at 1), and expert
`discovery closed on April 21, 2023. (See ECF No. 174 at 2.) The Court set a trial date of
`October 16, 2023, along with attendant pretrial deadlines. (See generally ECF No. 281.)
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`By the present Motion, Apple moves for summary judgment of non-infringement and no
`pre-suit damages. (Mot. at 1, 45.)
`LEGAL STANDARDS
`Summary judgment is appropriate under Federal Rule of Civil Procedure 56 if the
`moving party demonstrates “that there is no genuine dispute as to any material fact and the
`movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); Celotex Corp. v.
`Catrett, 477 U.S. 317, 322 (1986). Material facts are facts that, under the governing
`substantive law, may affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477
`U.S. 242, 248 (1986). A dispute as to a material fact is genuine if there is sufficient
`evidence for a reasonable jury to return a verdict for the non-moving party. Id. “Disputes
`over irrelevant or unnecessary facts will not preclude a grant of summary judgment.” T.W.
`Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).
`A party seeking summary judgment always bears the initial burden of demonstrating
`that there is no genuine dispute as to any material fact. Celotex, 477 U.S. at 323. A moving
`party without the ultimate burden of proof at trial can satisfy its burden in two ways: (1) by
`presenting “evidence negating an essential element of the nonmoving party’s claim or
`defense;” or (2) by demonstrating “that the nonmoving party does not have enough
`evidence of an essential element to carry its ultimate burden of persuasion at trial.” Nissan
`Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000). Once the
`moving party establishes the absence of a genuine dispute as to any material fact, the
`burden shifts to the nonmoving party to “set forth, by affidavit or as otherwise provided in
`Rule 56, ‘specific facts showing that there is a genuine issue for trial.’” T.W. Elec. Serv.,
`809 F.2d at 630 (quoting former Fed. R. Civ. P. 56(e)); accord Horphag Research Ltd. v.
`Garcia, 475 F.3d 1029, 1035 (9th Cir. 2007). To carry this burden, the non-moving party
`“may not rest upon mere allegation or denials of his pleadings.” Anderson, 477 U.S. at
`256; see also Behrens v. Pelletier, 516 U.S. 299, 309 (1996). Rather, the nonmoving party
`“must present affirmative evidence . . . from which a jury might return a verdict in his
`favor.” Anderson, 477 U.S. at 256.
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`When ruling on a motion for summary judgment, the court must view the facts and
`draw all reasonable inferences in the light most favorable to the non-moving party. Scott
`v. Harris, 550 U.S. 372, 378 (2007). The court should not weigh the evidence or make
`credibility determinations. See Anderson, 477 U.S. at 255. “The evidence of the non-
`movant is to be believed.” Id. Further, the court may consider other materials in the record
`not cited to by the parties, but it is not required to do so. See Fed. R. Civ. P. 56(c)(3); see
`also Simmons v. Navajo Cnty., 609 F.3d 1011, 1017 (9th Cir. 2010) (“[A] district court has
`no independent duty ‘to scour the record in search of a genuine issue of triable fact.’”).
`ANALYSIS
`Apple moves for summary judgment of non-infringement of the asserted patents. A
`patent infringement analysis proceeds in two steps. Niazi Licensing Corp. v. St. Jude Med.
`S.C., Inc., 30 F.4th 1339, 1350 (Fed. Cir. 2022); JVW Enters., Inc. v. Interact Accessories,
`Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005). In the first step, the court construes the asserted
`claims as a matter of law. See Niazi, 30 F.4th at 1351; JVW, 424 F.3d at 1329. In the
`second step, the factfinder compares the properly construed claims to the accused device.
`See id.
`Here, each of the asserted claims in this action from the ’885 Patent and the ’117
`Patent includes one of the four following claim limitations:
`1.
`“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,” ’885 Patent col. 14 ll. 62–65, col. 16 ll. 13–16;
`2.
`“wherein the ferrofluid reduces the Q-Factor of the response of the apparatus
`over at least a portion of the frequency range of 40–200 Hz in response to signals applied
`to the coil,” id. at col. 16 ll. 39–42;
`3.
`“wherein the viscous ferrofluid reduces at least a resonance within a frequency
`range of 40–200 Hz in response to signals applied to the plurality of conductive coils,”
`’117 Patent col. 14 ll. 63–65, col. 15 ll. 48–50; or
`/ / /
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`“wherein the ferrofluid damps at least a resonance in response to signals
`4.
`applied to the conductive coil.” Id. at col. 16 ll. 55–56.
`In the Claim Construction Order, the Court gave each of the four claim terms
`“wherein the ferrofluid reduces at least a mechanical resonance within the frequency range
`of 40–200 Hz,” “wherein the ferrofluid reduces the Q-Factor of the response of the
`apparatus over at least a portion of the frequency range of 40–200 Hz,” “wherein the
`viscous ferrofluid reduces at least a resonance within a frequency range of 40–200 Hz,”
`and “wherein the ferrofluid damps at least a resonance” their plain and ordinary meaning.
`(ECF No. 141 at 16–17, 22.) The Court also held that these claim constructions were
`entered with the acknowledgement of the following disclaimer of claim scope: “that the
`claimed invention is directed to ‘transducers with highly damped output.” (Id. at 17.)
`As for the second step of the infringement analysis, “[t]he patentee bears the burden
`of proving infringement by a preponderance of the evidence.” Creative Compounds, LLC
`v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir. 2011); see Medtronic, Inc. v. Mirowski
`Fam. Ventures, LLC, 571 U.S. 191, 193 (2014) (“A patentee ordinarily bears the burden of
`proving infringement.”). “To prove infringement, the plaintiff bears the burden of proof
`to show the presence of every element or its equivalent in the accused device.” Uniloc
`USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011); accord Star Sci., Inc.
`v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1378 (Fed. Cir. 2011).
`“‘Infringement is a question of fact.’” GlaxoSmithKline LLC v. Teva Pharms. USA,
`Inc., 7 F.4th 1320, 1327 (Fed. Cir. 2021) (quoting Lucent Techs., Inc. v. Gateway, Inc., 580
`F.3d 1301, 1309 (Fed. Cir. 2009)). “Summary judgment of noninfringement is proper
`when no reasonable jury could find that every limitation recited in a properly construed
`claim is found in the accused device either literally or under the doctrine of equivalents.”
`Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed. Cir.
`2015); see EMD Millipore Corp. v. AllPure Techs., Inc., 768 F.3d 1196, 1201 (Fed. Cir.
`2014).
`/ / /
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`Apple contends that it is entitled to summary judgment of non-infringement because
`the accused products do not include a “transducer with highly damped output” as required
`by the Court’s Claim Construction Order. (Mot. at 6–31.) Apple’s argument in this respect
`is two-fold. First, Apple contends that the opinions of Taction’s technical expert,
`Dr. Oliver, regarding the “highly damped output” limitations must be stricken for
`containing new infringement theories in violation of this District’s Patent Local Rules,
`without which Taction has not viable claim of infringement. (See id. at 6–13.) Second,
`Apple argues that it is entitled to summary judgment of non-infringement because the
`accused products do not include a “transducer with highly damped output” as required by
`the Court’s Claim Construction Order. (See id. at 13–31.)
`I.
`Apple’s Request to Strike Dr. Oliver’s Infringement Theories
`As an initial matter, Apple moves to strike portions of Taction’s technical expert
`Dr. Oliver’s expert report on infringement on the grounds that those portions improperly
`contain a new infringement theory for the “highly damped output” limitation in violation
`of the Court’s Patent Local Rules. (Mot. at 6–10.) In response, Taction argues that it
`properly disclosed its infringement theories in its final infringement contentions under
`Patent Local Rule 3.1(c) and that, in his expert report, Dr. Oliver simply applies and
`explains those properly disclosed infringement theories. (Opp’n at 3–9.)
`As the Court previously explained to the Parties, (see ECF No. 265 at 6, 17), “[t]he
`Court’s Patent Local Rules are designed to require parties to crystallize their theories of
`the case early in the litigation and to adhere to those theories once they have been
`disclosed.” CliniComp Int’l, Inc. v. Cerner Corp., No. 17CV02479GPCDEB, 2022 WL
`16985003, at *12 (S.D. Cal. Nov. 15, 2022) (quoting Wi-LAN Inc. v. LG Elecs., Inc., No.
`18-CV-01577-H-BGS, 2019 WL 5790999, at *2 (S.D. Cal. Sept. 18, 2019)); see also O2
`Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006);
`AntiCancer, Inc. v. Pfizer, Inc., 769 F.3d 1323, 1331 (Fed. Cir. 2014). “‘The Local Rules
`are also designed to provide structure to discovery and to enable the parties to move
`efficiently toward claim construction and the eventual resolution of their dispute.’” Bell
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`Semiconductor, LLC v. NXP USA, Inc., No. 22-CV-00594-H-KSC, 2023 WL 2342037, at
`*2 (S.D. Cal. Feb. 27, 2023) (quoting Pelican Int’l, Inc. v. Hobie Cat Co., No.
`320CV02390RSHMSB, 2023 WL 2127995, at *2 (S.D. Cal. Feb. 10, 2023)).
`
`The Patent Local Rules accomplish this “by requiring both the plaintiff and
`the defendant in patent cases to provide early notice of their infringement and
`invalidity contentions, and to proceed with diligence in amending those
`contentions when new information comes to light in the course of discovery.
`The rules thus seek to balance the right to develop new information in
`discovery with the need for certainty as to the legal theories.”
`
`Pelican, 2023 WL 2127995, at *2 (quoting O2 Micro, 467 F.3d at 1365–66).
`Under Patent Local Rule 3.1, a party claiming patent infringement must serve on all
`parties a “Disclosure of Asserted Claims and Infringement Contentions,” and those
`contentions must disclose specific information regarding the party’s theories of
`infringement in the case. Bell Semiconductor, 2023 WL 2342037, at *2; Pelican, 2023
`WL 2127995, at *3; see S.D. Cal. Patent L.R. 3.1. Patent Local Rule 3.1(c) requires “[a]
`chart identifying specifically where each element of each asserted claim is found within
`each Accused Instrumentality,” Patent L.R. 3.1(c), as well as “sufficient specificity to
`provide notice to the defendant why the plaintiff believes it has a reasonable chance of
`proving infringements.” Zest IP Holdings, LLC v. Implant Direct Mfg, LLC, No. 10-CV-
`0541-GPC-WVG, 2013 WL 1626111, at *5 (S.D. Cal. Apr. 15, 2013); see Multimedia Pat.
`Tr. v. Apple Inc., No. 10-CV-2618-H (KSC), 2012 WL 12868249, at *4 (S.D. Cal. Oct. 19,
`2012) (“[A] plaintiff claiming patent infringement must identify its particular theories of
`infringement with sufficient specificity[.]”); Ameranth, Inc. v. Papa John’s USA, Inc., 946
`F. Supp. 2d 1049, 1057 (S.D. Cal. 2013) (“[Patentees] are obligated to state with specificity
`the theories upon which they plan to rely, and to do so early in the litigation.”). Therefore,
`to comply with Patent Local Rule 3.1(c), a patentee “must identify with specificity where
`in the accused system the alleged infringement occurs and how the claim elements are
`met.” Ameranth, Inc. v. Pizza Hut, Inc., No. 12CV1627 JLS NLS, 2013 WL 3894880, at
`*9 (S.D. Cal. July 26, 2013) (“[The patentee] must ‘articulate the precise way in which it
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`believes the products to be infringing.’”); see also Scripps Rsch. Inst. v. Illumina, Inc., No.
`16-CV-661 JLS (BGS), 2016 WL 6834024, at *6 (S.D. Cal. Nov. 21, 2016) (“As Plaintiff
`explains, its infringement contentions ‘will provide information concerning how each
`limitation of the asserted claims [is] met by the accused products.’”). Rule 3.1(c), however,
`does not require the patent holder to produce proof or direct evidence of infringement. See
`AntiCancer, 769 F.3d at 1338; see also Ameranth, 946 F. Supp. 2d at 1057 (noting that
`infringement contentions “need not be so detailed as to transform the [contentions] into a
`‘forum for litigation of the substantive issues’”).
`“In a lawsuit for patent infringement in the Southern District of California, a patentee
`is limited to the infringement theories and the accused products it sets forth in its
`infringement contentions.” Pelican, 2023 WL 2127995, at *3; accord Echologics, LLC v.
`Orbis Intelligent Sys., Inc., No. 21-CV-01147-H-AHG, 2023 WL 2756492, at *8 (S.D. Cal.
`Mar. 27, 2023); see also LookSmart Grp., Inc. v. Microsoft Corp., No. 17-CV-04709-JST,
`2019 WL 7753444, at *2 (N.D. Cal. Oct. 17, 2019) (“Once served, the infringement
`contentions constitute the universe of infringement theories.”). Any infringement theories
`not properly disclosed pursuant to the Court’s Patent Local Rules are barred from
`presentation at trial (whether through expert opinion testimony or otherwise). Echologics,
`2023 WL 2756492, at *8 (citing Pelican, 2023 WL 2127995, at *3); see, e.g., BookIT Oy
`v. Bank of Am. Corp., 817 F. App’x 990, 995 (Fed. Cir. 2020) (affirming district court’s
`striking of expert report that contained a theory of infringement that was “considerably
`different” from the infringement contentions); Phigenix, Inc. v. Genentech, Inc., 783 F.
`App’x 1014, 1018 (Fed. Cir. 2019) (same).
`“‘A district court has wide discretion in enforcing the Patent Local Rules.’” Bell
`Semiconductor, 2023 WL 2342037, at *3 (quoting Pelican, 2023 WL 2127995, at *4); see
`Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 (Fed. Cir. 2016)
`(reviewing “a district court’s application of its local rules for abuse of discretion”). The
`Federal Circuit will “affirm decisions in which [a] district court enforced its own local
`rules, unless it is ‘clearly unreasonable, arbitrary, or fanciful; based on erroneous
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`conclusions of law; clearly erroneous; or unsupported by any evidence.’” Howmedica
`Osteonics, 822 F.3d at 1324; see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314, 1321 (Fed. Cir. 2016) (“‘[T]his court defers to the district court when
`interpreting and enforcing local rules so as not to frustrate local attempts to manage patent
`cases according to prescribed guidelines.’”).
`On October 31, 2022, Taction served Apple with its final infringement contentions
`in the action, “Taction’s Post-Claim Construction Amended Infringement Contentions.”
`(ECF No. 313-4, Ex. 7.) In those October 31, 2022 infringement contentions, Taction
`provided the following infringement analysis regarding the “highly damped output”
`limitation:
`
`To the extent that the Court’s statement concerning “transducers with highly
`damped output” is ultimately imposed as a requirement of any asserted claim,
`Taction contends that the Taptic Engines in the accused products are
`“transducers with highly damped output.” Apple itself, for example, has
`stated that “[t]he frequency response of the module is controlled, including
`the frequency response at the resonant frequency, through the use of a closed
`loop software controller . . . .” Apple’s First Supplemental Response to
`Taction’s Interrogatory No. 9 at 20. So, too, the frequency response graphs
`included in Taction’s infringement claim charts, show that the Taptic Engines
`are transducers that have a “highly damped output.” Taction anticipates that
`fact and expert discovery will provide additional corroborating information.
`Additionally, Taction contends that, to the extent that the Court’s statement
`concerning “transducers with highly damped output” is ultimately determined
`to be a requirement of any asserted claims, that the requirement for a “highly
`damped output” may be satisfied by any mechanism.
`
`(Id. at p. 344.) This is the entirety of the analysis regarding the “highly damped output”
`limitation in Taction’s final infringement contentions.
`In the referenced frequency response graphs included in Taction’s infringement
`claim charts, Taction asserted: “In the Taptic Engine in [the accused products], the
`ferrofluid reduces at least a mechanical resonance within the frequency range of 40–200
`Hz in response to electrical signals applies to the plurality of conductive coils.” (See, e.g.,
`ECF No. 313-5, Ex. 8 at p. 370.) As support for this assertion, Taction included several
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`frequency response graphs in its claim charts. An example frequency response graph is set
`forth below:
`
`
`
`(Id. at p. 371; see also id. at pp. 370–74.) In the above graph, Taction compares the
`frequency response of an assembled unit with the response of a unit with the “covers, coils,
`and ferrofluid removed.”3 (See id. at p. 370.)
`On April 3, 2023, Taction served Apple with the Corrected Infringement Expert
`Report of its technical expert, Dr. Oliver. (ECF No. 313-2 Ex. 2 (“Oliver Expert Report”).)
`In the report, Dr. Oliver opines that “the Taptic Engines in the Accused Products are
`‘transducers with highly damped output’” as required by the Court’s Claim Construction
`Order. (Id. ¶¶ 603, 619.) As support for this opinion, Dr. Oliver explains:
`
`
`
`3
`Taction asserts that these frequency charts “demonstrate the effect of ferrofluid in mechanically
`damping the output of the accused Apple Tactic Engines.” (Opp’n at 7 n.4.)
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`It is . . . my opinion that the phrase ‘highly damped output’ would have been
`understood by a person of ordinary skill in the art at the time of the invention,
`particularly in view of the relevant intrinsic evidence, as an output that is
`generally uniform or flat ov