Case 3:21-cv-00812-TWR-JLB Document 72 Filed 01/21/22 PageID.1146 Page 1 of 30
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`
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`Christopher S. Marchese (SBN 170239)
`marchese@fr.com
`Seth M. Sproul (SBN 217711)
`sproul@fr.com
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Tel: (858) 678-5070
`Fax: (858) 678-5099
`
`Joy B. Kete (pro hac vice)
`kete@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park
`Boston, MA 02210
`Tel: 617-542-5070 / Fax: 617-542-8906
`
`Attorneys for Defendant Apple Inc.
`
`Additional Counsel Listed on Signature
`Page
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
`TACTION TECHNOLOGY, INC.,
` Plaintiff,
`
`v.
`
`
`APPLE INC.
`
`
`
`
`
` Defendant.
`
`Case No. 3:21-cv-00812-TWR-JLB
`
`DEFENDANT APPLE INC.’S
`OPENING CLAIM CONSTRUCTION
`BRIEF
`
`District Judge: Hon. Todd W. Robinson
`Magistrate Judge: Jill L. Burkhardt
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`
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`Case No. 3:21-cv-00812-TWR-JLB
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`TABLE OF CONTENTS
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`PAGE
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`I.
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`BACKGROUND ............................................................................................... 1
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`A.
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`B.
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`Linear Actuators ...................................................................................... 1
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`Patents-in-Suit ......................................................................................... 3
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`II.
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`LAW OF CLAIM CONSTRUCTION .............................................................. 5
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`III. CLAIM TERM ANALYSIS ............................................................................. 7
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Term 1: “wherein the ferrofluid reduces at least a mechanical
`resonance within the frequency range of 40-200 Hz” and
`variants (’885 Patent Claims 1, 17; ’117 Patent Claims 1, 9, 16) ........... 7
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`Term 2: “wherein the ferrofluid reduces [a/the] Q-Factor
`of [a/the] response of the apparatus over at least a portion
`of [a/the] frequency range of 40-200 Hz” (’885 Patent, Claim 20;
`’117 Patent, Claim 17) .......................................................................... 13
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`1.
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`2.
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`Term 2 is indefinite ..................................................................... 13
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`If the Court finds Term 2 not indefinite, Term 2 should be
`construed consistent with Term 1 ............................................... 15
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`Term 3: “magnet” (’885 patent, Claims 1, 14, 17, 20; ’117 patent,
`Claims 1, 7, 9, 16) ................................................................................. 15
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`Term 4: “wherein each of said flexures is thinner along a motion
`axis of the moving portion than it is in directions orthogonal
`to the motion axis of the moving portion” (’885 patent, Claim 10) ..... 17
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`Term 5: “generally cuboid” (’885 patent, Claim 2; ’117 patent,
`Claims 1, 9) ........................................................................................... 21
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`Term 6: “wherein each of said plurality of flexures is relatively
`stiff in resistance to motion transverse to a plane of the moving
`portion, but relatively less resistant to linear motion in the
`plane of the moving portion” (’117 patent, Claim 9) ............................ 24
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`IV. CONCLUSION ............................................................................................... 25
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`
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`i
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Avenue Innovations, Inc. v. E. Mishan & Sons Inc.,
`310 F.Supp.3d 457 (S.D.N.Y. 2018) .................................................................... 14
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017) .............................................................................. 5
`
`Berkheimer v. HP,
`881 F.3d 1360 (Fed. Cir. 2018) ...................................................................... 21, 24
`
`Curtiss-Wright Flow Control Corp. v. Velan, Inc.,
`438 F.3d 1374 (Fed. Cir. 2006) ............................................................................ 15
`
`Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed. Cir. 2005) .............................................................................. 6
`
`Dow Chem. Co. v. Nova Chem. Corp. (Canada),
`803 F.3d 620 (Fed. Cir. 2015) ........................................................................ 17, 18
`
`Eon Corp. v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 640 (2017) .................... 8
`
`Horizon Pharma, Inc. v. Dr. Reddy’s Lab’ys Inc.,
`839 F. App’x 500 (Fed. Cir. 2021) ....................................................................... 14
`
`Hormone Research Found. v. Genentech, Inc.,
`904 F.2d 1558 (Fed. Cir. 1990) ...................................................................... 15, 16
`
`Intell. Ventures I LLC v. AT&T Mobility LLC,
`No. CV 13-1668-LPS, 2016 WL 4363485 (D. Del. Aug. 12, 2016),
`aff’d in part, vacated in part, remanded sub nom. Intell. Ventures I
`LLC v. T-Mobile USA, Inc., 902 F.3d 1372 (Fed. Cir. 2018) ............................... 14
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014) .............................................................................. 6
`
`Kraft Foods, Inc. v. Int’l Trading Co.,
`203 F.3d 1362 (Fed. Cir. 2000) ............................................................................ 12
`
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004) ............................................................................ 10
`ii
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`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .......................................................................................... 7, 17
`
`Ex parte Oetiker,
`23 U.S.P.Q.2d 1641 (B.P.A.I. 1992) .................................................................... 24
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................ 5, 6, 8, 11
`
`Poly-America, L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016) .............................................................. 8, 9, 10, 12
`
`Rovi Guides v. Comcast,
`No. 16-CV9278, 2017 WL 3447989 (S.D.N.Y. Aug. 10, 2017) .................... 21, 24
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`Southwall Techs., Inc. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995) .............................................................................. 10
`
`Storm Prod., Inc. v. Ebonite Int’l, Inc.,
`638 F. Supp. 2d 1307 (D. Utah 2009) .................................................................. 24
`
`Target Corp. v. Proxicom Wireless, LLC,
`IPR2020-00904 (P.T.A.B. Nov. 10, 2020) ........................................................... 14
`
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015) ................................................................ 10, 17, 18
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ...................................................................... 14, 15
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ................................................................................ 6
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`Statutes
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`35 U.S.C. § 112(b) ....................................................................................................... 6
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`35 U.S.C. § 311(b) ..................................................................................................... 14
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`iii
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`Apple and Taction have proposed competing constructions for several claim
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`terms. Apple’s constructions for the disputed claims properly adhere to the legal
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`principles of claim construction and should be adopted.
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`Taction alleges that several versions of Apple’s iPhones and Watches with
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`Apple’s proprietary “Taptic Engine” infringe U.S. Pat. No. 10,659,885 (“the ’885
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`patent) and U.S. Pat. No. 10,820117 (“the ’117 patent). The Taptic Engine provides
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`precise vibrations, or “haptic” feedback, matched to user actions that provide a
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`physical component to the graphical user interface of iPhones and Watches. For
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`example, when an iPhone vibrates to indicate an incoming call, this is the Taptic
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`Engine at work. Apple had been developing Taptic Engines before Taction filed its
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`patents, and did so entirely independent of Taction.
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`In contrast, Taction’s patents arise from its work in audio headphones. The
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`named inventor, Silmon James Biggs, sought to provide physical vibration in
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`headphones like the experience of physical shaking from deep bass at a live concert
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`or club. Taction developed headphones that it advertised as providing “deep bass.”
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`Ex. C. Taction’s headset failed commercially. The headphone context from which
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`Taction’s patents grew directly informs the scope and meaning of the claims, as
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`Taction’s patents consistently and repeatedly describe the invention and its effect in
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`terms of its impact on audio quality and disclaim mechanisms like the Taptic Engine.
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`Under well-established principles of claim construction, Taction cannot capture what
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`it disclaimed in its patents.
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`Apple’s proposed constructions adhere to the true scope of Taction’s purported
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`inventions and should be adopted. The remaining limitations addressed by Apple are
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`indefinite.
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`I.
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`BACKGROUND
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`A. Linear Actuators
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`A linear actuator is like a motor that uses electrical signals to create
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`electromagnetic forces to drive a moving mass back and forth along a line. Driving
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`the mass with an electrical signal applied to coils causes acceleration of the linear
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`actuator and thereby the vibration force. One common use of linear actuators is the
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`provision of haptics in mobile phones to produce vibration effects.
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`A typical linear actuator includes a housing, a coil that forms an electric field,
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`and a vibration element that includes magnets and a moving mass. See Declaration of
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`Professor Vincent Hayward (Ex. A) at ¶¶27-36. The vibration element may be
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`suspended by springs or flexures that enable vibration and guide that movement in a
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`linear manner. Id., ¶29. In operation, an alternating electrical current is applied to the
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`coil(s), which causes the mass to oscillate back and forth. Id.
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`Linear actuators have a resonant frequency, which is the natural frequency at
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`which the object tends to vibrate or oscillate at a higher amplitude. See id. at ¶¶38-39.
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`Graphs or curves referred to as frequency response curves show the amplitude of the
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`movement of the mass as a function of the frequency of the system. Id. An example
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`of a frequency response curve is shown below:
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`As shown above, as the frequency changes, the movement of the mass (vibration
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`amplitude) changes. Id. The resonance is shown as a peak, where the amplitude of the
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`movement of the mass is much higher at a particular frequency than at other
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`frequencies. Id.
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`Linear actuators may also include additional components. For example, they
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`have commonly included damping mechanisms such as ferrofluids. See id. at ¶¶48-
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`55. Ferrofluids are fluids with magnetic properties, typically through the addition of
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`small iron shavings. Id. And damping refers to the reduction of movement in
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`mechanical systems. See id. at ¶¶41-42. Shock absorbers in cars are an example of
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`damping mechanisms. In linear actuators, damping can increase the responsiveness
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`by allowing the vibrations to come to a stop more quickly. Id. Another characteristic
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`related to resonance (and therefore damping) is the quality factor (or Q-factor). Id. at
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`¶¶43-47. The Q-factor refers to a dimensionless quantity that describes how damped
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`a mechanical oscillator or resonator is relative to its mass. Id., at ¶43. In a resonator
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`with a high Q-factor, the oscillations stop more slowly than a resonator with a low Q-
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`factor. Id., ¶¶44-45. This is shown below (id.):
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`B.
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`Patents-in-Suit1
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`The Taction patents are directed to audio headphones with tactile transducers
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`that produce bass frequency vibrations to provide the sensation of low audio
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`frequencies. They grew out of work by Taction to develop what it called its “Taction
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`1 The ’885 patent issued May 19, 2020, and the ’117 issued October 27, 2020. Each
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`patent claims priority to a provisional patent application filed on September 24, 2014.
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`Apple takes no position here whether the patents are entitled to rely on this date.
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`Transporter” technology, which was “designed to work with the main audio driver in
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`your headphones (kind of like the way a subwoofer works with satellite speakers in a
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`home theater setup) by vibrating your skin to produce deep bass.” Ex. B at 4. “It does
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`this by subtly moving the cushions of the headphones against your head. Id.
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`According to Taction’s website, this technology is “a patented transducer that goes
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`lower, gives flatter frequency response, and delivers faster, more honest, accurate bass
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`than you’ve ever experienced. Bass that takes you there.” Ex. C.
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`The Taction patents include a “Background of the Invention” section that
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`describes the field of invention as “relat[ing] to tactile transducers that produce bass
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`frequency vibrations for perception by touch.” ’885 patent at 1:20-21.2 The
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`Background then elaborates on this statement:
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`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.
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`Id. at 1:25-33. Despite the patents’ focus on audio, the asserted claims do not recite
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`speakers or headphones, and instead attempt to generalize the alleged invention from
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`that identified in the patents.
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`The “Background” section of the Taction patents also includes a detailed,
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`though incomplete, discussion of prior art haptics actuators, making certain
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`admissions concerning haptics technologies that predate the Taction patents and
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`distinguishing that prior art from the claimed invention. In this “Background” section,
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`the inventor explains what he believed his invention to be, and what it was not. Id. at
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`1:25-3:47. First, the patents distinguish prior art audio haptics actuators called “axial
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`2 All patent cites are to the ’885 patent, unless otherwise noted.
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`shakers,” an example of which is shown in Figure 1 of the Taction patents. Id. at 1:34-
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`42. The patents note that one drawback to axial shakers is the “production of unwanted
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`acoustic noise.” Id. at 1:43-2:10. Thus, the inventor made it clear that his invention
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`was not this type of haptic actuator. Second, the patents distinguish a second type of
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`actuator, an un-damped eccentric rotating motor or ERM, explaining that an ERM is
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`“incompatible with high-fidelity audio,” as its response time is too slow and its
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`“volume” and “pitch” cannot be varied. Id. at 2:11-24.
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`The Taction patents also describe a third type of actuator, an un-damped linear
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`resonant actuator, or LRA. Id. at 2:11-14. As previously explained, linear actuators
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`produce vibrations along a single axis. The Taction patents describe various examples
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`of prior art LRAs. One example includes “a relatively thin, flat arrangement of a coil
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`and two magnets that produces planar motion.” Id. at 3:1-3; see also 3:3-7, 3:17-18.
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`The patents once again distinguish LRAs from the purported invention, stating that
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`LRAs are dependent on “resonance” and that they “resonate at a single frequency and
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`produce perceptible vibration at only that frequency.” Id. at 2:25-29. Thus, they are
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`“designed for tactile alerts, not fidelity” and are “useless for high fidelity reproduction
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`of low frequency tactile effects in the 15-120 Hz range.” Id. at 2:32-34.
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`II. LAW OF CLAIM CONSTRUCTION
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`“The purpose of claim construction is to give claim terms the meaning
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`understood by a person of ordinary skill in the art at the time of invention.” Aylus
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`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017). “It is the bedrock
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`principle of patent law that the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005). “[T]he words of a claim are generally given their ordinary and
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`customary meaning,” which is “the meaning that a term would have to a person of
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`ordinary skill in the art in question at the time of the invention.” Id. at 1312-1313
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`(quotes omitted). However, the court must depart from the plain and ordinary meaning
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`when the patentee disavows the full scope of the claim term in the specification or
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`during prosecution. Id. at 1316. Thus, “the construction that stays true to the claim
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`language and most naturally aligns with the patent’s description of the invention will
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`be, in the end, the correct construction.” Id.
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`To construe claims, “the court looks to those sources available to the public
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`that show what a person of skill in the art would have understood disputed claim
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`language to mean. Those sources include the words of the claims themselves, the
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`remainder of the specification, the prosecution history, and extrinsic evidence
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`concerning relevant scientific principles, the meaning of technical terms and the state
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`of the art.” Id. at 1314 (quotes and citations omitted).
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` “[T]he specification is always highly relevant to the claim construction
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`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
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`disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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`1996). Like the specification, “[t]he prosecution history can often inform the meaning
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`of the claim language by demonstrating how the inventor understood the invention
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`and whether the inventor limited the invention in the course of prosecution, making
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`the claim scope narrower than it would otherwise be.” Id. Extrinsic evidence including
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`“expert and inventor testimony, dictionaries, and learned treatises” may also be
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`considered, but “is less significant than the intrinsic record in determining the legally
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`operative meaning of claim language.” Id. Extrinsic evidence may not be used to alter
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`the meaning of claim terms in a manner inconsistent with the intrinsic evidence.
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`Phillips, 415 F.3d at 1318-19.
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`“Indefiniteness is [also] a matter of claim construction ….” Datamize, LLC v.
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`Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005). To satisfy the
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`definiteness requirement, the claims of a patent must particularly point out and
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`distinctly claim the subject matter of the invention. 35 U.S.C. § 112(b); see also
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`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (the
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`“claims … must provide objective boundaries for those of skill in the art”). A “patent
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`is invalid for indefiniteness if its claim, read in light of the specification delineating
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`the patent, and the prosecution history, fail to inform, with reasonable certainty, those
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`skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
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`Instruments, Inc., 572 U.S. 898, 901 (2014).
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`III. CLAIM TERM ANALYSIS
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`A. Term 1: “wherein the ferrofluid reduces at least a mechanical
`resonance within the frequency range of 40-200 Hz” and variants
`(’885 Patent Claims 1, 17; ’117 Patent Claims 1, 9, 16)
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`Defendant Construction
`“wherein the ferrofluid produces a
`substantially uniform, non-peaked
`response over the frequency range of
`40-200 Hz”
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`Plaintiff Construction
`Plain and ordinary meaning
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`Each independent claim of the Taction patents includes some variation of the
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`disputed phrase,3 which is directed to using a ferrofluid to reduce a resonance of the
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`actuator within the claimed range of 40-200 Hz. This ferrofluid damping phrase
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`represents a key feature of the claim and is central to the patents’ teachings in the
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`specification. Because the Taction patents and relevant extrinsic evidence describe
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`the desirability of a uniform damping effect within the frequency range of 40-200 Hz
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`while clearly disclaiming actuators with “sharp peaks,” controlling claim construction
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`3 See ’885 patent at claims 1, 17 (“wherein the ferrofluid reduces at least a mechanical
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`resonance within the frequency range of 40-200 Hz”); ’117 patent at claims 1, 9
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`(“wherein the viscous ferrofluid reduces at least a resonance within a frequency range
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`of 40-200 Hz”), claim 16 (“wherein the ferrofluid damps at least a resonance”). Each
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`variation of the phrase should be construed consistently. As explained below in
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`Section III.B.2, claim 20 of the ’885 patent and claim 17 of the ’117 patent, which
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`recite “wherein the ferrofluid reduces [a/the] Q-Factor of [a/the] response of the
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`apparatus over at least a portion of [a/the] frequency range of 40-200 Hz,” should also
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`be construed consistently if they are not deemed to be indefinite.
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`Case 3:21-cv-00812-TWR-JLB Document 72 Filed 01/21/22 PageID.1157 Page 12 of 30
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`principles dictate that this phrase be construed to mean that the “ferrofluid produces
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`a substantially uniform, non-peaked response over the frequency range of 40-200 Hz.”
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`Apple’s proposal should be adopted because it captures this clear meaning as
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`set forth in the Taction patents, the prosecution history, and the extrinsic evidence.
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`Taction’s proposal, which urges “plain and ordinary meaning” and offers “no
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`construction,” should be rejected because it invites legal error by leaving the question
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`of claim scope unanswered. Eon Corp. v. Silver Spring Networks, Inc., 815 F.3d 1314,
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`1319 (Fed. Cir. 2016) (“By determining only that the terms should be given their plain
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`and ordinary meaning, the court left this question of claim scope unanswered, leaving
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`it for the jury to decide. This was legal error.”), cert. denied, 137 S. Ct. 640 (2017).
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`Claim 1 of the ’885 patent is representative of all asserted claims for purposes
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`of this disputed phrase. It describes a generic electromechanical actuator that includes
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`a movable mass with magnets, coils near the magnets through which an electric
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`current runs, and flexures that suspend and guide the movement of the recited mass.
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`Claim 1 recites ferrofluid as a damping element. ’885 at 14:59-61 (“wherein
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`movement of the moving portion is damped by a ferrofluid in physical contact with
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`at least the moving portion”). And claim 1 recites that the “the ferrofluid reduces at
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`least a mechanical resonance within the frequency range of 40-200 Hz in response to
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`electrical signals applied to the plurality of conductive coils.” Id. at 14:62-65.
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`The Federal Circuit’s en banc Phillips decision recognized that the scope of
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`patent claims can be limited based on the specification. “[T]he specification may
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`reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that
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`instance as well, the inventor has dictated the correct claim scope, and the inventor’s
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`intention, as expressed in the specification, is regarded as dispositive.” Phillips, 415
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`at 1316 (internal citations omitted). “While disavowal must be clear and unequivocal,
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`it need not be explicit.” Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136
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`(Fed. Cir. 2016).
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`8
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`Case No. 3:21-cv-00812-LL-JLB
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`“[A]n inventor may disavow claims lacking a particular feature when the
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`specification distinguishes or disparages prior art based on the absence of that
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`feature.” Poly-America, 839 F.3d at 1136. That is exactly what the specification of
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`the Taction patents does by stating that the peaked response of prior art LRAs is
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`“useless” for achieving high fidelity reproduction of low frequency tactile effects and
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`explaining that the substantially uniform, non-peaked response of the claimed
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`actuator within the frequency range of 40-200 Hz achieves that desired feature.
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`For example, the specification of the Taction patents describes providing haptic
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`vibrations for audio headphones. The patents, however, note that LRAs have inherent
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`drawbacks because of their “resonant” characteristic, that is, increased amplitude or
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`feedback at the resonant frequency.
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`The main drawback of LRAs is the dependence on the “resonance,”
`that the name suggests. The devices are designed for tactile alerts, not
`fidelity, and so they resonate at a single frequency and produce
`perceptible vibration at only that frequency. For example[,] a typical
`ERA [sic] might produce up to 1.5 g of acceleration at 175+10 Hz, but
`less than 0.05 g outside this 20 Hz range. Such a high Q-factor renders
`this sort of device useless for high fidelity reproduction of low
`frequency tactile effects in the 15-120 Hz range.
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`Id.at 2:25-36. As the Taction patents explain, LRAs “produce perceptible vibration at
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`only [their resonant] frequency.” Id. at 2:28-29. Thus, systems with resonant peaks
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`are “useless” for achieving the desired “high fidelity reproduction of low frequency
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`tactile effects.” Id. at 2:31-34; see also id. at 2:1-10 (confirming that a system with an
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`“uneven frequency response” is undesirable because it “degrad[es] audio fidelity”).
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`To remedy this, the Taction patents teach damping resonance using a ferrofluid
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`“to achieve the relatively uniform, non-peaked, response evident in FIG. 5G between
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`40 and 200 Hz”:
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`The viscosity and volume of the damping fluid (e.g. viscous ferrofluid
`410 of FIG. 4B) in vibration module 500 were adjusted to damp
`resonance that would be evident at 30-50 Hz, to achieve the relatively
`uniform, non-peaked, response evident in FIG. 5G between 40 and
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`Case No. 3:21-cv-00812-LL-JLB
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`Case 3:21-cv-00812-TWR-JLB Document 72 Filed 01/21/22 PageID.1159 Page 14 of 30
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`200 Hz in range 503. The absence of resonant peak in the response
`makes it possible to reproduce the tactile component of a musical
`experience with previously unattainable high fidelity.
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`Id. at 9:36-44; see also id. at Abstract (“Damped, planar, electromagnetically-actuated
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`vibration modules of the moving magnet type are presented in theory and reduced to
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`practice, and shown to provide a substantially uniform frequency response over the
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`range 40-200 Hz with a minimum of unwanted audio.”), 5:49-52 (“FIG. 5G shows
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`that the measured acceleration of the exemplary headphone of FIG. 5A at various
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`frequencies is approximately uniform over the range 40-200 Hz, in accordance with
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`various embodiments described herein.”).4 This is a clear and unequivocal disavowal
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`of any claim scope other than a substantially uniform, non-peaked response over the
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`range of 40-200 Hz. Poly-America, 839 F.3d at 1136.
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`Taction made this same disavowal in the prosecution history of a parent patent
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`application to the Taction patents.5 Again, Taction disclaimed systems with “peaked”
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`responses, clearly and unmistakably expressing its alleged invention as providing a
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`4 Emphasis added throughout unless otherwise noted.
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`5 Arguments made in related patents are binding on patents involving the same phrase.
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`“A statement made during prosecution of related patents may be properly considered
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`in construing a term common to those patents, regardless of whether the statement
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`pre- or post-dates the issuance of the particular patent at issue.” Teva Pharms. USA,
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`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342-43 (Fed. Cir. 2015). In such instances the
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`Courts “take the patentee at its word and will not construe the scope of the [earlier
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`issued] claims [differently] than the patentee itself clearly envisioned.” Microsoft
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`Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004); see also,
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`Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995)
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`(“Arguments made during prosecution regarding the meaning of a claim term are
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`relevant to the interpretation of that term in every claim of the patent absent a clear
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`indication to the contrary.”).
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`Case No. 3:21-cv-00812-LL-JLB
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`“uniform” response over the range 40-200 Hz. More specifically, the patent examiner
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`rejected then-pending claim 15 in view of prior art, which “included a multi-axis array
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`of linear resonant actuators.” Ex. D at 210-11. In response, Taction distinguished the
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`invention from the prior art linear actuators. Taction noted that the prior art linear
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`actuators are “highly resonant,” and argued “in contrast” that (1) the claimed
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`invention “is directed to transducers with highly damped output,” and (2) “[Taction’s]
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`invention specifically teaches [a]way from linear resonant actuators.” Id. As support,
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`Taction cited the specification of the pending application that stated: “Motion of the
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`movable member can be damped so that the steady-state sinusoidal voltages applied
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`to the module at different frequencies produce an acceleration response of the
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`movable member that is substantially uniform over the range of 40-200 Hz.” Id. at
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`211 (citing U.S. App. No. 15/222,394 at 3:56-61—i.e., the ’885 patent at 3:53-58);