`
`
`
`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. 21-cv-00812-TWR-JLB
`
`DEFENDANT APPLE INC.’S
`DISCLOSURE OF SUPPLEMENTAL
`INVALIDITY CONTENTIONS
`
`District Judge: Hon. Todd. W. Robinson
`Magistrate Judge: Jill L. Burkhardt
`
`
`
`Case No. 21-cv-00812-TWR-JLB
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`IPR2022-00059
`TACTION EX2012 PAGE001
`
`

`

`
`
`Pursuant to the Scheduling Order (ECF 76), Defendant Apple Inc. (“Apple”)
`
`provides the following disclosure of Supplemental Invalidity Contentions to Plaintiff
`
`Taction Technology, Inc. (“Taction” or “Plaintiff”) regarding U.S. Patent Nos.
`
`10,659,885 (the “’885 Patent”) and 10,820,117 (the “’117 Patent”), collectively, the
`
`“Patents-in-Suit” or “Asserted Patents.”
`
`These contentions are made only as to the claims of the Patents-in-Suit that
`
`Taction has identified in its Preliminary Infringement Contentions and its Amended
`
`Preliminary Infringement Contentions:
`
`Patent
`’885 Patent
`’117 Patent
`
`Asserted Claims
`1-20
`1-17
`
`Apple reserves the right to supplement these invalidity contentions to the extent
`
`Taction is allowed to change its asserted claims.
`
`These Supplemental Invalidity Contentions are being made in the early stages
`
`of fact discovery and before claim construction. The parties have not yet started
`
`general discovery and document production, and no general depositions have been
`
`noticed or taken. Accordingly, Apple reserves the right to supplement and amend
`
`these contentions to the extent additional information becomes available during
`
`discovery. For example, Apple has served third party discovery on the following
`
`parties: Corsair Gaming, Inc.; Ferrotec (USA) Corp.; and Skullcandy Inc. Apple may
`
`serve third party discovery on companies that it is informed and believes have relevant
`
`prior art, and reserves the right to supplement or amend these disclosures as may be
`
`appropriate in the future. Apple will also be taking third party discovery from the
`
`individual named as inventor on Taction’s patent filings and associated companies.
`
`Apple reserves the right to supplement and/or amend its invalidity contentions to
`
`include new prior art discovered from Taction, from the inventor, from these third
`
`party sources, or other sources. Apple may also serve additional third-party discovery
`
`in the future including, but not limited to, based on discovery received from Plaintiff,
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`2
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE002
`
`

`

`
`
`the inventor, and/or the above-referenced third parties, and reserves the right to
`
`supplement and/or amend its contentions accordingly.
`
`I.
`
`RESERVATIONS
`
`A. General Reservation of Right
`
`The information provided shall not be deemed an admission regarding the
`
`scope of any claims or the proper construction of those claims or any claim terms. In
`
`certain instances, Apple has applied the claims to the prior art in view of Taction’s
`
`allegations, admissions, or positions for purposes of these Supplemental Invalidity
`
`Contentions only. This disclosure of invalidity contentions is not intended to be, and
`
`is not, an admission that any Asserted Claim is infringed by any of Apple’s products,
`
`that any particular feature or aspect of any of the accused products practices any
`
`limitations of the Asserted Claims, or that any of the constructions implicit in
`
`Taction’s Preliminary
`
`Infringement Contentions or Amended Preliminary
`
`Infringement Contentions is reasonable, supportable, or proper. Rather, in some
`
`instances, Apple’s application of the claims to the prior art is intended to apply
`
`Taction’s apparent interpretation of the claims.
`
`B.
`
`Taction’s Infringement Contentions
`
`Taction’s Preliminary Infringement Contentions and Amended Preliminary
`
`Infringement Contentions are deficient in numerous respects. Apple served a
`
`deficiency letter on Taction on October 4, 2021, and reserves the right to supplement
`
`or amend these invalidity contentions in view of Taction’s response, if any. Because
`
`Taction’s response to such deficiencies may lead to further grounds for invalidity,
`
`Apple specifically reserves the right to modify, amend, or supplement its contentions
`
`as Taction modifies, amends, or supplements its disclosures and/or produces
`
`documents in discovery.
`
`Additionally, Taction has presented no substantive contentions of any alleged
`
`infringement under the doctrine of equivalents in its Preliminary Infringement
`
`Contentions or its Amended Preliminary Infringement Contentions. It has provided
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`3
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE003
`
`

`

`
`
`boilerplate reservations of rights, and made general references to the doctrine of
`
`equivalents, but has provided no substantive allegation in its Preliminary
`
`Infringement Contentions or its Amended Preliminary Infringement Contentions. As
`
`a result, Taction has waived any doctrine of equivalents theory. If Taction is
`
`permitted to provide any information relating to infringement under the doctrine of
`
`equivalents, Apple may amend and supplement these invalidity contentions as
`
`appropriate.
`
`C. The Intrinsic Record
`
`Apple further reserves the right to rely on applicable industry standards and
`
`prior art cited in the file histories of the Patents-in-Suit and any related U.S. and
`
`foreign patent applications as invalidating references or to show the state of the art.
`
`Apple further reserves the right to rely on the patent applicant’s admissions
`
`concerning the scope of the prior art relevant to the Patents-in-Suit found in, inter
`
`alia: the patent prosecution history for the Patents-in-Suit and any related patents
`
`and/or parent applications or reexaminations (or inter partes review or post-grant
`
`review proceedings); any deposition testimony of the named inventor or inventors
`
`whose names were removed during prosecution of the Patents-in-Suit; any deposition
`
`testimony or other admissions by Taction; and the papers filed and any evidence
`
`submitted by Taction in connection with this litigation.
`
`D. Rebuttal Evidence
`
`Prior art not included in these Supplemental Invalidity Contentions, whether
`
`known or not known to Apple, may become relevant. In particular, Apple is currently
`
`unaware of the extent, if any, to which Taction will contend that limitations of the
`
`asserted claims of the Patents-in-Suit are not disclosed in the prior art identified herein
`
`or otherwise contend the Patents-in-Suit are not invalid. To the extent that such an
`
`issue arises, Apple reserves the right to identify other references that would render
`
`obvious the allegedly missing limitation(s) or the disclosed device or method, or
`
`otherwise rebut Taction’s argument(s).
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`4
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE004
`
`

`

`
`
`E. Contextual Evidence
`
`Apple’s claim charts cite particular teachings and disclosures of the prior art as
`
`applied to the limitations of each of the asserted claims. However, persons having
`
`ordinary skill in the art generally may view an item of prior art in the context of his
`
`or her experience and training, other publications, literature, products, and
`
`understandings. Moreover, common sense may be employed as part of the
`
`obviousness analysis. As such, Apple may rely on the uncited portions of the prior
`
`art references and on other publications, expert testimony, and common sense as aids
`
`in understanding and interpreting the cited portions, as providing context thereto, and
`
`as additional evidence that the prior art discloses a claim limitation or the claimed
`
`subject matter as a whole. Apple further reserves the right to rely on uncited portions
`
`of the prior art references, other publications, and testimony, including expert
`
`testimony, to establish bases for combinations of certain cited references that render
`
`the asserted claims obvious. The references discussed in the claim charts may
`
`disclose the elements of the asserted claims explicitly and/or inherently, and/or they
`
`may be relied upon to show the state of the art in the relevant time frame. The
`
`suggested obviousness combinations are provided in the alternative to anticipation
`
`contentions and are not to be construed to suggest that any reference included in the
`
`combinations is not by itself anticipatory.
`
`II. OVERVIEW OF THE TECHNOLOGY
`
`The basic concepts, teachings, and techniques utilized by the vibration motor
`
`described in the Asserted Patents were well-known at the time of the claimed
`
`invention.
`
`A. Linear Actuators
`
`The Asserted Patents describe prior art tactile transducers (e.g., vibrators,
`
`motors, exciters, actuators) that include a moving mass suspended on a spring, a
`
`stator, and a voice coil. E.g., ’885 Patent (Ex. 1001) at 1:34-38. Linear actuators are
`
`one type of tactile transducer that creates motion in a straight line. Dong at 1:11-18.
`
`5
`
`Case No. 21-cv-00812-TWR-JLB
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`IPR2022-00059
`TACTION EX2012 PAGE005
`
`

`

`
`
`Linear vibrators use electromagnetic forces to drive a moving mass. Driving the mass
`
`with an electrical signal applied to the coils causes acceleration of the linear actuator
`
`and thereby the vibration force.
`
`One common use of linear actuators is for the provision of haptics, particularly
`
`in mobile devices. Bang at [0011]; Dong at 1:11-18. Linear actuators are often used
`
`in mobile phones to produce vibration effects. Common vibration effects used in
`
`mobile phones include vibrations signifying an incoming call, and vibrations
`
`signifying that a button or touchscreen has been pressed. Zhang at 1:13-19.
`
`Haptic design was mature and advanced by 2014, when the Asserted Patents
`
`were filed. The Asserted Patents are directed to well-known industry concepts,
`
`including flexures, coils, and ferrofluid. These are standard features of almost any
`
`LRA from 2014 and earlier. Taction’s infringement contentions target these well-
`
`known, prior art concepts in Apple’s accused Taptic Engine.
`
`1. Main Components
`
`Linear actuators typically include a housing, a pair of elastic members
`
`connected to the housing and to a vibrating unit, and a coil. See, e.g., Apple Watch
`
`Taptic Engine Module (X201); Apple Watch Taptic Engine Module (X410); Apple
`
`iPhone 6 Linear Motor Module; Apple iPhone 6 Plus Linear Motor Module;
`
`Miyazaki; Park494; Kim421; Bae; Degner; Bang; Miyamoto; Yoshikane690;
`
`Yoshikane894; Yoshikane470; Zhang; Dong. For example, Dong discloses a linear
`
`vibrator for providing tactile feedback in mobile phones. Dong at Abstract, 1:5-14.
`
`Dong’s linear vibrator also includes a housing that contains a moving magnet
`
`assembly that is supported by an elastic member and a coil. Id. at 2:11-20, 1:37-52.
`
`Dong’s linear actuator is shown below:
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`6
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE006
`
`

`

`
`
`
`
`Id. at Fig. 2.
`
`Similarly, Bang teaches an apparatus for producing vibrations in mobile
`
`devices that improves on conventional linear vibration motors. Bang at [0005],
`
`[0011]. Bang’s vibration generating apparatus includes a coil that forms an electric
`
`field, and a vibration element that is vibrated through electromagnetic forces. Id. at
`
`[0014], [0031], Figs. 1 and 2. Bang’s linear actuator is shown below:
`
`7
`
`Case No. 21-cv-00812-TWR-JLB
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`IPR2022-00059
`TACTION EX2012 PAGE007
`
`

`

`
`
`
`
`Id. at Fig. 1.
`
`
`
`It was well-known that linear actuators contained one or more coils that carried
`
`an electrical current. For example, Bang discloses a vibration generating apparatus
`
`containing a single coil. Bang at [0041]. Dong teaches a linear vibrator using multiple
`
`coils. Dong at 2:12-20, 3:45-48; see also, e.g., Apple iPhone 6 Linear Motor Module;
`
`Apple iPhone 6 Plus Linear Motor Module; Miyazaki; Degner; Miyamoto;
`
`Yoshikane690; Yoshikane894; Yoshikane470. There were many known shapes in
`
`which coils might form. For instance, Bang teaches that the coil may have an oval
`
`shape. Bang at [0039] (“For example, the coil plate 130 may have an oval ring
`
`shape.”), [0042] (“Further, the coil 140 may have a shape corresponding to that of the
`
`coil plate 130 by way of example.”), Fig. 1. Dong teaches a hybrid oval rectangle
`
`shape. Dong at Fig. 2 (showing an oval outside with a rectangular inside).
`
`Linear actuators also included a magnetic mass. This mass is typically made up
`
`of one or more magnets and a weight is often also included to assist with generating
`
`8
`
`Case No. 21-cv-00812-TWR-JLB
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`IPR2022-00059
`TACTION EX2012 PAGE008
`
`

`

`
`
`inertial forces. Bang teaches a vibration or motion element that includes magnets and
`
`a weight. Bang at [0043]. Likewise, Dong teaches a weight that is coupled to a magnet
`
`assembly. Dong at 1:38-44, 3:1-8.
`
`The magnetic mass is coupled to flexures that enable vibration. Bang’s motion
`
`element is supported by elastic members, such as leaf springs. Bang at [0043], [0051].
`
`These elastic members allow for movement of the motion element and urge that
`
`movement in a linear manner. Id. at [0059], [0065]. Dong teaches that the moving
`
`mass is supported by elastic members, which allow the moving mass to vibrate and
`
`which urge it in a linear direction. Dong at 2:28-37, 2:45-50.
`
`2. Operation
`
`In operation, an alternating electrical current is applied to the coil(s). Bang at
`
`[0041]. This electrical current interacts with the magnets of the magnetic mass, which
`
`causes the magnetic mass to oscillate back and forth within a housing in a linear or
`
`horizontal direction. Id. at [0064]; Fuller at Abstract, [0025]. When the motion
`
`element moves (as a result of electromagnetic forces), the elasticity of the elastic
`
`members allow for the moving mass to oscillate, which generates vibrations. Id. at
`
`[0059].
`
`As a result of their construction (e.g., mass moved by a conductive coil and
`
`biased by an elastic member), linear actuators have a resonant frequency. Garg at
`
`[0002]. Vibration of an object at its natural, or resonant frequency, results in
`
`resonance. As is well-known in a tuning fork for musical instruments, the resonant
`
`frequency of an object is the natural frequency at which the object tends to vibrate or
`
`oscillate at a higher amplitude. University Physics at 304. Accordingly, the electrical
`
`signal applied to the linear actuator may drive the linear actuator at its resonant
`
`frequency and by driving the linear actuator at this frequency, the linear actuator
`
`produces the most efficient and effective vibrations. Indeed, linear actuators were
`
`driven at this resonant frequency, and it was known in the art that driving linear
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`9
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE009
`
`

`

`
`
`actuators at other frequencies would not produce a perceptible response. ’117 Patent
`
`at 2:25-29; Gowda at 4; An at 1:15-18; Garg at [0002]; Park728 at 1:33-35.
`
`3.
`
`Additional Components
`
`In addition to the main components discussed above, some linear actuators
`
`included additional components to enhance the functions of the linear actuator. For
`
`example, some linear actuators included magnetic flux guides. Schena at 5:44-47,
`
`O’Brien at 5:57-61. Magnetic flux guides were well-known by the priority date of the
`
`Asserted Patents to be shaped pieces of magnetic material that guide magnetic flux.
`
`Dictionary of Scientific & Technical Terms at 5. Flux guides accomplish this guiding
`
`functionality by either directing the flux to a preferred location or to prevent the flux
`
`from spreading beyond definite regions. Id. In addition to magnetic flux guides, linear
`
`actuators commonly included damping mechanisms.
`
`4.
`
`Damping mechanisms
`
`Damping is a fundamental characteristic of mechanical systems. Damping can
`
`be added to such systems to prevent rapid or excessive corrections that may lead to
`
`instability or other unwanted oscillatory conditions. Electrical Engineering Dictionary
`
`at 2. Damping mechanisms are used to reduce oscillation amplitudes through removal
`
`of vibratory energy in a mechanical system or component.
`
`In haptic devices, damping is desirable to absorb the vibration caused by the
`
`movement of the oscillating mass, shocks resulting from impacts between
`
`components, or to prevent impacts between components altogether, improving the
`
`quality of the haptic feedback generated by the device. For example, damping can
`
`prevent unwanted collisions that cause rattling noises. An at 3:35-37 (“As a
`
`consequence [of the damping], no noise is generated owing to no occurrence of the
`
`touching phenomenon, and other kinds of noise is also drastically reduced.”).
`
`Additionally, damping reduces the peak of a resonant system and thereby smooths
`
`and widens the bandwidth of its frequency response. Id. at 3:37-43. Damping can
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`10
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE010
`
`

`

`
`
`also increase the responsiveness of the linear actuator by allowing the vibrations to
`
`come to a stop more quickly.
`
`It was well known prior to 2014 that the addition of damping results in the
`
`reduction of the peak amplitude that occurs at the natural frequency of the system
`
`(e.g., the resonant frequency). University Physics at 305; see also An at 3:29-34
`
`(“[T]he movement of the vibrating system is variable in accordance with an amount
`
`of the damping, and the vibration is usually damped when the amount of damping
`
`increases compared with the case when no damping exists. In other words, the
`
`amplitude is reduced when the amount of damping increases.”).
`
`Numerous damping mechanisms were known for use in linear actuators. For
`
`example, Kim421 teaches a variety of materials capable of absorbing shocks, such as
`
`rubber, polypropylene and magnetic fluids, may be used as the material for the
`
`damper. Kim421 at 4:34-39; see also ’885 Patent at 4:6-9 (“The vibration of the
`
`moving portion may be damped using a suitable approach, such as the shearing of a
`
`layer of ferrofluid, oil, grease, gel, or foam, or the passage of air through an orifice.”).
`
`a.
`
`Ferrofluid Damping
`
`Magnetic fluids, also known as ferrofluids, were known well before the priority
`
`date of the Asserted Patents and were used in many commercial applications,
`
`including as linear and rotary dampers. See generally Raj1980 at 1 (“Ferrofluids have
`
`long passed the stage of laboratory curiosity and are now used in a wide range of
`
`devices. The commercial applications of ferrofluids include such diversified areas as
`
`vacuum sealing, exclusion of particulates, magnetogravimetric separation,
`
`hydrodynamic bearing, medical re-search, rotary and linear damping, and enhancing
`
`loudspeaker performance.”); see also Rinaldi at 142 (“The study and applications of
`
`ferrofluids, invented in the mid-1960s . . .”); Raj1990 at 233 (“The commercialization
`
`of ferrofluids and of devices utilizing ferrofluids began two decades ago with the
`
`founding of Ferrofluidics Corporation . . . . Since then, ferrofluids have emerged as
`
`reliable materials capable of solving complex engineering problems. Activities
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`11
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE011
`
`

`

`
`
`involving ferrofluids today are worldwide with several tens of millions of devices
`
`being built each year.”); Raj1995 at 174 (“Traditional ferrofluid products such as
`
`multistage rotary seals, exclusion seals, inertia dampers and loudspeakers are now a
`
`well established industry.”); Torrez-Diaz at 8584 (“Ferrofluids have been studied for
`
`decades in an ever growing number of applications that take advantage of their
`
`response to applied magnetic fields.”). The use of magnetic fluids for damping
`
`extended to use in linear actuators, including in linear actuators used to provide haptic
`
`effects in mobile devices.
`
`Kim421, for example, teaches a horizontal linear vibrator for use in a cellular
`
`phone. Kim421 at 1:14-26. Kim421 teaches providing a damper “to absorb shock
`
`applied to the vibration unit and to prevent the vibration unit from coming into direct
`
`contact with the casing when the vibration unit horizontally vibrates.” Id. at 4:32-34.
`
`Kim421 accomplishes this damping using a magnetic fluid that is applied to the
`
`magnets of the moving element (or vibration unit). Id. at 5:24-25. Kim988 similarly
`
`teaches a linear vibrator for use in mobile devices. Kim988 at 1:14-20. Kim988
`
`discloses the use of magnetic fluid as a damper by applying it to the springs of the
`
`suspension and the magnet of the moving element. Id. at 3:10-11, 6:48-49. Kim988
`
`explains that the magnetic fluid functions to prevent the moving element (or vibration
`
`unit) from coming into contact with the housing. Id. at 6:49-56.
`
`Zhang also discloses a linear actuator (or linear vibrator) for providing tactile
`
`feedback in mobile phones. Zhang at 1:6-19. Zhang teaches that magnetic fluids are
`
`attached to the moving element of a linear actuator via the attraction to the magnet
`
`assembly of the moving element. Id. at 2:38-47. The magnetic fluid serves as a
`
`damper, preventing the moving element (or vibrating unit) of the linear actuator from
`
`crashing onto the housing and avoiding noise or damage to both components. Id. at
`
`3:3-8.
`
`Further, Park728’s linear actuator also uses magnetic fluids for damping.
`
`Park728 at 2:56-60 (“Preferably, the linear vibrator comprises a magnetic fluid
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`12
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE012
`
`

`

`
`
`circularly coated on a space formed by the yoke and the elastic member to fix a
`
`position by magnetic flux leaked from the inner magnet, whereby collision among
`
`members can be inhibited to absorb shocks.”), 9:54-57 (“The magnetic fluid (245)
`
`functions to maximally limit contact with the spring (300) when the trembler (200) is
`
`vibrated, and to absorb shocks generated during the contact with the spring (300)”).
`
`And Park728’s linear actuator is expressly for use in mobile devices. Id. at Abstract,
`
`10:31-52.
`
`Bang’s linear actuator also utilizes a magnetic fluid. Bang at [0045]. And one
`
`skilled in the art would have understood that this fluid would have provided damping
`
`effects in Bang’s linear actuator.
`
`As previously discussed, the Q-factor is also affected by damping mechanisms.
`
`It was well-known to use magnetic fluids in linear actuators to reduce the Q-factor of
`
`the response of the linear actuator. For example, Pu teaches a flat linear actuator for
`
`providing tactile sensation in mobile devices. Pu at [0001], [0009]. Pu teaches
`
`applying a magnetic fluid to the bottom of a moving magnet assembly. Id. at [0013].
`
`Pu explains that the magnetic fluid widens the bandwidth of the responding frequency
`
`of the linear actuator. Id. Thus, Pu teaches utilizing a magnetic fluid to reduce the Q-
`
`factor within the operating frequency range.
`
`The term magnetic fluid was known in the art to refer to ferrofluids. Browaeys
`
`at 1 (“Magnetic fluids, sometimes called ferrofluids . . .”); see also Rinaldi at 141
`
`(“Magnetic fluids, also called ferrofluids . . .”); Sprenger at 1 (“Magnetic fluids, also
`
`called ferrofluids, are binary liquids consisting of magnetic nanoparticles being
`
`dispersed in a carrier liquid.”); Tsuda at [0007] (noting that magnetic fluids are also
`
`called ferrofluids); Fruge at 3:63-65 (“Each end of bearing assembly 34 is sealed to
`
`shaft 20 by a ring-shaped plate 56 and a magnetic fluid (i.e., ferrofluid) seal 58.”);
`
`Hong at 4:56-60 (“ferrofluids (also referred to as ‘magnetic fluids’)…”); Raj1980 at
`
`1 (“Applications of magnetic liquid technology to damping phenomenon are
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`13
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE013
`
`

`

`
`
`reviewed. Products utilizing ferrofluids . . . .”); Knotts at 1:47-2:13 (using the terms
`
`interchangeably).
`
`5.
`
`Considerations for an Actuator Used to Provide Haptics in
`
`Mobile Devices Were Well Known
`
`Linear actuators are driven in the neighborhood their resonant frequency and
`
`produce vibrations at or around this frequency. One skilled in the art would have been
`
`aware of the use for a linear actuator and would choose a resonant frequency for the
`
`linear actuator depending on its use. Accordingly, when designing or developing a
`
`haptic actuator for use in mobile devices, one skilled in the art would choose a
`
`resonant frequency that would produce vibrations that will be perceptible by human
`
`touch.
`
`By the priority date of the Asserted Patents, much research had been done on
`
`the optimal frequency for vibration motors used in haptic devices. For example,
`
`although humans can audibly perceive frequencies up to 20,000 Hz (audio sound), the
`
`optimal frequencies for touch receptors in the skin are below 500 Hz. Trafton at 5;
`
`see also Yim at 648 (noting that human skin is less sensitive to vibrations below
`
`approximately 100 Hz or above 600 Hz).
`
`Although the sense of touch also varied depending on which part of the body
`
`was perceiving the touch, for all sites on the skin, the optimal sensitivity is achieved
`
`at frequencies between about 150 and 300 Hz. Jones at 91; see also Park728 at 1:40-
`
`44 (“It is understood that vibration volume felt by a man in the haptic devices is over
`
`0.1 G, a frequency band from which vibration can be well detected by a man is
`
`generally in the range of 100-300 Hz, and a frequency band detectable in sound is in
`
`the range of 20 Hz to 20,000 Hz.”); see also ’885 Patent at 1:25-27 (noting that 200
`
`Hz is both within the lower frequency of sound perceived by the ears, but also
`
`perceived by touch receptors). For example, the hand is most sensitive to stimuli
`
`around 230-240Hz. Yim at 648. However, the most effective frequency for
`
`transmitting vibrations to the hand is between 120 and 150 Hz. Id.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`14
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE014
`
`

`

`
`
`The frequency of the vibration motor in mobile phones prior to and at the time
`
`of the alleged inventions of the Asserted Patents was between 130 and 180Hz. Id. at
`
`647; see also Gowda at 4 (“The typical operating frequency (resonant frequency) of
`
`an LRA motor is 175 Hz.”). For example, in a study by Baek et al., a vibration motor
`
`with a frequency between 150 Hz and 240 Hz was used. Baek at 3. Baek selected that
`
`frequency bandwidth “because it was usable with the vibration motor specification
`
`being currently developed. Further, the 150 Hz [was] chosen [as the] minimum
`
`frequency to be used in [the] experiment because approximately 150 Hz was the
`
`optimal vibration frequency of a mobile phone at a static state in [a] previous study.”
`
`Id.
`
`Similarly, Park728 teaches that a resonant band is preferably within an 80 to
`
`180 Hz band. “In the present disclosure, the resonant frequency band is preferably
`
`determined within an 80-180 HZ band. If the resonant frequency band is thus
`
`determined, the useable frequency region is used at a region higher than that of the
`
`resonant frequency, whereby vibration can be generated in a broad range.” Park728
`
`at 4:66-5:4. “For example, if the resonant frequency is 140 Hz, and the minimum
`
`frequency in the useable frequency is 30 Hz, the maximum frequency is set up at more
`
`than 272 HZ to allow a useable frequency bandwidth in the linear vibrator to be setup
`
`from 30 Hz to more than 272 Hz, such that various types of vibrations can be
`
`generated in most of regions where vibration can be detected.” Id. at 5:41-47. Further,
`
`as shown in the below figure, a resonant peak occurs around 175 Hz:
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`15
`
`Case No. 21-cv-00812-TWR-JLB
`
`IPR2022-00059
`TACTION EX2012 PAGE015
`
`

`

`
`
`
`
`Id. at Fig. 5.
`
`Adjusting a vibrating motor to achieve a specific resonant frequency and
`
`operating range was a well-known simple technique. Park728 explains that it is
`
`possible to modify a system in order to achieve a desired resonant frequency. “The
`
`resonant frequency is related to the entire mass and strength of the system, such that
`
`the resonant frequency can be set up by changing mass and strength.” Id. at 4:63-65;
`
`see also Okada at 3:43-47 (“In the electromechanical vibration transducer 12 of such
`
`a structure, the resonance frequency is determined dependent on the compliance of
`
`the resilient supporting member 16 and the mass of the motor 8 and the eccentric
`
`member 15.”). Thus, one skilled in the art would have understood that a desired
`
`resonant frequency of a linear actuator would easily be selected by adjusting the mass
`
`of the weight and the strength (elastic modulus) of the flexures.
`
`III. PRIORITY DATE
`
`Taction’s Preliminary Infringement Contentions allege that the Asserted
`
`Claims of the ’885 and ’117 patents are entitled to a priority date of September 24,
`
`2014, based on the filing of U.S. Prov. Pat. App. No. 62/054,712. Taction’s
`
`Preliminary Infringement Contentions also allege that, to the extent any asserted claim
`
`16
`
`Case No. 21-cv-00812-TWR-JLB
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`IPR2022-00059
`TACTION EX2012 PAGE016
`
`

`

`
`
`of any asserted patent is found to not be entitled to an effective filing date/priority
`
`date of September 24, 2014, the claim is entitled to an effective filing date/priority
`
`date of January 10, 2015, based on the filing of U.S. Prov. Pat. App. No. 62/101,985,
`
`or September 24, 2015, based on the filing of U.S. Pat. App. No. 14/864,278.
`
`Taction bears the burden to prove it is entitled to a priority date earlier than
`
`September 24, 2015, and Taction has not demonstrated that the Asserted Claims are
`
`entitled to an earlier date. Apple therefore reserves the right to assert later priority
`
`dates based on any findings as to the priority date of the Asserted Claims by the Court,
`
`information learned through discovery, or otherwise. Apple further reserves the right
`
`to amend its invalidity contentions should Taction fail to prove that any Asserted
`
`Claim is entitled to an earlier priority date.
`
`IV.
`
`IDENTIFICATION OF PRIOR ART
`
`The following patents, publications, systems, and admitted prior art are prior
`
`art to the Asserted Claims of the Asserted Patents under at least 35 U.S.C. §§
`
`102(a)(1) and/or 102(a)(2).
`
`Apple also incorporates as if fully set forth in these Supplemental Invalidity
`
`Contentions the complete prosecution histories for the Asserted Patents and related
`
`patents, including the prior art and supporting documents cited in those prosecution
`
`histories. Apple may cite or rely upon the prosecution histories, the examiner’s
`
`findings, and the prior art cited therein to support or provide context for these
`
`Supplemental Invalidity Contentions.
`
`Apple not only relies upon the prio