Case 7:23-cv-00077-ADA Document 79 Filed 04/11/24 Page 1 of 36
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`MIDLAND-ODESSA DIVISION
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`RESONANT SYSTEMS, INC., d/b/a
`RevelHMI,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
`
`Case No. 7:23-cv-00077-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF RESONANT SYSTEMS, INC.’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`APPLE 1047
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`1
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`Case 7:23-cv-00077-ADA Document 79 Filed 04/11/24 Page 2 of 36
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................................................... 1
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`RESPONSE TO APPLE’S “TECHNOLOGY OVERVIEW” ........................................................ 1
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`I.
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`II.
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`III.
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`2.
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`3.
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`4.
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`DISPUTED CLAIM TERMS .......................................................................................................... 2
`A.
`“control component” terms (’767 claim 1; ’337 claim 2; ’830 claims 1,
`19, 20; ’882 claims 1, 10) ................................................................................................... 2
`1.
`The “control component” of ’767 claim 1 is not subject to § 112
`¶ 6, and even if it were, Apple’s proposed algorithm should be
`rejected ................................................................................................................... 5
`Resonant’s proposed structure for ’337 claim 2 should be
`adopted ................................................................................................................. 10
`Resonant’s proposed structure for ’830 claims 1, 19, and 20
`should be adopted ................................................................................................ 15
`Resonant’s proposed structure for ’882 claims 1 and 10 should
`be adopted ............................................................................................................ 19
`Preambles of ’337 claim 2 and ’830 claim 20 .................................................................. 21
`Typographical error in ’830 claim 4 ................................................................................. 22
`Typographical error in ’882 claim 17 ............................................................................... 25
`“the mass” (’882 patent, claims 1, 3-6, 10) ....................................................................... 26
`“the one or more sensors” (’767 patent, claim 1); “the oscillating
`resonant modules (’882 patent, claim 20) ......................................................................... 28
`“desired outputs” (’767 patent, claim 1; ’830 patent, claim 4) ......................................... 29
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`B.
`C.
`D.
`E.
`F.
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`G.
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`IV.
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`CONCLUSION .............................................................................................................................. 30
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`TABLE OF AUTHORITIES
`
`Cases
`Apex Inc. v. Raritan Comp., Inc.,
`325 F.3d 1364 (Fed. Cir. 2003)................................................................................................. 12
`Budde v. Harley-Davidson, Inc.,
`250 F.3d 1369 (Fed. Cir. 2001)................................................................................................. 30
`CBT Flint Partners, LLC v. Return Path, Inc.,
`654 F.3d 1353 (Fed. Cir. 2011)................................................................................................... 6
`Dyfan, LLC v. Target Corp.,
`28 F.4th 1360 (Fed. Cir. 2022) ........................................................................................... 12, 29
`Grp. One, Ltd. v. Hallmark Cards, Inc.,
`407 F.3d 1297 (Fed. Cir. 2005)................................................................................................... 6
`HTC Corp. v. IPCom GmbH & Co., KG,
`667 F.3d 1270 (Fed. Cir. 2012)........................................................................................... 18, 30
`Intel Corp. v. Qualcomm Inc.,
`21 F.4th 801 (Fed. Cir. 2021) ................................................................................................... 14
`JVW Enters., Inc. v. Interact Accessories,
`424 F.3d 1324 (Fed. Cir. 2005)................................................................................................... 3
`Micro Chem., Inc. v. Great Plains Chem. Co.,
`194 F.3d 1250 (Fed. Cir. 1999)............................................................................... 16, 21, 24, 28
`Microprocessor Enhancement Corp. v. Texas Instruments Inc.,
`520 F.3d 1367 (Fed. Cir. 2008)................................................................................................... 8
`Nanology Alpha LLC v. WITec Wissenschaftliche Instrumente und Technologie GmbH,
`No. 6:16-CV-00445-RWS, 2017 WL 5905272 (E.D. Tex. Nov. 30, 2017) ............................. 13
`Northrop Grumman Corp. v. Intel Corp.,
`325 F.3d 1346 (Fed. Cir. 2003)..................................................................................... 21, 24, 28
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003)................................................................................................... 6
`Ollnova Techs. Ltd. v. ecobee Techs., ULC d/b/a ecobee,
`No. 2:22-CV-00072-JRG, Dkt. No. 105 (E.D. Tex. Apr. 10, 2023) ....................................... 6, 8
`Pavo Sols. LLC v. Kingston Tech. Co.,
`35 F.4th 1367 (Fed. Cir. 2022) ................................................................................................... 6
`SanDisk Corp. v. Memorex Prods.,
`415 F.3d 1278 (Fed. Cir. 2015)................................................................................................. 14
`Solas OLED Ltd. v. Samsung Elecs. Co.,
`No. 2:21-CV-00105-JRG, 2022 WL 36222 (E.D. Tex. Jan. 4, 2022) ........................................ 9
`Thorner v. Sony Comp. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)................................................................................................... 3
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`Case 7:23-cv-00077-ADA Document 79 Filed 04/11/24 Page 4 of 36
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`Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
`587 F.3d 1339 (Fed. Cir. 2009)................................................................................................... 6
`Univ. of Pitt. of Commonwealth Sys. of Higher Educ. v. Varian Med. Sys., Inc.,
`561 F. App’x 934 (Fed. Cir. 2014) ............................................................................... 20, 24, 28
`Statutes
`35 U.S.C. § 112 ¶ 6 ................................................................................................................ passim
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`I.
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`INTRODUCTION
`While Defendant Apple asserts that only “[f]our disputes regarding claim construction
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`remain” (Dkt. 75 at 1), its scattershot opening brief shows that Apple raises more than a dozen
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`sweeping arguments that are inconsistent with the intrinsic record and violate basic tenets of claim
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`construction. In stark contrast, Plaintiff Resonant offers constructions that are consistent with the
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`intrinsic evidence, the understanding of a POSITA, and applicable law.
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`Apple first seeks to construe several claims reciting “control component” terms. While the
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`parties have several disputes on these terms, the primary issue is that Apple has taken a
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`fundamentally wrong approach to defining algorithms corresponding to claimed functions, where
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`such algorithms are even necessary. Apple believes it is proper to include within such an algorithm
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`steps that are completely unnecessary for and entirely unrelated to performing the claimed
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`function. Resonant told Apple during the meet-and-confer process that this was improper and,
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`contrary to Apple’s false statement in its brief, even gave Apple specific examples—which Apple
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`did not dispute—of how its algorithm definitions were clearly overbroad. But Apple plowed
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`forward with its algorithm definitions even though they violate the fundamental principle that
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`corresponding structure under 35 U.S.C. § 112 ¶ 6 is only the structure that is necessary for
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`performing the claimed function, and nothing more.
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`Nearly all of Apple’s remaining arguments are indefiniteness positions that defy logic,
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`ignore clear intrinsic evidence, and disregard how a POSITA would understand the claims. As
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`detailed below and in the declaration of Resonant’s claim construction expert, Dr. Keith Goossen
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`(Ex. A, “Goossen Decl.”), Apple’s proposals should be rejected and Resonant’s should be adopted.
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`II.
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`RESPONSE TO APPLE’S “TECHNOLOGY OVERVIEW”
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`Apple’s “Technology Overview” mischaracterizes the patented technologies as only being
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`applicable to personal vibrators. Dkt. 75 at 2-3. Apple knows full well that is not the case. It is not
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`relevant to anything in this case—much less claim construction—that Resonant first attempted to
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`commercialize its vibration motor technology in the area of personal vibrators. Like many patented
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`technologies, Resonant’s claimed inventions have applicability to multiple fields, as illustrated by
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`the variety of third-party patents that cite Resonant’s patents. See, e.g., Ex. C (“Cited By” section
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`for ’337 patent showing that the ’337 patent has been cited by patents for gaming controllers (by
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`Facebook/Meta), digital photography, industrial actuators, and electric toothbrushes, among
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`others). Apple’s irrelevant distractions should be disregarded.1
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`The asserted patents generally relate to producing vibrations and are not limited in their
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`field of application as Apple suggests. As Resonant’s expert, Dr. Goossen, and the specifications
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`of the asserted patents explain, the inventors of the asserted patents “recognized problems with
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`existing systems for producing vibrations and sought to address such problems with the claimed
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`inventions.” Goossen Decl. ¶ 22 (citing ’830 patent at 2:15-3:25).
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`III. DISPUTED CLAIM TERMS
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`A.
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`“control component” terms (’767 claim 1; ’337 claim 2; ’830 claims 1, 19, 20;
`’882 claims 1, 10)
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`While there are additional disputes regarding the “control component” terms, the primary
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`issue for the Court to be aware of is that Apple’s approach to defining algorithmic structure under
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`WMS Gaming is fundamentally flawed. Apple’s proposed algorithms include extraneous steps that
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`are not necessary for performing the claimed function and therefore must be excluded.
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`The law is very clear that unnecessary steps must be omitted from algorithmic
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`corresponding structure under § 112 ¶ 6. See, e.g., Univ. of Pitt. of Commonwealth Sys. of Higher
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`1 Apple’s expert declaration does not include these irrelevant mischaracterizations of the claimed
`inventions. Nor does Apple’s expert opine that the level of ordinary skill has anything to do with
`personal vibrators. Dkt. 75-6 ¶¶ 34-36; Goossen Decl. ¶¶ 24-26 (addressing level of ordinary skill).
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`Educ. v. Varian Med. Sys., Inc., 561 F. App’x 934, 941 (Fed. Cir. 2014) (hereinafter “Varian”)
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`(“The district court properly located the disclosure of an algorithm that covered what was
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`necessary to perform the claimed function … and nothing more …. The algorithm need only
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`include what is necessary to perform the claimed function.”)2; Northrop Grumman Corp. v. Intel
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`Corp., 325 F.3d 1346, 1352 (Fed. Cir. 2003) (“A court may not import into the claim features that
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`are unnecessary to perform the claimed function. Features that do not perform the recited function
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`do not constitute corresponding structure and thus do not serve as claim limitations.”); Micro
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`Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) (Section 112, ¶ 6
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`does not “permit incorporation of structure from the written description beyond that necessary to
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`perform the claimed function”). Apple’s inclusion of unnecessary steps in its algorithms confirms
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`that its proposals should be rejected while Resonant’s should be adopted.
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`During the meet-and-confer process, Resonant asked Apple whether its proposed algorithm
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`constructions were intended to require, for infringement and invalidity, a mapping of every single
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`word and every single step appearing in the numerous specification columns and figures listed in
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`its proposals. Davis Decl. ¶ 2. Apple responded that this was, in fact, its position. In multiple
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`conversations, Resonant’s counsel explained the problem with Apple’s view, given that the
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`lengthy disclosures that Apple used to define its algorithms also contain extraneous steps that are
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`not even arguably necessary to performing the claimed functions. Id. At one point, Apple asked
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`for Resonant to identify such an extraneous step. Id. In its brief, Apple states that “Resonant could
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`not identify any portion of the algorithm that was not required for performing the claimed function
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`during the meet-and-confer process.” Dkt. 75 at 17. That is false. Davis Decl. ¶ 2. What actually
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`happened is that Apple asked Resonant’s counsel to identify an extraneous step in its proposed
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`2 All emphasis in quoted material has been added unless otherwise noted.
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`algorithms and Resonant did so. Id. Specifically, Resonant gave the example of the “power down”
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`steps shown in Figure 7A (excerpted below), which (along with their corresponding specification
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`text) are included in Apple’s algorithms for the ’767, ’337, and ’830 patents—and yet have nothing
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`to do with performing the claimed functions.
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`Id.; ’767 patent at Fig. 7A. Resonant’s counsel explained at length how this example demonstrates
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`why Apple’s view of § 112 ¶ 6 is wrong, because Apple seeks to violate long-standing precedent
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`that algorithms under § 112 ¶ 6 must only include what is necessary to perform the claimed
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`function. Davis Decl. ¶ 2. Apple’s counsel did not dispute Resonant’s assertion that the “power
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`down” steps are extraneous and unnecessary to perform the claimed functions. Id.3
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`Apple refused to modify its proposed algorithms despite their obvious inclusion of
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`extraneous steps and despite Resonant proving—without Apple disputing—that to be the case
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`during a meet-and-confer. This is what prompted Resonant to reformulate its proposed algorithms
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`to recite affirmative steps, rather than to simply reference portions of the specification containing
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`3 In addition to Apple’s erroneous statement described in this paragraph, Apple’s footnote 5 also
`wrongly states that “[e]arlier during the meet-and-confer process Resonant agreed with Apple as
`to the algorithm,” citing Exhibit 2 to Apple’s brief (Dkt. 75-3) as support for this statement. Dkt.
`75 at 18 n.5. That document shows Apple is wrong. While the specification figures and text
`identified by Apple in its proposals generally include the appropriate algorithm disclosure, Apple’s
`proposals also include extraneous disclosures as discussed herein. See Dkt. 75-3 at 5, 6, 7
`(Resonant’s proposals phrased as “an algorithm shown and/or described …”).
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`these steps (but also containing extraneous steps). The parties’ meet-and-confers made clear that
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`Apple intends to improperly limit the scope of each independent claim. Under Apple’s view, for
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`example, the “control component” limitation of ’337 claim 2 could only be met by mapping every
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`word appearing in nearly three columns of disclosure and three large flow charts (i.e., 6:43-8:30,
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`13:3-41, Fig. 7A, Fig. 7B, Fig. 7C), including the “power down” steps and other extraneous steps
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`unrelated to the claimed function. Apple’s erroneous view of § 112 ¶ 6 should be rejected.
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`1.
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`The “control component” of ’767 claim 1 is not subject to § 112 ¶ 6,
`and even if it were, Apple’s proposed algorithm should be rejected
`a)
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`§ 112 ¶ 6 does not apply because claim 1 recites
`sufficiently definite structure
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`While Resonant does not dispute that the “control component” terms of the other asserted
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`patents are subject to means-plus-function treatment,4 there is good reason to treat the “control
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`component” of ’767 claim 1 differently. Unlike the others, ’767 claim 1 defines its recited control
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`component in structural terms, specifying that it “includes a microprocessor … a control
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`program, stored in one of a separated electronic memory or within the processor, … and a
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`switch.” ’767 patent at cl. 1. As the Federal Circuit has explained, “§ 112 ¶ 6 is inapplicable”
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`where a claim “recite[s] both a function and the structure for performing that function in the claim.”
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`Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (also noting that “we presume
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`that a claim limitation is not drafted in means-plus-function format in the absence of the term
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`‘means’”). Claim 1 of the ’767 patent does just this, reciting both a function and the structure for
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`performing that function. Thus, § 112 ¶ 6 simply does not apply. Id.
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`4 Apple appears to assert that all four asserted patents are post-AIA patents and, thus, subject to 35
`U.S.C. § 112(f) rather than 35 U.S.C. § 112 ¶ 6. See Dkt. 75 at 6 n.3. But three of the four asserted
`patents indisputably have effective filing dates that pre-date March 16, 2013. The exception is the
`’882 patent, which has a post-2013 effective filing date. In any event, the arguments herein are not
`impacted regardless of which version of § 112 applies.
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`Apple does not and cannot dispute that “microprocessor,” “control program stored in …
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`memory,” and “switch” are structural terms. “In cases where it is clear that a claim term itself
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`connotes some structure to a person of ordinary skill in the art, the presumption that § 112, ¶ 6
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`does not apply is determinative in the absence of more compelling evidence of the understanding
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`of one of ordinary skill in the art.” Id. at 1366 (internal quotation marks omitted). There is no
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`compelling evidence to the contrary because a POSITA would undeniably consider these to be
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`structural terms. Goossen Decl. ¶ 28.
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`The core of Apple’s argument is that structural terms like “microprocessor” and “control
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`program … stored in memory” are not sufficiently definite structure, such that § 112 ¶ 6 applies
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`and, furthermore, the claim must be limited to a disclosed algorithm for performing the claimed
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`function under WMS Gaming and similar case law. Dkt. 75 at 9-11. That is incorrect because the
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`claim itself provides all the necessary structure for performing the function. For example, even
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`taking as true Apple’s premise that the claim does not provide sufficiently definite structure unless
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`an algorithm for the microprocessor is provided, the claim language provides such detail by
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`specifying that the control component “receiv[es] output signals from sensors … [and] adjust[s]
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`one or more operational control outputs of the control component according to the received output
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`signals from the sensors,” and further explains that the result of this process is that “subsequent
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`operation of linear resonant vibration module produces desired outputs from the one or more
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`sensors corresponding to one or more operational control parameters.” ’767 patent at cl. 1. This is
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`sufficiently definite structure without resort to the specification, such that § 112 ¶ 6 does not apply.
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`See Goossen Decl. ¶ 28.
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`b)
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`If § 112 ¶ 6 does apply, Resonant’s proposed
`corresponding structure should be adopted
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`If, however, the Court agrees with Apple that § 112 ¶ 6 applies, the Court must then
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`determine the function and corresponding structure for this limitation and, more specifically for
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`’767 claim 1, what algorithm is necessary for performing the claimed function. In an effort to
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`narrow issues for the Court, Resonant agreed not to dispute Apple’s identification of the claimed
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`function, enabling the Court to focus on the parties’ dispute over corresponding structure.
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`Here is the first place we see Apple’s fundamentally wrong approach to defining
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`algorithmic structure, as discussed at the top of Section III.A. Apple asserts that every single word
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`and image contained in two columns of specification text (6:15-8:3) and three figures (Figs. 7A,
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`7B, 7C) are necessary to performing the claimed function. That is plainly not true. As one example
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`(and the same example Resonant provided to Apple before briefing), Figure 7A and corresponding
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`specification text disclose “power down” steps described as follows: “when the event is a power-
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`down event, as determined in step 718, resulting from deactivation of a power button by the user,
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`then the control program appropriately powers down the device, in step 720, and the control
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`program terminates in step 722.” ’767 patent at 6:62-66. This is obviously not necessary to
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`performing the claimed function, a fact which Apple did not dispute during the meet-and-confer
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`process. Goossen Decl. ¶ 30; Davis Decl. ¶ 2. As another example, Apple’s algorithm seeks to
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`require a step of a user powering on the device via a power button or other user control, even
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`though this also is not necessary to performing the claimed function. ’767 patent at 6:19-21 (“The
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`program begins execution, in step 702 [shown in Fig. 7A], upon a power-on event invoked by a
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`user through a power button or other user control.); Goossen Decl. ¶ 30. And as yet another
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`example, Apple’s algorithm seeks to require a “non-default mode” for handling “more complex
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`operational modes,” even though this also is not necessary to performing the claimed function.
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`’767 patent at 7:7-22 (“Other, more complex operational modes may be handled by various more
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`complex routines, represented by step 734 in FIG. 7B.”); Goossen Decl. ¶ 30.
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`These examples help illustrate why Apple’s view of § 112 ¶ 6 is fundamentally flawed.
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`Any algorithm adopted by the Court must only include that which is “necessary to perform the
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`claimed function … and nothing more.” Varian at 941; see Northrop Grumman, 325 F.3d at 1352;
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`Micro Chem., 194 F.3d at 1258.
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`Resonant’s proposed algorithm complies with this long-standing precedent, providing
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`three steps that come from the intrinsic evidence and can be understood and applied by the jury.5
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`Goossen Decl. ¶ 29. Step (a) is “receive the value of an output signal.” See, e.g., ’767 patent at
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`6:7-10 (with reference to Fig. 6: “The CPU receives input 630 from one or more electromechanical
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`sensors 632 that generate a signal corresponding to the strength of vibration currently being
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`produced by the linearly oscillating mass 634.”); id. at 7:4-7 (with reference to Fig. 7B, describing
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`storing value of output from sensor that is an input to the processor). Step (b) is “compare that
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`value to a different value, which could be a previous value,” which the claimed invention does by
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`using feedback. See, e.g., id. at 7:9-14 (with reference to Fig. 7B: “In the default mode, the LRVM
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`uses continuous feedback control to optimize the vibrational force produced by the LRVM by
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`continuously seeking to operate the LRVM at a frequency as close as possible to the resonant
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`frequency for the LRVM.”). Step (c) is “adjust one or more operational control outputs based on
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`that comparison.” See, e.g., id. at 7:22-29 (with reference to Fig. 7B: “In the case that the
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`operational mode is the default mode, in which the control program seeks to optimize the
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`vibrational force generated by the device, in step 736, the routine ‘monitor’ determines whether
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`the local variable inc is set to TRUE. If so, then the control program is currently increasing the
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`frequency at which the device operates in order to obtain the resonance frequency.”).
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`5 Any articulation of corresponding structure under that is adopted by the Court, for any asserted
`patent, must also include “and equivalents thereof.” 35 U.S.C. § 112 ¶ 6; 35 U.S.C. § 112(f).
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`Those are the only steps that are necessary to perform the claimed function. The claimed
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`function does not necessitate a user pressing a button to power on the system, nor does it require
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`any power-down event or any complex operational mode. Apple’s proposed algorithm seeks to
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`require all of these extraneous steps and more, but they are simply not necessary to perform the
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`claimed function and thus must be excluded.
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`Not only is Resonant’s formulation sufficient to perform the claimed function, but also it
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`is far more understandable to a jury than Apple’s formulation. In addition to containing numerous
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`extraneous steps that cannot limit the claim, Apple’s framing would force the jury to compare
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`multiple columns of specification text and multiple detailed figures to any accused product or prior
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`art reference. This would not be practical even if Apple’s algorithm did not include numerous
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`extraneous steps. For example, Apple’s algorithm for ’767 claim 1 would require—just for the
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`control component limitations—a mapping of everything in Figure 7A, everything in Figure 7B,
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`everything in Figure 7C, and all 1139 words contained in 6:15-8:3 of the specification. Apple
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`should not be permitted to lard up the claims with extraneous limitations that not only violate
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`Federal Circuit precedent but also would confuse the jury and require excessive amounts of trial
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`time for the parties to address infringement and prior art mappings.
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`Notably, Apple’s brief does not identify any way in which Resonant’s proposed algorithm
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`would be insufficient for performing the function of ’767 claim 1. Instead, Apple relies on generic
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`criticisms directed to the algorithms for all four asserted patents and cites WMS Gaming as
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`supposedly supporting its proposals. E.g., Dkt. 75 at 19. It does not. In that case, the Federal Circuit
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`articulated a specific list of affirmative steps comprising the algorithm (like Resonant’s
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`proposals)—not just a citation to numerous figures and thousands of words of specification text
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`that supposedly must all be mapped for a single § 112 ¶ 6 limitation (like Apple’s proposals).
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`Case 7:23-cv-00077-ADA Document 79 Filed 04/11/24 Page 14 of 36
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`WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (“[T]he disclosed
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`structure is a microprocessor programmed to assign a plurality of single numbers to stop positions
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`such that: 1) the number of single numbers exceeds the number of stop positions; 2) each single
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`number is assigned to only one stop position; 3) each stop position is assigned at least one single
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`number; and 4) at least one stop position is assigned more than one single number.”).6 To be clear,
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`Resonant is not arguing that a § 112 ¶ 6 algorithm can only be articulated with a small list of
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`affirmative steps and no reference to a specification excerpt or figure. But the law is clear that,
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`however the Court articulates the algorithm, it cannot include extraneous steps that are not
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`necessary for performing the claimed function—and Apple’s proposals plainly do.
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`2.
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`Resonant’s proposed structure for ’337 claim 2 should be adopted
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`As with the ’767 patent, Resonant’s proposed algorithm for ’337 claim 2 includes the
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`necessary steps for performing the claimed function and nothing more. Apple’s proposed
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`algorithm includes unnecessary steps and should therefore be rejected. Goossen Decl. ¶¶ 32-37.
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`There are three disputes between the parties on this term. The first dispute is which party’s
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`algorithm should be adopted. Resonant’s proposed algorithm provides a set of steps that come
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`from the intrinsic evidence and can be understood and applied by the jury. Goossen Decl. ¶¶ 33-
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`34. Step (a) is “set the mode and strength to values representing selections made by user input to
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`the user input features.” See, e.g., ’337 patent at 8:11-15 (with reference to Fig. 7C: “This routine
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`is invoked when a change in the user controls has occurred. In step 760, the variables mode and
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`6 Apple also cites a Peloton case from the District of Delaware as supposedly instructive, but it is
`inapposite given the facts here. See Dkt. 75 at 19 (citing Peloton Interactive, Inc. v. Icon Health &
`Fitness, Inc., No. CV 20-662-RGA, 2021 WL 4133702 (D. Del. Sept. 10, 2021)). Resonant is not
`seeking to “amend the actual disclosure from the specification” as Apple asserts. Id. at 20. All of
`Resonant’s proposed algorithms are consistent with the intrinsic evidence for the reasons detailed
`herein—they just omit extraneous steps that Apple’s proposals include.
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`Case 7:23-cv-00077-ADA Document 79 Filed 04/11/24 Page 15 of 36
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`strength are set to the currently selected mode and vibrational strength, represented by the current
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`states of control features in the user interface.”); id. at 6:21-24 (with reference to Fig. 6: “As one
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`example, the user controls may include[] a dial to select a strength of vibration, which corresponds
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`to the current applied to the coil, a switch to select one of various different operational modes, and
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`a power button.”). Step (b) is “provide a corresponding output to the power supply so that the
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`power supply provides a corresponding output to the driving component.” See, e.g., id. at 8:16-20
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`(with reference to Fig. 7C: “Next, in step 762, the routine ‘control’ computes an output value p
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`corresponding to the currently selected strength, stored in the variable strength, and outputs the
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`value p to the power supply so that the power supply outputs an appropriate current to the coil.”).
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`Step (c) is “drive simultaneous oscillation of the moveable component at two or more
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`frequencies.” See, e.g., id. at 7:43-48 (“Other, more complex operational modes may be handled
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`by various more complex routines, represented by step 734 in FIG. 7B. More complex vibrational
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`modes may systematically and/or periodically alter the frequency or produce various complex,
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`multi-component vibrational modes useful in certain applications, appliances, devices, and
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`systems.”); id. at 13:10-13 (with reference to Figs. 22A-23: “As one example, a microprocessor-
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`controlled or microcontroller-controlled linear vibration module can be programmed to drive the
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`device simultaneously at two different frequencies.”).
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`In contrast, Apple’s proposed algorithm includes extraneous steps. For example, it includes
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`the same power-down and power-on steps described above with respect to the ’767 patent, which
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`are plainly not necessary for performing the claimed function of ’337 claim 2. See, e.g., id. at 6:48-
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`50, 7:24-28 (encompassed within Apple’s citations); supra Section III.A.1.b; Goossen Decl. ¶ 34.
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`In addition, Apple’s proposal seeks to include the entirety of the “monitor” routine shown in Figure
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`7B (as well as its corresponding specification text), even though Apple itself links the non-default
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`Case 7:23-cv-00077-ADA Document 79 Filed 04/11/24 Page 16 of 36
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`mode (item 734 in Figure 7B) to the claimed complex vibration modes—rather than everything
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`shown in Figure 7B and described in its corresponding specification text. See Dkt. 75 at 16-17;
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`Goossen Decl. ¶ 34. Indeed, Apple’s proposed algorithm for ’337 claim 2 seeks to require—just
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`for the control component limitation—a mapping of everything in Figure 7A, everything in Figure
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`7B, everything in Figure 7C, and all 1471 words contained in 6:43-8:30 and 13:3-41 of the
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`specification. That would not assist the jury in deciding infringement and validity issues, even if
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`it did not contain extraneous steps that must be excluded under Federal Circuit law (which it plainly
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`does).
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`Apple’s inclusion of specification excerpt 13:3-41 is a good illustration of why Apple’s
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`proposal would be incomprehensible to a jury and should be rejected. That portion of the
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`specification discloses:
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`Returning to microprocessor-controlled or microcontroller-controlled linear
`vibration modules, it should be noted that processor or microprocessor control
`allows for an essentially limitless number of different vibrational b