Taction Tech. v. Apple Inc.

686 F.Supp.3d 995

TACTION TECHNOLOGY, INC., Plaintiff, v. APPLE INC., Defendant.

Case No.: 21-CV-812 TWR (JLB)

United States District Court, S.D. California

Signed August 11, 2023

Landon Andrew Smith, Pro Hac Vice, Scott L. Cole, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Austin, TX, Sean S. Pak, Jonathan S. Tse, Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA, Thomas D. Pease, Pro Hac Vice, Greenberg Traurig, LLP, New York, NY, Gavin Kenneth Snyder, Quinn Emanuel Urquhart & Sullivan LLP, Seattle, WA, Molly Moore, Washington, DC, for Plaintiff.

Alan Littmann, Pro Hac Vice, Goldman Ismail Tomaselli Brennan & Baum LLP, Chicago, IL, Christopher Scott Marchese, Roger A. Denning, Seth M. Sproul, Daniela Glaser, John W. Thornburgh, Ryan O'Connor, Fish & Richardson P.C., San Diego, CA, Eda Stark, Pro Hac Vice, Hughes Hubbard & Reed LLP, Washington, DC, Laura Elizabeth Powell, Pro Hac Vice, Wilmer Cutler Pickering Hale & Dorr LLP, Washington, DC, Jacqueline Tio, Pro Hac Vice, Fish & Richardson P.C., Atlanta, GA, Joy Backer Kete, Pro Hac Vice, Qiuyi Wu, Pro Hac Vice, Fish & Richardson PC, Boston, MA, Bethany Marvin Stevens, Hannah Lynn Cannom, Walker Stevens Cannom Yang LLP, Los Angeles, CA, for Defendant.

ORDER (1) GRANTING DEFENDANT'S AMENDED MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT, (2) VACATING REMAINING PRETRIAL AND TRIAL DATES AND DEADLINES, AND (3) DENYING AS MOOT REMAINING MOTIONS PENDING BEFORE THE UNDERSIGNED

(ECF Nos. 281, 299, 350, 357, 365, 367, 369, 371)

Todd W. Robinson, United States District Judge

Presently before the Court is the Amended Motion for Summary Judgment ("Mot.," ECF Nos. 299 (public), ECF No. 313 (sealed)) filed by Defendant Apple Inc. ("Apple"), as well as the Response in Opposition ("Opp'n," ECF Nos. 323 (public), ECF No. 333 (sealed)) filed by Plaintiff Taction Technology, Inc. ("Taction") and Apple's Reply in Support of ("Reply," ECF Nos. 330 (public), ECF No. 334 (sealed)) the Motion. The Court issued a Tentative Revised Claim Construction Order ("the Tentative Order," ECF No. 338) on July 11, 2023, following which Taction requested that the Court continue the hearing scheduled for July 13, 2023, and permit it the opportunity to respond. (See ECF No. 340.) The Court granted Taction's request, (see ECF No. 342), and the Parties filed Supplemental Briefs ("Def.'s Supp. Br.," ECF No. 353; "Pl.'s Supp Br.," ECF Nos. 356 (public), ECF No. 363 (sealed)). The Court heard oral argument on July 27, 2023. (See ECF No. 360; see also ECF No. 373 ("Hearing Tr.").) For the reasons discussed below, the Court GRANTS Apple's Motion and, accordingly, VACATES the remaining Pretrial and Trial Dates and Deadlines (ECF No. 281) and DENIES AS MOOT the Parties' remaining motions pending before the undersigned.¹

BACKGROUND

I. The Asserted Patents

Taction is the owner and assignee of U.S. Patent No. 10,659,885 ("the '885 Patent") and U.S. Patent No. 10,820,117 ("the '117 Patent") (collectively, "the asserted patents"). (See ECF No. 1 ("Compl.") ¶¶ 68, 72); see also U.S. Patent No. 10,659,885, at [73] (issued May 19, 2020); U.S. Patent No. 10,820,117, at [73] (issued Oct. 27, 2020). The '885 Patent is entitled "Systems and Methods for Generating Damped Electromagnetically Actuated Planar Motion for Audio-Frequency Vibrations" and was issued on May 19, 2020. '885 Patent at [45], [54]. The '117 Patent is entitled the same and was issued on October 27, 2020. '117 Patent at [45], [54]. The '885 Patent and the '117 Patent share a common specification, and both patents claim priority to Provisional Application No. 62/054,712 filed on September 24, 2014. '885 Patent at [60]; '117 Patent at [60].

The invention described in the '885 Patent and the '117 Patent "relates to tactile transducers that produce bass frequency vibrations for perception by touch." '885 Patent col. 1 ll. 20-21.² The specification of the asserted patents explains:

Below about 200 Hz, the lower the frequency of sound, the more it is perceived not only by vibration of the ear drum but also by touch receptors in the skin. This sensation is familiar to anyone who has "felt the beat" of strong dance music in the chest, or through the seat of a chair, or has simply rested a hand on a piano. The natural stimulus is both auditory and tactile, and a true reproduction of it is possible only when mechanical vibration of the skin accompanies the acoustic waves transmitted through the air to the ear drum.

Id. at col. 1 ll. 25-33. The specification then details the problems with the prior art audio-frequency tactile transducers, which include "axial shakers," "un-damped eccentric rotating motors ('ERMs')," and "undamped linear resonant actuators ('LRAs')." See id. at col. 1 l. 34-col. 2 l. 46. With respect to "axial shakers," the specification explains a "drawback" of using axial shakers "is the production of unwanted acoustic noise." Id. at col. 1 ll. 43-56. The specification further explains that this problem "is typically made worse by a lack of mechanical damping." Id. at col. 2 ll. 1-2.

With respect to ERMs and LRAs, the specification explains that they are also "problematic." Id. at col. 2 ll. 11-13. Specifically, undamped "ERMs are incompatible with high-fidelity audio," id. at col. 2 ll. 14-16, and the "main drawback of LRAs is the dependence on 'resonance.' " Id. at col. 2 ll. 25-26. LRAs are designed for tactile alerts, not fidelity, and they can have a "high Q-factor" that renders those devices "useless for high fidelity reproduction of low frequency tactile effects" in the relevant range. See id. at col. 2 ll. 25-34; see also id. at col. 2 ll. 63-67 (describing a "lack of critically damping" and "a claimed Q-factor of 1.5 to 3" as a "drawback"). In light of these problems with the prior art, the specification asserts: "there exists a need for novel audio-frequency tactile transducers and devices." Id. at col. 3 ll. 46-47.

The asserted patents aim to overcome the problems of the prior art by disclosing "a thin, flat vibration module with a movable member that is electromagnetically actuated to produce motion in-plane." See id. at col. 3 ll. 51-53; see also id. at col. 2 ll. 47-49. "[T]he module may consist of a mass and thin magnets, polarized through their thickness, where the mass and magnets are movably suspended inside a housing." Id. at col. 3 ll. 63-66. Further, the suspension may include flexures or a ferrofluid layer. Id. at col. 3 ll. 66-67. In addition, "the vibration of the moving portion may be damped" using a suitable approach, such as the layer of ferrofluid. Id. at col. 4 ll. 6-8. The specification states: "Motion of the movable member can be damped so that the steady-state sinusoidal voltages applied to the module at different frequencies produce an acceleration response of the movable member that is substantially uniform over the range of 40-200 Hz." Id. at col. 3 ll. 53-58; see also id. at [57] ("Motion of the movable member can be damped so that the steady-state sinusoidal voltages applied to the module at different frequencies produce an acceleration response of the movable member that is substantially uniform over the range of 40-200 Hz.").

Independent claim 1 of the '885 Patent recites:

1. An apparatus for imparting motion to the skin of a user, the apparatus comprising:

a housing;

a plurality of coils capable of carrying electrical current;

a plurality of magnets arranged in operative proximity to the plurality of coils;

a moving portion comprising an inertial mass and the plurality of magnets;

a suspension comprising a plurality of flexures that guides the moving portion in a planar motion with respect to the housing and the plurality of conductive coils;

wherein movement of the moving portion is damped by a ferrofluid in physical contact with at least the moving portion; and wherein the ferrofluid reduces at least a mechanical resonance within the frequency range of 40-200 Hz in response to electrical signals applied to the plurality of conductive coils.

'885 Patent col. 14 ll. 48-65.

Independent claim 1 of the '117 Patent recites:

1. An apparatus comprising:

a housing;

a plurality of conductive coils capable of carrying electrical current;

a plurality of magnets arranged in operative proximity to the plurality of conductive coils;

a moving portion comprising an inertial mass and the plurality of magnets;

a suspension comprising a plurality of flexures that guides the moving portion in a planar motion with respect to the housing and the plurality of conductive coils;

wherein vibration of the apparatus imparts vibrations to a user's skin;

wherein vibration of the apparatus is damped by a viscous ferrofluid in physical contact with at least the moving portion;

wherein the viscous ferrofluid reduces at least a resonance within a frequency range of 40-200 Hz in response to signals applied to the plurality of conductive coils;

wherein said moving portion includes at least a pocket that provides space for at least a magnet;

wherein each of said plurality of flexures is more resistant to motion transverse to a plane of the moving portion than it is to linear motion in the plane of the moving portion; and

wherein said housing is generally cuboid in shape.

'117 Patent col. 14 l. 47-col. 15 l. 5.

II. Procedural History

On April 26, 2021, Taction filed its operative Complaint against Apple, alleging infringement of the asserted patents. (See generally Compl.) Specifically, Taction alleges that Apple has directly infringed and induced or contributed to the infringement of the asserted patents by making, using, selling, and offering for sale Apple products, including the iPhone and Apple Watch, that implement haptics technology, (see id. ¶¶ 77, 80), which refers to the science of enabling interaction with technology through the sense of touch, such as, for example, through the use of vibrations. (See ECF No. 73 at 1.) Apple answered the complaint and filed counterclaims against Taction on July 8, 2021. (See generally ECF No. 17.)

On ...