686 F.Supp.3d 995
S.D. Cal.2023Background:
- Plaintiff Taction owns U.S. Pat. Nos. 10,659,885 and 10,820,117 claiming tactile transducers using ferrofluid to reduce resonance/Q-factor in the 40–200 Hz range and describing the invention as directed to "transducers with highly damped output."
- Taction accused Apple Taptic Engine–equipped products (iPhones, Apple Watch) of infringing those patents; Apple filed IPR petitions (denied) and moved for summary judgment of non-infringement and no pre‑suit damages.
- Taction’s expert (Dr. Oliver) opined the accused products are “transducers with highly damped output,” attributing the effect to a combination of ferrofluid and a closed‑loop controller and offering a definition of “highly damped output” as "generally uniform or flat."
- Apple moved to strike portions of Dr. Oliver’s expert report as advancing a new, untimely infringement theory in violation of the Patent Local Rules; the court agreed and struck those opinions as well as portions that attempt to construe claim language for the jury.
- The court revisited claim construction, holding "highly damped output" means the transducer output is substantially uniform/flat over the operating range, that the highly damped output must be achieved by mechanical damping (as disclosed), and that the transducer must have a mechanical Q‑factor of less than 1.5.
- Dr. Oliver’s own testing showed accused devices have mechanical Q‑factors of ~1.6–2.2; the court held (1) Taction’s infringement theory was untimely/w aived and struck, and (2) even considering the expert, the accused products do not meet the revised claim limitations, and granted summary judgment for Apple.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Dr. Oliver’s opinions on "highly damped output" should be struck under Patent Local Rule 3.1 | Dr. Oliver merely explains theories already disclosed and provides evidentiary detail beyond the contentions | Dr. Oliver advances a new theory (closed‑loop + ferrofluid = highly damped output) not in final infringement contentions; untimely and prejudicial | Court struck the challenged opinions as a new, untimely infringement theory and as improperly arguing claim construction to the jury |
| Proper construction of "highly damped output" — whether it means "generally uniform/flat" | "Highly damped output" should be construed as substantially uniform/flat over the operating range (per prosecution/spec) | Agreed in part; Apple had earlier proposed substantially uniform/non‑peaked language but raised other constructions too | Court adopted that construction: output is highly damped i.e., substantially uniform/flat over normal operating range |
| Whether "highly damped output" must be produced by ferrofluid or mechanical damping (vs. electronic/closed‑loop control) | The limitation need not be limited to mechanical damping or to ferrofluid specifically; electronic damping could satisfy the claim | Specification discloses only mechanical damping examples; disclaimer arose in prosecution and specification supports limiting to mechanical damping | Court limited "highly damped output" to mechanical damping (specification only discloses mechanical forms) and rejected a requirement that ferrofluid alone produce it |
| Whether accused products infringe under revised constructions (Q‑factor <1.5 requirement) | Dr. Oliver asserts infringement can still be found; claimed closed‑loop effects and measured responses support infringement | Measured mechanical Q‑factors for accused devices are ~1.6–2.2 (above <1.5 requirement); without Dr. Oliver’s struck opinions plaintiff lacks a viable infringement case | Court held no reasonable juror could find the Q‑factor <1.5 or that mechanical damping produces the claimed highly damped output; granted summary judgment for Apple |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard)
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment: genuine dispute standard)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction principles; intrinsic evidence governs)
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (claim construction may require subsidiary factfinding)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008) (claim construction scope and local rules context)
- Poly‑Am., L.P. v. API Indus., Inc., 839 F.3d 1131 (Fed. Cir. 2016) (specification disavowal/disclaimer principles)
- Advanced Steel Recovery, LLC v. X‑Body Equip., Inc., 808 F.3d 1313 (Fed. Cir. 2015) (summary judgment of noninfringement standard)
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (patentee bears burden to prove each claim element)
- Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009) (experts may not argue claim construction to the jury)