In a significant blow to Apple, the Federal Circuit recently vacated a summary judgment of noninfringement in the case of Taction Technology, Inc. v. Apple Inc. The dispute centers on Taction’s U.S. Patent Nos. 10,659,885 and 10,820,117, which Taction alleged that the Taptic Engine in Apple’s iPhone and Apple Watch products infringed the ʼ885 and ʼ117 patents.

Background

The ʼ885 and ʼ117 patents cover tactile transducers — devices that produce bass frequency vibrations for perception by touch, such as those used in haptic feedback systems in smartphones and smartwatches. Claim 1 of the ʼ885 patent was considered representative:

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.

Each asserted claim requires damping the moving portion. During claim construction, the district court concluded the asserted claims are limited to “transducers with highly damped output” based on the following statement made during prosecution of the parent of both the ’885 and ’117 patents: “Applicant’s invention, in contrast, is directed to transducers with highly damped output.” The district court had granted summary judgment of non-infringement in favor of Apple on two main grounds:

1. Missing Element – The court adopted a construction of the claim term “highly damped output” that required the transducer to have 1) an output that is highly damped (i.e., substantially uniform or flat over the normal operating frequency range), 2) achieved by mechanical damping, and 3) a Q-factor of less than 1.5. Based on this construction, the court found that Apple’s accused products, which have a Q-factor greater than 1.5, did not infringe the ʼ885 and ʼ117 patents.
2. Stricken Expert Testimony – The court struck the infringement opinions of Taction’s expert, Dr. James Oliver, finding that his opinions introduced a new theory not disclosed in Taction’s infringement contentions and that he improperly argued claim construction to the jury. Without this expert testimony, the court concluded that Taction lacked a viable claim of infringement against Apple.

The Appeal

The Federal Circuit found multiple errors in the district court’s approach, leading to a reversal and remand for further proceedings. With respect to the district court’s claim construction, the Federal Circuit addressed a few key aspects:

• “Highly Damped Output” – The court agreed that the claims are limited to “transducers with highly damped output” based on a clear and unmistakable disclaimer made during prosecution of the parent of the patents-in-suit. Indeed, the disclaimer applies to patents in the same family when the disclaimer relates to the same subject matter as the claim language at issue. However, it rejected the district court’s further limitations. In this vein, the Federal Circuit found no basis in the intrinsic record to limit the claims to mechanical damping since the specification was broad enough to encompass other types of damping, and there was nothing in the intrinsic evidence that justified such a limitation.
• Q-Factor Limitation – The district court had limited the claims to transducers with a Q-factor of less than 1.5 based on statements in the specification disparaging higher Q-factors. The Federal Circuit found that these statements were not sufficiently specific about the numeric value that would constitute a drawback and, thus, did not rise to the level of a clear and unmistakable disavowal. Moreover, related patents in the family included explicit Q-factor limitations, and reading such a limitation into the claims at issue would render those limitations superfluous.

With respect to the stricken expert testimony, the Federal Circuit held that the district court abused its discretion by striking Dr. Oliver’s infringement opinions. The district court had interpreted the local patent rules to require Taction to explain in its infringement contentions not just where but how each claim limitation is found in the accused Apple products. The Federal Circuit panel found no support for this requirement in the plain language of the local rules or in binding precedent and concluded that, as such, requiring adherence to such an unwritten requirement was arbitrary and an abuse of discretion by the district court. In addition, the panel found that, even if some paragraphs of Dr. Oliver’s report improperly argued claim construction, this did not justify striking his entire analysis regarding the “highly damped output” limitation, especially since his understanding of the term was consistent with the court’s own construction.

Takeaways

The Federal Circuit’s decision provides a valuable reminder on claim construction and guidance on the treatment of expert testimony and the proper application of local patent rules. 

• Claim Construction Must Be Anchored in the Record – Limitations should not be read into claims absent clear lexicography or disavowal. The Federal Circuit remains vigilant against importing limitations from the specification into the claims without a strong basis.
• Prosecution History Disclaimer – While clear and unmistakable disclaimers during prosecution can limit claim scope, such disclaimers must be closely tied to the claim language and subject matter at issue.
• Expert Testimony – Courts should be cautious in striking expert opinions wholesale, especially where the expert’s understanding of claim terms aligns with the court’s own construction.
• Strict Adherence to Local Rules – Courts should not impose unwritten requirements in local patent rules without clear notice to the parties. Striking expert testimony based on such requirements is likely to be reversed on appeal.

Now that the case returns to the district court, Taction gets an extra bite at Apple. As compared to Optis Cellular Technology, LLC v. Apple Inc. (22-1925), where the Federal Circuit vacated both the infringement and damages judgments against Apple in a patent case involving standard-essential patents (SEPs) related to Long-Term Evolution (LTE) technology, Apple’s outcome here was rotten.

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