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`Document 327
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`Roger A. Denning (SBN 228998)
`denning@fr.com
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`Christopher S. Marchese (SBN 170239)
`marchese@fr.com
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`Seth M. Sproul (SBN 217711)
`sproul@fr.com
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`John W. Thornburgh (SBN 154627)
`thornburgh@fr.com
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`Ryan P. O’Connor (SBN 253596)
`oconnor@fr.com
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`Daniela Glaser (SBN 341535)
`glaser@fr.com
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`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
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`Tel: (858) 678-5070
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`Fax: (858) 678-5099
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`Additional Counsel listed on Signature
`Page
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`Attorneys for Defendant Apple Inc.
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`Filed 06/23/23 PagelD.16866 Page
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`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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`TACTION TECHNOLOGY, INC.,
`Plaintiff,
`
`V.
`
`APPLE INC.
`Defendant.
`
`Case No. 3:21-cv-00812-TWR-JLB
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`REPLY IN SUPPORT OF
`DEFENDANT APPLE INC.’S
`AMENDED MOTION FOR
`SUMMARY JUDGMENT, DAUBERT
`MOTION TO EXCLUDE OPINIONS
`OF PLAINTIFF’S EXPERTS JAMES
`H. OLIVER, PH.D. AND PATRICK F.
`KENNEDY, PH.D., AND MOTION
`TO STRIKE
`
`REDACTED VERSION
`Hearing Date: July 13. 2023
`Hearing Time: 1:30 p.m.
`Courtroom: 3A
`Judge: Hon. Todd W.
`Robinson
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`Case No. 3:21-cv-00812-TWR-JLB
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`II.
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`I1I.
`IV.
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`TABLE OF CONTENTS
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`Page(s)
`TACTION’S NEW THEORIES SHOULD BE STRICKEN .........cccccvrnnnee. 1
`A. Taction misinterprets the PLRS.........ccccviiiiiiiiiciieeeee e, 1
`B. Dr. Oliver’s “highly damped output” theory iS new...........cccveveeeveennnee. 2
`C. Dr. Oliver’s Monolithic Products theories are new ...........cccccceeevveenneene. 3
`D. Apple is prejudiced by Dr. Oliver’s new theories...........ccccceevveeeenreennne. 4
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`THE ACCUSED PRODUCTS DO NOT MEET TWO LIMITATIONS......... 5
`A. Accused products lack a “transducer with highly damped output™........ 5
`1. Taction has no viable claim of infringement..................ccoeennee. 5
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`2. The Taptic Engines are not “highly damped” by ferrofluid......... 6
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`3. The Taptic Engines are not “highly damped” ...........c...cccveen. 9
`B. The Monolithic Products have no “plurality of magnets™.................... 12
`1. The Monolithic Products do not literally infringe...................... 12
`2. The Monolithic Products do not infringe under DOE ................ 12
`TACTION CANNOT OBTAIN PRE-SUIT DAMAGES .......cccoooeiiieiiee. 13
`TACTION’S EXPERTS’ OPINIONS REMAIN UNRELIABLE ................. 13
`A. Dr. Oliver’s testing of six accused iPhones is unreliable...................... 13
`B. Dr. Oliver’s and Dr. Kennedy’s opinions are unreliable....................... 15
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`1
`DEFENDANT’S REPLY ISO MSJ, DAUBERT MOTIONS AND MOTION TO STRIKE
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`TABLE OF AUTHORITIES
`
`Page(s)
`Cases
`
`Ameranth, Inc. v. GrubHub, Inc.,
`No. 12-CV-739 JLS (NLS), 2013 WL 12071639 (S.D. Cal. Mar. 26,
`2003 e e e e e et e e e aa e e e tba e e etaeeeenreeenns 2
`
`Ameranth, Inc. v. Papa John's USA, Inc.
`946 F.Supp.2d 1049 (S.D. Cal. 2013) c.eoeiiiiieiieiieeeeeeeeesee e 2
`
`Ameranth, Inc. v. Pizza Hut, Inc.,
`No. 12CV1627 JLS NLS, 2013 WL 3894880 (S.D. Cal. July 26,
`2003 e e ettt e e eeateeeeaaeean 1,2,4
`
`Anticancer, Inc. v. Cambridge Rsch. & Instrumentation, Inc.,
`No. 07CV97 JLS RBB, 2009 WL 9115821 (S.D. Cal. Feb. 13,
`2009) et ettt e et e et e nseennaeenaeennean 1,3,12,13
`
`Apotex, Inc. v. Cephalon, Inc.,
`No. 2:06-CV-02768, 2015 WL 12645745 (E.D. Pa. May 26, 2015) ................... 5
`
`Arctic Cat Inc. v. Bombardier Rec. Prods.,
`876 F.3d 1350, 1366 (Fed. Cir. 2017) ceocueieiiieeeeeeeeeee e 13
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .........cceeevveeeeeciniiiieeeeeieeee e 9
`
`Biogen Idec, Inc. v. GlaxoSmithKline LLC,
`713 F.3d 1090, 1095 (Fed. Cir. 2013) couiiiiieieeieeeeeeeeeeee e 8
`
`Cellspin Soft, Inc. v. Fitbit, Inc.
`2022 WL 2784467 (N.D. Cal. June 7, 2022)....cccccovuerieriieiienieeieeeeieeee e, 14
`
`Echologics, LLC v. Orbis Intelligent Sys., Inc.,
`No. 21-CV-01147-H-AHG, 2023 WL 2756492 (S.D. Cal. Mar. 27,
`2023) ettt ettt et et e et e et e et e e taeeateenbe e beebeennaeenteenreenseennes 3
`
`Finjan, Inc. v. Cisco Sys. Inc.,
`No. 17-cv-00072-BLF, 2020 WL 1318005 (N.D. Cal. Apr. 21,
`2020) ettt et s e sttt e e e e 15
`
`il
`DEFENDANT’S REPLY ISO MSJ, DAUBERT MOTIONS AND MOTION TO STRIKE
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`Footbalance Sys. Inc. v. Zero Gravity Inside, Inc.
`2017 WL 3877720 (S.D. Cal. Sept. 5, 2017) eeevieeieeieeeeiieie et 1
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed.Cir. 2014) oottt 11
`
`KlausTech, Inc. v. Google LLC,
`No. 10-CV-05899JSWDMR, 2018 WL 5109383, at *6 (N.D. Cal.
`Sept. 14, 2018), subsequently aff'd, 792 Fed. Appx. 954 (Fed. Cir.
`2020) ittt e e e et e e et e e e e e e e e e aaeeeatbeeeearaeeearreeenns 2
`
`LizardTech, Inc. v. Earth Res. Mapping, Inc.,
`424 F.3d at 1345 (Fed. Cir. 2005) ..cooiieiieiieieeie et 8
`
`Mobile Tel. Techs., LLC v. Blackberry Corp.,
`No. 3:12-CV-1652-M, 2016 WL 2907735 (N.D. Tex. May 17,
`B (] 1Y RSP RPRPSR 2
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014).uuiieeiee ettt ettt e ree e et e e e eae e e eaaaee e 11
`
`Ormco Corp. v. Align Tech., Inc.,
`498 F.3d 1307, 1319 (Fed. Cir. 2007) cc.eeeveeiiiiieiieiieeieeieeseese e 8
`
`Pelican Int'l, Inc. v. Hobie Cat Co.,
`No. 320CV02390, 2023 WL 2127995 (S.D. Cal. Feb. 10, 2023).......ccceeeeunee.. 2
`
`Pulse Elecs., Inc. v. U.D. Elec. Corp.,
`No. 3:18-CV-00373, 2021 WL 981123 (S.D. Cal. Mar. 16, 2021) ................... 14
`
`Rhine v. Casio, Inc.
`183 F.3d 1342 (Fed. Cir. 1999) .....uoiiiieieeeeeee e, 8
`
`Rivera v. Int'l Trade Comm'n,
`857 F.3d 1315 (Fed. Cir. 2017) uveiieiieeeee e 8
`
`Scripps Rsch. Inst. v. lllumina, Inc.,
`No. 16-CV-661 JLS (BGS), 2016 WL 6834024 (S.D. Cal. Nov. 21,
`
`00 1) ISR PPR 1
`TiVo, Inc. v. EchoStar Commc'ns Corp.,
`516 F.3d 1290, 1305-08 (Fed. Cir. 2008)......ccuvvieeriieeiieeeeieee e 14
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) ..uviiiiieee et 8
`111
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`DEFENDANT’S REPLY ISO MSJ, DAUBERT MOTIONS AND MOTION TO STRIKE
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`Vaporstream, Inc. v. Snap Inc.,
`No. 17-cv-00220-MLH, 2020 WL 2543814 (C.D. Cal. Jan. 10,
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`2020) ettt ettt e s e ettt e e e ebaeenaees 15
`ViaSat, Inc. v. Space Sys/Loral, Inc.
`
`No.3:12-CV-00260-H, 2013 WL 12061803 (S.D. Cal. Dec. 6, 2013) ................ 2
`Yeda Research and Dev. Co., v. Abbott GMBH,
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`837 F.3d 1341 (Fed. Cir. 2016) .c.vieiiiiieiieeieeeeee et 9
`Other Authorities
`Fed. R. Civ. Pu 26 ittt 15
`Patent Local RUIE 3.1 ..cc..oiiiiiiee e e 1
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`L. TACTION’S NEW THEORIES SHOULD BE STRICKEN
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`Dr. Oliver’s report violates the Patent Local Rules (“PLR”) because it adds new
`infringement theories for two requirements of the asserted claims (“transducers with
`highly damped output” and “plurality of magnets™), and they should be stricken.
`
`A. Taction misinterprets the PLRs
`
`Taction now admits that the frequency response graphs included in its
`infringement contentions do not show a “highly damped output” (see ECF No. 294-7
`at 95:25-96:13), and Taction does not dispute that its contentions fail to explain why
`or how any accused Taptic Engine meets the “highly damped” limitation. Taction
`tries to excuse this failure by arguing that the rules require only the identification of
`“where” a limitation is met—which could be satisfied simply by pointing to the
`accused device or saying, “this limitation is met,” as Taction did here—without any
`explanation of why a limitation is met or how a device infringes. Taction’s view
`would defeat the purpose of the PLR, which is to require fair notice of infringement
`theories the plaintiff intends to litigate.
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`The case law does not support Taction’s interpretation, but instead holds that
`PLR 3.1 requires an explanation of why and how an accused product satisfies each
`claim element. As explained in Footbalance Sys. Inc. v. Zero Gravity Inside, Inc.,
`“the specificity required in [a plaintiff’s] infringement contentions ... ‘will provide
`information concerning how each limitation of the asserted claims [is] met.”” No. 15-
`CV-1058 JLS (DHB), 2017 WL 3877720, at *3 (S.D. Cal. Sept. 5, 2017) (quoting
`Scripps Rsch. Inst. v. Illumina, Inc., No. 16-CV-661 JLS (BGS), 2016 WL 6834024,
`at *6 (S.D. Cal. Nov. 21, 2016)); see Ameranth, Inc. v. Pizza Hut, Inc.,No. 12CV1627
`JLS NLS, 2013 WL 3894880, at *5 (S.D. Cal. July 26, 2013) (““Ameranth must
`identify with specificity ... how the claim elements are met); Anticancer, Inc. v.
`Cambridge Rsch. & Instrumentation, Inc., No. 07CV97 JLS RBB, 2009 WL 9115821,
`at *4 (S.D. Cal. Feb. 13, 2009) (finding contentions “deficient in explaining how
`[photos] establish infringement”) (emphasis added). Thus, although PLR 3.1(c) states
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`only that charts must include “the identity of the structure(s),” this Court has
`consistently required an explanation of “why and how there 1s infringement under the
`doctrine of equivalents.” See Pelican Int’l, Inc. v. Hobie Cat Co., No. 320CV02390,
`2023 WL 2127995, at *5 (S.D. Cal. Feb. 10, 2023) (emphasis added).
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`Taction cites three cases from this Court in support of its argument (ViaSat,
`GrubHub, and Papa John’s). Each 1s inapposite. In ViaSat, for example, the Court
`summarily concluded that the contentions provided sufficient notice. 2013 WL
`12061803, at *2. The opinion contains no substantive analysis of the patent owner’s
`contentions or the expert report. Furthermore, GrubHub and Papa John’s each
`concerned motions for summary judgment that, unlike Apple’s Motion, were served
`before claim construction. 2013 WL 12071639, at *5; 946 F. Supp. 2d at 1058.
`Accordingly, the Court found that summary judgment would be premature. Id.
`Taction also relies on Mobile Tel. Techs., but that case 1s from N.D. Tex., and 1t was
`specifically distinguished in KlausTech, Inc. v. Google LLC, No. 10-CV-
`05899JSWDMR, 2018 WL 5109383, at *6 (N.D. Cal. Sept. 14, 2018), subsequently
`aff'd, 792 Fed. Appx. 954 (Fed. Cir. 2020) (“[T]his court does not agree with the
`outcome [in Mobile Tel. Techs.] The cases interpreting the requirements of the patent
`local rules in this district establish that infringement contentions must do more than
`state generalized theories of infringement.”); see also Ameranth, 2013 WL 3894880,
`at *5 (following the N.D. Cal.’s interpretation of PLRs).
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`B. Dr. Oliver’s “highly damped output” theory is new
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`Dr. Oliver’s report differed significantly from Taction’s contentions for the
`“highly damped output” limitation. Taction’s contentions do not allege that the-
`_ contributes to the “highly damped output,” either alone or in
`combination with ferrofluid, as Dr. Oliver now opines. Moreover, Taction’s catchall
`language (“the requirement for a ‘highly damped output’ may be satisfied by any
`mechanism”) fails to disclose any theory at all. Even if true, it presumes some
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`mechanism satisfies this limitation, and that mechanism should be disclosed.
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`Furthermore, Taction’s contentions purport to “show” that the accused
`products have a “highly damped output™ by pointing to notable peaks on frequency
`response graphs generated using a constant input, with the _
`disconnected. ECF No. 298-4 at 11. Dr. Oliver altogether discarded the frequency
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`response graphs from Taction’s contentions. He even admitted that Taction’s graphs
`do not show a “highly damped output.” ECF No. 294-7 at 95:25-96:13. Instead,
`using custom software and varying the input signal with the _
`connected, Dr. Oliver generated new frequency response graphs that he says show a
`“highly damped output” because they are generally uniform or flat (within +/- 10 dB)
`over the normal operating frequency of the device. ECF No. 298-2 at 9 573, 607;
`Apple Mot. at 7. This shift is not a mere addition of evidence, but a wholesale change
`of Taction’s “theory.” By abandoning Taction’s contentions, Dr. Oliver “presents a
`new theory of infringement [that] 1s improper and should be excluded.” See, e.g.,
`Echologics, LLC v. Orbis Intelligent Sys., Inc., No. 21-CV-01147-H-AHG, 2023 WL
`2756492, at *9 (S.D. Cal. Mar. 27, 2023) (granting motion to strike new infringement
`theory presented for the first time in the plaintiff’s opening expert report).
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`Taction can find no refuge by labeling (at 9) Dr. Oliver’s opinions as
`“responsive” to Apple’s non-infringement positions. It has the burden of providing
`complete infringement contentions. Dr. Oliver’s “responsive” opinions are the same
`as his “affirmative” opinions; they were not disclosed in Taction’s contentions.
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`C. Dr. Oliver’s Monolithic Products theories are new
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`For literal infringement, Taction does not dispute that its contentions failed to
`explain why or how the Monolithic Products include a “plurality of magnets.”
`Instead, once again, Taction argues (at 9-10) that it was not required to do so. Yet, as
`explained above in Section I.A, Taction misconstrues the PLR. Taction’s “cursory,
`single-sentence allegations based on ... photographs do not establish ‘where each
`element of each asserted claim 1s found.”” See, e.g., Anticancer, 2009 WL 9115821,
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`at *4. Taction argues (at 10) that there could not have been any confusion, but that is
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`not true. The Court expressly rejected Taction’s theory of literal infringement for this
`limitation. ECF No. 141 at 22-23, 26. Apple had no reason to believe Taction would
`ignore the Court’s construction or to request additional description.
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`For the doctrine of equivalents (“DOE”), Taction’s brief points (at 10) to the
`function-way-result analysis in its contentions, but this 1s a straw man. Apple did not
`move to strike that contention. Mot. at 12. Apple moved to strike the new DOE
`analyses in Dr. Oliver’s report that are not disclosed in Taction’s contentions. Id.
`Taction’s brief does not dispute that these theories were new or that they are not
`supported by Taction’s contentions. Instead, Taction appears to believe that Dr.
`Oliver was permitted to analyze any DOE theory as long as Taction’s contentions
`identified at least one theory. That is clearly incorrect. See Ameranth, 2013 WL
`3894880, at *4 (“the purpose of infringement contentions is to alert the alleged
`infringer which theories the patentee believes its pre-filing investigation supports™).
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`Taction also wrongly argues (at 12) that Apple seeks to strike “factual material”
`or “responsive’ opinions rather than new theories of infringement. Paragraphs 764-
`70 of Dr. Oliver’s report contain his new literal infringement theory. Paragraphs 772-
`73 rely on the same arguments. See, e.g., ECF No. 298-2 (Oliver Rpt.) at § 773 (“as
`I have described above...”). And paragraphs 778-97 either rely on Dr. Oliver’s new
`literal infringement theory or present Dr. Oliver’s new DOE analyses. Id. at ¥ 782,
`784, 786, 793, 795, 797. Taction cannot submit these new theories in Dr. Oliver’s
`“affirmative” expert report under the guise of “responsive” opinions.
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`D. Appleis prejudiced by Dr. Oliver’s new theories
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`Despite Taction’s attempt to argue otherwise, the prejudice to Apple caused by
`Dr. Oliver’s new opinions 1s legion and specific. Apple was not able to take discovery
`on Taction’s new theories, which alter the scope of the claims. Taction’s late
`disclosure, after the close of fact discovery, prevented Apple from presenting
`responsive noninfringement and invalidity theories (1dentifying similar _
`- techniques), conducting responsive testing (e.g., varying input to the iPhone
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`6 vibration motor and measuring the power frequency response), or obtaining
`responsive invalidity expert testimony. Importantly, Apple was not able to identify
`additional invalidity witnesses or documents to support its responsive invalidity
`theories. Apple could not have predicted that Taction would overhaul its entire
`infringement case in expert discovery based on the vague reference to _
`- (with no explanation) in the contentions. Regardless of this actual prejudice—
`which 1s significant—"“prejudice 1s inherent when deadlines are disregarded in
`complex cases with extensive discovery....” Mot. at 6 (quoting Apotex).
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`Taction argues (at 12) that Apple “knew [about Taction’s theory] from other
`discovery,” but Taction points only to the deposition testimony of Dr. Biggs and its
`interrogatory response distinguishing the prior art, none of which refers to, much less
`adequately discloses, Dr. Oliver’s new infringement theory.
`
`Finally, Taction argues (at 10) that Apple did not dispute the sufficiency of
`Taction’s contentions. This 1s a red herring. The issue here 1s not whether the
`contentions were sufficient for what they disclosed, but whether they disclosed Dr.
`Oliver’s new theories. Apple could not have anticipated Taction’s new theories or
`judged the sufficiency of the contentions based on those new theories. Taction bears
`the burden of proving infringement and of adequately disclosing those theories.
`Under no circumstances does that burden shift to Apple.
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`II. THE ACCUSED PRODUCTS DO NOT MEET TWO LIMITATIONS
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`There 1s no genuine i1ssue of material fact that Apple’s Taptic Engines do not
`provide the “highly damped output™ as required by the claims and the intrinsic record.
`Nor do Apple’s Monolithic Products include a “plurality of magnets™ as required by
`the Court’s claim construction of this term. Thus, summary judgment 1s warranted.
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`A. Accused products lack a “transducer with highly damped output”
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`1. Taction has no viable claim of infringement
`Limited to its contentions, Taction cannot show infringement. Taction does not
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`attempt to demonstrate otherwise. Taction notes (at 14) only that “Dr. Oliver opined
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`that there would still be infringement even under Apple’s position that a ‘highly
`damped output’ indicates a low Q-factor.” That opinion, however, 1s based entirely
`on Dr. Oliver’s new theory of infringement, which should be excluded. Taction also
`argues (at 14) that summary judgment 1s inappropriate because Dr. Oliver provided
`contrary opinions. However, those contrary opinions are also new and should be
`excluded. Furthermore, even if not stricken, Dr. Oliver’s new opinions do not create
`any genuine issues of material fact. They create, at most, a dispute regarding the
`scope of the claims, which the Court can resolve as a matter of law.
`2. The Taptic Engines are not “highly damped” by ferrofluid
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`Taction does not dispute that Taptic Engines are not “highly damped” by
`ferrofluid. Instead, Taction argues that the “highly damped output” can be provided
`by any mechanism and accuses Apple’s _
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`a. Ferrofluid is the claimed damping mechanism
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`Each asserted claim recites “damp[ing] by a ferrofluid.” No other damping
`mechanism 1s claimed. Thus, the claims logically require ferrofluid to produce the
`“highly damped output.” Taction’s rebuttal arguments are meritless.
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`Because the claims already specify the damping mechanism—{ferrofluid—it
`was unnecessary for the Court to specify what produces the “highly damped output™
`as Taction argues (at 17). Taction also argues (at 17) that it would be legal error to
`require that the transducer be highly damped by ferrofluid because 1t would change
`the meaning of other claim terms. However, Taction cites no case law for this
`proposition, nor does it identify any claim term whose meaning would be changed.
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`Taction asserts (at 17) that the specification says other damping mechanisms
`could be used 1n addition to ferrofluid. But, although the specification does refer to
`other mechanical damping mechanisms, it does not teach (1) the use of those
`mechanisms in combination with ferrofluid, or (2) that any of those other mechanisms
`can achieve a “highly damped output.” ’885 patent at 4:6-9. The only example of a
`transducer with a highly damped output 1s damped by ferrofluid. Id. at 5:49-52.
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`Taction also argues (at 17) that the claims contemplate electrical damping because
`they refer to “electrical signals.” Again, Taction 1s wrong. The claims refer to
`“mechanical resonance ... in response to electrical signals.” Thus, if anything, the
`claims contemplate a lack of electrical damping.
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`Taction further argues (at 18-19) that many forms of damping can be used, that
`back EMF is present in any haptic transducer, and that a POSITA would have been
`aware of electronic damping mechanisms. But these alleged facts, even if true (they
`are not), are irrelevant. The claims expressly identify the damping mechanism—
`ferrofluid. Moreover, even if the Court does not find that ferrofluid must provide the
`“highly damped output,” the “highly damped output” must at least be provided by
`“mechanical damping.” First, the patents complain of a “lack of mechanical
`damping” in the prior art. ECF No. 1-2 at 2:1-2. Second, the patents expressly and
`undisputedly distinguished the claimed invention from prior art transducers with a
`mechanical Q-factor of 1.5 or more. Id. at 2:63-67. And third, the patents focus
`exclusively on mechanical damping (and ferrofluid in particular). /d. at 4:6-9, 9:36-
`41. Thus, the specification limits the claimed invention to mechanical damping.!
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`b. Taction’s argument invalidates its claims
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`The asserted patents do not disclose _ and Taction does not
`and cannot argue otherwise. Instead, Taction argues that “highly damped” in the
`claims covers damping from “any mechanism” whatsoever, including _
`-. But the specification does not disclose what Taction now claims infringes,
`and Taction’s reading would render the claims invalid for lack of written description.
`On the other hand, when “highly damped” is understood to be limited to ferrofluid (or
`at most mechanical means), there 1s no written description problem. Thus, unlike
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`Taction’s argument, Apple’s application 1s consistent with the “axiom that claims
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`! Taction’s argument (at n.19) that a genuine issue of fact exists misses the mark. Dr.
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`Oliver never argued that ferrofluid alone achieves a “highly damped output.”
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`DEFENDANT’S REPLY ISO MSJ, DAUBERT MOTIONS AND MOTION TO STRIKE
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`should be so construed, if possible, to sustain their validity.”* Opp’n at 25 n. 12.
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`Taction argues (at 24) that the written description requirement does not apply
`because “highly damped” 1s not in the claims. Not so. “Highly damped output™ 1s a
`limitation of the claims as construed, and the specification must provide Section 112
`support for that limitation. See, e.g., Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307,
`1319 (Fed. Cir. 2007) (finding limitation resulting from prosecution disclaimer was
`not enabled); Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed.
`Cir. 2013) (confirming that “the doctrine of prosecution history disclaimer narrows
`the meaning of the claim’) (emphasis added). Taction cites LizardTech, but that case
`does not hold that the Court’s construction can be ignored when analyzing written
`description, as Taction suggests. Instead, LizardTech—Ilike Tronzo, Rivera, and
`Amgen—confirms the specification must support the “full scope” of the claimed
`invention, so broader claims require more disclosure. Mot. at 17-20. Taction’s
`attempt (at 26) to dismiss 4mgen as related to enablement misses this point.
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`Taction next argues (at 25) that the Court found written description support for
`the “highly damped” limitation when it found the disclaimer. The Court’s Markman
`Order includes no such analysis. Moreover, Ormco, which found that a disclaimer
`limitation was not enabled, confirms that a finding of disclaimer 1s not a finding of
`Section 112 support. 498 F.3d at 1319: see also LizardTech, 424 F .3d at 1345-46.
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`Taction attempts (at 26) to distinguish 7ronzo and Rivera by arguing that
`ferrofluid can contribute to the highly damped output. But Tronzo and Rivera
`demonstrate the specification must support the full scope of the claimed invention.
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`Mot. at 17-21. And Taction’s brief does not dispute that the asserted patents lack
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`support for the alleged damping provided by Apple’s _
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`2 Taction (at n.12 and 29) asks the Court to revise its construction in view of this
`axiom if it 1s inclined to find the claims invalid, but, as noted in Rhine, which Taction
`cites, the axiom does not apply under Taction’s theory of infringement.
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`Furthermore, Apple i1s not arguing that Taction attempted to meet the ferrofluid
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`limitations with evidence of the _ as Taction suggests. Rather,
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`Apple 1s arguing that Taction 1s attempting to meet the “highly damped output”
`limitation with evidence of Apple’s _—a technology that 1s not
`described anywhere in the asserted patents. Id.
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`Taction further argues (at 26) that the patents do not “broadly claim ‘highly
`damped output.”” As construed, however, they do. ECF No. 141 at 13 (“the claimed
`invention 1s directed to ‘transducers with highly damped output’). And Taction’s
`interpretation covers all “highly damped outputs.” Thus, contrary to Taction’s
`argument, Taction’s interpretation, not the disclaimer itself, broadens the claims.
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`Finally, the appropriate question on written description is not what could have
`been provided, it 1s what the inventor actually possessed. Mot. at 17-19 (citing Ariad).
`Thus, Taction’s citation (at 27) of Dr. Okamura’s testimony that “damping beyond
`ferrofluid could be provided by electronic means, including _ 1S
`urelevant. Furthermore, no one, including Dr. Okamura, has argued that any-
`_ 1s inherently disclosed. Thus, Taction’s citation (at 27) of Yeda, which
`refers to inherent disclosure, 1s misplaced.
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`3. The Taptic Engines are not “highly damped”
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`Taction does not dispute that Apple’s Taptic Engines have a mechanical Q-
`factor much higher than 1.5.° Instead, Taction argues that “highly damped output”
`does not require a mechanical Q-factor less than 1.5. Taction 1s wrong.
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`a. “Highly damped” requires a Q-factor <1.5
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`The phrase “highly damped” 1s a term of degree that does not have a plain and
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`ordinary meaning. Thus, it 1s necessary to look to the written description, which
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`contains a specific test—the mechanical Q-factor must be less than 1.5. Consistent
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`3 Taction also offers its expert’s new “interpretation” of “highly damped output,” but
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`that should be rejected for the reasons explained in Apple’s Motion.
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`DEFENDANT’S REPLY ISO MSJ, DAUBERT MOTIONS AND MOTION TO STRIKE
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`with this test, the patents distinguish prior art for a “lack of mechanical damping” and
`because “no provision was made for critically damping.” *885 patent at 2:2, 2:64-66.
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`Taction first argues (at 15, 19) that the Court has already rejected Apple’s
`argument. Not so. The Court agreed with Apple that Taction disclaimed claim scope
`and added the “highly damped output” limitation in the Court’s Claim Construction
`Order. ECF No. 141 at 13. Accordingly, Apple did not present arguments regarding
`the proper test for a “highly damped output,” and the Court did not reject them.
`Moreover, during claim construction, the Court did not reject Apple’s disclaimer
`argument on the merits. /d. at 12 n.3. The Court declined to address that issue
`because it was not raised in Apple’s briefing. Id.
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`Taction next argues (at 19-20) that the mechanical Q-factor disclosure has no
`connection to the disclaimer. Taction is wrong. A mechanical Q-factor less than 1.5
`and a “highly damped output” refer to same thing—the level of damping required to
`practice the claimed invention. ECF No. 298-1 (Zinn Reb. Rpt.) at Y 90, 100.
`Nonetheless, Taction argues (at 20) that “when ‘highly damped output’ was used in
`the prosecution history, it was in the context of providing a flat frequency response,
`not a specific Q-factor or range of Q-factors.” This is a distinction without difference.
`The mechanical Q-factor, which measures the amount of mechanical damping, is
`determined from the frequency response. ECF No. 72-2 (Hayward Dec.) at 4 45; Ex.
`36 (Zinn Reb. Rpt.) at 99 69, 72. Thus, a “flat frequency response” provides a specific
`Q-factor (0.5). Id. The premise of Taction’s argument is wrong, as well. When
`Taction used “highly damped output” in the prosecution history, “to further highlight
`the distinction” it amended the claim at issue to recite “wherein the motion of the
`moveable member is damped to reduce the Q-factor.” ECF No. 72-5 at 65, 76. Thus,
`“highly damped output” was also used in the context of a Q-factor.
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`Finally, Taction argues (at 20) that the Q-factor test is improper because certain
`claims already recite a Q-factor. Taction cites no case law for this argument because
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`there is none. It is also meritless. Unlike the “mechanical Q-factor less than 1.5 test
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`DEFENDANT’S REPLY ISO MSJ, DAUBERT MOTIONS AND MOTION TO STRIKE
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`disclosed in the specification, the claimed Q-factor limitations provide no indication
`of the amount of damping required to achieve a “highly damped output.” They require
`only that the Q-factor is reduced. Thus, contrary to Taction’s arguments, the asserted
`claims do not already recite a specific Q-factor.
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`b. Taction’s arguments render the claims indefinite
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`“Highly damped output” is indisputably a term of degree. However, Taction
`has argued that determining what constitutes a “highly damped output” is not limited
`to the only Q-factor or to the only frequency response disclosed in its patents.
`Moreo