Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`
`IRONBURG INVENTIONS LTD. a
`United Kingdom Limited Company,
`
`Plaintiff,
`
`vs.
`
`VALVE CORPORATION, a
`Washington Corporation,
`
`Defendant.
`
`
`
`[DEMAND FOR JURY TRIAL]
`Civil Action No.
`1:15-cv-04219-TWT
`
`
`
`SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`
`IRONBURG INVENTIONS LTD. a
`United Kingdom Limited Company,
`
`Plaintiff,
`
`vs.
`
`VALVE CORPORATION, a
`Washington Corporation,
`
`Defendant.
`
`
`
`[DEMAND FOR JURY TRIAL]
`Civil Action No.
`1:15-cv-04219-TWT
`
`
`
`SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 2 of 17
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`Pursuant to Stipulation and Order (Dkt. No. 43.), Plaintiff Ironburg
`
`Inventions Ltd. (“Plaintiff”), by and through counsel, files this Second Amended
`
`Complaint for patent infringement and demand for jury trial against Defendant
`
`Valve Corporation (“Defendant”).
`
`Plaintiff alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Ironburg Inventions Ltd. (“Ironburg”) is a company organized and
`
`existing under the laws of the United Kingdom having its principal place of
`
`business at 10 Market Place, Wincanton, BA9 9LP, Great Britain.
`
`2.
`
`Ironburg conducts business in the United States by and through Scuf
`
`Gaming International, LLC (“Scuf Gaming”), a Georgia-based manufacturer,
`
`wholesaler, retailer, and restorer of custom video game equipment and accessories,
`
`including video game controllers (“gaming controllers”), which include Plaintiff’s
`
`patented technology.
`
`3.
`
`On information and belief, Defendant Valve Corporation (“Valve”) is a
`
`corporation organized and existing under the laws of the State of Washington,
`
`having a place of business at 10900 NE 4th Street, Suite 500, Bellevue,
`
`Washington 90084.
`
`///
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 3 of 17
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`JURISDICTION AND VENUE
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`4.
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`This is a complaint for patent infringement arising under the patent laws of
`
`the United States, 35 U.S.C. § 1 et seq. This Court has subject matter jurisdiction
`
`under 28 U.S.C. §§1331 and 1138(a).
`
`5.
`
`Defendant has committed acts and continues to commit acts within this
`
`District giving rise to this action, and venue is proper under 28 U.S.C. § 1391(b)
`
`and §1400(b).
`
`6.
`
`On February 4, 2014, United States Patent No. 8,641,525 (hereafter the
`
`“’525 Patent”) entitled, “CONTROLLER FOR VIDEO GAME CONSOLE,” was
`
`duly and legally issued to Plaintiff Ironburg. A copy of the ‘525 Patent is annexed
`
`hereto as Exhibit A.
`
`7.
`
`On July 28, 2015, United States Patent No. 9,089,770 (hereafter the “’770
`
`Patent”) entitled, “CONTROLLER FOR VIDEO GAME CONSOLE,” which is a
`
`continuation of the ‘525 Patent, was duly and legally issued to Plaintiff Ironburg.
`
`A copy of the ‘770 Patent is annexed hereto as Exhibit B.
`
`8.
`
`On March 22, 2016, United States Patent No. 9,289,688 (hereafter the “’688
`
`Patent”) entitled, “GAMES CONTROLLER,” was duly and legally issued to
`
`Plaintiff Ironburg. A copy of the ‘688 Patent is annexed hereto as Exhibit C.
`
`9.
`
`On May 31, 2016, United States Patent No. 9,352, 229 (hereinafter the ‘229
`
`
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`-2-
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 4 of 17
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`Patent) entitled “CONTROLLER FOR A GAMES CONTROLLER,” was duly and
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`legally issued to Ironburg. A copy of the ‘229 Patent is annexed hereto as
`
`Exhibit D.
`
`10. Plaintiff Ironburg is the owner and assignee of record of the ‘525, the ‘770,
`
`the ‘688 and the ‘229 Patents (together the “Patents-in-Suit”).
`
`FACTUAL BACKGROUND
`11. As part of its business, Plaintiff licenses its patents, including to Scuf
`
`Gaming and Microsoft Corporation.
`
`12. Defendant is presently making, using, importing, marketing, selling, and/or
`
`offering to sell gaming controllers, including but not limited to Defendant’s Steam
`
`Controller1, in this District and elsewhere in the United States that incorporate
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`Plaintiff’s patented technology.
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`13. The Patents-in-Suit all have claims directed to gaming controllers with
`
`controls located on the back of the controllers.
`
`14. At least as early as March 7, 2014, in written and oral communications with
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`Valve, Ironburg notified Valve that its marketing of gaming controllers, including
`
`Valve’s Steam Controller, infringed Ironburg’s gaming controller patents. In those
`
`1 Pictures of Defendant’s Steam Controller from Defendant’s website
`(http://store.steampowered.com), which has been marketing its controller at least
`since March 2014, are annexed hereto as Exhibit E.
`
`
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 5 of 17
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`pre-suit communications with Valve, Ironburg specifically identified Claims 1 and
`
`20 of the ‘525 Patent at issue in this suit (the two independent claims of that
`
`patent), as well as Ironburg’s then-pending patent applications, including one now
`
`issued as the ‘770 Patent at issue in this suit.
`
`15. On December 3, 2015, Ironburg notified Valve in writing that its marketing
`
`of gaming controllers, including Defendant’s Steam Controller, infringed the ‘525
`
`and ‘770 Patents at issue in this suit.
`
`16. On December 3, 2015, Ironburg filed the complaint which initiated this suit.
`
`In that Complaint, Ironburg notified Valve in writing that its marketing of gaming
`
`controllers, including Defendant’s Steam Controller, infringed the ‘525 and ‘770
`
`Patents at issue in this suit.
`
`17. On May 16, 2016, Ironburg filed its First Amended Complaint, which
`
`included allegations that Valve’s marketing of its gaming controllers, including
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`Defendant’s Steam Controller, infringed upon the ‘688 Patent, as well as the ‘525
`
`and ‘770 Patents.
`
`18. On June 13, 2016, Ironburg notified Valve in writing that its marketing of
`
`gaming controllers, including Defendant’s Steam Controller, infringed not only the
`
`‘525, ‘770 and ‘688 Patents atissue in this suit, but also the newly-issued ‘229
`
`Patent, including Claim 3 of the ‘229 Patent.
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 6 of 17
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`19. Despite the June 13, 2016 notice, as well as Ironburg’s previous
`
`communications with Valve regarding the ‘525, ‘770, and ‘688 Patents being
`
`infringed by Valve’s marketing of its controllers, as well as Ironburg filing suit on
`
`December 3, 2015, as of the date of this filing, Valve still continues to market
`
`those controllers in the U.S., including through its website (see
`
`http://store.steampowered.com/app/353370), and U.S. retailers like Amazon
`
`continue to sell those controllers (see, e.g., https://www.amazon.com/Steam-
`
`Controller-SteamOS/dp/B016KBVBCS).
`
`COUNT I
`(Infringement Of U.S. Patent No. 8,641,525)
`
`20. Plaintiff repeats and realleges Paragraphs 1 through 19 of this complaint as
`
`if fully set forth herein.
`
`21. Gaming controller products made, used and sold by the defendant, including
`
`Defendant's Steam Controller, infringe the '525 patent. Defendant's Steam
`
`Controller is a hand held controller that closely resembles the controller depicted in
`
`the patent. Each and every claim in the '525 patent is directed to a hand held
`
`controller. There are only two independent claims in the '525 patent: Claims 1 and
`
`20. They are similar, but Claim 1 includes a limitation that Claim 20 does not
`
`(Claim 20 does not specify that an element is resilient and flexible). Claims 1 and
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`20 include the following claim elements: (1) an outer case, (2) a front control, (3)
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 7 of 17
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`shaped to be held in the hand of a user such that the user's thumb is positioned to
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`operate the front control, and (4) two back controls with elongated members.
`
`Defendant's Steam Controller is a hand held controller that includes the
`
`aforementioned claim elements, viz., (1) an outer case, (2) a front control, (3)
`
`shaped to be held in the hand of a user such that the user's thumb is positioned to
`
`operate the front control, and (4) two back controls with elongated members. The
`
`remaining claims of the patent include the elements of Claim 1 and add additional
`
`limitations. For example, Claim 2 further requires a top control, Claim 7 further
`
`requires that each elongate member is mounted within a recess of the case of the
`
`controller, and Claim 15 further requires a switch mechanism disposed between
`
`each of the elongate members and an outer surface of the back of the controller.
`
`The Steam Controller includes each element of exemplary Claims 1, 2, 7 and 15.
`
`Plaintiff contends that the infringement is literal, but reserves the right to rely on
`
`the doctrine of equivalents.
`
`22. Defendant’s acts of infringement of the ‘525 Patent have caused and will
`
`continue to cause Plaintiff substantial and irreparable injury, for which Plaintiff is
`
`entitled to receive injunctive relief and damages adequate to compensate Plaintiff
`
`for such infringement.
`
`23. Plaintiff is entitled to damages under 35 U.S.C. § 284 for Defendant’s
`
`
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`-6-
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 8 of 17
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`infringement of one or more claims of the ‘525 Patent.
`
`COUNT II
`(Infringement Of U.S. Patent No. 9,089,770)
`
`24. Plaintiff repeats and realleges Paragraphs 1 through 23 of this complaint as
`
`if fully set forth herein.
`
`25. Gaming controller products made, used and sold by the defendant, including
`
`Defendant's Steam Controller, infringe the '770 patent. Defendant's Steam
`
`Controller is a hand held controller that closely resembles the controller depicted in
`
`the patent. Each and every claim in the '770 patent is directed to a gaming
`
`controller. There is only one independent claim in the '770 patent: Claim 1.
`
`Claim 1 includes the following claim elements: (1) an outer case, (2) two back
`
`controls with elongated members, (3) the first back control extending at least half
`
`the distance between the top and bottom of the controller, and (4) the second back
`
`control also extending at least half the distance between the top and bottom of the
`
`controller. Defendant's Steam Controller is a hand held controller that includes the
`
`aforementioned claim elements, viz., (1) an outer case, (2) two back controls with
`
`elongated members, (3) the first back control extending at least half the distance
`
`between the top and bottom of the controller, and (4) the second back control also
`
`extending at least half the distance between the top and bottom of the controller.
`
`The remaining claims of the patent include the elements of Claim 1 and add
`
`
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`-7-
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 9 of 17
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`additional limitations. For example: Claim 3 further requires that the bottom edge
`
`of the controller includes a first and a second convex handle with a medial portion
`
`in between; Claim 4 further requires that the first distance [for measuring length of
`
`back controls] is between the top edge and the medial portion in Claim 3; Claim 5
`
`further requires that the medial portion in Claim 3 is closer to the top edge than a
`
`distal end of the first and second handles; Claim 6 further requires that the back
`
`includes a recesses between the first and second handles; Claim 7 further requires
`
`that the recess in Claim 6 is recessed towards the front; Claim 8 further requires
`
`that the two elongate members are positioned at or adjacent the transition edge
`
`between each handle and the recess; and, Claim 9 further requires that the first and
`
`second handles protrude outwards from the recess. The Steam Controller includes
`
`each element of exemplary Claims 1, 3, 4-6 and 7-9. Plaintiff contends that the
`
`infringement is literal, but reserves the right to rely on the doctrine of equivalents.
`
`26. Defendant’s acts of infringement of the ’770 Patent have caused and will
`
`continue to cause Plaintiff substantial and irreparable injury, for which Plaintiff is
`
`entitled to receive injunctive relief and damages adequate to compensate Plaintiff
`
`for such infringement.
`
`27. Plaintiff is entitled to damages under 35 U.S.C. § 284 for Defendant’s
`
`infringement of one or more claims of the ‘770 Patent.
`
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`-8-
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 10 of 17
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`COUNT III
`(Infringement Of U.S. Patent No. 9,289,688)
`
`28. Plaintiff repeats and realleges Paragraphs 1 through 27 of this complaint as
`
`if fully set forth herein.
`
`29. Gaming controller products made, used and sold by the defendant, including
`
`Defendant's Steam Controller, infringe the '688 patent. Defendant's Steam
`
`Controller is a hand held controller that closely resemble the controller depicted in
`
`the patent. Each and every claim in the '688 patent is directed to a games
`
`controller. There are only two independent claims in the '688 patent: Claims 1 and
`
`30. They are similar, but Claim 1 is directed to a controller with certain features
`
`and controls, and Claim 30 is directed to features and controls. Claim 1 includes
`
`the following claim elements: (1) an outer case, (2) multiple controls on the front
`
`and top of the case, (3) the case shaped to be held in two hands with the user's
`
`thumbs operating the top controls and index fingers operating the front controls,
`
`(4) at least one additional back control with an elongate member that is operable by
`
`the user’s middle, ring or little finger, (5) and the elongate member has one side
`
`disposed proximate an outer surface of the case and the opposite side is non-
`
`parallel with that outer surface. Defendant's Steam Controller is a hand held
`
`controller that includes the aforementioned claim elements, viz., (1) an outer case,
`
`(2) multiple controls on the front and top of the case, (3) the case shaped to be held
`
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`-9-
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 11 of 17
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`in two hands with the user's thumbs operating the top controls and index fingers
`
`operating the front controls, (4) at least one additional back control with an
`
`elongate member that is operable by the user’s middle, ring or little finger, (5) and
`
`the elongate member has one side disposed proximate an outer surface of the case
`
`and the opposite side is non-parallel with that outer surface. The remaining claims
`
`of the patent include the elements of Claim 1 and add additional limitations. The
`
`Steam Controller includes each element of exemplary Claim 1. Plaintiff contends
`
`that the infringement is literal, but reserves the right to rely on the doctrine of
`
`equivalents.
`
`30. Defendant’s acts of infringement of the ’688 Patent have caused and will
`
`continue to cause Plaintiff substantial and irreparable injury, for which Plaintiff is
`
`entitled to receive injunctive relief and damages adequate to compensate Plaintiff
`
`for such infringement.
`
`31. Plaintiff is entitled to damages under 35 U.S.C. § 284 for Defendant’s
`
`infringement of one or more claims of the ‘688 Patent.
`
`COUNT IV
`(Infringement Of U.S. Patent No. 9,352, 229)
`32. Plaintiff repeats and realleges Paragraphs 1 through 31 of this complaint as
`
`if fully set forth herein.
`
`33. Gaming controller products made, used and sold by the defendant, including
`
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 12 of 17
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`Defendant’s Steam Controller, infringe the ‘229 patent. Defendant's Steam
`
`Controller is a hand held controller that closely resembles the controller depicted in
`
`the patent. Each and every claim in the ‘229 patent is directed to a games
`
`controller. There are only two independent claims in the ‘229 patent: Claims 1
`
`and 24. They are similar, but Claim 24 also includes an element for a mounting
`
`plate on the back of the controller. Claim 1 includes the following claim elements:
`
`(1) an outer case, (2) multiple controls on the front and top of the case, (3) the case
`
`is shaped to be held in two hands with the user's thumbs operating the top controls
`
`and index fingers operating the front controls, (4) at least one additional back
`
`control with an elongate member that is operable by the user’s middle finger, (5)
`
`the additional control is inherently resilient and flexible and can be displaced by
`
`the user to activate a control function, and (6) the elongate member is at least
`
`partially disposed in a respective channel located on the back of the outer case (the
`
`channel being elongated along a longitudinal dimension of the elongate member).
`
`Defendant's Steam Controller is a hand held controller that includes the
`
`aforementioned claim elements, viz., (1) an outer case, (2) multiple controls on the
`
`front and top of the case, (3) the case is shaped to be held in two hands with the
`
`user's thumbs operating the top controls and index fingers operating the front
`
`controls, (4) at least one additional back control with an elongate member that is
`
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 13 of 17
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`operable by the user’s middle finger, (5) the additional control is inherently
`
`resilient and flexible and can be displaced by the user to activate a control function,
`
`and (6) the elongate member is at least partially disposed in a respective channel
`
`located on the back of the outer case (the channel being elongated along a
`
`longitudinal dimension of the elongate member). The remaining claims of the
`
`patent include the elements of Claim 1 and add additional limitations. For
`
`example, Claim 3 further requires that the elongate member comprises a first
`
`dimension and the controller comprises a cover portion forming a conduit
`
`enclosing the elongate member within the respective channel along a portion of the
`
`first dimension of the elongate member. The Steam Controller includes each
`
`element of exemplary Claims 1 and 3. Plaintiff contends that the infringement is
`
`literal, but reserves the right to rely on the doctrine of equivalents.
`
`34. Defendant’s acts of infringement of the ‘229 Patent have caused and will
`
`continue to cause Plaintiff substantial and irreparable injury, for which Plaintiff is
`
`entitled to receive injunctive relief and damages adequate to compensate Plaintiff
`
`for such infringement.
`
`35. Plaintiff is entitled to damages under 35 U.S.C. § 284 for Defendant’s
`
`infringement of one or more claims of the ‘229 Patent.
`
`///
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`-12-
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 14 of 17
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`INCREASED DAMAGES UNDER 35 U.S.C. § 284
`36. Plaintiff repeats and realleges Paragraphs 1 through 35 of this Complaint as
`
`if fully set forth herein.
`
`37. Plaintiff is entitled to increased or enhanced damages under 35 U.S.C.
`
`Section 284 for ongoing egregious and willful misconduct. Valve’s infringement
`
`has been and is willful and its conduct has been and is egregious.
`
`38. Valve’s egregious and willful misconduct includes but is not limited to the
`
`continued, deliberate sale of gaming controllers, including the Steam Controller,
`
`despite repeated and ever increasing notifications and cease and desist demands
`
`from Ironburg that the Steam Controller infringes at least four patents. Valve's
`
`egregious conduct is beyond what is found in a typical patent case.
`
`39. Valve has and continues to sell the accused controllers despite actual
`
`knowledge that the Steam Controller that it continues to sell actually infringes at
`
`least the four patents at issue in this suit.
`
`40. Additionally, Valve acted despite a high likelihood that its actions, including
`
`but not limited to its marketing and sales of Valve’s Steam Controller, constituted
`
`infringement of the Patents-in-Suit. Valve acted despite the fact that the risk of
`
`infringement should have been known to the Valve and was actually known to
`
`Valve since at least March 7, 2014. Valve’s infringement, including but not
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 15 of 17
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`limited to its marketing and sales of the Steam Controller, has been with actual
`
`notice of infringement of each of the Patents-in-Suit, including as a result of
`
`Ironburg’s communications with Valve regarding Defendant’s Steam Controller
`
`and Ironburg’s patents and patent applications.
`
`REQUEST FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully requests that this Court grant the
`
`following relief:
`
`A. The entry of judgment declaring that Defendant has infringed each of the
`
`Patents-in-Suit;
`
`B. An award of all available damages, including, but not limited to any lost
`
`profits from Defendant’s infringement of the Patents-in-Suit, but in any event not
`
`less than a reasonable royalty, together with pre-judgment and post-judgment
`
`interest;
`
`C. An injunction restraining Defendant and its affiliates, subsidiaries,
`
`officers, directors, agents, servants, employees, representatives, licensees,
`
`successors, assigns, and all those acting for them and on their behalf, from further
`
`infringement of the Patents-in-Suit, as well as inducements of infringement and
`
`contributions to infringement of the Patents-in-Suit;
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`D. The entry of an order declaring that this is an exceptional case and
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 16 of 17
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`awarding Plaintiff its costs, expenses, and reasonable attorney fees under 35 U.S.C.
`
`§ 285 and all other applicable statutes, rules, and common law;
`
`E. An award of enhanced and treble damages under 35 U.S.C. § 284 for
`
`Defendant's egregious conduct beyond what is found in a typical patent case; AND
`
`F. An order awarding Plaintiff any such other relief as the Court may deem
`
`just and proper under the circumstances.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff demands trial by jury on all claims and issues so triable.
`
`
`
`Dated: August 15, 2016
`
`Respectfully submitted,
`
`By: /s/ Robert D. Becker
`Robert D. Becker, pro hac vice
`CA Bar No. 160648
`MANATT, PHELPS & PHILLIPS, LLP
`1841 Page Mill Road, Suite 200
`Palo Alto, CA 94304
`Telephone: (650) 812-1300
`Facsimile: (650) 213-0260
`
`Cynthia R. Parks, local counsel
`GA Bar No. 563929
`PARKS IP LAW LLC
`730 Peachtree St. NE, Suite 600
`Atlanta, GA 30308
`Telephone: (678) 365-4444
`Facsimile: (678) 365-4450
`
`Attorneys for Plaintiff
`IRONBURG INVENTIONS LTD.
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`Case 1:15-cv-04219-TWT Document 44 Filed 08/15/16 Page 17 of 17
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 15, 2016, I served the foregoing with the
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`Clerk of Court using the CM/ECF system which will automatically send email
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`notification of such filing to the attorneys of record.
`
`
`
`
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`
`
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`
`
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`
`
`/s/ Robert D. Becker
`Robert D. Becker
`
`
`
`317406708.5
`
`
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`-16-
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`
`
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