Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 1 of 69
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`Civil Action No. 1:15-cv-04219-TWT
`
`
`
`IRONBURG INVENTIONS LTD.,
`
`Plaintiff,
`
`v.
`
`VALVE CORPORATION,
`
`Defendant.
`
`
`
`DEFENDANT VALVE CORPORATION’S ANSWER, AFFIRMATIVE
`DEFENSES AND COUNTERCLAIMS TO IRONBURG’S SECOND
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Valve Corporation (“Valve”) files its Answer, Affirmative
`
`
`
`Defenses, and Counterclaims to Plaintiff Ironburg Inventions Ltd.’s (“Ironburg”)
`
`Second Amended Complaint for Patent Infringement (“Second Amended
`
`Complaint”). Except as expressly admitted below, Valve denies each and every
`
`allegation set forth in the Second Amended Complaint. Valve responds to the
`
`numbered paragraphs of the Second Amended Complaint and prayer for relief as
`
`follows:
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`Civil Action No. 1:15-cv-04219-TWT
`
`
`
`IRONBURG INVENTIONS LTD.,
`
`Plaintiff,
`
`v.
`
`VALVE CORPORATION,
`
`Defendant.
`
`
`
`DEFENDANT VALVE CORPORATION’S ANSWER, AFFIRMATIVE
`DEFENSES AND COUNTERCLAIMS TO IRONBURG’S SECOND
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Valve Corporation (“Valve”) files its Answer, Affirmative
`
`
`
`Defenses, and Counterclaims to Plaintiff Ironburg Inventions Ltd.’s (“Ironburg”)
`
`Second Amended Complaint for Patent Infringement (“Second Amended
`
`Complaint”). Except as expressly admitted below, Valve denies each and every
`
`allegation set forth in the Second Amended Complaint. Valve responds to the
`
`numbered paragraphs of the Second Amended Complaint and prayer for relief as
`
`follows:
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`
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`
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 2 of 69
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`THE PARTIES
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`1.
`
`Valve lacks knowledge or information sufficient to form a belief
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`about the allegations in Paragraph 1 and therefore denies them.
`
`2.
`
`Valve lacks knowledge or information sufficient to form a belief
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`about the allegations in Paragraph 2 and therefore denies them.
`
`3.
`
`Valve’s zip code is 98004. Valve admits the remaining allegations in
`
`Paragraph 3.
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`JURISDICTION AND VENUE
`
`4.
`
`Valve admits that Ironburg purports to bring an action for patent
`
`infringement arising under the patent laws of the United States, 35 U.S.C. § 1 et
`
`seq. Valve admits this Court has subject matter jurisdiction over meritorious
`
`actions for patent infringement generally under 28 U.S.C. §§ 1331 and 1338(a).
`
`5.
`
`Valve denies that Ironburg states a meritorious claim of patent
`
`infringement against Valve and denies that it has committed any acts of
`
`infringement in this District or elsewhere. Valve further denies that venue over
`
`Ironburg’s patent infringement claims is proper under 28 U.S.C. § 1391(b) and
`
`§1400(b). Valve denies that this District is the most convenient venue for
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`adjudicating Ironburg’s claims against Valve.
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`
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`2
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 3 of 69
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`6.
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`Valve admits that Exhibit A to the Second Amended Complaint
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`appears to be an uncertified copy of U.S. Patent No. 8,641,525 (“the ‘525 Patent”),
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`entitled “CONTROLLER FOR VIDEO GAME CONSOLE.” Valve denies the
`
`‘525 Patent was duly and legally issued. Valve is without knowledge or
`
`information sufficient to form a belief regarding the remaining allegations set forth
`
`in Paragraph 6 and therefore denies them.
`
`7.
`
`Valve admits that Exhibit B to the Second Amended Complaint
`
`appears to be an uncertified copy of U.S. Patent No. 9,089,770 (“the ‘770 Patent”),
`
`entitled “CONTROLLER FOR VIDEO GAME CONSOLE.” Valve denies the
`
`‘770 Patent was duly and legally issued. Valve is without knowledge or
`
`information sufficient to form a belief regarding the remaining allegations set forth
`
`in Paragraph 7 and therefore denies them.
`
`8.
`
`Valve admits that Exhibit C to the Second Amended Complaint
`
`appears to be an uncertified copy of U.S. Patent No. 9,289,688 (“the ‘688 Patent”),
`
`entitled “GAMES CONTROLLER.” Valve denies the ‘688 Patent was duly and
`
`legally issued. Valve is without knowledge or information sufficient to form a
`
`belief regarding the remaining allegations set forth in Paragraph 8 and therefore
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`denies them.
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`3
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 4 of 69
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`9.
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`Valve admits that Exhibit D to the Second Amended Complaint
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`appears to be an uncertified copy of U.S. Patent No. 9,352,229 (“the ‘229 Patent”),
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`entitled “CONTROLLER FOR A GAMES CONSOLE.” Valve denies the ‘229
`
`Patent was duly and legally issued. Valve is without knowledge or information
`
`sufficient to form a belief regarding the remaining allegations set forth in
`
`Paragraph 9 and therefore denies them.
`
`10. Valve is without information sufficient to form a belief as to any of
`
`the allegations set forth in Paragraph 10 and therefore denies them.
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`FACTUAL BACKGROUND
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`11. Valve is without information sufficient to form a belief as to any of
`
`the allegations set forth in Paragraph 11 and therefore denies them.
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`12. Valve admits it is presently offering to sell a product branded as
`
`Steam Controller in this District and elsewhere in the United States. Valve denies
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`that the Steam Controller incorporates Plaintiff’s patented technology. Valve
`
`denies that it has marketed the controller depicted in Exhibit E to Ironburg’s
`
`Second Amended Complaint since at least March 2014. Valve denies the
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`remaining allegations in Paragraph 12.
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`13. Valve admits that each Patent-in-Suit has one or more claims directed
`
`to a gaming controller with one or more controls located on the back of the
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`
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`4
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 5 of 69
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`controller, as those terms are described in the specification of each of the Patents-
`
`in-Suit.
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`14. Valve admits that Cynthia Parks, an attorney purporting to represent
`
`both Scuf Gaming (“Scuf”) and Ironburg, sent a letter to Gabe Newell, the CEO of
`
`Valve, dated March 7, 2014, entitled “Re: Infringement of U.S. Patent Nos.
`
`8,641,525 and D667,892,” which states in part that “Ironburg Inventions own
`
`patents and pending patent applications directed to gaming controllers, to which
`
`Scuf holds exclusive rights in the United States. It has come to Scuf’s attention
`
`through multiple sources that Valve Corporation is marketing certain controller
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`designs that incorporate features that are the subject of at least two Scuf patents.”
`
`Valve also admits that the March 7, 2014 letter recites the text of Claims 1 and 20
`
`of the ‘525 Patent. Valve denies the remaining allegations in Paragraph 14.
`
`15. Valve admits that after Ironburg filed its Original Complaint in this
`
`lawsuit [D.I. 1] alleging infringement of the ‘525 and ‘770 Patents, Robert D.
`
`Becker, an attorney purporting to represent Ironburg, sent a letter to Karl
`
`Quackenbush, General Counsel of Valve, dated December 3, 2015. The letter
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`states, in part, that “Valve Corporation is marketing certain game control products,
`
`including the Steam Controller, that incorporate features that are the subject of
`
`multiple patents owned by Ironburg, including [the ‘525 and ‘770 Patents].” Mr.
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`5
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 6 of 69
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`Becker acknowledges in the letter itself that it was sent to Mr. Quackenbush after
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`Ironburg had already filed its Original Complaint, stating, “If we do not receive a
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`satisfactory response to this letter within ten days, Ironburg intends to pursue its
`
`legal options, which may include service of a Complaint for Patent Infringement
`
`that has been recently filed against Valve in District Court.” Valve denies the
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`remaining allegations in Paragraph 15.
`
`16. Valve admits that on December 3, 2015, prior to sending the letter
`
`described in Paragraph 15 of Ironburg’s Second Amended Complaint, Ironburg
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`filed its Original Complaint against Valve alleging that Valve’s Steam Controller
`
`infringes one or more claims of the ‘525 and ‘770 Patents. Valve denies the
`
`remaining allegations in Paragraph 16.
`
`17. Valve admits the allegations in Paragraph 17.
`
`18. Valve admits that on June 13, 2016, Robert D. Becker, an attorney
`
`representing Ironburg, sent a letter to Patrick A. Lujin, an attorney representing
`
`Valve, alleging the Steam Controller infringes the ‘229 Patent, including claim 3
`
`of the ‘229 Patent. On July 7, 2016, Valve responded to this letter, providing
`
`specific support for its belief that it does not infringe asserted claims 1 and 3 of the
`
`‘229 Patent and that at least claim 1 of the ‘229 Patent is invalid as either
`
`anticipated or obvious. Valve denies the remaining allegations in Paragraph 18.
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`6
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 7 of 69
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`19. Valve admits it is presently marketing a product branded as Steam
`
`Controller. Valve denies that the Steam Controller infringes any claim of the ‘525,
`
`‘770, ‘688, and ‘229 Patents. Valve denies the remaining allegations in Paragraph
`
`19.
`
`COUNT I
`(Alleged Infringement of U.S. Patent No. 8,641,525)
`
`20. Valve repeats and incorporates by reference each of the responses set
`
`forth in response to Paragraph 1 through 19.
`
`21. Valve denies the allegations set forth in Paragraph 21. Valve denies
`
`that the Steam Controller closely resembles the controller depicted in the ‘525
`
`Patent. Valve denies that it has infringed any claim of the ‘525 Patent literally or
`
`under the doctrine of equivalents. Valve also denies that the Steam Controller
`
`contains each element required by any claim of the ‘525 Patent, including
`
`exemplary Claims 1, 2, 7 and 15 of the ‘525 Patent, at least because it lacks “a first
`
`back control and a second back control, each back control being located on the
`
`back of the controller and each back control including an elongate member that
`
`extends substantially the full distance between the top edge and the bottom edge.”
`
`The remaining allegations in this paragraph are either argument or legal
`
`conclusions to which no response is required.
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`
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`7
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 8 of 69
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`22. Valve denies the allegations set forth in Paragraph 22, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
`
`23. Valve denies the allegations set forth in Paragraph 23, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
`
`COUNT II
`(Alleged Infringement of U.S. Patent No. 9,089,770)
`
`24. Valve repeats and incorporates by reference each of the responses set
`
`forth in response to Paragraph 1 through 23.
`
`25. Valve denies the allegations set forth in Paragraph 25. Valve denies
`
`that the Steam Controller closely resembles the controller depicted in the ‘770
`
`Patent. Valve denies that it has infringed the ‘770 Patent literally or under the
`
`doctrine of equivalents. Valve also denies that the Steam Controller contains each
`
`element required by any claims of the ‘770 Patent, including exemplary Claims 1,
`
`3, 4-6 and 7-9, at least because it lacks
`
`a first back control and a second back control, wherein each of the
`first back control and the second back control is located at the back of
`the controller, wherein the first back control includes a first elongate
`8
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 9 of 69
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`member and the second back control includes a second elongate
`member; wherein the first elongate member extends along at least half
`of a first distance between the top edge and the bottom edge, the first
`distance being measured along a longitudinal axis of the first elongate
`member; and wherein the second elongate member extends along at
`least half of a second distance between the top edge and the bottom
`edge, the second distance being measured along a longitudinal axis of
`the second elongate member.
`
`The remaining allegations in this paragraph are either argument or legal
`
`conclusions to which no response is required.
`
`26. Valve denies the allegations set forth in Paragraph 26, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
`
`27. Valve denies the allegations set forth in Paragraph 27, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
`
`COUNT III
`(Alleged Infringement of U.S. Patent No. 9,289,688)
`
`28. Valve repeats and incorporates by reference each of the responses set
`
`forth in response to Paragraph 1 through 27.
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`
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`9
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 10 of 69
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`29. Valve denies the allegations set forth in Paragraph 29. Valve denies
`
`that the Steam Controller closely resembles the controller depicted in the ‘688
`
`Patent. Valve denies that it has infringed the ‘688 Patent literally or under the
`
`doctrine of equivalents. Valve also denies that the Steam Controller contains each
`
`element required by any claims of the ‘688 Patent, including exemplary Claim 1 at
`
`least because it lacks
`
`at least one first additional control located on a back of the case in a
`position operable by a middle, ring or little finger of the user, the first
`additional control comprising a first elongate member displaceable by
`the user to activate a control function, wherein the first elongate
`member comprises a first surface disposed proximate an outer surface
`of the case and the first elongate member comprises a second surface
`opposing the first surface, the second surface being configured and
`arranged to be non-parallel with a portion of the outer surface of the
`back of the case to which the first elongate member is mounted.
`
`The remaining allegations in this paragraph are either argument or legal
`
`conclusions to which no response is required.
`
`30. Valve denies the allegations set forth in Paragraph 30, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
`
`31. Valve denies the allegations set forth in Paragraph 31, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`
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`10
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 11 of 69
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`this paragraph are either argument or legal conclusions to which no response is
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`required.
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`
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`COUNT IV
`(Alleged Infringement of U.S. Patent No. 9,352,229)
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`32. Valve repeats and incorporates by reference each of the responses set
`
`forth in response to Paragraph 1 through 31.
`
`33. Valve denies the allegations set forth in Paragraph 33. Valve denies
`
`that the Steam Controller closely resembles the controller depicted in the ‘229
`
`Patent. Valve denies that it has infringed the ‘229 Patent literally or under the
`
`doctrine of equivalents. Valve also denies that the Steam Controller contains each
`
`element required by any claims of the ‘229 Patent, including exemplary Claims 1
`
`and 3 at least because it lacks:
`
`at least one additional control located on a back of the outer case in a
`position operable by the user’s middle finger, the additional control
`comprising an elongate member which is inherently resilient and
`flexible such that it can be displaced by the user to activate a control
`function, wherein 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 allegations in this paragraph are either argument or legal
`
`conclusions to which no response is required.
`
`
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`11
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 12 of 69
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`34. Valve denies the allegations set forth in Paragraph 34, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
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`35. Valve denies the allegations set forth in Paragraph 35, and specifically
`
`denies that it committed any acts of infringement. The remaining allegations in
`
`this paragraph are either argument or legal conclusions to which no response is
`
`required.
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`INCREASED DAMAGES UNDER 35 U.S.C. § 284
`
`36. Valve repeats and incorporates by reference each of the responses set
`
`forth in response to Paragraph 1 through 35.
`
`37. Valve denies that Ironburg is entitled to increased or enhanced
`
`damages under 35 U.S.C. § 284. Valve denies that it has engaged in egregious or
`
`willful misconduct. Valve denies that it has infringed any of the Patents-in-Suit.
`
`38. Valve denies the allegations set forth in Paragraph 38.
`
`39. Valve denies that it has infringed any of the Patents-in-Suit. Valve
`
`denies the remaining allegations in Paragraph 39.
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`40. Valve denies that it has infringed any of the Patents-in-Suit or that it
`
`has acted despite a high likelihood that its actions constitute infringement of any of
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`
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`12
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 13 of 69
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`the Patents-in-Suit. Valve denies that any risk of infringement should have been
`
`known to Valve or was actually known by Valve at any time. Valve denies the
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`remaining allegations in Paragraph 40.
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`REQUEST FOR RELIEF
`
`
`
`Paragraphs A through F following the Request for Relief each contains a
`
`request for relief to which no response is required. To the extent a response is
`
`required, Valve denies that Ironburg is entitled to any relief from Valve in
`
`connection with Ironburg’s Second Amended Complaint, including without
`
`limitation, the relief specified in Paragraphs A through F of the Request for Relief.
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`VALVE’S AFFIRMATIVE DEFENSES
`
`
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`Valve pleads the following as affirmative defenses to Ironburg’s Second
`
`Amended Complaint. Valve reserves the right to amend its Answer to add
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`additional affirmative defenses not presented herein, including but not limited to,
`
`those defenses revealed during discovery. Without admitting or acknowledging
`
`that Valve bears the burden of proof as to any of the following, based on
`
`information and belief, Valve asserts the following defenses:
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`13
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 14 of 69
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`FIRST AFFIRMATIVE DEFENSE
`(Invalidity of the ‘525, ‘770, ‘688, and ‘229 Patents)
`
`At least the asserted claims of the ‘525, ‘770, ‘688, and ‘229 Patents are
`
`
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`invalid for failure to meet the conditions of patentability and/or otherwise
`
`complying with one or more provisions of 35 U.S.C. §§ 101 et seq., including 35
`
`U.S.C. §§ 101, 102, 103, and/or 112. Valve incorporates by reference the
`
`invalidity allegations in its counterclaims.
`
`SECOND AFFIRMATIVE DEFENSE
`(Non-infringement of the Asserted Patents)
`
`Valve has not directly infringed, and does not infringe, either literally or
`
`
`
`under the doctrine of equivalents, any asserted claim of the ‘525, ‘770, ‘688, and
`
`‘229 Patents. Valve incorporates by reference the non-infringement allegations in
`
`its counterclaims.
`
`THIRD AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel/Disclaimer)
`
`Ironburg’s claims for infringement of the ‘525, ‘770, ‘688, and ‘229 Patents
`
`
`
`are barred, in whole or in part, by the doctrines of prosecution history estoppel
`
`and/or prosecution disclaimer due to representations, amendments, arguments, and
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`admissions made to the United States Patent and Trademark Office during the
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`prosecution of the ‘525, ‘770, ‘688, and ‘229 Patents.
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`14
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`FOURTH AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
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`Ironburg’s Second Amended Complaint fails to state a claim upon which
`
`
`
`relief can be granted.
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`FIFTH AFFIRMATIVE DEFENSE
`(Unenforceability Due to Inequitable Conduct)
`
`The ‘525 and ‘770 Patents are unenforceable due to inequitable conduct
`
`
`
`committed before the United States Patent and Trademark Office (“USPTO”)
`
`during the pendency of one or more patent applications relating to the ‘525 and
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`‘770 Patents, including those acts and omissions that are set forth with particularity
`
`in Valve’s “COUNT IX (Declaration of Unenforceability of U.S. Patent Nos.
`
`8,641,525 and 9,089,770 Due to Inequitable Conduct),” which is hereby
`
`incorporated by reference.
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`SIXTH AFFIRMATIVE DEFENSE
`(35 U.S.C. §§ 286-288)
`
`Ironburg’s claim for damages is barred, in whole or in part, by 35 U.S.C. §§
`
`
`
`286, 287, and/or 288.
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`15
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 16 of 69
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`SEVENTH AFFIRMATIVE DEFENSE
`(No Willful Infringement/No Enhanced Damages)
`
`Should Valve be found to infringe the ‘525, ‘770,‘688, and/or ‘229 Patents,
`
`
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`such infringement was not willful. Ironburg is not entitled to enhanced damages
`
`under 35 U.S.C. § 284.
`
`VALVE’S COUNTERCLAIMS
`
`Valve incorporates by reference its above responses as if fully set forth
`
`
`
`herein. In accordance with Rule 13 of the Federal Rules of Civil Procedure, Valve
`
`asserts the following counterclaims against Ironburg:
`
`PARTIES
`
`Counterclaim-Plaintiff Valve is a Washington corporation having its
`
`1.
`
`principal place of business at 10900 NE 4th Street, Suite 500, Bellevue,
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`Washington 98004.
`
`2.
`
`On information and belief, Ironburg is a company organized and
`
`existing under the laws of the United Kingdom, with a principal place of business
`
`at 10 Market Place, Wincanton, BA9 9LP, Great Britain.
`
`JURISDICTION
`
`3.
`
`The Court has subject matter jurisdiction under 28 U.S.C. §§ 1331,
`
`1338(a), the patent laws of the United States, 35 U.S.C. § 1 et seq., and the
`
`Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202.
`16
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 17 of 69
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`4.
`
`Ironburg has consented to this Court’s personal jurisdiction by
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`commencing its action for patent infringement against Valve in this Court.
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`VENUE
`
`To the extent the action initiated by Ironburg is adjudicated in this
`
`5.
`
`District, venue is proper within this District pursuant to 28 U.S.C. § 1391(b) and
`
`(c). However, venue in this district is not convenient or in the interests of justice
`
`under 28 U.S.C. § 1404(a).
`
`COUNT I
`(Declaration of Invalidity of U.S. Patent No. 8,641,525)
`
`Valve repeats and realleges Paragraphs 1
`
`through 5 of
`
`its
`
`6.
`
`Counterclaims.
`
`7.
`
`All claims of the ‘525 Patent, including at least claims 1, 2, 7 and 15
`
`of the ‘525 Patent, which Ironburg alleges are exemplary claims that Valve
`
`infringes in Paragraph 21of the Second Amended Complaint, are invalid because
`
`each of the claims of the ‘525 Patent fails to meet the conditions of patentability
`
`and/or otherwise comply with one or more provisions of 35 U.S.C. § 101 et seq.,
`
`including 35 U.S.C. §§ 101, 102, 103, and 112.
`
`8.
`
`For example, each claim of the ‘525 Patent is invalid as anticipated
`
`and/or obvious under 35 U.S.C. §§ 102 and/or 103 in view of at least those prior
`
`art references and arguments identified in the Petition for Inter Partes Review
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`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 18 of 69
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`(“IPR”) of the ‘525 Patent filed by Valve before the United States Patent and
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`Trademark Office on April 22, 2016 (Case IPR2016-00948), which is incorporated
`
`herein by reference to the extent that it is applicable in this action. Further, each
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`asserted claim of the ‘525 Patent is invalid as anticipated and/or obvious under 35
`
`U.S.C. §§ 102 and/or 103 in view of Valve’s August 1, 2016 invalidity contentions
`
`served in this matter, and any amendments or supplementations thereto.
`
`9.
`
`Paragraph 6 of Ironburg’s Second Amended Complaint asserts the
`
`‘525 Patent was legally issued to Plaintiff Ironburg.
`
`10. There exists a substantial controversy of sufficient immediacy and
`
`reality to warrant the issuance of a declaratory judgment as to whether the asserted
`
`claims of the ‘525 Patent are valid.
`
`11. Valve is entitled to a judicial determination that all claims of the ‘525
`
`Patent are invalid.
`
`
`COUNT II
`(Declaration of Non-Infringement of U.S. Patent No. 8,641,525)
`
`12. Valve repeats and realleges Paragraphs 1 through 11 of its
`
`Counterclaims.
`
`13.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 1 of the ‘525 Patent, as identified in Paragraph 21 of Ironburg’s Second
`
`
`
`18
`
`
`
`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 19 of 69
`
`Amended Complaint. For example, claim 1 of the ‘525 Patent recites a hand held
`
`controller for a game console comprising: an outer case comprising a front, a back,
`
`a top edge, and a bottom edge, wherein the back of the controller is opposite the
`
`front of the controller and the top edge is opposite the bottom edge; and a front
`
`control located on the front of the controller; wherein the controller is shaped to be
`
`held in the hand of a user such that the user's thumb is positioned to operate the
`
`front control; and a first back control and a second back control, each back control
`
`being located on the back of the controller and each back control including an
`
`elongate member that extends substantially the full distance between the top edge
`
`and the bottom edge and is inherently resilient and flexible. The Steam Controller
`
`does not include each and every limitation recited in claim 1 of the ‘525 Patent.
`
`Valve further incorporates its August 1, 2016 non-infringement contentions and all
`
`supplements and amendments thereto to be served in this matter.
`
`14.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 2 of the ‘525 Patent, as identified in Paragraph 21 of Ironburg’s Second
`
`Amended Complaint. For example, claim 2 of the ‘525 Patent recites the
`
`controller of claim 1, further having a top edge control located on the top edge of
`
`the controller and wherein the controller is shaped such that the user’s index finger
`
`is positioned to operate the top edge control. The Steam Controller does not
`
`
`
`19
`
`
`
`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 20 of 69
`
`include each and every limitation recited in claims 1 and 2 of the ‘525 Patent.
`
`Valve further incorporates its August 1, 2016 non-infringement contentions and all
`
`supplements and amendments thereto to be served in this matter.
`
`15.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 7 of the ‘525 Patent, as identified in Paragraph 21 of Ironburg’s First
`
`Amended Complaint. For example, claim 7 of the ‘525 Patent recites the
`
`controller of claim 1, wherein each elongate member is mounted within a recess
`
`located in the case of the controller. The Steam Controller does not include each
`
`and every limitation recited in claims 1 and 7 of the ‘525 Patent. Valve further
`
`incorporates its August 1, 2016 non-infringement contentions and all supplements
`
`and amendments thereto to be served in this matter.
`
`16.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 15 of the ‘525 Patent, as identified in Paragraph 21 of Ironburg’s Second
`
`Amended Complaint. For example, claim 15 of the ‘525 Patent recites the
`
`controller of claim 1, wherein a switch mechanism is disposed between each of the
`
`elongate members and an outer surface of the back of the controller. The Steam
`
`Controller does not include each and every limitation recited in claims 1 and 15 of
`
`the ‘525 Patent. Valve further incorporates its August 1, 2016 non-infringement
`
`
`
`20
`
`
`
`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 21 of 69
`
`contentions and all supplements and amendments thereto to be served in this
`
`matter.
`
`17. There exists a substantial controversy of sufficient immediacy and
`
`reality to warrant the issuance of a declaratory judgment as to whether the asserted
`
`claims of the ‘525 Patent are infringed.
`
`18. Valve is entitled to a judicial determination that Valve has not directly
`
`infringed the asserted claims of the ‘525 Patent, including claims 1, 2, 7, and 15.
`
`COUNT III
`(Declaration of Invalidity of U.S. Patent No. 9,089,770)
`
` Valve repeats and realleges Paragraphs 1-18 of its Counterclaims.
`
`19.
`
`20. All claims of the ‘770 Patent, including at least claims 1, 3, 4-6, and
`
`7-9, which Ironburg alleges are exemplary claims that Valve infringes in Paragraph
`
`25 of the Second Amended Complaint, are invalid because each of the claims of
`
`the ‘770 Patent fails to meet the conditions of patentability and/or otherwise
`
`comply with one or more provisions of 35 U.S.C. § 101 et seq., including 35
`
`U.S.C. §§ 101, 102, 103, and 112.
`
`21. For example, each claim of the ‘770 Patent is invalid as anticipated
`
`and/or obvious under 35 U.S.C. §§ 102 and/or 103 in view of at least those prior
`
`art references and arguments identified in the Petition for IPR of the ‘770 Patent
`
`filed by Valve before the United States Patent and Trademark Office on April 22,
`21
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 22 of 69
`
`2016 (Case IPR2016-00949), which is incorporated herein by reference to the
`
`extent that it is applicable in this action. Further, each asserted claim of the ‘770
`
`Patent is invalid as anticipated and/or obvious under 35 U.S.C. §§ 102 and/or 103
`
`in view of Valve’s August 1, 2016 invalidity contentions served in this matter, and
`
`any amendments or supplementations thereto.
`
`22. Paragraph 7 of Ironburg’s Second Amended Complaint alleges that
`
`the ’770 Patent was legally issued to Plaintiff Ironburg.
`
`23. There exists a substantial controversy of sufficient immediacy and
`
`reality to warrant the issuance of a declaratory judgment as to whether the asserted
`
`claims of the ‘770 Patent are valid.
`
`24. Valve is entitled to a judicial determination that all claims of the ‘770
`
`Patent are invalid.
`
`
`COUNT IV
`(Declaration of Non-Infringement of U.S. Patent No. 9,089,770)
`
`25. Valve repeats and realleges Paragraphs 1 through 24 of its
`
`Counterclaims.
`
`26.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 1 of the ‘770 Patent, as identified in Paragraph 25 of Ironburg’s Second
`
`Amended Complaint. For example, claim 1 of the ‘770 Patent recites a video
`
`
`
`22
`
`
`
`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 23 of 69
`
`game controller, comprising: an outer case comprising: a front and a back, wherein
`
`the back is opposite the front; a top edge and a bottom edge, wherein the top edge
`
`is opposite the bottom edge; a first handle adjacent a first side edge and a second
`
`handle adjacent a second side edge, wherein the first side edge is opposite the
`
`second side edge; and a first back control and a second back control, wherein each
`
`of the first back control and the second back control is located at the back of the
`
`controller, wherein the first back control includes a first elongate member and the
`
`second back control includes a second elongate member; wherein the first elongate
`
`member extends along at least half of a first distance between the top edge and the
`
`bottom edge, the first distance being measured along a longitudinal axis of the first
`
`elongate member; and wherein the second elongate member extends along at least
`
`half of a second distance between the top edge and the bottom edge, the second
`
`distance being measured along a longitudinal axis of the second elongate member.
`
`The Steam Controller does not include each and every limitation recited in claim 1
`
`of the ‘770 Patent. Valve further incorporates its August 1, 2016 non-infringement
`
`contentions and all supplements and amendments thereto to be served in this
`
`matter.
`
`27.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 3 of the ‘770 Patent, as identified in Paragraph 25 of Ironburg’s First
`
`
`
`23
`
`
`
`Case 1:15-cv-04219-TWT Document 49 Filed 09/01/16 Page 24 of 69
`
`Amended Complaint. For example, claim 3 of the ‘770 Patent recites the video
`
`game controller of claim 1, wherein the bottom edge includes: a first convex
`
`portion that defines the first handle; a second convex portion that defines the
`
`second handle; and a medial portion between the first convex portion and the
`
`second convex portion. The Steam Controller does not include each and every
`
`limitation recited in claims 1 and 3 of the ‘770 Patent. Valve further incorporates
`
`its August 1, 2016 non-infringement contentions and all supplements and
`
`amendments thereto to be served in this matter.
`
`28.
`
`Ironburg cannot meet its burden to prove that Valve infringes at least
`
`claim 4 of the ‘770 Patent, as identified in Paragraph 25 of Ironburg’s Second
`
`Amended Complaint. For example, claim 4 of the ‘770 Patent recites the video
`
`game controller of claim 3, wherein the first distance is between the top edge and
`
`the medial portion and the second distance is between the t
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