Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 1 of 33
`
`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. a
`United Kingdom Limited Company,
`
`Plaintiff,
`
`vs.
`
`VALVE CORPORATION, a
`Washington Corporation,
`
`Defendant.
`
`PLAINTIFF IRONBURG INVENTIONS LTD.’S OPENING CLAIM
`CONSTRUCTION BRIEF
`
`
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 2 of 33
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`TABLE OF CONTENTS
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`Page
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`
`I.
`II.
`III.
`IV.
`
`2.
`
`2.
`3.
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION ................................................................................ 1
`BACKGROUND OF PATENTS ......................................................... 2
`STATEMENT OF LAW ...................................................................... 4
`DISCUSSION ...................................................................................... 5
`A. Disputed Terms Present in All Patents ................................................. 6
`1.
`“Elongate Member” ................................................................... 6
`The ‘525 Patent .................................................................................. 10
`1.
`“elongate member” … “is inherently resilient and
`flexible” .................................................................................... 10
`“substantially the full distance between the top edge and
`the bottom edge” ...................................................................... 12
`The ‘770 Patent .................................................................................. 14
`1.
`“a first/second distance between the top edge and the
`bottom edge” ............................................................................ 14
`“substantially all” of the first/second distance ......................... 16
`“the medial portion is closer to the top edge than a distal
`end of each of the first handle and second handle” ................. 16
`The ‘688 Patent .................................................................................. 18
`1.
`Claim 1: “the case being shaped to be held in both hands
`of a user such that the user’s thumbs are positioned to
`operate controls located on the top of the case and the
`user's index fingers are positioned to operate controls
`located on the front end of the case; wherein the games
`controller further comprises 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.” ........... 18
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 3 of 33
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`TABLE OF CONTENTS
`(continued)
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`Page
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`2.
`
`Claim 30: “the case being shaped to be held in both
`hands of a user such that the user's thumbs are positioned
`to operate controls located on the top of the case and the
`user's index fingers are positioned to operate controls
`located on the front end of the case, the control actuator
`being mountable on a base of the games controller in a
`position operable by a middle, ring or little finger of the
`user ........................................................................................... 18
`The ‘688 Patent and the ‘229 Patent .................................................. 22
`1.
`“conduit” .................................................................................. 22
`2.
`“formed from material having a thickness” ............................. 24
`CONCLUSION .................................................................................. 26
`
`E.
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`V.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 4 of 33
`TABLE OF AUTHORITIES
`
`CASES
`Andrew Corp. v. Gabriel Elecs., Inc.,
`847 F.2d 819 (Fed. Cir. 1988) ............................................................................ 16
`Apple, Inc. v. Samsung Electronics Co., Ltd.,
`932 F.Supp.2d 1076 (N.D. Cal. Jan. 29, 2013) ............................................ 15, 19
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir. 2012) .......................................................................... 15
`Energizer Holdings, Inc. v. International Trade Com’n,
`435 F.3d 1366 (Fed. Cir. 2006) .......................................................................... 24
`In re Moore,
`58 C.C.P.A. 1042, 439 F.2d 1232 (1971) ........................................................... 23
`Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,
`790 F.3d 1329 (Fed. Cir. 2015) ............................................................................ 5
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir.), aff'd, 517 U.S. 370 (1995) ............................................. 4
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120, 189 L.Ed.2d 37 (2014) ............................................................. 23
`On-Line Techs., Inc. v. Bo-denseewerk Perkin-Elmer GmbH
`386 F.3d 1133, 1138–39 (Fed. Cir. 2004) ............................................................ 5
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 4
`Seattle Box Co. v. Indus. Crating & Packing, Inc.,
`731 F.2d 818 (Fed. Cir. 1984) ...................................................................... 15, 16
`Specialty Composites v. Cabot Corp.,
`845 F.2d 981 (Fed. Cir. 1988) ............................................................................ 31
`Starhome GmbH v. AT&T Mobility
`LLC, 743 F.3d 849 (Fed. Cir. 2014) ..................................................................... 5
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) ............................................................................ 5
`Trs. of Columbia Univ. v. Syman-tec Corp.
`811 F.3d 1359, 1363 (Fed. Cir. 2016) .................................................................. 5
`Valve Corporation v. Ironburg Inventions Ltd.,
`IPR2016-00948, Paper 10, at 14 (Sept. 27, 2016) ............................................. 13
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 5 of 33
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`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`Verve, LLC v. Crane Cams, Inc.,
`311 F.3d 1116 (Fed. Cir. 2002) .......................................................................... 15
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) .............................................................................. 4
`Wonderland Nurserygoods Co., Ltd. v. KidsII, Inc.,
`2014 WL 4071809, Civil Action File No. 1:13–CV–1114–TWT,
`*1 (N.D. Ga. Aug. 18, 2014) .............................................................................. 18
`STATUTES
`PARKS IP LAW ...................................................................................................... 32
`OTHER AUTHORITIES
`Joint Claim Construction Statement, D.I. 64 (Nov. 22, 2016) .................................. 6
`Joint Statement, Ex. 1 ................................................................................................ 6
`Menell, Peter S., et al., 25 Berkeley Tech. L.J 711, 732 (2010) ................................ 9
`U.S. Patent Nos. 8,641,525 ...............................................................................passim
`RULES
`LPR 6.5 ...................................................................................................................... 1
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 6 of 33
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`I.
`
`INTRODUCTION
`
`Pursuant to Patent Local Rules LPR 6.5, Plaintiff Ironburg Inventions Ltd.
`
`(“Ironburg”) submits this Opening Claim Construction Brief in support of its
`
`proposed constructions of the identified disputed terms of the four patents-in-suit:
`
`U.S. Patent Nos. 8,641,525 (“the ‘525 Patent”), 9,079,770 (“the ‘770 Patent”),
`
`9,289,688 (“the ‘688 Patent”), and 9,352,229 (“the ‘229 Patent”).
`
`Plaintiff respectfully contends that the words of the claim should be left
`
`largely if not wholly undisturbed as intended by the inventors. The invention at
`
`issue here is not complex and the disputed claim terms identified for construction
`
`by the parties are easily understood in context by a person having ordinary skill in
`
`the art at the time of the invention. Plaintiff respectfully contends that there is no
`
`need for additional elaboration or embellishment. Indeed, there are very few
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`instances where either party has proposed any definitional language other than the
`
`exact language used by the claims. Under these circumstances, the law provides
`
`that the claims should be left as written, and the court should not resort to extrinsic
`
`evidence to interpret them.
`
`Each of Ironburg’s proposed constructions is fully supported by the intrinsic
`
`evidence of record, including the claims and specifications of the patents.
`
`Ironburg’s constructions are also supported by dictionaries as well as the canons of
`
`claim construction. Defendant Valve Corporation (“Defendant”), on the other
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 7 of 33
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`hand, contends
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`that most of
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`the disputed claim
`
`terms, although easily
`
`understandable and supported by the intrinsic record, are nonetheless indefinite.
`
`Ironburg anticipates that Defendant Valve will attempt to introduce extrinsic
`
`evidence to support this position, but such evidence is improper when the intrinsic
`
`record is clear.1 Valve further seeks to import limitations into the claims even
`
`though there is no clear disavowal of subject matter in the specification and no
`
`corresponding estoppel in the file history. This is also not allowed under the law.
`
`II. BACKGROUND OF PATENTS
`In simple terms, the four patents-in-suit describe a novel hand held game
`
`controller with back controls. The inventors recognized the need for hand held
`
`controllers that allow users to perform more complex in-game functions at a higher
`
`speed and efficiency. Controllers typically provide controls operable by the user’s
`
`thumbs and index fingers on the front and top of the controller. The inventors
`
`recognized that more complex in-game functions could be achieved if one or more
`
`additional controls could be provided that were operable by the user’s other
`
`fingers.
`
`In view of these principles, the hand-held controllers described and claimed
`
`in the patents-in-suit comprise a case shaped to be held in the hand of a user such
`
`that the user’s thumbs and index fingers are positioned to operate front and top
`
`
`1 See Ironburg’s Motion to Strike and Exclude Robert Dezmelyk’s Opinions.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 8 of 33
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`
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`controls, and additional controls are provided on the back of the controller,
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`including elongated members, such that the user’s other fingers are positioned to
`
`operate the back controls. See generally the ‘525 Patent, the ‘770 Patent, the ‘688
`
`Patent, and the ‘229 Patent.
`
`Figure 2 of the ‘525 and ‘770 Patents shows back controls 11:2
`
`Figure 3 of the ‘688 Patent shows back controls 11A, 11B, 11C, 11D:
`
`
`
`Figure 2 of the ‘229 Patent also shows back controls 11A, 11B, 11C, 11D:
`
`
`
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`
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`2 The ‘525 Patent and the ‘770 Patent share the same general specification.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 9 of 33
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`III. STATEMENT OF LAW
`Claim construction is a matter of law reserved for the court to decide.
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.), aff'd, 517
`
`U.S. 370 (1995). “[T]he words of a claim are generally given their ordinary and
`
`customary meaning,” which is “the meaning that the term would have to a person
`
`of ordinary skill in the art in question at the time of the invention.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting Vitronics
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ordinary
`
`meaning may be determined by reviewing various sources, such as the claims
`
`themselves, the specification, the prosecution history, dictionaries, and any other
`
`relevant evidence. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325
`
`(Fed. Cir. 2002).
`
`A term may have a meaning other than its ordinary and customary meaning
`
`to a person of ordinary skill in the art in question at the time of the invention, but
`
`there can be no such novel meaning without an express intent. “In the absence of
`
`an express intent to impart a novel meaning to claim terms, an inventor’s claim
`
`terms take on their ordinary meaning. We indulge a ‘heavy presumption’ that a
`
`claim term carries its ordinary and customary meaning.” Starhome GmbH v.
`
`AT&T Mobility LLC, 743 F.3d 849, 857 (Fed. Cir. 2014) (citing Teleflex, Inc. v.
`
`Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)).
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 10 of 33
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`Ultimately, “[t]he only meaning that matters in claim construction is the
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`meaning in the context of the patent.” Trs. of Columbia Univ. v. Syman-tec Corp.,
`
`811 F.3d 1359, 1363 (Fed. Cir. 2016). Legal error arises when a court relies on
`
`extrinsic evidence that contradicts the intrinsic record. See Lighting Ballast Control
`
`LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329, 1338 (Fed. Cir. 2015); On-Line
`
`Techs., Inc. v. Bo- denseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138–39 (Fed.
`
`Cir. 2004).
`
`IV. DISCUSSION
`Plaintiff has asserted the following claims against Defendant Valve: Claims
`
`1-4, 6-12, 14-16, and 18-20 of the ‘525 Patent; Claims 1-17, 19-20 of the ‘770
`
`Patent; Claims 1-2, 9-14, 17-24, 26, and 28-20 of the ‘688 Patent, and Claims 1-11,
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`16-22 of the ‘229 Patent.
`
`On November 22, 2016, the parties filed the Joint Claim Construction
`
`Statement. See Joint Claim Construction Statement, D.I. 64 (Nov. 22, 2016). That
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`statement includes 18 claim terms and phrases, all but one of which were identified
`
`by Valve for construction. From that statement, the parties have agreed that certain
`
`terms, namely: (i) the directional references, such as “top,” “bottom,” “front,”
`
`“back,” “end,” “side,” “inner,” “outer,” “upper,” and “lower;” and (ii) “a portion,”
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`do not require construction. See Joint Statement, Ex. 1 at 2, 10.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 11 of 33
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` The remaining terms in the statement should be given their ordinary
`
`meaning as the law provides. The ordinary meaning is largely the words of the
`
`claims themselves without further embellishment, as further embellishments,
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`including replacement by synonyms, have not been proposed by either party.
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`The words of the claims are fully supported by the intrinsic evidence of
`
`record, including the claims and specifications of the patents. They are also
`
`supported by dictionaries as well as the canons of claim construction. Defendant
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`Valve, for the most part, does not propose synonyms for the common words in the
`
`claims and does not propose novel meanings
`
`A. Disputed Terms Present in All Patents
`1.
`“Elongate Member”
`
`Ironburg
`Not indefinite
`
`“elongate member”
`
`Defendant
`
`Indefinite
`
`The term “elongate member” is used throughout the patents, including in the
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`‘525 Patent, Claims 1 and 20, the ‘770 patent, Claim 1, the ‘688 Patent, Claims 1
`
`and 30, and the ‘229 Patent, Claims 1-5, 9-11, 16-18. In an exemplary claim,
`
`Claim 1 of the ‘525 Patent, “elongate member” is recited as follows:
`
`1. 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;
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 12 of 33
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`
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`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.
`
`(emphasis added).
`
`Ironburg contends that the term “elongate member” is plain and no further
`
`embellishment should be provided under the law. The point of claim construction
`
`is to instruct the jury on what the claim means from the perspective of a person
`
`having ordinary skill in the art at the time of the invention. For many claim terms,
`
`including “elongate member,” attempting to “construe” the claim language adds
`
`little in the way of clarity. Where the perspective of a person having ordinary skill
`
`in the art would add nothing to the analysis, there may be no need to construe the
`
`terms. Thus, non-technical terms (e.g., “on” or “above” or “surround”) and terms
`
`of degree (e.g., “approximately” or “about” or “substantially”) may not require
`
`construction by the court. Where “construing” a claim term would involve simply
`
`substituting a synonym for the claim term, it may be appropriate to allow the claim
`
`language to speak for itself. See “Patent Claim Construction: A Modern Synthesis
`
`and Structured Framework,” Menell, Peter S., et al., 25 Berkeley Tech. L.J 711,
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`732 (2010).
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 13 of 33
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`The non-technical words “elongate” and “member” are common and need
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`no elaboration or other construction. The term “elongate member,” read in light of
`
`the claims and the specification, informs a person skilled in the art of the scope of
`
`the claim term with reasonable certainty.
`
`Claim 1 of the ‘525 Patent recites “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.” (emphasis added). The elongate member is described as a back control
`
`element that extends substantially the full distance between the top edge and the
`
`bottom edge.
`
`The elongate member is similarly described throughout the other patents-in-
`
`suit. For example, the “elongate member” is recited in Claim 1 of the ‘770 Patent
`
`as follows:
`
`“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.”
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 14 of 33
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`(emphasis added). In both the ‘525 Patent and ‘770 Patent, the elongate
`
`member is described as a member that is elongated, either substantially the
`
`full distance (the ‘525 Patent), or at least half of the distance (the ‘770
`
`Patent), between the top edge and bottom edge.
`
`Claim 1 of the ‘688 Patent recites “the first additional control comprising a
`
`first elongate member displaceable by the user to activate a control function.”
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`Similarly, Claim 1 of the ‘229 Patent recites “ the additional control comprising an
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`elongate member which is inherently resilient and flexible such that it can be
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`displaced by the user to activate a control function.”
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`Similarly, the specification of the ‘525 patent recites the elongate members
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`as “elongate in shape.” ‘525 Patent, 3:51. Further, the specification of the ‘525
`
`Patent describes the relationship of the shape of the member to its functionality.
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`“This elongate shape allows a user to engage the [elongate members] with any of
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`the middle, ring, or little finger; it also provides that different users having
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`different size hands can engage the [elongate members] in a comfortable position.”
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`‘525 Patent, 3:56-60. Many of the figures throughout the other patents-in-suit also
`
`describe the “elongate member.” In addition to the figures shown above, more
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`than 30 figures across the patents-in-suit show an “elongate member.”3
`
`
`3 See the ‘525 Patent, Fig. 2; Fig. 3; the ‘770 Patent, Fig. 3; the ‘688 Patent, Fig. 3;
`Fig. 4; Fig. 5; Fig. 6; Fig. 9A; Fig. 9B; Fig. 9C; the ‘229 Patent, Fig. 2; Fig. 3; Fig.
`4; Fig. 6; Fig. 9; Fig. 13; Fig. 17; Fig. 21; Fig. 25; Fig. 26; Fig. 27; Fig. 30A; Fig.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 15 of 33
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`Valve does not propose a definition for the elongate member. Instead, it has
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`signaled an intent to raise a definiteness dispute by introducing an expert
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`declaration, Declaration of Robert Dezmelyk in Support of Defendant Valve
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`Corporation’s Proposed Claim Construction Positions. That declaration, however,
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`does not provide any admissible extrinsic evidence in conflict with the clear
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`meaning of the terms “elongate” and “member” in the context of the patent.
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`Ironburg contends that the Mr. Dezmelyk’s declaration is not admissible and
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`moves to strike it to the extent it is relied on by Defendant Valve. See Ironburg’s
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`Motion to Strike and Exclude Robert Dezmelyk’s Opinions.
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`In asserting that the term “elongate member” is indefinite, Defendant Valve
`
`fails to take into account the surrounding claim language or the rest of the
`
`specification. However, reading the claim language with the aid of the
`
`surrounding claim language and specification, the term “elongate member” is
`
`definite and informs one of skill in the art, with reasonable certainty, about the
`
`scope of the invention. Accordingly, Ironburg respectfully submits that Defendant
`
`Valve’s proposed indefiniteness position should be rejected.
`
`B.
`
`The ‘525 Patent
`1.
`
`“elongate member” … “is inherently resilient and flexible”
`
`Defendant
`Ironburg
`
`31A; Fig. 32A; Fig. 33; Fig. 34A; Fig. 35A; Fig. 36A; Fig. 37A; Fig. 39A; Fig.
`41A; Fig. 44.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 16 of 33
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`
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`“a member that may be bent or
`flexed by a load, such as a finger,
`and will return to its unbiased
`position when not under load.”
`
`“elongate member” – indefinite
`
`and
`resilient
`inherently
`“is
`flexible” – plain and ordinary
`meaning
`
`The phrase “elongate member” … “is inherently resilient and flexible” is
`
`found in Claim 1 of the ‘525 Patent. See exemplary Claim 1, supra Section B.1.
`
`The phrase “is inherently resilient and flexible” describes the “elongate member.”
`
`Ironburg contends that the phrase “elongate member” is “inherently resilient
`
`and flexible” as used in the patent means a member (1) that may be bent or flexed
`
`by a load, such as a finger, and (2) will return to its unbiased position when not
`
`under load.
`
`The ‘525 Patent describes the elongate members as “formed from a thin
`
`flexible material such as a plastics material for example polyethylene.” ‘525
`
`Patent, 3:28-30. An ordinary meaning of “flexible” is “capable of being bent or
`
`flexed.” See Valve Corporation v. Ironburg Inventions Ltd., IPR2016-00948,
`
`Paper 10, at 14 (Sept. 27, 2016). The ‘525 Patent also specifies that the elongate
`
`members are inherently resilient and flexible to permit displacement by the user to
`
`activate a control function. ‘525 Patent, 1:60-61. The ‘525 Patent further
`
`describes the elongate members as “inherently resilient, which means that they
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`return to an unbiased position when not under load.” ‘525 Patent, 3:33-34.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 17 of 33
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`
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`Ironburg respectfully submits that the Court should adopt its proposed
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`construction.
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`2.
`
`“substantially the full distance between the top edge and the
`bottom edge”
`
`Ironburg
`top and
`indefinite;
`the
`Not
`bottom edges are shown in the
`figures and the controls extend
`substantially the full distance.
`
`Defendant
`
`Indefinite
`
`Ironburg contends the phrase “substantially the full distance between the top
`
`edge and the bottom edge” is clear and needs no further elaboration. The phrase
`
`includes the term “substantially,” which is definite and needs no further parameters
`
`as a matter of law, and also includes the non-technical “full distance between the
`
`top edge and the bottom edge” terms which needs no further elaboration especially
`
`here, where no elaboration has been proposed. This disputed phrase is found in
`
`Claims 1, 20 of the ‘525 Patent and similarly, as described below, in Claim 2 of the
`
`‘770 Patent. See infra Section D.2.
`
`The term “substantially” is used in Claims 1 and 20 of the ‘525 Patent to
`
`modify “the full distance between the top edge and the bottom edge” and does not
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`render the phrase so unclear that there is no means for one of ordinary skill to
`
`ascertain the scope.
`
`To interpret “substantially,” a word of degree, the court “must determine
`
`whether the patent’s specification provides some standard for measuring that
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 18 of 33
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`degree.” Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
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`(Fed. Cir. 1984). “If the specification does not provide a standard for imposing a
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`more precise construction of the term, the Federal Circuit has ruled that imposing a
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`more precise construction would be error.” Apple, Inc. v. Samsung Electronics
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`Co., Ltd., 932 F.Supp.2d 1076, 1080 (N.D. Cal. Jan. 29, 2013). “The Federal
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`Circuit has never suggested, however, that this lack of precision constitutes a lack
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`of construability, so as to render a term of degree indefinite.” Id. at 1081 (further
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`discussing two approaches to construing terms of degree); see e.g., Deere & Co. v.
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`Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012) (confirming that “relative
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`terms such as ‘substantially’ do not render patent claims so unclear as to prevent
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`persons skilled in the art from ascertaining the scope of the claim.”); Verve, LLC v.
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`Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“[W]hen the term
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`‘substantially’ serves reasonably to describe the subject matter so that its scope
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`would be understood by persons in the field of the invention, ... it is not
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`indefinite.”); Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819, 821-822 (Fed.
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`Cir. 1988) (“substantially equal” not indefinite); Seattle Box Co., 731 F.2d at 826
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`(same).
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`As such, the term “substantially” in the phrase “substantially the full
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`distance between the top edge and the bottom edge” do not render the claims
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`indefinite. The claim language is accompanied by exemplary figures in the ‘525
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 19 of 33
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`Patent, namely Figures 2 and 3. The specification also states that the elongate
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`member are elongate in shape and “substantially extend in a direction from the top
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`edge to bottom edge of the controller.” ‘525 Patent, 3:51-53.
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`Based on the surrounding the claim language, as well as the rest of the
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`specification, the phrase “substantially the full distance between the top edge and
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`the bottom edge” is definite, as a person of ordinary skill in the art would, with
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`reasonably certainty, discern the meaning of the phrase and the corresponding
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`scope of the claim.
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`C. The ‘770 Patent
`1.
`“a first/second distance between the top edge and the bottom
`edge”
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`Ironburg
`Not indefinite
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`Defendant
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`Indefinite
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`This phrase is found in Claim 1 of the ‘770 Patent. Claim 1 of the ‘770
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`Patent recites:
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`1. A video 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
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 20 of 33
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`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.
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` (emphasis added).
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`Here, the claim is defining the degree of elongation of the elongate
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`members. The claim requires the elongate members extend at least half of “a
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`distance” between the top and bottom edges. The claim further specifies that the
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`distance be along a “longitudinal” axis. See e.g., Wonderland Nurserygoods Co.,
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`Ltd. v. KidsII, Inc., 2014 WL 4071809, Civil Action File No. 1:13–CV–1114–
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`TWT, *1 (N.D. Ga. Aug. 18, 2014) (holding that the terms ‘a distance between,’
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`‘the two first columns,’ and ‘the two second columns,’ read in light of the
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`specification, inform a person skilled in the art of the scope of the claim terms with
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`reasonable certainty.”). As can be seen in the Figure 2 of the ‘770 Patent below,
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`longitudinal refers to a line from the top edge to the bottom edge.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 21 of 33
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`A person of ordinary skill in the art would, with reasonable certainty, discern
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`from the claim language and the specification that the first and second distances
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`span longitudinally between the top and bottom edges.
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`2.
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`“substantially all” of the first/second distance
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`Ironburg
`Not indefinite
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`“substantially” – “largely but not
`wholly what is specified”
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`Defendant
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`Indefinite
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`This term is found in Claim 2 of the ‘770 Patent. Claim 2 recites “[t]he
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`video game controller of claim 1, wherein the first elongate member extends along
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`substantially all of the first distance and wherein the second elongate member
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`extends along substantially all of the second distance.” As discussed above with
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`respect to Claim 1 of the ‘525 Patent,4 the use of the word “substantially” is a term
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`of degree that the Federal Circuit has repeatedly held to be definite. See supra,
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`Section B.2. No additional parameters are needed or allowed when not set forth in
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`the specification. See Apple, 932 F.Supp.2d at 1081 (holding that a court may not
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`“construe terms of degree to give them greater precision, absent a standard for
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`imposing a more precise construction in the specification.”).
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`3.
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`“the medial portion is closer to the top edge than a distal end of
`each of the first handle and second handle”
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`Ironburg
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`Defendant
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`4 The ‘525 Patent and the ‘770 Patent share the same general specification.
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`Case 1:15-cv-04219-TWT Document 68 Filed 12/22/16 Page 22 of 33
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`“the medial portion is closer to
`the top edge than a distal end of
`each of the first handle and the
`second handle”
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`“the medial portion is closer to the
`top edge of the controller than the
`medial portion is to a distal end of
`each of
`the first and second
`handle”
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`Claim 5 of the ‘770 Patent recites “[t]he video game controller of claim 3,
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`wherein the medial portion is closer to the top edge than a distal end of each of the
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`first and second handle.” The phrase is clear and reasonably understandable in the
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`context of the surrounding claim language, other claim