throbber
Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 1 of 30
`
`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
`OPENING CLAIM CONSTRUCTION BRIEF
`
`B. Trent Webb (pro hac vice)
`MO Bar No. 40778
`Patrick A. Lujin (pro hac vice)
`MO Bar No. 41392
`Mark D. Schafer (pro hac vice)
`MO Bar No. 67197
`SHOOK, HARDY & BACON L.L.P.
`255 Grand Boulevard
`Kansas City, Missouri 64108
`(816) 474-6550 (telephone)
`(816) 421-5547 (facsimile)
`bwebb@shb.com; plujin@shb.com;
`mschafer@shb.com
`
`
`Thomas W. Curvin (GA 202740)
`SUTHERLAND ASBILL &
`BRENNAN LLP
`999 Peachtree Street, N.E., Suite 2300
`Atlanta, Georgia 30309-3996
`(404) 853-8314 (telephone)
`(404) 853-8806 (facsimile)
`tom.curvin@sutherland.com
`
`
`
`
`
`Tanya L. Chaney (pro hac vice)
`TX Bar No. 24036375
`SHOOK, HARDY & BACON L.L.P.
`600 Travis Street, Suite 3400
`Houston, Texas 77002
`(713) 227-8008 (telephone)
`(713) 227-9508 (facsimile)
`tchaney@shb.com
`
`
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 2 of 30
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`THE ASSERTED PATENTS ......................................................................... 2
`
`II.
`
`LEGAL STANDARDS .................................................................................. 4
`
`III. TERMS TO BE CONSTRUED ..................................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“The medial portion is closer to the top edge than a distal end of
`each of the first handle and the second handle” ................................... 7
`
`“Elongate member” .............................................................................. 9
`
`“Elongate member … is inherently resilient and flexible” ................ 13
`
`“Substantially the full distance between the top edge and the
`bottom edge”; “a first/second distance between the top edge and
`the bottom edge”; “substantially all” of the first/second distance ..... 15
`
`“The case being shaped to be held in both hands of a user…” .......... 18
`
`“Conduit” ............................................................................................ 21
`
`G.
`
`“Formed from material having a thickness” ...................................... 22
`
`IV. CONCLUSION ............................................................................................. 23
`
`
`
`
`
`- i -
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 3 of 30
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`
`
`Cases
`
`Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir. 2015) .............. 9
`
`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) ............ 6
`
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) ................... 10
`
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ................................. 6
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366 (Fed.
`Cir. 2015) ............................................................................................................ 13
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) ......................... 5, 6
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................... 4, 5, 6
`
`Zodiac Pool Care, Inc. v. Hoffinger Indus., 206 F.3d 1408 (Fed. Cir. 2000) ........... 5
`
`Statutes, Rules, and Regulations
`
`35 U.S.C. § 112(2) (1975) ......................................................................................... 7
`
`35 U.S.C. § 112(b) (2011) ......................................................................................... 7
`
`35 U.S.C. § 112, ¶ 2 (2006) ....................................................................................... 6
`
`LPR 6.1 and 6.2 ........................................................................................................ 14
`
`Other Authorities
`
`June 17, 2011 Application Serial No. 13/162,727 at 7 .............................................. 3
`
`U.S. Patent No. 6,394,906 .......................................................................................... 3
`
`U.S. Patent No. 8,641,525 .................................................................................passim
`
`U.S. Patent No. 9,089,770 .................................................................................passim
`
`
`
`- ii -
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 4 of 30
`
`
`
`U.S. Patent No. 9,289,688 .................................................................................passim
`
`U.S. Patent No. 9,352,229 .................................................................... 1, 9, 10, 21, 22
`
`
`
`- iii -
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 5 of 30
`
`
`
`The four asserted patents—U.S. Patent Nos. 8,641,525 (“the ’525 patent”),
`
`9,089,770 (“the ’770 patent”), 9,289,688 (“the ’688 patent”), and 9,352,229 (“the
`
`’229 patent”) (collectively, “the Asserted Patents”)—relate to hand-held controllers
`
`for playing video games. Plaintiff Ironburg Inventions Ltd. (“Ironburg”) asserts
`
`that the Steam controller manufactured and sold by Defendant Valve Corporation
`
`(“Valve”) infringes nearly 80 claims spanning all four Asserted Patents.
`
`Since filing their Joint Claim Construction Statement (Dkt. No. 64), the
`
`parties have continued to meet and confer in an attempt to streamline the issues
`
`before the Court. The parties have reached agreement as to two of the disputed
`
`terms. The parties agree to the following construction for the “directional
`
`references” listed at row 1 of the joint claim chart (Dkt. No. 64-1): “Directional
`
`references … do not limit the respective features to such orientation, but merely
`
`serve to distinguish these features from one another.” The parties also agree that
`
`the Court does not need to construe the term “a portion” listed at row 12 of the
`
`claims chart. Instead, the parties agree this term should have its plain and ordinary
`
`meaning. Furthermore, Ironburg has indicated that it is withdrawing claim 13 of
`
`the ’525 patent from the list of asserted claims. Therefore, the parties agree that
`
`there is no longer any need for the Court to construe the phrase “the front end”
`
`(row 5), which only appears in that claim.
`
`
`
`1
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 6 of 30
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`
`
`In light of those agreements between the parties, and with the remaining
`
`terms and phrases grouped for efficiency, Valve hereby respectfully requests that
`
`the Court construe the seven claim terms and phrases set forth below.
`
`I.
`
`THE ASSERTED PATENTS
`
`The Asserted Patents are fairly simple. Their general concept is to include
`
`additional controls on a video game controller. Having additional controls that are
`
`activated by a user’s middle, ring, or little fingers can provide an advantage in
`
`games that include numerous different control functions because they allow users
`
`to activate additional game functions without having to remove their thumbs or
`
`index fingers from the primary control surfaces.
`
`These advantages have long been known in the gaming community.
`
`Commercially-available controllers feature a wide range of control configurations.
`
`Many users even customize their own controllers by physically adding or moving
`
`the controls. The alleged invention of the Asserted Patents relates to specific
`
`claimed controller configurations in which additional controls are located on the
`
`back of the controller, so that they can be operated by the user’s middle, ring, or
`
`little fingers. Every claim of the Asserted Patents includes that requirement.
`
`The asserted claims also include a requirement regarding the shape of the
`
`claimed additional controls. Specifically, the additional controls must include “an
`
`
`
`2
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 7 of 30
`
`
`
`elongate member.” This “shape” requirement was first added during prosecution
`
`of the ‘525 patent application (the earliest of the Asserted Patents).
`
`As originally filed, the claims in the ’525 Patent application included merely
`
`the requirement that the additional controls be located on the back of the controller,
`
`without any limitations regarding the shape of the additional controls. See June 17,
`
`2011 Application Serial No. 13/162,727 at 7, attached as Exhibit 1. Those claims
`
`were rejected over a prior art patent to Ogata, U.S. Patent No. 6,394,906. See June
`
`28, 2012 Office Action at 2, attached as Exhibit 2. In response to the rejection,
`
`Ironburg amended the claims to include the requirement that “the back control is
`
`an elongate member that extends between the top edge and the bottom edge and is
`
`inherently resilient and flexible.” See Oct. 29, 2012 Response at 2, attached as
`
`Exhibit 3. The term “elongate member” now appears in every claim of the
`
`Asserted Patents. The two paddles shown as items 11 in Figure 2 of the ’525
`
`Patent are examples of the claimed “elongate members.”
`
`
`
`
`
`3
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 8 of 30
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`
`
`II. LEGAL STANDARDS
`
`The first step in evaluating patent infringement is to determine the meaning
`
`of relevant claim language and establish the scope of the patent’s claims. A district
`
`court conducts claim construction as a matter of law pursuant to Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Proper claim construction
`
`demands interpretation of the entire claim in the context in which the term is used.
`
`Phillips, 415 F.3d at 1314. “[T]he claims themselves provide substantial guidance
`
`as to the meaning of particular claim terms.” Id. This includes the context in
`
`which a term is used in the asserted claim, as well as an examination of (i) other
`
`claims in the patent and (ii) differences among claims. Id. at 1315.
`
`“The claims, of course, do not stand alone.” Phillips, 415 F.3d at 1316. The
`
`claims must “be read in view of the specification, of which they are a part.” Id.
`
`The specification “is always highly relevant to the claim construction analysis.
`
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed
`
`term.” Id. at 1315.
`
`In addition to consulting the specification, the court “should also consider
`
`the patent’s prosecution history.” Id. at 1316. “The prosecution history, which we
`
`have designated as part of the ‘intrinsic evidence,’ consists of the complete record
`
`of the proceedings before the PTO and includes the prior art cited during the
`
`
`
`4
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 9 of 30
`
`
`
`examination of the patent.” Id. at 1317. “Like the specification, the prosecution
`
`history provides evidence of how the PTO and the inventor understood the
`
`patent.… Furthermore, like the specification, the prosecution history was created
`
`by the patentee in attempting to explain and obtain the patent.” Id. Intrinsic
`
`evidence includes the prior art references cited during prosecution. Zodiac Pool
`
`Care, Inc. v. Hoffinger Indus., 206 F.3d 1408, 1414 (Fed. Cir. 2000).
`
`In addition to the intrinsic evidence, the court may evaluate extrinsic
`
`evidence, which is “evidence external to the patent and prosecution history.”
`
`Phillips, 415 F.3d at 1318. “Within the class of extrinsic evidence, . . . dictionaries
`
`and treatises can be useful in claim construction.” Id. “Because dictionaries, and
`
`especially technical dictionaries, endeavor to collect the accepted meanings of
`
`terms used in various fields of science and technology, those resources have been
`
`properly recognized as among the many tools that can assist the court in
`
`determining the meaning of particular terminology to those of skill in the art of the
`
`invention.” Id.
`
`A patent monopoly is a property right, and “like any property right, its
`
`boundaries should be clear.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct.
`
`2120, 2124 (2014). Thus, a patent specification must conclude with “one or more
`
`
`
`5
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 10 of 30
`
`
`
`claims particularly pointing out and distinctly claiming the subject matter which
`
`the applicant regards as his invention.” Id. (quoting 35 U.S.C. § 112, ¶ 2 (2006)).
`
`A patent is invalid “if its claims, read in light of the specification delineating
`
`the patent, and the prosecution history, fail to inform, with reasonable certainty,
`
`those skilled in the art about the scope of the invention.” Nautilus, 134 S.Ct. at
`
`2124. A patent must be precise enough to afford clear notice of what is claimed,
`
`thereby “appris[ing] the public of what is still open to them,” while recognizing
`
`that absolute precision is unobtainable. Id. (quoting Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370, 373 (1996)). The claims, when read in light of the
`
`specification and the prosecution history, must provide objective boundaries for
`
`those of skill in the art. Philips, 415 F.3d at 1317.
`
`The indefiniteness inquiry focuses “on the understanding of a skilled artisan
`
`at the time of the patent application.” Nautilus, 134 S.Ct. at 2130. To understand
`
`the meaning of a claim term as understood by persons of skill in the art, courts may
`
`look to extrinsic evidence, such as expert testimony, dictionaries, and treatises.
`
`Philips, 415 F.3d at 1314, 1317; Datamize, LLC v. Plumtree Software, Inc., 417
`
`F.3d 1342, 1348 (Fed. Cir. 2005) (holding that a court may rely on extrinsic
`
`evidence, such as expert testimony, to determine whether the claims are indefinite).
`
`
`
`6
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 11 of 30
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`
`
`III. TERMS TO BE CONSTRUED
`
`The claims at issue in the Asserted Patents use terminology imprecisely,
`
`resulting in claims that are ambiguous and unclear. In some instances, where a
`
`person of ordinary skill in the art (“POSITA”) would understand the language;
`
`Valve has proposed constructions to provide necessary guidance to the jury.
`
`In other instances, a POSITA would not be able to determine what the claim
`
`does or does not cover, because the patentee’s unclear language fails to delineate
`
`the claim scope. Such claim terms and phrases render the claims invalid for
`
`indefiniteness, because they fail to comply with the requirement that the patent
`
`must specifically point out and distinctly claim the patented subject matter. See 35
`
`U.S.C. § 112(2) (1975); 35 U.S.C. § 112(b) (2011).1 Valve is unable to propose
`
`constructions for these claim terms and phrases.
`
`A.
`
`“The medial portion is closer to the top edge than a distal end of
`each of the first handle and the second handle”
`
`Phrases
`
`Claim(s)
`
`Ironburg’s Proposal
`
`Valve’s Proposal
`
`“The medial portion is
`closer to the top edge
`than a distal end of each
`of the first handle and the
`second handle”
`
`’770
`Patent,
`Claim 5
`
`“The medial portion is
`closer to the top edge than
`a distal end of each of the
`first handle
`and
`the
`second handle”
`
`is
`“The medial portion
`closer to the top edge of the
`controller than the medial
`portion is to a distal end of
`each of the first handle and
`the second handle”
`
`
`1 The pre-America Invents Act version of the Patent Act applies to the ’525 and ’770 Patents,
`which were filed before September 16, 2012. The 2011 version of the statute applies to the
`’688 and ’229 Patents, which were filed after September 16, 2012.
`
`
`
`7
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 12 of 30
`
`
`
`This phrase describes the position of a “medial portion” of the controller.
`
`The specification does not describe this “medial portion” outside of the claims
`
`themselves. Claim 3 first introduces the “medial portion” and describes it as being
`
`the part of the controller located between the first and second “convex portions”
`
`which define the controller’s handles. The specification does not explain exactly
`
`where the “medial portion” begins and the handles end, but looking at Figures 1
`
`and 2 of the ’770 patent, the “medial portion” appears to be the portion of the
`
`controller approximately between direction pad 5 and thumb stick 3 in Figure 1, or
`
`between paddles 11 in Figure 2.
`
`This ambiguous phrase can be interpreted in at least two different ways.
`
`One potential interpretation is that the “medial portion” is closer to the top edge of
`
`the controller than the “medial portion” is to a distal end of the controller handles.
`
`In other words, the “medial portion” is located closer to the top edge of the
`
`controller than to the bottom ends of the handles. But this phrase could
`
`alternatively mean that the “medial portion” is closer to the top edge of the
`
`controller than a distal end of the controller handles is to the top edge. This phrase
`
`should be construed so that this ambiguity can be resolved.
`
`Valve’s proposed construction clarifies that this phrase has the first meaning,
`
`which matches the overall controller geometry shown in the patent figures.
`
`
`
`8
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 13 of 30
`
`
`
`Ironburg’s proposal simply repeats the ambiguous language, leaving significant
`
`potential for jury confusion regarding the proper interpretation of this phrase.
`
`B.
`
`“Elongate member”
`
`Term
`
`Claim(s)
`
`Ironburg’s Proposal Valve’s Proposal
`
`“Elongate member”
`
`’525 Patent, Claims 1, 20
`
`Not indefinite
`
`Indefinite
`
`’770 Patent, Claim 1
`
`’688 Patent, Claims 1, 30
`
`’229 Patent, Claim 1
`
`Every independent claim of the Asserted Patents recites “elongate member”
`
`as part of the description of the additional control(s) located on the back of the
`
`controller. Despite its pervasive use in the claims, “elongate member” is not a
`
`term that would ordinarily be used by a POSITA in the game controller industry.
`
`See Declaration of Robert Dezmelyk at ¶ 24, attached as Exhibit 4. Therefore, in
`
`attempting to interpret this term, a POSITA would look to the patent specifications.
`
`See id. at ¶ 25. When a “word of degree” is used, the court must determine
`
`whether the patent provides “some standard for measuring that degree.” Biosig
`
`Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1389 (Fed. Cir. 2015).
`
`However, none of the patent specifications provide sufficient guidance to
`
`allow a POSITA to understand what this term covers. See id. at ¶¶ 29, 52, 64.
`
`Each of the Asserted Patents includes a “Summary” section that merely parrots the
`
`language of each patent claim. The term “elongate member” appears in these
`
`
`
`9
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 14 of 30
`
`
`
`“Summary” sections, but without any elaboration as to what is meant by this
`
`phrase. “Elongate member” is not used anywhere else in the specifications. The
`
`nearest explanation of this term in the specifications is a disclosure of paddles that
`
`are “elongate in shape.” See ’525 Patent at 3:51-53; ’770 Patent at 3:51-53; ’688
`
`Patent at 7:9-11; ’229 Patent at 1:36-38.
`
`All four Asserted Patents include figures showing that the “paddles” are
`
`long, slender objects shaped generally like popsicle sticks. See ’525 Patent at Fig.
`
`2; ’770 Patent at Fig. 2; ’688 Patent at Fig. 3; ’229 Patent at Fig. 2. A POSITA
`
`would recognize that the adjective “elongate” would include such an object, but
`
`would not know how long and slender an object had to be in order to be considered
`
`“elongate.” See Dezmelyk Dec. at ¶¶ 27-29. Therefore, a POSITA would not be
`
`able to determine whether a given control design met this claim limitation.
`
`Providing a figure illustrating one possible example of an “elongate member” is
`
`not enough to provide sufficient definiteness as to the boundaries of this term. See
`
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373-74 (Fed. Cir. 2014)
`
`(finding claims indefinite despite an example in the specification, because a
`
`POSITA was “still left to wonder” what other possible embodiments would meet
`
`the claim limitation).
`
`
`
`10
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 15 of 30
`
`
`
`A POSITA seeking further guidance about whether or not a particular
`
`control would be considered an “elongate member” could also study the
`
`prosecution history of the patents. Such a study would reveal that during
`
`prosecution of the ’525 patent, the patentee distinguished the claimed invention
`
`from a prior art patent to Ogata by arguing that the “rotation actuator 16” of Ogata
`
`was not “an elongate member.” See id. at ¶¶ 30-31; Oct. 29, 2012 Response at 2
`
`(Exh. 3). Figures 19 and 20 of the Ogata patent depict the “rotation actuator 16.”
`
`
`
`
`
`The patentee’s bare statement that the Ogata “rotation actuator 16” is not an
`
`elongate member still does not enable a POSITA to understand the metes and
`
`bounds of this claim term, other than implying that Ogata’s rotation actuator is not
`
`the same as the “elongate in shape” paddles described and depicted in the Asserted
`
`Patents.
`
`
`
`11
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 16 of 30
`
`
`
`A POSITA would not know the scope of “elongate member” in part because
`
`of the wide variety of input devices used as game controls. See Dezmelyk Dec. at
`
`¶¶ 32-33. Before the priority date of the Asserted Patents, there were many
`
`examples of controllers having buttons with complex shapes. See id. A POSITA
`
`would not know whether or not such buttons would be considered “elongate
`
`members” for the purposes of the Asserted Patents. See id.
`
`The Thrustmaster Rage 3D was one such prior art controller. See Dezmelyk
`
`Dec. at ¶¶ 32-33. As shown below, this controller featured two generally triangular
`
`buttons on the back of the controller. A POSITA would not be able to determine
`
`whether these buttons would be considered “elongate members.” See id.
`
`The Hori Ace Combat Six controller had a complex, curved button on the
`
`back of the controller as shown below. See id. Once more, a POSITA would not
`
`know whether this button would be considered an “elongate member.” See id.
`
`
`
`
`
`12
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 17 of 30
`
`
`
`As these examples illustrate, a POSITA creating or modifying a video game
`
`
`
`
`
`controller would not know whether a given button or other type of control was an
`
`“elongate member.” This uncertainty makes it impossible to know whether a new
`
`or newly-modified controller would infringe the Asserted Patents. Because a
`
`POSITA cannot determine with reasonable certainty the boundaries of the term
`
`“elongate member,” and therefore cannot know the scope of the asserted claims,
`
`the Court should find that this term renders the respective claims indefinite. See
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed.
`
`Cir. 2015) (holding that “[a] claim is indefinite if its language ‘might mean several
`
`different things and no informed and confident choice is available among the
`
`contending definitions’”).
`
`C.
`
`“Elongate member … is inherently resilient and flexible”
`
`Phrase
`
`Claim(s)
`
`Ironburg’s Proposal
`
`Valve’s Proposal
`
`“Elongate
`
`’525 Patent,
`
`“A member that may be bent
`
`“Elongate member” is
`
`
`
`13
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 18 of 30
`
`
`
`member … is
`inherently
`resilient and
`flexible”
`
`Claim 1
`
`
`
`or flexed by a load, such as a
`finger, and will return to its
`unbiased position when not
`under load”
`
`indefinite.
`
`“Inherently resilient and
`flexible” should be given its
`plain and ordinary meaning.
`
`Ironburg contends that this abbreviated phrase should be construed
`
`separately from the standalone term “elongate member.” As a threshold matter,
`
`Valve objects to Ironburg’s proposed construction as untimely and prejudicial
`
`because it was first disclosed to Valve on the November 22 deadline for filing the
`
`parties’ Joint Claim Construction Statement. Because Ironburg failed to timely
`
`disclose this phrase as required by Local Patent Rules LPR 6.1 and 6.2, Ironburg
`
`should not now be permitted to include it in the list of terms and phrases for the
`
`Court to construe.
`
`In the event the Court decides to consider this phrase, Valve first points out
`
`that the phrase contains two limitations. The first is “elongate member,” which
`
`relates to the shape of the control. Valve contends that “elongate member” renders
`
`the claim indefinite, for the reasons explained above. The second is the limitation
`
`that the elongate member must be “inherently resilient and flexible,” which relates
`
`to the stiffness of the control. A jury would adequately understand the meaning of
`
`this limitation. Therefore, Valve contends that the second limitation should be
`
`given its plain and ordinary meaning.
`
`
`
`14
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 19 of 30
`
`
`
`Instead, Ironburg proposes that this phrase should be construed to mean “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.” Ironburg’s proposal ignores “elongate,”
`
`which relates to the shape of the control, and only reflects the “inherently resilient
`
`and flexible” aspect of the phrase. Removing the “elongate” limitation from this
`
`phrase significantly and improperly changes the scope of this claim. Therefore,
`
`Ironburg’s proposal should be rejected.
`
`D.
`
`“Substantially the full distance between the top edge and the
`bottom edge”; “a first/second distance between the top edge and
`the bottom edge”; “substantially all” of the first/second distance
`
`Valve’s
`Proposal
`
`Indefinite
`
`Phrase
`
`Claim(s)
`
`Ironburg’s Proposal
`
`Not indefinite.
`
`“Substantially”—“largely but not
`wholly what is specified.”
`
`“Top edge”—“the top (uppermost)
`surface of the controller.
`
`“Bottom edge”—the bottom
`(lowest) surface of the controller.
`
`’525 Patent,
`Claims 1, 20;
`’770 Patent,
`Claims 1, 2
`
`
`
`“Substantially the full
`distance between the top
`edge and the bottom
`edge”; “a first/second
`distance between the top
`edge and the bottom
`edge”; “substantially all”
`of the first/second distance
`
`Claims 1 and 20 of the ’525 Patent recite that the elongate member extends
`
`“substantially the full distance between the top edge and the bottom edge.” Claim
`
`2 of the ’770 Patent includes the very similar requirement that the elongate
`
`members extend along “substantially all of the first distance” and “substantially all
`
`of the second distance.” The antecedent bases for the phrases “the first/second
`
`
`
`15
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 20 of 30
`
`
`
`distance” in Claim 2 of the ’770 Patent are found in Claim 1, which recites “a
`
`first/second distance between the top edge and the bottom edge.” Thus, these two
`
`phrases in Claim 2 of the ’770 Patent mean “substantially all of the [first or
`
`second] distance between the top edge and the bottom edge.” Because of the
`
`similarity between these three phrases, they will be discussed together.
`
`A POSITA would look to the patent specifications in order to understand
`
`what is meant by the “distance between the top edge and the bottom edge,” and
`
`how much of that distance an elongate member must cover in order to extend
`
`“substantially the full distance.” The specification includes some discussion
`
`regarding the location and arrangement of the controls, but not enough to clarify
`
`the meaning of this phrase. See Dezmelyk Dec. at ¶¶ 37-41. A POSITA would be
`
`unable to determine the bounds of this phrase, because of uncertainty both as to the
`
`meaning of “substantially” and as to the referenced distance.
`
`Importantly, the controller geometry also prevents a POSITA from
`
`determining with reasonable certainty what is meant by the “distance between the
`
`top edge and the bottom edge.” The three-dimensional, curved surface of the
`
`controller body lacks a distinct “top edge” or “bottom edge.” See Dezmelyk Dec.
`
`at ¶ 42; ’525 Patent at Figs. 1-3. A POSITA would not know where a “top edge”
`
`
`
`16
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 21 of 30
`
`
`
`or “bottom edge” would be located on the curved controller surfaces. See
`
`Dezmelyk Dec. at ¶ 42.
`
`In addition to not knowing the bounds of “distance between the top edge and
`
`the bottom edge,” a POSITA would also be unable to determine what was meant
`
`by “substantially the full distance.” The patents offer no guidance except the
`
`illustrations in the figures. Figure 2 of both the ’525 and ’770 Patents shows
`
`paddles 11, which are said to correspond to the claimed “elongate members.” A
`
`POSITA could use Figure 2 to try and determine what was meant by “substantially
`
`the full distance.” See Dezmelyk Dec. at ¶ 42. One way to do this might be to
`
`compare the paddle length with the “full distance” between an assumed top edge
`
`and bottom edge of the controller shown in the figure. See id. The resulting ratio
`
`would vary greatly depending on where the measurement was made, and what was
`
`considered to be the “full distance between the top edge and the bottom edge.” See
`
`id. Although Figure 2 doesn’t depict any edges, and may not even be to scale, the
`
`figure appears to depict a paddle that extends somewhere between 50% and 90% of
`
`the distance between a “top edge” and a “bottom edge” of the controller. See id.
`
`Such a wide range does not provide meaningful guidance to allow a POSITA to
`
`understand the scope of this phrase. See id.
`
`
`
`17
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 22 of 30
`
`
`
`A POSITA creating a new video game controller would not know with
`
`reasonable certainty whether a given control extended “substantially the full
`
`distance between the top edge and the bottom edge” of the controller. This
`
`uncertainty would make it impossible to know if the new controller infringed the
`
`Asserted Patents.
`
`Because a POSITA cannot determine what is covered by these phrases, the
`
`Court should find all claims that include these three phrases to be indefinite.
`
`E.
`
`“The case being shaped to be held in both hands of a user…”
`
`Phrase
`
`Claim(s)
`
`’688 Patent,
`Claims 1, 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;”
`
`“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”
`
`Ironburg’s
`Proposal
`
`Valve’s
`Proposal
`
`Not indefinite.
`
`Indefinite
`
`In the alternative,
`a “front end” here
`refers to the “top
`edge.”
`
`Claims 1 and 30 of the ’688 Patent both recite that the controller case be
`
`“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.”
`
`Claim 1 additionally recites “wherein the games controller further comprises at
`
`
`
`18
`
`

`

`Case 1:15-cv-04219-TWT Document 69 Filed 12/22/16 Page 23 of 30
`
`
`
`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.”
`
`A POSITA would be unable to determine what controller designs were
`
`covered by these claim limitations. For one thing, a POSITA knows that the
`
`human hand has many joints that can be articulated about many degrees of
`
`freedom, in diverse and varied ways. See Dezmelyk Dec. at ¶¶ 54-56. A POSITA
`
`would not know what controller shapes, if any, are excluded by the “positioned to
`
`operate” portions of the phrase, leaving the scope and boundaries of coverage
`
`unclear in both claims 1 and 30.
`
`Also, the patent’s use of directional references creates additional ambiguity
`
`in these phrases. See Dezmelyk Dec. at ¶ 47. Specifically, each of the Asserted
`
`Patents includes a statement that “…as used herein, directional references such as
`
`‘top,’ bottom,’ ‘front,’ ‘back,’ ‘end,’ ‘side,’ ‘inner,’ ‘outer,’ ‘upper,’ and ‘lower’
`
`do not limit the respective features to such orientation, but merely serve to
`
`distinguish these features from one another.” See, e.g. ’688 P

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