Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 1 of 27
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`IRONBURG INVENTIONS LTD.,
`
`Plaintiff,
`
`v.
`
`VALVE CORPORATION,
`
`Defendant.
`
`Civil Action No. 1:15-cv-04219-TWT
`
`DEFENDANT VALVE CORPORATION’S RESPONSE TO
`PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF
`
`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
`
`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
`
`
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 2 of 27
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`TERMS AND PHRASES TO BE CONSTRUED ......................................... 2
`
`A.
`
`“Elongate member … is inherently resilient and flexible” ................... 2
`
`B.
`
`C.
`
`D.
`
`“Elongate member” ............................................................................... 8
`
`“The medial portion is closer to the top edge than a distal end of
`each of the first handle and the second handle” .................................. 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
`
`E.
`
`“The case being shaped to be held in both hands of a user…” ........... 19
`
`III. CONCLUSION ............................................................................................. 21
`
`
`
`
`
`
`
`i
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`

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`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 3 of 27
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 3
`
`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015) .......................................................................... 16
`
`Fairfield Indus., Inc. v. Wireless Seismic, Inc.,
`2015 WL 1034275 (S.D. Tex. 2015) ............................................................ 17, 18
`
`GE Lighting Solutions, LLC v. Lights of Am., Inc.,
`2016 U.S. App. LEXIS 19362 (Fed. Cir. Oct. 27, 2016)
`(unpublished) ................................................................................................ 11, 12
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014) .......................................................................... 17
`
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) ............................................................................ 3
`
`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) ......................................................................................... 10
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 4
`
`
`
`ii
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`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 4 of 27
`
`I.
`
`INTRODUCTION
`
`Ironburg’s Opening Claim Construction Brief contains several flawed
`
`arguments. In this Response Brief, Valve responds to such flawed arguments
`
`relating to the following disputed terms and phrases:
`
` “elongate member” … “is inherently resilient and flexible”
`
` “elongate member”
`
` “the medial portion is closer to the top edge than a distal end of each
`of the first handle and second handle”
`
` “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, and
`
` “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”
`
`Regarding the other two disputed terms (“conduit” and “formed from material
`
`having a thickness”), Valve refers the Court to its Opening Brief. Dkt. No. 69 at
`
`21-23.
`
`
`
`
`
`1
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 5 of 27
`
`II. TERMS AND PHRASES TO BE CONSTRUED
`
`A.
`
`“Elongate member … is inherently resilient and flexible”
`
`Phrase
`
`Claim
`
`Ironburg’s Proposal
`
`Valve’s Proposal
`
`“Elongate
`member …
`is inherently
`resilient and
`flexible”
`
`’525
`Patent,
`Claim
`1
`
`
`“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” is
`indefinite.
`“Inherently resilient and
`flexible” should be given its
`plain and ordinary meaning.
`
`Ironburg’s belatedly proposed construction of this two-limitation phrase is a
`
`desperate attempt to rebut Valve’s position that “elongate member” is indefinite.
`
`However, Ironburg’s strategy fails for at least four reasons.
`
`First, Ironburg’s proposed construction
`
`improperly reads
`
`the word
`
`“elongate” (i.e., the “shape” limitation) out of claim 1. Specifically, Ironburg’s
`
`proposed construction improperly: (1) replaces “elongate member” with “member”
`
`for the first limitation of the disputed phrase without any explanation for removing
`
`“elongate”; and (2) substitutes language from the specification that describes the
`
`meaning of the terms “inherently resilient” and “flexible” for the second limitation
`
`of the disputed phrase. For example, the specification describes paddles 11 that are
`
`“inherently resilient, which means that they return to an unbiased position when
`
`not under load.” ’525 Patent at 3:33-35. Further, the patent describes “alternative
`
`embodiments” in which the paddles 11 are “configured to be resilient and flexible
`
`2
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 6 of 27
`
`such that they can be depressed by a user to activate a switch mechanism.” Id. at
`
`4:15-19. Ironburg’s veiled attempt to remove the “shape” limitation from claim 1,
`
`in the process conflating both limitations of this two-limitation phrase into a single
`
`limitation, violates the fundamental principle of claim construction that every term
`
`in a claim has meaning and limits the claim:
`
`that physical structures and
`to argue
`Allowing a patentee
`characteristics specifically described in a claim are merely superfluous
`would render the scope of the patent ambiguous, leaving examiners
`and the public to guess about which claim language the drafter deems
`necessary to his claimed invention and which language is merely
`superfluous, nonlimiting elaboration. For that reason, claims are
`interpreted with an eye toward giving effect to all terms in the claim.
`
`
`See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (emphasis
`
`added). This principle is especially true for a claim term added to the claim during
`
`prosecution to distinguish over prior art. See e.g., KCJ Corp. v. Kinetic Concepts,
`
`Inc., 223 F.3d 1351, 1359 (Fed. Cir. 2000). As discussed below in connection with
`
`“elongate member,” Ironburg amended every pending claim during prosecution of
`
`the ‘525 Patent by adding “elongate” to distinguish over a prior art control. See
`
`Dkt. No. 69 at 3; Dkt. No. 69-3 at 8.
`
`Second, adopting Ironburg’s proposed construction would require “elongate
`
`member” to have a different meaning in asserted claim 1 (i.e., no “shape”
`
`requirement) than it does in other asserted claims that do not recite “inherently
`
`3
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 7 of 27
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`resilient and flexible” yet share the same specification (e.g., independent claim 20
`
`of the ’525 Patent and independent claim 1 of the ’770 Patent). Again, this is
`
`contrary to fundamental principles of claim construction, which mandate that
`
`“elongate member” should have the same meaning across every claim of the ’525
`
`and ’770 Patents. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334
`
`(Fed. Cir. 2003). Most claims in the ’525 and ’770 Patents, including claim 1 of
`
`the ’525 Patent, add a further limitation to the “elongate member” limitation that is
`
`present in every claim. The following side-by-side comparison of claims 1 and 20
`
`of the ‘525 Patent shows that the claims are essentially identical, except that claim
`
`1 further requires the claimed “elongate member” to be “inherently resilient and
`
`flexible,” whereas independent claim 20 does not require that additional limitation
`
`to the claimed “elongate member.”
`
`’525 Patent, Claim 1
`
`’525 Patent, Claim 20
`
`A hand held controller for a game
`console comprising:
`
`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
`
`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;
`a front control located on the front of
`the controller,
`wherein the controller is shaped to be
`
`4
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 8 of 27
`
`held in the hand of a user such that the
`user's thumb is positioned to operate the
`front control; and
`
`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.
`
`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.
`
`Third, Ironburg’s proposed construction for this phrase contradicts its own
`
`arguments that “elongate member” is not indefinite. See Dkt. No. 68 at 6-10.
`
`After citing claim 1 of the ’525 Patent as “an exemplary claim,” Ironburg states
`
`that “‘elongate member’ is plain and no further embellishment should be provided
`
`under the law.” Id. at 6-7. If so, how can Ironburg justify removing “elongate”
`
`from claim 1 but not from the other asserted claims? Further, Ironburg notes that
`
`the ’525 Patent “recites the elongate members as ‘elongate in shape’” and
`
`“describes the relationship of the shape to its functionality.” Id. at 9 (citing to the
`
`’525 Patent at 3:51 and 3:56-60).1 Again, Ironburg’s own argument defeats its
`
`proposal to remove the shape limitation from claim 1. Moreover, after discussing
`
`the “location” and “distance” limitations of claim 1 (Id. at 8), Ironburg criticizes
`
`
`1 Ironburg’s characterization of the ’525 Patent specification in this regard is not
`entirely accurate. The cited portions of the specification actually refer to the
`paddles 11, not to the “elongate members,” which are not described in the Detailed
`Description of the ’525 Patent.
`
`5
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 9 of 27
`
`Valve for “fail[ing] to take into account the surrounding claim language or the rest
`
`of the specification” in “asserting that the term ‘elongate member’ is indefinite.”
`
`Id. at 10. However, Ironburg fails to explain why it is appropriate to selectively
`
`conflate the “inherently resilient and flexible” limitation of claim 1 with “elongate
`
`member” in a manner that removes the “shape” limitation, yet the “location” and
`
`“distance” limitations of claim 1 remain separate limitations. The answer is that
`
`Ironburg’s positions cannot be reconciled.
`
`Fourth, it is well-known that an “elongate” object is not necessarily
`
`“inherently resilient and flexible.” For example, icicles would presumably be
`
`considered elongate in shape by Ironburg, but they are plainly not inherently
`
`resilient and flexible. Conversely, round NERF balls are inherently resilient and
`
`flexible, but they are not elongate in shape. Tellingly, every reference to “flexible”
`
`in the patent specification includes a disclaimer that limits it to either “one
`
`embodiment” or “alternative embodiments.” ’525 Patent at 1:59-61 (“In one
`
`embodiment, each additional control is an elongate member which is inherently
`
`resilient and flexible such that it can be displaced by a user to activate control
`
`function.”); id. at 3:28-30 (“In one embodiment the paddles 11 are formed from a
`
`thin flexible material such as a plastics material for example polyethelene.”); id. at
`
`4:15-19 (“In alternative embodiments it is envisaged that the paddles 11 would be
`
`6
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 10 of 27
`
`integrally formed with the controller body, the paddles 11 being configured to be
`
`resilient and flexible such that they can be depressed by a user to activate a switch
`
`mechanism.”). Consequently, the specification makes clear that “inherently
`
`resilient and flexible” (1) is a separate limitation not present in every claim (e.g.,
`
`claim 20), and (2) further modifies the claimed “elongate member” in the context
`
`of claim 1.
`
`In the event the Court decides to construe this two-limitation phrase, Valve
`
`contends that the first limitation (“elongate member”) renders the claim indefinite
`
`for the reasons set forth in its Opening Brief and also below. Further, Valve
`
`contends that the second limitation (“inherently resilient and flexible”) should be
`
`given its plain and ordinary meaning and does not require construction because a
`
`jury would adequately understand its meaning.
`
`In contrast, Ironburg’s proposal conflates both limitations into a single
`
`construction. Ironburg’s unusual 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,
`
`which defies claim construction principles and common sense, should be rejected.
`
`
`
`7
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 11 of 27
`
`B.
`
`“Elongate member”
`
`Term
`
`Claims
`
`“Elongate
`member”
`
`’525 Patent, Claims 1, 20
`’770 Patent, Claim 1
`’688 Patent, Claims 1, 30
`’229 Patent, Claim 1
`
`Ironburg’s
`Proposal
`
`Valve’s
`Proposal
`
`Not indefinite
`
`Indefinite
`
`Ironburg does not dispute that “elongate member” is a limitation of every
`
`asserted claim. Notwithstanding Ironburg’s untenable position with respect to
`
`claim 1 of the ’525 Patent, which should be disregarded for the reasons discussed
`
`above, Ironburg does not assert that “elongate member” should have a different
`
`meaning in different claims. Thus, the parties seem to agree that “elongate
`
`member” should have the same meaning across all of the asserted claims.
`
`A significant point of disagreement is whether a person of ordinary skill in
`
`the art (a “POSITA”) would understand the scope of “elongate member” with
`
`reasonable certainty. Ironburg thinks so, but relies solely on conclusory attorney
`
`argument. Dkt. No. 68 at 8. Valve thinks not, relying in part on expert testimony
`
`regarding how a POSITA would understand the term. See e.g., Dkt. No. 69-4 at
`
`¶ 24. Ironburg has moved to strike Mr. Dezmelyk’s declaration (see Dkt. No. 70),
`
`but as explained in detail in Valve’s Opposition (Dkt. No. 74), Ironburg’s motion
`
`is without merit. Just as Ironburg has no substantive answer to Mr. Dezmelyk’s
`
`8
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 12 of 27
`
`testimony, it also has no legitimate basis to exclude it from the Court’s
`
`consideration.
`
`With or without the benefit of expert testimony, a POSITA would not
`
`understand the scope of the claimed “elongate member” with reasonable certainty
`
`in the four Asserted Patents. All of them include figures showing that the
`
`disclosed “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 understand that the illustrated paddles are “elongate” in
`
`shape, as well as certain other long and slender objects (e.g., a flag pole, an icicle).
`
`Similarly, a POSITA would understand that certain other objects are not elongate
`
`in shape (e.g., a sphere, a cube). But a POSITA would not understand with
`
`reasonable certainty where the objective boundary is between elongate and non-
`
`elongate. For example, are controls with triangular or complex curved shapes, like
`
`the prior art controls depicted at pages 12-13 of Valve’s Opening Brief, elongate?
`
`What about the controls of the accused Steam controller? As explained in detail in
`
`Valve’s Motion to Compel Supplemental Infringement Contentions and supporting
`
`exhibits, Ironburg has yet to identify what structure on the Steam controller
`
`allegedly corresponds to the claimed “elongate member.” See Dkt. Nos. 71-72.
`
`9
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 13 of 27
`
`Even if the Court is able to construe “elongate member,” the Supreme Court
`
`has confirmed that an ambiguous claim term can still render a claim indefinite even
`
`if that term is amenable to construction. See Nautilus, Inc. v. Biosig Instruments,
`
`Inc., 134 S.Ct. 2120, 2130 (2014) (observing that “[i]t cannot be sufficient that a
`
`court can ascribe some meaning to a patent’s claims”). Here, neither party
`
`proposed a construction for “elongate member” in its Opening Brief. Instead, the
`
`dispute has focused on whether the term renders the claims indefinite. To the
`
`extent the Court is inclined to attempt to construe “elongate member,” Valve
`
`submits the following potential construction: “distinct slender object having a
`
`length much greater than a maximum width between lateral edges.”2 This potential
`
`construction is supported by the intrinsic record as well as Mr. Dezmelyk’s
`
`declaration and deposition testimony. See, e.g., Dkt. No. 69-4, at ¶¶ 27, 51 and 64
`
`(each including citations to the intrinsic record): Ex. 1, Dezmelyk Depo. Tr. at
`
`44:15-46:13, 52:10-20. Therefore, even if the Court can construe “elongate
`
`member,” the claims may still be indefinite if the construction does not provide a
`
`POSITA with objective boundaries for the scope of the claim.
`
`
`2 Stated more simply, “elongate member” means “popsicle stick-shaped object.”
`See e.g., ’525 Patent at Fig. 2; ’770 Patent at Fig. 2; ’688 Patent at Fig. 3; ’229
`Patent at Fig. 2. See also Dezmelyk Depo. Tr. at 44:15-46:13, 52:10-20, attached
`as Exhibit 1.
`
`10
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 14 of 27
`
`Under similar circumstances, the Federal Circuit recently affirmed a district
`
`court’s finding of indefiniteness because a POSITA “could not be reasonably
`
`certain of the claim scope in light of the term ‘elongated.’” See GE Lighting
`
`Solutions, LLC v. Lights of Am., Inc., 2016 U.S. App. LEXIS 19362 at *4-6 (Fed.
`
`Cir. Oct. 27, 2016) (unpublished). The district court found the asserted claims
`
`indefinite despite having construed “elongated” to mean “extending in length.” Id.
`
`at*4. Although the patentee distinguished two prior art references during
`
`prosecution, the Federal Circuit noted that “both extend in length, which creates an
`
`unresolved ambiguity as to how the prior art elements are not considered to be
`
`‘elongated.’” Id. at*5. Consequently, a “person of ordinary skill thus has no
`
`objective means to determine which cores are ‘elongated’ and which are not.” Id.
`
`Here, Ironburg added “elongate member” to every pending claim during
`
`prosecution of the ’525 Patent to help distinguish over a prior art control disclosed
`
`in the Ogata patent 3, stating that “rotation actuator 16 is not … ‘an elongate
`
`member.’” See Dkt. No. 69-3 at 8 (citing column 12, line 33 to column 13, line 11
`
`of Ogata). As shown below in FIGS. 19 and 20 of the Ogata patent, the rotation
`
`actuator 16 includes a main actuator body portion 86 having a shank portion 86a
`
`and mounted on the distal end of the actuating shaft 57:
`
`
`3 U.S. Patent No. 6,394,906 to Ogata (“the Ogata patent” or “Ogata”), attached as
`Exhibit 2.
`
`11
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 15 of 27
`
`
`
`
`
`Ex. 2, Ogata at 12:33-36. Ironburg’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. As in GE Lighting Solutions,
`
`it instead creates an unresolved ambiguity as to how the prior art Ogata control,
`
`which includes a shank portion 86a and is mounted on the actuating shaft 57, is not
`
`considered to include an “elongate member.” Therefore, a POSITA has no
`
`objective means to determine which controls include an “elongate member” and
`
`which controls do not.
`
`For the reasons stated above, the uncertainty surrounding “elongate
`
`member” 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
`
`12
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 16 of 27
`
`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.
`
`“The medial portion is closer to the top edge than a distal end of
`each of the first handle and the second handle”
`
`Phrase/Ironburg’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”
`
`Claim
`
`’770
`Patent,
`Claim
`5
`
`First Alternative
`Interpretation
`
`Second Alternative
`Interpretation
`
`“The medial portion is
`closer to the top edge
`than the medial portion
`is to a distal end of
`each of the first handle
`and the second handle”
`
`“The medial portion is
`closer to the top edge
`than a distal end of
`each of the first handle
`and the second handle
`is to the top edge”
`
`Ironburg ignores the facial ambiguity in this disputed phrase and instead
`
`conveniently mischaracterizes Valve’s proposal as an “additional” limitation. In
`
`fact, as explained in Valve’s Opening Brief and shown in the table above, this
`
`phrase can be parsed two different ways. To avoid indefiniteness, the intrinsic
`
`record and principles of claim construction must dictate whether the first or second
`
`alternative interpretation set forth above is the correct way to parse this phrase.
`
`Ironburg’s proposal simply repeats the ambiguous language from the claim,
`
`leaving significant potential for jury confusion regarding the proper interpretation
`
`of this phrase.
`
`13
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`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 17 of 27
`
`Claim 5 lacks the necessary words or punctuation to clear up the ambiguity,
`
`and the written description of the ’770 Patent is silent on this issue. At page 17 of
`
`its Opening Brief, Ironburg inexplicably references Figure 1 despite the fact that it
`
`depicts a conventional, prior art game controller. ’770 Patent at 2:61-62. In
`
`contrast, Figure 2 (annotated below), which supports Valve’s construction, is an
`
`illustration of “the back of a game controller according to the present invention.”
`
`’770 Patent at 2:63-64 (emphasis added).
`
`top edge
`
`
`
`
`
`distal end
`
`medial portion
`
`
`distal end
`
`
`The Court should construe this phrase so that the ambiguity can be resolved.
`
`The overall controller geometry shown in the relevant patent figure supports
`
`Valve’s proposed construction (i.e., the first alternative interpretation)4. Stated
`
`more simply, claim 5 requires X to be “closer to Y than Z.” The natural reading of
`
`
`4 Valve’s proposed construction in its Opening Brief included three additional
`words (i.e., “of the controller”), which are not present in the first alternative
`interpretation above. Those three words make no difference substantively. Valve
`submits that either variation removes the ambiguity in the disputed phrase.
`
`14
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`

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`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 18 of 27
`
`this simple phrase is that X is closer to Y than it is to Z (the first alternative
`
`interpretation). Neither party has suggested that the phrase should be construed as
`
`X is closer to Y than Z is to Y (the second alternative interpretation). Thus, the
`
`Court should adopt Valve’s construction of the phrase. Alternatively, if the Court
`
`cannot resolve the ambiguity with reasonable certainty, claim 5 should be deemed
`
`invalid for failure to meet the definiteness requirement.
`
`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
`
`Phrases
`
`Claims
`
`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
`
`As Valve explained in its Opening Brief, a POSITA would be unable to
`
`determine the bounds of these phrases, because of uncertainty both as to the
`
`meaning of “substantially” and as to the referenced “distance.” Ironburg’s
`
`Opening Brief addressed only the term “substantially,” ignoring the uncertainty
`
`15
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`

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`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 19 of 27
`
`stemming from the “distance” portion of the phrases. The “distance” portion of the
`
`phrases is significant because it constitutes an independent basis for finding these
`
`claims indefinite. Indeed, one of the affected claims—claim 1 of the ’770 patent—
`
`does not even include the word “substantially.” Valve will not restate here its
`
`arguments and evidence related to the “distance” portion of the phrases, but instead
`
`refers the Court to that portion of its Opening Claim Construction Brief. See Dkt.
`
`No. 69 at 15-17.
`
`Turning to the term “substantially,” the parties appear to agree that 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, 1378 (Fed. Cir. 2015). But Ironburg contends that this term
`
`“is definite and needs no further parameters as a matter of law.” Dkt. No. 68, at
`
`12. This contention is incorrect, because the Asserted Patents do not provide the
`
`requisite standard for determining how much of the referenced distance an elongate
`
`member must cover in order to extend “substantially the full distance.”
`
`Although terms of degree do not automatically render a claim indefinite, the
`
`Federal Circuit has consistently held that in order for such a claim to be valid, the
`
`patent specification must provide a standard for measuring the degree. See Biosig,
`
`783 F.3d at 1378. This requirement is necessary in order for a person of skill in the
`
`16
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`

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`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 20 of 27
`
`art to have reasonable certainty regarding the scope of the claim. See Interval
`
`Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373-74 (Fed. Cir. 2014). Indeed, the
`
`Federal Circuit clarified that “it is not enough, as some of the language in our prior
`
`cases may have suggested, to identify ‘some standard’ for measuring the scope of
`
`the phrase.” Id. at 1370-71. To be valid, the claims when read in light of the
`
`specification must provide “objective boundaries for those of skill in the art.” Id.
`
`at 1371.
`
`At least one district court has found the word “substantially” to be indefinite
`
`under the correct legal standard. See Fairfield Indus., Inc. v. Wireless Seismic,
`
`Inc., 2015 WL 1034275, at *16 (S.D. Tex. 2015). Construing the phrase
`
`“substantially prevent communication interference between the first and second
`
`pairs,” the Fairfield court noted that other courts had found that the word was not
`
`indefinite when it was used to account for natural limitations. See id. at *15, citing
`
`Ruckus Wireless, Inc. v. Netgear, Inc., 2013 WL 6627737, *4 (N.D. Cal. 2013)
`
`(holding that the term “substantially omnidirectional” was not indefinite because
`
`“real antennas are never perfectly omnidirectional, as the physical structure of the
`
`antenna itself creates some minor interference that prevents a perfectly circular
`
`radiation pattern.”).
`
`17
`
`

`

`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 21 of 27
`
`The Fairfield court distinguished such cases, explaining that in Fairfield’s
`
`patent, the term was not being used as a way of acknowledging a physical
`
`impossibility or imprecision. See Fairfield at *16. Instead, it was used to inject a
`
`question of degree into the claim. See id. Because that question “finds no answer
`
`in the intrinsic evidence,” the court found that the phrase failed “to inform with
`
`reasonable certainty those skilled in the art about the degree of interference to be
`
`prevented.” Id. Therefore, the court found all claims having that phrase to be
`
`invalid for indefiniteness. See id.
`
`As in the Fairfield case, the word “substantially” is used in Ironburg’s
`
`patents not as a way of acknowledging a physical impossibility or imprecision, but
`
`to inject a question of degree into the claims. That question is: over how much of
`
`the referenced distance does the elongate member extend? As in Fairfield, that
`
`question finds no answer in the intrinsic evidence. The specification fails to
`
`provide an objective boundary so that a POSITA can know with reasonable
`
`certainty how much of the distance the elongate member must cover in order to fall
`
`within the scope of the patent claim. Just like the Fairfield court, this Court should
`
`find all claims having these phrases to be invalid for indefiniteness.
`
`
`
`18
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`

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`Case 1:15-cv-04219-TWT Document 76 Filed 01/11/17 Page 22 of 27
`
`E.
`
`“The case being shaped to be held in both hands of a user…”
`
`Phrases
`
`Claims
`
`Ironburg’s
`Proposal
`
`Valve’s
`Proposal
`
`“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