Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 1 of 31
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`
`
`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.
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`VALVE CORPORATION, a
`Washington Corporation,
`
`Defendant.
`
`PLAINTIFF IRONBURG INVENTIONS LTD.’S RESPONSIVE CLAIM
`CONSTRUCTION BRIEF
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`
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`
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`
`
`
`
`
`
`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 RESPONSIVE CLAIM
`CONSTRUCTION BRIEF
`
`
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 2 of 31
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`STATEMENT OF THE LAW ....................................................................... 1
`A.
`Claim Construction............................................................................... 1
`B. Definiteness .......................................................................................... 2
`C.
`Claims Should be Construed to Sustain Validity Where
`Possible ................................................................................................. 3
`III. DISPUTED TERMS TO BE CONSTRUED ................................................. 3
`A.
`“The medial portion is closer to the top edge than a distal end of
`each of the first handle and second handle” ......................................... 3
`Elongate Member ................................................................................. 4
`“Elongate member … is inherently resilient and flexible” ................ 10
`“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 ..... 12
`“the case being shaped to be held in both hands of a user…” ........... 17
`E.
`“Conduit” ............................................................................................ 20
`F.
`“Formed from a material having a thickness”.................................... 22
`G.
`IV. CONCLUSION ............................................................................................. 25
`
`B.
`C.
`D.
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 3 of 31
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`TABLE OF AUTHORITIES
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`Page
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`CASES
`Andrew Corp. v. Gabriel Elecs., Inc.,
`847 F.2d 819 (Fed. Cir. 1988) ............................................................................ 15
`Apple, Inc. v. Samsung Electronics Co., Ltd.,
`932 F.Supp.2d 1076 (N.D. Cal. Jan. 29, 2013) .................................................. 14
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004) .............................................................................. 1
`CytoLogix Corp. v.Ventana Med. Sys., Inc.,
`424 F.3d 1168 (Fed. Cir. 2005) .......................................................................... 10
`Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed.Cir. 2005) ....................................................................... 6, 13
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ............................................................................ 5
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir. 2012) .......................................................................... 14
`Exxon Research & Eng'g Co. v. United States,
`265 F.3d 1371 (Fed.Cir. 2001) ........................................................................... 14
`Generation II Orthotics Inc. v. Med. Tech. Inc.,
`263 F.3d 1356 (Fed. Cir. 2001) ............................................................................ 3
`Interval Licensing LLC v. AOL, Inc.,
`764 F.3d 1364 (Fed. Cir. 2014) ............................................................................ 6
`Key Pharms.,
`161 F.3d at 716 ..................................................................................................... 2
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) .................................. 1, 9
`The Medicines Co. v. Mylan Inc.,
`No. 11-CV-1285, 2014 WL 1979261 (N.D. Ill. May 15, 2014) ........................ 10
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 4 of 31
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .......................................................................................... 2
`Not Dead Yet Manufacturing, Inc. v. Pride Solutions, LLC et al,
`No. 1:2013cv03418 ............................................................................................. 10
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed.Cir. 2005) (en banc) ......................................................... 1, 2
`Rhine v. Casio, Inc.,
`183 F.3d 1342 (Fed. Cir. 1999) ............................................................................ 3
`Seattle Box Co. v. Indus. Crating & Packing, Inc.,
`731 F.2d 818 (Fed. Cir. 1984) ............................................................................ 14
`Specialty Composites v. Cabot Corp.,
`845 F.2d 981 (Fed. Cir. 1988) ............................................................................ 24
`Valve Corporation v. Ironburg Inventions Ltd.,
`IPR2016-00948, Paper 10, at 14 (Sept. 27, 2016) .............................................. 12
`Verve, LLC v. Crane Cams, Inc.,
`311 F.3d 1116 (Fed. Cir. 2002) .......................................................................... 15
`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) .............................................................................. 15
`STATUTES
`35 U.S.C. § 112 ¶ 2 .................................................................................................... 2
`OTHER AUTHORITIES
`37 C.F.R. § 42.100 ............................................................................................... 8, 11
`U.S. Patent No. 8,641,525 .................................................................................passim
`RULES
`LPR 6.1 .................................................................................................................... 11
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 5 of 31
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`I.
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`INTRODUCTION
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`The claim constructions advanced by Plaintiff “Ironburg” are mandated by
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`the intrinsic record, including especially the specification and claims. In contrast,
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`Defendant seeks to use expert testimony to create definitional issues that are
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`clearly at odds with the claim constructions mandated by the intrinsic evidence.
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`This is clearly improper under the law, as discussed below. When properly
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`construed, the asserted terms clearly delineate the bounds of claim scope and thus
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`are not indefinite.
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`II.
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`STATEMENT OF THE LAW.
`A. Claim Construction
`Claim construction is an issue “exclusively within the province of the court.”
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`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134
`
`L.Ed.2d 577 (1996). In construing a claim term, we must look at the term's
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`“ordinary meaning in the context of the written description and the prosecution
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`history.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir. 2005) (en banc).
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`While extrinsic evidence “can shed useful light on the relevant art,” the Federal
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`Circuit has explained that it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” C.R. Bard, Inc. v.
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`U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).
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`Expert testimony can be helpful, for example “to provide background on the
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`technology at issue, to explain how an invention works, to ensure that the court's
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 6 of 31
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`understanding of the technical aspects of the patent is consistent with that of a
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`person of skill in the art, or to establish that a particular term in the patent or the
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`prior art has a particular meaning in the pertinent field.” Phillips v. AWH Corp.,
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`415 F.3d at 1318. However, in Phillips v. AWH Corp., 415 F.3d at 1318-1319, the
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`court warned that conclusory assertions by experts as to the definition of a claim
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`and testimony that is at odds with the construction mandated by the intrinsic
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`evidence should be discounted:
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`However, conclusory, unsupported assertions by experts as to the
`definition of a claim term are not useful to a court. Similarly, a court
`should discount any expert testimony “that is clearly at odds with the
`claim construction mandated by the claims themselves, the written
`description, and the prosecution history, in other words, with the
`written record of the patent.” Key Pharms., 161 F.3d at 716.
`
`B. Definiteness
`35 U.S.C. § 112 ¶ 2 provides “[t]he specification shall conclude with one or
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`
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`more claims particularly pointing out and distinctly claiming the subject matter
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`which the applicant regards as his invention.” This definiteness requirement
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`focuses on whether “a patent’s claims, viewed in light of the specification and
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`prosecution history, inform those skilled in the art about the scope of the invention
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`with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
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`2120, 2129 (2014)(emphasis added). The inquiry “trains on the understanding of a
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`skilled artisan at the time of the patent application.” Id. at 2130.
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`C. Claims Should be Construed to Sustain Validity Where Possible
`It must be remembered that “claims should be so construed, if possible, as to
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`sustain their validity.” Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999).
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`This rule comes into play “where the proposed claim construction is ‘practicable,’
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`is based on sound claim construction principles, and does not revise or ignore the
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`explicit language of the claims.” Generation II Orthotics Inc. v. Med. Tech. Inc.,
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`263 F.3d 1356, 1365 (Fed. Cir. 2001).
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`III. DISPUTED TERMS TO BE CONSTRUED
`“The medial portion is closer to the top edge than a distal end of
`A.
`each of the first handle and second handle”
`
`Ironburg
`“the medial portion is closer to the top
`edge than a distal end of each of the
`first handle and the second handle”
`
`Defendant
`“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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`“the medial portion is closer to the
`top edge of the controller than a
`distal end of each of the first handle
`and the second handle is to the top
`edge.”
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`The language of the claim is clear and Valve’s proposed constructions fail to
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`clarify. Valve’s first proposal, to the extent that it is understood, is an unnecessary
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`restatement of the claim language. Valve’s second proposal, “the ‘medial portion’
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`is closer to the top edge of the controller than a distal end of the controller handles
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`is to the top edge” makes no sense in light of the claim language and specification.
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 8 of 31
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`And Valve agrees.
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` See Defendant Valve Corporation’s Opening Claim
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`Construction Brief, D.I. 69, 8 (filed Dec. 22, 2016)(“Valve’s Opening Brief”)
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`(“Valve’s proposed construction clarifies that this phrase has the first meaning,
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`which matches the overall controller geometry shown in the patent figures.”).
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`B.
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`Elongate Member
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`Ironburg
`Not indefinite: “elongate
`member”
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`Defendant
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`Indefinite
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`Various claims call for “elongate member[s]” located on the back of the
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`controller. Claim 1 of the ‘525 patent is exemplary (emphasis added):1
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`“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.”
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`As can be seen, in context, “elongate member” is merely the name given to
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`an elongated member of an additional/back control. Contrary to the assertions by
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`Valve, the term “elongate” by itself is not one of degree and does not require any
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`specific length or width parameters. No length is specified here and it would be
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`1 Claim 1 of the ‘770 patent recites: “the first elongate member extends along at
`least half of a first distance between the top edge and the bottom edge….” Claims
`1 of the ‘688 Patent recites “the first additional control comprising a first elongate
`member displaceable by the user to activate a control function.” Claim 1 of the
`‘229 Patent recites “ the additional control comprising an elongate member which
`is inherently resilient and flexible such that it can be displaced by the user to
`activate a control function.”
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 9 of 31
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`error to import a length limitation into the claim. Where length or other
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`dimensional parameters (including thickness) are required, they are expressly and
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`separately set forth in the claims. There are no width requirements in any claims.
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`Valve does not propose a definition for “elongate member.” Instead, Valve
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`advances two conflicting positions. First, Valve argues that “elongate” refers to
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`the shape of the member and admits that one of ordinary skill would understand an
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`elongate shape. See Valve’s Opening Brief at 10 (“All four of the Asserted Patents
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`include figures showing that the “paddles” are long, slender objects shaped
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`generally like popsicle sticks. … A POSITA would recognize that the adjective
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`‘elongate’ would include such an object.”).. Valve’s admission confirms that the
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`claim is definite. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
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`1261 (Fed. Cir. 2014) (where the court noted that customers understood the
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`meaning of ‘look and feel’).
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`Second, citing the Declaration of Robert Dezmelyk, Valve argues that
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`“elongate” is a word of degree with specific length and width requirements, and
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`that one of ordinary skill in the art would not know “how long and slender an
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`object had to be in order to be considered elongate.” See Valve’s Opening Brief at
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`9-10, 11-13.2 Valve’s argument about degree is a red herring. Elongate is not a
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`term of degree and there are no length requirements in the claims other than those
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`set forth separately in the claims.
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`Valve’s indefiniteness argument is based on improper reliance on Interval
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`Licensing LLC v. AOL, Inc., 764 F.3d 1364, 1371-73 (Fed. Cir. 2014). Interval
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`Licensing provides one of the very few examples that can be found where a claim
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`term was found to be indefinite on appeal. In Interval, the court held that a single
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`example of the subjective term “unobtrusive manner” in the specification did not
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`outline the claims to a skilled artisan with reasonable certainty. The other oft-cited
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`case is Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed.Cir.
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`2005) where the court found the term “aesthetically pleasing” to be indefinite
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`where the term ‘pleasing’ was purely subjective and the specification lacked any
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`objective definition of the term. In stark contrast, the term “elongate member”
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`here is supported throughout the specifications, figures and claims of the patents-
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`in-suit. In addition, it is not a purely subjective term like “aesthetically pleasing”.
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`2 The Declaration of Robert Dezmelyk in Support of Defendant Valve
`Corporation’s Proposed Claim Construction Positions does not provide any
`admissible extrinsic evidence in conflict with the clear meaning of the terms
`“elongate” and “member” in the context of the patent. See also Ironburg’s Motion
`to Strike and Exclude Robert Dezmelyk’s Opinions, D.I. 70 (filed Dec. 23, 2016).
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 11 of 31
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`In asserting that the term “elongate member” is indefinite, Defendant Valve
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`fails to take into account the surrounding claim language discussed above and the
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`rest of the specification. As admitted by Valve (see Valve’s Opening Brief at 10),
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`the specification describes the elongate members with reference to preferred
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`embodiments that include back control paddles. The ‘525 patent specification (col.
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`3:22-53) is exemplary:
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`“Game controller 10 differs from the conventional controller 1 in that
`it additionally comprises two paddle levers 11 located on the back of
`the controller. The paddle levers 11 are vertically orientated with
`respect to the controller 10 and are positioned to be operated by the
`middle fingers of a user 12, as shown in FIG. 3.
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`In one embodiment the paddles 11 are formed from a thin flexible
`material such as a plastics material for example polyethylene.
`Preferably, the paddles 11 are less than 10 mm thick, but may be less
`than 5 mm thick, and more preferably are 3 mm thick or less.
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`The paddles 11 are inherently resilient, which means that they return
`to an unbiased position when not under load. … While the example
`shows the paddles 11 engaged by the middle fingers, they could also
`be engaged by the index, ring, or little fingers. …
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`The paddles 11 are elongate in shape and substantially extend in a
`direction from the top edge to bottom edge of the controller 10.”
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`Further, the specification of the ‘525 Patent describes the relationship of the
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`shape of the member to its functionality. “This elongate shape allows a user to
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`engage the [elongate members] with any of the middle, ring, or little finger; it also
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`provides that different users having different size hands can engage the [elongate
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`members] in a comfortable position.” ‘525 Patent, 3:56-60. Many of the figures
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`throughout the other patents-in-suit also describe the “elongate member.” In
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`addition to the figures shown above, more than 30 figures across the patents-in-suit
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`show an “elongate member.” These descriptions make clear that all that is
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`required by “elongate member” is an elongated member. There are no width
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`requirements at all, and there are no specific length requirements other than those
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`separately specified in the claims.
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`With respect to the exemplary paddles, Valve admits that a “POSITA would
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`recognize that the adjective ‘elongate’ would include such an object.” See Valve’s
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`Opening Brief at 10 By this admission, Valve has conceded that the claim is
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`sufficiently definite to one of ordinary skill in the art.3 Valve has submitted no
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`evidence that would indicate that a POSITA would be unable to identify an
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`elongated member with at least reasonable certainty. Given that Valve has the
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`3 Valve also fully briefed both “elongate member” and “inherently resilient and
`flexible” in its Corrected Petition for Inter Partes Review of U.S. Patent No.
`8,641,525, under 37 C.F.R. § 42.100 and did not allege that “elongate member” is
`indefinite.
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 13 of 31
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`burden of showing this by clear and convincing evidence, and has failed to carry
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`that burden, the claim is definite. Valve’s further argument, that a POSITA
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`“would not know how long and slender an object had to be in order to be
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`considered ‘elongate’” is a red herring. The term elongate by itself does not
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`require specific length or width dimensions. When length or other dimensions are
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`required, they are separately stated and Valve has ignored them. In addition to the
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`separately claimed length parameters set forth in Claims 1 and 20 of the ‘525
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`patent (“extends substantially the full distance between the top edge and the
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`bottom edge”) and Claim 1 of the ‘770 patent (“extends along at least half of a first
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`distance between the top edge and the bottom edge”), the patents also include
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`separate thickness parameters. See ‘525 Patent, 2:1-3 (“Preferably, each elongate
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`member has a thickness less than 10 mm thick, more preferably less than 5 mm
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`thick, and most desirably between 1 mm and 3 mm”).
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`Moreover, other than the admission that a POSITA would understand the
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`scope of an elongated shape, the expert opinion submitted by Valve on the
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`definiteness of the term “elongate member” merely provides claim construction
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`opinions using intrinsic evidence. See Valve’s Opening Brief, 9-13. This is
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`entirely improper and should be excluded. See Markman v. Westview Instruments,
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`Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)(“the construction
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`of a patent, including terms of art within its claim, is exclusively within the
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 14 of 31
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`province of the court.”); CytoLogix Corp. v.Ventana Med. Sys., Inc., 424 F.3d
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`1168, 1172 (Fed. Cir. 2005) (finding district court erred by admitting expert
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`testimony regarding claim construction); The Medicines Co. v. Mylan Inc., No. 11-
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`CV-1285, 2014 WL 1979261, at *6 (N.D. Ill. May 15, 2014)(excluding expert's
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`claim construction opinion where expert’s quotation of patent specification as basis
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`for opinion “further evidence[d] that his opinion concern[ed] claim construction
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`issues”); Not Dead Yet Manufacturing, Inc. v. Pride Solutions, LLC et al, No.
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`1:2013cv03418 - Document 145 (N.D. Ill. 2016) (“The court concludes that
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`because Dr. Elder's opinion concerning the meaning of ‘support member’ is an
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`improper attempt at claim construction, it must be excluded.”).
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`C.
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`“Elongate member … is inherently resilient and flexible”
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`Ironburg
`“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.”
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`Defendant
`“elongate member” – indefinite
`
`and
`resilient
`inherently
`“is
`flexible” – plain and ordinary
`meaning
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`The phrase “is inherently resilient and flexible” describes the “elongate
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`member.” The phrase “elongate member” is “inherently resilient and flexible” as
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`used in the ‘525 patent means a member (1) that may be bent or flexed by a load,
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`such as a finger, and (2) will return to its unbiased position when not under load.
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`Valve has not been prejudiced by Ironburg’s request to include this phrase, and
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`Ironburg’s proposed construction is supported by the specification, as well as the
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 15 of 31
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`intrinsic record with respect to the co-pending inter partes review of the ‘525
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`Patent.
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`Despite Valve’s objections to this phrase and its assertion that it first heard
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`of this term on November 22, the phrase “inherently resilient and flexible” was one
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`of over 90 terms and phrases originally proposed for construction by Valve in its
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`October 11, 2016 Local Patent Rule LPR 6.1 disclosure. See Declaration of
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`Danielle Mihalkanin in Support of Ironburg’s Responsive Claim Construction
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`Brief (“Mihalkanin Decl.”), Ex. 1 at 3. Although Valve dropped this phrase in
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`later iterations of its proposed terms and phrases for construction, this phrase is
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`ultimately the only phrase that Ironburg actually requested be included for
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`construction.
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`Also, Valve also fully briefed both “elongate member” and “inherently
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`resilient and flexible” in its Corrected Petition for Inter Partes Review of U.S.
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`Patent No. 8,641,525, under 37 C.F.R. § 42.100. Valve’s proposed construction,
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`“can be moved to a biased position by a user’s finger, and returns to an unbiased
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`position when not under load” is similar to the Board’s construction and Ironburg’s
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`proposed construction here. See Mihalkanin Decl., Ex. 6. Thus, Valve is not
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`prejudiced by Ironburg’s request to include this phrase.
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`Ironburg believes that the construction proposed by the Board in the co-
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`pending inter partes review of the ‘525 Patent is informative and helpful in the
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`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 16 of 31
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`present case. See Mihalkanin Decl., Ex. 5 at 14. Furthermore, the Board had no
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`issue construing the “elongate member … is inherently resilient and flexible” in its
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`Institution Decision, among other terms and phrases associated with the “elongate
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`member.” See id. at 10-16 (construing “thickness,” “extension of the elongate
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`members” (e.g., “substantially”), “inherently resilient and flexible,” “recess,” and
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`“elongate member as a paddle lever” all with respect the “elongate member.”).
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`The ‘525 Patent describes the elongate members as “formed from a thin
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`flexible material such as a plastics material for example polyethylene.” ‘525
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`Patent, 3:28-30. An ordinary meaning of “flexible” is “capable of being bent or
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`flexed.” See Valve Corporation v. Ironburg Inventions Ltd., IPR2016-00948,
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`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
`
`return to an unbiased position when not under load.” ‘525 Patent, 3:33-34.
`
`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
`
`Phrase
`“substantially the
`full distance
`between the top
`edge and the
`bottom edge”
`
`Claim(s)
`‘525 Patent,
`Claims 1, 20
`
`Ironburg
`Not indefinite; the
`top
`and
`bottom
`edges are shown in
`the figures and the
`controls
`extend
`
`Defendant
`Indefinite
`
`
`
`- 12 -
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 17 of 31
`
`
`
`substantially the full
`distance.
`Not indefinite
`
`Indefinite
`
`Indefinite
`
`Not indefinite
`
`–
`“substantially”
`“largely but not
`wholly what
`is
`specified”
`
`a first/second
`“distance
`between the top
`edge and the
`bottom edge”
`“substantially
`all” of the
`first/second
`distance
`
`‘770 Patent,
`Claim 1
`
`‘770 Patent,
`Claim 2
`
`
`For these phrases, Valve’s expert merely attempts to show that the phrases,
`
`when construed together, are indefinite because: (1) there is alleged uncertainty as
`
`to the meaning of “substantially” and as to the referenced distances; and (2) any
`
`“uncertainty would make it impossible to know if the new controller infringed the
`
`Asserted Patents.” Valve’s Opening Brief, 16-18. The expert opinion submitted
`
`by Valve on the definiteness of the phrases including “substantially” merely
`
`provide claim construction opinions using intrinsic evidence, which is improper as
`
`discussed above with respect to “elongate member.” See supra Section B.
`
`Further, Valve’s assertion that claims are indefinite by arguing that one of
`
`ordinary skill in the art would have trouble determining whether a controller
`
`infringed, is also improper. As explained by the Federal Circuit in Datamize, LLC
`
`v. Plumtree Software, Inc., 417 F.3d 1342, 1354 (Fed.Cir. 2005), “indefiniteness
`
`does not depend on the difficulty experienced by a particular person in comparing
`
`
`
`- 13 -
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 18 of 31
`
`
`
`the claims with the prior art or the claims with allegedly infringing products or
`
`acts”. See Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375
`
`(Fed.Cir. 2001) (A claim term is not indefinite just because “it poses a difficult
`
`issue of claim construction.”).
`
`There is no need to construe the term “substantially” when it is used to
`
`denote approximation, as it is here, and no additional standards are mandated by
`
`the specification or file history.
`
`To interpret “substantially,” a word of degree, the court “must determine
`
`whether the patent’s specification provides some standard for measuring that
`
`degree.” Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
`
`(Fed. Cir. 1984). “If the specification does not provide a standard for imposing a
`
`more precise construction of the term, the Federal Circuit has ruled that imposing a
`
`more precise construction would be error.” Apple, Inc. v. Samsung Electronics
`
`Co., Ltd., 932 F.Supp.2d 1076, 1080 (N.D. Cal. Jan. 29, 2013)(finding the term
`
`definite). The lack of further precision, however, does not render the claim
`
`indefinite. “The Federal Circuit has never suggested, however, that this lack of
`
`precision constitutes a lack of construability, so as to render a term of degree
`
`indefinite.” Id. at 1081 (further discussing two approaches to construing terms of
`
`degree); see e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir.
`
`2012) (confirming that “relative terms such as ‘substantially’ do not render patent
`
`
`
`- 14 -
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 19 of 31
`
`
`
`claims so unclear as to prevent persons skilled in the art from ascertaining the
`
`scope of the claim.”); Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed.
`
`Cir. 2002) (“[W]hen the term ‘substantially’ serves reasonably to describe the
`
`subject matter so that its scope would be understood by persons in the field of the
`
`invention, ... it is not indefinite.”); Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d
`
`819, 821-822 (Fed. Cir. 1988); 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) (holding that the terms ‘a distance between,’ ‘the two first
`
`columns,’ and ‘the two second columns,’ read in light of the specification, inform a
`
`person skilled in the art of the scope of the claim terms with reasonable
`
`certainty.”).
`
`In the ‘525 Patent and the ‘770 Patent, the use of “substantially” does not
`
`render the claims indefinite. To the contrary, “substantially” provides guidance as
`
`to the shape of the “elongate member” itself, such that the full distance is not
`
`required. This is clearly shown in the figures, where the full distance is not met,
`
`and is consistent with the specification, as discussed above with respect to the
`
`function of the elongate members. It is not necessary for the elongate members to
`
`run the full distance and use of the term substantially in its normal fashion and
`
`does not render the phrase claim so unclear that there is no means for one of
`
`ordinary skill to ascertain the scope.
`
`
`
`- 15 -
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 20 of 31
`
`
`
`The ‘770 Patent additionally provides the axis along which the “elongate
`
`member” resides, the “longitudinal axis”. 4 The claim is met if the elongate
`
`member extends, along a longitundial axis of the elongate member, at least half of
`
`the distance between the top edge and the bottom edge. As can be seen in the
`
`Figure 2 of the ‘770 Patent below, the elongate members 11 extend substantially
`
`the full and at least half of the distance measured along a longitudinal axis of the
`
`members between the top edge and the bottom edge (denoted by border lines).
`
`
`
`As such, a person of ordinary skill in the art would, with reasonable certainty,
`
`discern from the claim language and the specification that the first and second
`
`distances span longitudinally between the top and bottom edges.
`
`
`4 “[W]herein the [first/second] 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.” ‘770 Patent,
`Claim 1.
`
`
`
`- 16 -
`
`
`
`
`
`Case 1:15-cv-04219-TWT Document 77 Filed 01/11/17 Page 21 of 31
`
`
`
`E.
`
`“the case being shaped to be held in both hands of a user…”
`
`1.
`
`2.
`
`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 locat
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