Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 1 of 80
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`))
`
`))
`
`IRONBURG INVENTIONS LTD,
`Plaintiff,
`
`-vs-
`) Case No. 1:15-CV-4219-TWT
`)
`VALVE CORPORATION,
`) March 2, 2017
`) Atlanta, Georgia
`Defendant.
`) 2:00 p.m.
`______________________________ )
`
`- - -
`TRANSCRIPT OF THE MARKMAN HEARING
`BEFORE THE HONORABLE THOMAS W. THRASH, JR.,
`U.S. DISTRICT COURT JUDGE
`- - -
`
`Proceedings recorded by mechanical stenography
`and computer-aided transcript produced by
`SUSAN C. BAKER, RMR, CRR
`2194 U.S. COURTHOUSE
`75 TED TURNER DRIVE, S.W.
`ATLANTA, GA 30303
`(404) 215-1558
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`1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`))
`
`))
`
`IRONBURG INVENTIONS LTD,
`Plaintiff,
`
`-vs-
`) Case No. 1:15-CV-4219-TWT
`)
`VALVE CORPORATION,
`) March 2, 2017
`) Atlanta, Georgia
`Defendant.
`) 2:00 p.m.
`______________________________ )
`
`- - -
`TRANSCRIPT OF THE MARKMAN HEARING
`BEFORE THE HONORABLE THOMAS W. THRASH, JR.,
`U.S. DISTRICT COURT JUDGE
`- - -
`
`Proceedings recorded by mechanical stenography
`and computer-aided transcript produced by
`SUSAN C. BAKER, RMR, CRR
`2194 U.S. COURTHOUSE
`75 TED TURNER DRIVE, S.W.
`ATLANTA, GA 30303
`(404) 215-1558
`
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 2 of 80
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`APPEARANCES OF COUNSEL:
`On behalf of the Plaintiff:
`
`On behalf of the Defendant:
`
`Also Present:
`
`Robert D. Becker
`Manatt, Phelps & Phillips, LLP
`Cynthia R. Parks
`Parks IP Law, LLC
`Tanya L. Chaney
`Patrick A. Lujin
`Shook, Hardy & Bacon, LLP
`Reynaldo C. Barcelo
`Barcelo, Harrison & Walker, LLP
`Ann G. Fort
`Eversheds Sutherland, LLP
`Duncan Ironmonger, Scuf Gaming
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 3 of 80
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`(Proceedings held in Atlanta, Georgia, March 2, 2017,
`2:00 p.m., in open court.)
`THE COURT: All right. This is the case of Ironburg
`Inventions versus Valve Corporation, Case Number 15-CV-4219.
`First let me ask counsel for the parties to identify
`yourselves for the record and the parties you represent
`beginning with the Plaintiff.
`MR. BECKER: Good afternoon, Your Honor. This is
`Robert Becker. I am with Manatt, Phelps & Phillips; and I
`represent Plaintiff Ironburg Inventions.
`THE COURT: Good afternoon, Mr. Becker.
`MR. BECKER: And also with me here today, Your Honor,
`is my client representative, Duncan Ironmonger.
`THE COURT: Good afternoon.
`MS. PARKS: Good afternoon. My name is Cynthia
`Parks, and I am with the firm Parks IP Law. I am an attorney
`for Ironburg Inventions as well.
`THE COURT: Good afternoon, Ms. Parks.
`MS. FORT: Good afternoon, Your Honor. Ann Fort from
`the Eversheds Sutherland firm. I am here representing
`Defendant Valve Corporation. And I'd like to introduce to you
`lead counsel in the matter, Mr. Lujin, Pat Lujin, and Tanya
`Chaney, both from the Shook Hardy firm. And also with them at
`counsel table is Reynaldo Barcelo from the Barcelo, Harrison &
`Walker firm of Newport Beach, California. And we are also
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 4 of 80
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`joined by a client representative, Karl Quackenbush, from Valve
`Corporation. He is general counsel, Your Honor.
`THE COURT: Thank you, Ms. Fort. Good afternoon,
`
`everybody.
`
`All right. This is a Markman hearing regarding the
`construction of the claims in this case. I believe Ms. Sewell
`communicated to everybody that each side had an hour, and the
`way this is going to work is you've got an hour. Everything
`you do counts against your hour, and you do whatever you want.
`You can argue. You can call witnesses. You can cross-examine
`witnesses. Everything you do counts against your hour. So
`however you want to take your time, spend your time will be up
`to you.
`
`Any questions about that?
`All right. Mr. Becker, are you going to take the
`lead for the Plaintiff?
`MR. BECKER: Sure. I will. Thank you, Your Honor.
`Your Honor, if I understand you correctly, I can
`reserve rebuttal time?
`THE COURT: Whatever you want to do as long as you
`don't use your 60 minutes.
`MR. BECKER: So this is a unique Markman hearing,
`especially for me, in that the disputes about the meaning of
`claim terms are relatively few. What we're really looking at
`here for the most part is a motion for invalidity due to
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 5 of 80
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`indefiniteness, several of the terms in the patents in suit.
`So most of the material is actually issues that are being
`raised by the Defendants, and so I am going to reserve most of
`my time probably for rebuttal of their presentation on the
`indefiniteness issues.
`But I'd like to start out with just educating the
`Court a little bit about what is really a simple invention,
`simple yet very important. So what I have here in my hand is a
`game controller. And game controllers in the past --
`THE COURT: I should tell you at the outset,
`Mr. Becker, that I have never played a video game.
`MR. BECKER: Fortunately, that's not going to matter
`I don't think because the claims don't really pertain to any
`game play. They pertain to the structure of the controller.
`And, essentially, one of the issues in the case is what do you
`call a front and what do you call a top and what do you call a
`back. I'm going to refer to what you are seeing, what I am
`showing you here as the front.
`But it doesn't matter. The terms in the patents,
`front, top, side and back, are just used to distinguish one
`surface from another. And it's written that way and it's
`stated expressly in the patents that that is the case because
`we don't want someone to try to avoid infringement by doing
`this and saying, wait, the top -- I don't have controls on the
`top or I don't have controls on the back and just by flipping
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 6 of 80
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`it around and making what normally would be the front the back
`or what normally would be the top the bottom.
`So I'm showing you what I call the front in normal
`usage, and there's a bunch of controls on there. And,
`essentially, what you can do is put your fingers on the
`controls and operate them while you hold the controller in what
`are called the handles which are these two extended parts on
`the end. And the problem there is that you have over time more
`and more controls; and your thumbs have to do so much work; and
`they can only, you know, hit one thing at a time; and to move
`to a different control takes time.
`And so what happened is our client invented an
`ergonomic way to put controls on the other side of the
`controller, on the back, so that essentially your middle finger
`which normally would just be hanging idle in the back can now
`activate a control. And so now in addition to rapid firing on
`one side you could jump or dodge or whatever the game calls for
`on the other side.
`So that's a summary of what these patents are about.
`It was adding controls that were useful to a user such that
`they could use their middle finger to play games.
`Now, the patents themselves are very simple. The
`two, what I'll call the two main patents, the '525 and the '770
`patents, they share the same specification. They have the same
`parent application. So the figures are the same, the text is
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 7 of 80
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`the same in the specification. There may be a trivial
`variation with a line number or something like that. But they
`come from the same application. They were submitted to the
`Patent Office as copies.
`What's different is the claims. The claims
`themselves, though, are also very similar. The '525 patent
`says that when we are looking at the controls on the back that
`the controls are substantially the length of the back between
`the top edge and the bottom edge. And in this controller, I
`don't know if Your Honor can see, but the control goes really
`all the way from the top edge to the bottom edge.
`The reason it says substantially all the way is
`because it's not material that it go all the way. There's --
`and it would be a trivial design change to shorten something by
`a millimeter or even a centimeter to avoid the patent. What
`the patent says is that these paddles on the back -- they are
`called elongate members -- they are elongated so that a user
`can use their middle finger. So to the extent that there's a
`parameter, it's that they be substantially the length of the
`back.
`
`And when we look at, well, what does substantially
`mean, well, it means not a hundred percent.
`And what does it have to do?
`It has to be long enough so that users can use their
`middle finger. And that's what I'm doing here in this little
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 8 of 80
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`demonstration is using my middle fingers to activate the
`controls.
`
`So I'm going to put on a few slides and show you in
`the patents a little bit what I'm talking about. What you have
`here is two figures from those first two patents, the '525 and
`the '770 which have the same figures and specification, Figures
`2 and 3. Figure 2 you can see the back of the controller with
`the paddles 11 called out with numeral 11, and in Figure 3 you
`can see the same figure with a user holding onto it so that
`their middle finger is activating the control. Those, you
`know, that's the basic illustration in these first two patents,
`very simple subject matter, nothing really confusing about it.
`Here are -- now I am showing you three different
`pictures so that you can see illustrations in various patents.
`The figure on the left is one that you just saw in the prior
`slide. The middle slide shows you a more advanced embodiment
`that's disclosed in the '688 patent in suit. That one has four
`controls on the back. And then there's also a more advanced
`version in the '229 patent which also has four controls in the
`back. But in every case, there are paddles running
`substantially the length of the back of the controller as
`measured from the top edge to the bottom edge.
`The abstract of the '525 patent provides that this is
`an improved controller which has controls on the front that are
`operable by your thumbs as I demonstrated and has two
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 9 of 80
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`additional controls 11 on the back in positions to be operated
`by the middle fingers of the user. So we are going to see this
`theme again and again. It's for the middle fingers. Also, in
`Column 2 of the '525 patent it describes the invention as
`having one or more additional controls located on the back of
`the controller in a position to be operated by the middle
`fingers of a user.
`So with respect to these elongate members -- that's
`the claim term -- Valve says that that's an indefinite term. I
`would first suggest that elongate by itself is not really the
`point. It's the name for the element. And then the element is
`further described in the claim as we will see. But the term
`elongate itself is not inherently indefinite. It's something
`that's been lengthened. And we can see from the figures that
`the patent in its preferred embodiments have paddles that have
`been lengthened such that they are substantially the length of
`the back of the controller. And that's what the claims said,
`that they are substantially the full distance or substantially
`a distance or subset or half of the distance of the back of the
`controller depending on what claim you are looking at.
`So there are actually three different disputes that
`the parties have in the papers that are related to this issue,
`all of them surrounding this elongate member. One is simply
`what does elongate member mean, and they claim it's indefinite.
`Two is that it extends substantially the full distance, and so
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 10 of 80
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`we have the issue of what is substantially and is that
`indefinite. Again, they don't propose a meaning for it. They
`just say it's indefinite. And then also what is meant by
`substantially the length of the back between the top and the
`bottom, they claim that that's also indefinite. So there's a
`number of indefiniteness arguments all surrounding the elongate
`members.
`
`But I think as Your Honor well knows, the rule is
`that the patents need to convey the scope of the invention to
`one of ordinary skill in the art with reasonable certainty.
`And as I have briefly shown you and as we will see, the patents
`show elongated controllers, controls, little paddles in the
`preferred embodiment that run substantially the length of the
`back of the controller. There really is no ambiguity at all
`about it, and you really have to bend over backwards and try to
`think of scenarios where you could get confused. In other
`words, you have to intentionally try to confuse yourself to
`find any uncertainty about these terms.
`So, first of all, Valve says and its expert who they
`have said is going to testify here today that they can't tell
`what an elongate member is without knowing how long it has to
`be and how wide it has to be. Well, those limitations are not
`in the claim for a reason because they are not material. And
`there is no discussion in the patent of there being any
`requirement that it be a certain width or be a certain length.
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 11 of 80
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`The patent shows that the members need to be long enough so
`that a user can use the paddle with their middle finger.
`That's what it discusses. That's the invention.
`Saying that it needs length and width dimensions
`could be -- that could be -- that argument could be made
`against almost any mechanical patent. If you have a column and
`maybe we decide to claim this courtroom and we say the roof is
`supported by two columns as Your Honor has behind him, there's
`no requirement that someone be told how tall the columns have
`to be or how wide the columns have to be. And in a normal
`patent, it would just show two columns and say the roof is
`supported by two columns.
`That's exactly what we have here. We have two
`elongate members. There's no requirement in order to
`understand what that is, something that's been elongated.
`There's no requirement for length or width.
`So I did want to point out, although I didn't bring a
`copy with me, Your Honor is probably familiar with the video
`that's often shown to jurors before a patent trial. And that
`video shows the patent process and how a patent goes -- is
`filed, the application process, how it goes through the USPTO;
`and then there's an example of what it looks like when it's
`done.
`
`Well, the 2002 version of that from the Federal
`Judiciary Center has an exemplary patent on a stool. And the
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 12 of 80
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`stool has three legs -- very, very simple patent. And in that
`patent, the legs are referred to as elongate members. So the
`claim requires at least three elongate members, says nothing
`more about them. And there's no description at all about how
`long the legs have to be or how wide they have to be. It's a
`very similar situation here. And so I just use that as an
`illustration that these are very common terms, and it would be
`the exception and not the rule to have dimensions specified
`because dimensions aren't required and they are not part of the
`invention.
`
`So earlier I mentioned that they are also looking at
`this term elongate member in a vacuum, that it's really the
`name of the element that's been given to it and then it's
`referred to subsequently in the claim and in other claims. So
`what we're looking at now on the screen is the '525 patent,
`Claim 1. And at the bottom it starts talking about the
`controls that are on the back, and it says each back control
`includes an elongate member that extends substantially the full
`distance between the top edge and the bottom edge.
`So I think it's an error to try to look at the term
`elongate member in a vacuum and try to determine whether the
`word elongate is indefinite and then also later on try to
`determine whether the rest of the language is indefinite
`because they go together. The claim is clearly saying that an
`elongate member extends substantially the full distance between
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 13 of 80
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`the top edge and the bottom edge.
`So it's not true that the patent doesn't give us
`information that one of ordinary skill in the art can use to
`determine what is an elongate member. It says it right in the
`claim. It's a member that extends substantially the full
`distance between the top edge and the bottom edge. That's what
`it is in the '525 patent. It's slightly different in a few of
`the other patents.
`I am showing you now that the '770 patent there are
`two claims that work together. But as you can see in this one,
`Claim 1 which I have truncated on the display requires an
`elongate member that extends along at least half of the first
`distance between the top edge and the bottom edge. And then
`Claim 2 further narrows that -- it's a dependent claim on Claim
`1 -- and says that the elongate member extends substantially
`all of that first distance. So we do have further guidance in
`the claims, and that's being ignored by Valve in its arguments.
`When we look to the descriptions in the claims of
`these patents, we once again -- I showed you a different
`example earlier, but here is a second example where in Column 2
`of the patents around line 25 it says one or more additional
`controls located on the back of the controller in a position to
`be operated by the middle fingers of a user. So, again, there
`is description about this. It's very clear.
`In another portion, it says the paddles 11 are
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 14 of 80
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`elongate in shape and substantially extend in a direction from
`the top edge to the bottom edge. So, again, we have the
`controller, the paddles extend from the top to the bottom, and
`depending on the claim they are either at least 50 percent of
`that distance or they are substantially the full distance.
`Another example, this is a patent I haven't talked
`about in detail yet, the '688 patent which is what I call one
`of the more advanced patents. It says the elongate shape of
`the paddles allows a user to engage the paddles with any of the
`middle, ring or little fingers. It also provides that
`different users have different sized hands and can engage with
`the paddles in a comfortable position.
`This patent does not have any limitation as to how
`long it must be. So there is extra language here that it could
`be long enough to allow you to use any of your fingers, but
`it's not claimed. So the figures -- again, we have looked at
`some of them -- show these elongate members running along the
`back substantially the full length of the back of the
`controller.
`So the next issue is what does the term
`"substantially" mean -- not really what does it mean. There's
`been no dispute about what it means. The dispute is that it's
`indefinite. The Defendant has raised the argument that one of
`ordinary skill in the art just wouldn't know what to do with
`that. I think it's clear it means that the elongate member
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 15 of 80
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`doesn't have to go all the way because that's not material. It
`has to be long enough so that the user can use it and use their
`middle fingers, but it doesn't need to go all the way. The
`patents -- the preferred embodiments are shown with the paddles
`going substantially all the way but not all the way.
`These issues are also similar. I am going to skip
`over a few of the slides.
`So the third dispute is how do we know what this
`distance is between the top edge and the bottom edge. Well, on
`the screen here I have an illustration. It's an actual figure
`from the '525 and '770 patents which have these requirements,
`and only those patents have these requirements. And outlined
`in red I show the two edges, and you can see we have also
`outlined in a teal color the elongate members. And we can see
`that if you measure a distance between the top and the bottom
`that these members extend, (A) at least 50 percent which is
`what some of the claims require, or (B) substantially the full
`extent which other claims require. And this is the
`illustration that's used in the patent to describe what is
`meant by substantially, so -- and substantially that distance.
`So the patent does tell you in words with respect to your
`middle finger and in figures with respect to drawings about
`what these terms mean.
`So one -- there's one more related issue on this, and
`that is that the elongate members need to be inherently
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 16 of 80
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`resilient and flexible. We propose -- and this is a term that
`both parties are submitting actual definitions for. So we have
`said that the elongate member may be bent or flexed under a
`load such as a finger, and that's what's meant by flexible.
`And that comes from just the ordinary meaning of the term
`flexible. And it's also what the Patent and Trademark Office
`ruled was the definition of this term in the currently
`co-pending IPR proceedings that are going on before the Patent
`Office.
`
`So two of the patents, these two, the '525 and the
`'770 patents, are involved in IPR proceedings right now in the
`Patent and Trademark Office. The briefing has not been
`completed on those, and there's been no hearing yet. But in
`the decision instituting the IPR some claims were instituted,
`and the PTO rejected some claims and did not institute them.
`But in its decision it construed this term, and it construed
`the term as exactly as we are submitting here.
`And the first aspect with respect to flexible is that
`it may be bent or flexed under a load such as by a finger. The
`second aspect which is that it's inherently resilient is that
`it'll pop back, it'll return to its unbiased position when it's
`not under a load. So it's not just that the paddle has to
`flex. It's when you engage it will -- when you remove the
`force it will go back to its starting position which is
`something that's important for gaming.
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 17 of 80
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`So we see that this term is in the '525 patent. It's
`at the very end of Claim 1. I don't think I need to go into
`all the detail with this, so I will reserve some of my time
`there.
`
`The next claim term is that the medial portion is
`closer to the top edge than the distal end of each of the first
`and second handles. So I'm holding a controller in my hand.
`The handles are the portions that are on the sides. Distal
`meaning bottom is here, so we have a distal end here. And then
`here is the medial portion in the middle as medial suggests.
`And we can see that the medial portion is closer to the top
`edge than the bottom edge, exactly what the claim says.
`We contend that there's no need to add any further
`terms to that. I don't think it's going to make it more clear,
`and I think it is perfectly clear on its own. What it's really
`indicating is that these things have the shape such that the
`handles stick down. The middle portion is closer to the top
`than it is the bottom of these handles. Again, not a difficult
`concept.
`
`Another term in dispute is that the case be shaped to
`be held in the hands of a user. Well, we can see that that's
`what this shape is all about, essentially has two handles that
`your fingers wrap around.
`Another term that's discussed is in terms of
`competing claim constructions is conduit. And, you know, we
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 18 of 80
`18
`think that the word conduit is a fair enough word on its own
`and adding -- exchanging that word for a synonym doesn't help
`matters and may -- it may change the scope of the claim. So we
`would suggest that there be no replacement for the word
`conduit.
`
`But Defendants suggest something that's very
`specific, a pipe or a tunnel. Well, if you read through all
`these patents, you will never see a pipe mentioned and you will
`never see a tunnel mentioned. Those are sort of
`irrigation-type, specific-type terms; and they are not what
`this patent is about. A conduit simply has a cover that goes
`over a channel and encloses something. So, again, the only
`construction proposed by the defense is a pipe or a tunnel; and
`we think that those are unnatural, not set forth in the patent
`and are unduly limiting. And the text of the patent does back
`that up.
`
`The patent itself says a cover portion forming a
`conduit enclosing the first elongate member. So there's a
`cover, and the cover encloses something, and the enclosure
`makes a conduit. That's simply how it's described in the
`patent.
`
`And I'm showing some figures of various conduits in
`the patent. The patents -- these figures I am showing you now
`are on the '688 and '229 patents. Those are the only patents
`where the term conduit is used. And here Figure 12 shows the
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 19 of 80
`19
`cover portion 120 enclosing channels with the elongate members
`removed. That is what is referred to as closed channels or
`conduits. And they are numbered 119A, 119B, 119C and 119.
`And, finally, there is some of the language -- and I
`apologize. My slide is -- the title is a little off screen.
`But it's the term here is "formed from a material having a
`thickness." And the Defendant would like to say that that is a
`manufacturing step, and they don't know what thickness the
`starting material needed to be essentially. And that's just --
`that's not what the patent talks about at all.
`The text of this originated by people from the U.K.
`who use words a little bit differently than we do. But reading
`through the patent it's very clear that when something is
`formed they are talking about the shape it has. So formed from
`a material having a thickness in this case means that that
`element has a certain thickness.
`It doesn't mean that -- and these are plastic
`devices. So it doesn't mean somebody took a piece of plastic
`that was of a certain thickness, dropped it into a furnace,
`melted it so now the thickness is irrelevant and then extruded
`out a controller. That's how these are made.
`That's certainly not what it refers to. There's no
`discussion in here about extruding and how you form these
`plastic parts. There simply is a discussion about what those
`plastic parts look like in the completed product. And, of
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 20 of 80
`20
`course, the claim is not to a method of manufacture. The claim
`is to an actual controller.
`So here where it says that the controller has
`elements formed from a material having a thickness, that's just
`simply referring to various components. And in one case, it
`says that the elongate members have to be less than ten
`millimeters thick but maybe less than five millimeters thick,
`for example. So there are lots of thickness dimensions given
`in the patent about the final product, but there's nothing in
`the patent that refers to anything having to have a certain
`dimension that's then melted and used in a manufacturing
`process. That just wouldn't make any sense.
`So I think, Your Honor, if you have any questions I
`am happy to answer those. Otherwise, I'm going to reserve my
`time and come back.
`THE COURT: All right, Mr. Becker.
`MR. BECKER: Your Honor, my client is asking if he
`can add a few comments about the practicalities of a few of
`these issues. He is the inventor on one of the patents.
`THE COURT: You can do anything you want to.
`MR. BECKER: Okay.
`MR. LUJIN: Your Honor, may I raise an objection,
`
`please?
`
`During the claim construction process, there was a
`time frame during which each party was supposed to disclose
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 21 of 80
`21
`witnesses for claim construction purposes. Ironburg initially
`disclosed Mr. Ironmonger as a witness, but under those rules we
`are allowed to take his deposition to find out what he has to
`say about the claim construction issues. We requested his
`deposition, and Ironburg elected to withdraw him as a claim
`construction witness at that time instead of allowing us to
`have a deposition to explore what he might testify to at a
`hearing like this. And so we have proceeded under the reliance
`that he would not be allowed to testify here because he was not
`properly submitted as a witness, and I think it would be highly
`prejudicial now to allow him to stand up and testify at this
`hearing without the ability to have deposed him during claim
`construction discovery.
`THE COURT: What do you say, Mr. Becker?
`MR. BECKER: Well, the disclosures and the exchange
`that he is referring to has to do with who we might submit as
`an expert. And your local rules have very specific rules about
`experts and what they have to prepare before the claim
`construction hearing, essentially a declaration that's their
`report of what they are going to say and so that they can be
`deposed on it. Witnesses who are not being held up as experts
`at the hearing have no such requirement.
`So we withdrew Mr. Ironmonger and another expert
`because we thought these terms were so simple that it didn't
`require expert testimony. But Mr. Ironmonger I believe just
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 22 of 80
`22
`wishes to speak as an inventor to give a few relevant details.
`THE COURT: All right. I will let him speak, but I
`am not going to give any credit or any weight to anything that
`he says that would be in the nature of expert testimony.
`MR. BECKER: Do you want him to sit in the box, Your
`
`Honor?
`
`THE COURT: Not particularly.
`MR. IRONMONGER: Thank you, Your Honor.
`So just by way of relevance, the only thing I wanted
`to add to what Robert said was that actually when you are
`holding a game controller you do indeed hold it with your
`fingers. And the redundant fingers on the back, the reason we
`actually created this was because people were starting to play
`what's called claw which is an action where you move the
`trigger finger up until the face buttons so you can access more
`commands. And as games have become more complicated, it's a
`necessary action for professional gamers.
`So we spent two-and-a-half years educating gamers on
`how to use more of the hand in a safe and ergonomic way which
`is why we created the elongate members that multiple hand
`sizes, depending on if you have small, medium or large hands,
`you can transcend any part of the paddle along the back of the
`controller. So this is a core part is actually it's increased
`hand safety and it's improved game play so that actually 90
`percent of professional gamers now use our controller rather
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`Case 1:15-cv-04219-TWT Document 93 Filed 03/07/17 Page 23 of 80
`23
`
`than choose a new console.
`And then as we went through our discoveries we found
`out that actually when gamers used these paddles in the old
`versions when they used to hold it they used to twist and pull,
`and eventually these broke. So the conduit was a necessary
`design modification that we made that actually allows the
`support of the paddle from being twisted and breaking at a part
`where it's actually weakened, i.e., where it was screwed in or
`it was fitted. And that's the relevance I guess I just wanted
`to put to it because as a non-gamer that might have some
`context.
`
`Thank you, Your Honor.
`THE COURT: All right.
`All right. Ms. Fort, who's going to speak for the
`
`Defendant?
`
`MS. FORT: That would be Mr. Lujin today, Your Honor.
`THE COURT: All right, Mr. Lujin.
`MR. LUJIN: We have a PowerPoint presentation. We
`also brought hard copies if I could hand those to you.
`Your Honor, may I proceed?
`THE COURT: Yes, sir.
`MR. LUJIN: We have organized our presentation a
`little bit differently. We are basically going term by term.
`And, you know, initially we will discuss the two elongate
`member terms and then move on; and Ms. Chaney will address some
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