Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 1 of 31
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`
`IRONBURG INVENTIONS LTD.
`
`
`
`
`
`
`
`
`Civil Action No. 1:16-cv-04110-TWT
`
`Plaintiff,
`
`
`v.
`
`COLLECTIVE MINDS GAMING
`CO. LTD.
`
`
`Defendant.
`
`
`
`
`DEFENDANT’S OPENING CLAIM CONSTRUCTION BRIEF
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`

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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 2 of 31
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`TABLE OF CONTENTS
`INTRODUCTION ...............................................................................................................1
`LEGAL STANDARD ..........................................................................................................2
`ARGUMENT .......................................................................................................................3
`Certain Constructions Are Necessary To Prevent Ironburg’s
`1.
`Unreasonable Application of Claim Language ........................................................3
`1.
`The Dimensional Limitations Must Have Concrete Limits .........................4
`Collective Minds’ proposals align with the intrinsic
`a.
`record ...............................................................................................5
`Collective Minds’ proposals seek to concretely
`define what is being measured to remove ambiguity
`for the fact finder .............................................................................8
`Ironburg admitted Collective Minds’ proposals are
`correct ............................................................................................10
`A Control Located At/On the Back of the Controller
`Describes Where the User Engages Said Control ......................................10
`Confusing and Ambiguous Claim Language Must be
`Clarified .....................................................................................................12
`An Engaging Surface is a Surface That is Engaged ..................................19
`4.
`Command Initiation Point is More Than a Physical Position ....................20
`5.
`Front End of the Controller is the Front of the Controller .........................22
`6.
`The Remaining Dispute Has Been Rejected By The Patent Office
`And Should Similarly Be Rejected Here ...............................................................24
`CONCLUSION ..................................................................................................................25
`
`
`2.
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`3.
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`2.
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`b.
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`c.
`
`i
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`
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`I.
`II.
`III.
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`IV.
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`

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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 3 of 31
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`TABLE OF AUTHORITIES
`
`Cases
`Acumed LLC v. Stryker Corp., 483 F.3d 800 (Fed. Cir. 2007) ................................................. 4
`Control Resources, Inc. v. Delta Electronics, Inc., 133 F. Supp. 2d 121 (D.
`Mass. 2001) ......................................................................................................................... 13
`Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378 (Fed. Cir. 2009) ...................... 5
`GmbH v. Auto. Components Holdings, LLC, No. 2:10-CV-14097-SFC, 2012
`WL 1276003 ....................................................................................................................... 13
`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379 (Fed. Cir.
`2008) ................................................................................................................................... 24
`K-2 Corp. v. Salomon S.A., 191 F.3d 1356 (Fed. Cir. 1999) .................................................... 4
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ...................................................... 4, 7
`Power–One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343 (Fed. Cir. 2010) ............................. 13
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) ................................................ 4
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`
`ii
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 4 of 31
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`I.
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`INTRODUCTION
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`Plaintiff Ironburg Inventions Ltd. (“Ironburg”) asserts five patents
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`(collectively, the “Asserted Patents”) in this case relating to video game
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`controllers. The patents can be bucketed into two distinct groups. First, the ’525,
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`’770, ’229, and ’688 Patents are all directed to adding paddle-style controls to the
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`back of a standard video game controller (collectively, the “Paddle Patents”).
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`Second, the ’450 Patent is directed to making trigger controls on a standard video
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`game controller adjustable to allow the user to customize how trigger commands
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`are generated for a particular video game.
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`The claim construction disputes also can be easily bucketed into two groups.
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`First, there are a number of terms for which Ironburg seeks to avoid construction
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`entirely, arguing that the plain meaning of the claim language is apparent and
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`construction is unnecessary. In fact, Ironburg is actually applying each of these
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`terms in a manner wholly inconsistent with its plain meaning. Collective Minds has
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`proposed common sense constructions that address Ironburg’s skewed application
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`of the claim language.
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`Second, there is a term that was previously construed by the U.S. Patent and
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`Trademark Office (“Patent Office) in validity proceedings related to the ’525
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`Patent. Ironburg had proposed this construction to avoid a specific prior art
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`1
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`

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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 5 of 31
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`reference, but its proposed construction was wholly unsupported by the claim
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`language and the intrinsic record. Not surprisingly, Ironburg’s proposal was
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`rejected by the Patent Office. Whatever justification Ironburg has for continuing to
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`pursue this facially incorrect construction, it should be rejected here as they were
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`by the Patent Office.1
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`II. LEGAL STANDARD
`Claim construction is a question of law for the court to decide. Teva Pharm.
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`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015). The goal of construing patent
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`claims is not to rewrite the claims, but to explain to the trier of fact, where
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`necessary, how the terms chosen by the patentee would have been understood by
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`one of ordinary skill in the art. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356,
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`1365 (Fed. Cir. 1999).
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`“When construing claims, a court must begin by ‘look[ing] to the words of
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`the claims themselves ... to define the scope of the patented invention.’” Acumed
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`LLC v. Stryker Corp., 483 F.3d 800, 805 (Fed. Cir. 2007), citing Phillips v. AWH
`
`
`1 Many other claim construction disputes from the Patent Office validity
`proceedings were also being pursued by Ironburg in this litigation until they were
`withdrawn by email the night before this brief was filed. It is unclear what
`distinguishes the single remaining dispute from the others, but Collective Minds
`welcomes all efforts to streamline the Markman process in this complicated case
`with five asserted patents.
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`2
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`

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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 6 of 31
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`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). “[T]he claims themselves
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`provide substantial guidance as to the meaning of particular claim terms.” Phillips,
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`415 F.3d at 1314. Beyond the claims themselves, courts look principally to the
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`intrinsic evidence of a patent to determine the ordinary and customary meaning of
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`a claim term. This intrinsic record includes the specification and the patent’s
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`prosecution history. “[T]he person of ordinary skill in the art is deemed to read the
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`claim term not only in the context of the particular claim in which the disputed
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`term appears, but in the context of the entire patent, including the specification.”
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`Id.
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`The prosecution history consists of the record of the proceedings before the
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`PTO. Id. at 1317. Because the prosecution history represents an ongoing
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`negotiation between the PTO and the applicant, rather than the final product of that
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`negotiation, it often lacks the clarity of the specification and thus is less useful for
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`claim construction purposes. Id.
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`III. ARGUMENT
`1.
`Certain Constructions Are Necessary To Prevent Ironburg’s
`Unreasonable Application of Claim Language
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`This first set of disputed terms is comprised of claim language that is either
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`ambiguous on its face or that has been applied by Ironburg (as evidenced by its
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`infringement allegations) in a manner inconsistent with a reasonable interpretation
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`3
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 7 of 31
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`of the claim language. Ironburg asks the Court to not construe these terms and
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`phrases at all, hoping to maintain the very ambiguity that claim construction is
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`meant to address. The Federal Circuit has expressly rejected this approach to
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`claim construction, making clear that “the court's obligation is to ensure that
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`questions of the scope of the patent claims are not left to the jury.” Every Penny
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`Counts, Inc. v. Am. Express Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009).
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`Accordingly, Collective Minds respectfully asks that the Court reject Ironburg’s
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`request to maintain ambiguity in the claims and instead provide constructions that
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`resolve the metes and bounds of the asserted claims.
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`1.
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`The Dimensional Limitations Must Have Concrete Limits
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`Claim
`Term/Phrase
`
`top edge
`• ’525 Claims
`1, 5, 20
`• ’770 Claims
`1, 4, 5
`front/front of the
`controller
`• ’525 Claim
`5, 17
`medial portion
`• ’770 Claims
`4, 5
`
`Defendant’s Proposed Construction
`
`Plaintiff’s
`Proposed
`Construction
`Plain and ordinary. uppermost edge of the controller (i.e., the
`edge furthest from the user when the
`controller is held horizontally)
`
`Plain and ordinary.
`
`front face of the controller (if a curved
`surface, the measurement uses the tangent
`of the center point of the front face)
`
`Plain and ordinary.
`
`lowest edge of the controller (i.e., the
`edge closest to the user when the
`controller is held horizontally) between
`the handles
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`
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`4
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 8 of 31
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`Each of the above disputed phrases appears in claim limitations that recite
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`specific structural relationships. For example, Claim 5 in the ’525 Patent recites,
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`“the top edge is substantially perpendicular to the front.” Similarly, Claim 17 of the
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`’525 Patent requires at least one back control that is “substantially parallel to the
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`front of the controller.” Finally, Claim 4 of the ’770 Patent requires a distance
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`measured “between the top edge and the medial portion.”
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`To make sure that the correct relationships are correctly assessed, it is
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`necessary to provide clarity as to what structural feature is involved. Thus,
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`Collective Minds asks the Court to define these structural features in terms that
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`give clarity to the trier of fact as to what edge or portion is being referenced by the
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`claims. As explained below, Collective Minds’ proposals are simple, provide a
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`clear frame of reference for locating the structural feature, align with the intrinsic
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`record, and, in some cases, have already been conceded by Ironburg in separate
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`litigation involving these patents.
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`a.
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`Collective Minds’ proposals align with the intrinsic
`record
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`The Federal Circuit has stressed that “the claims themselves provide
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`substantial guidance as to the meaning of particular claim terms” and that “the
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`specification is always highly relevant to the claim construction analysis.” Phillips
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`v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (internal quotations removed)
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`5
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 9 of 31
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`(en banc). Here, the claims and specification confirm that Collective Minds’
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`clarifying constructions are accurate in view of the intrinsic record.
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`Starting with the claim language, Claim 1 of the ’770 Patent recites a
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`controller comprising a “back [] opposite the front,” a “top edge [] opposite the
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`bottom edge,” and two handles on either side. Claim 1 further recites two “back
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`control(s)” “located at the back of the controller.” Claim 3 defines the disputed
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`“convex portion,” explaining “the bottom edge includes” “convex portion(s)” that
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`define the handles and “a medial portion between [these] “convex portion(s).”
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`Claim 1 of the ’525 Patent recites the same layout, reciting a controller where “the
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`back of the controller is opposite the front of the controller and the top edge is
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`opposite the bottom edge” and wherein the “front of the controller” includes a
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`“front control” positions such that “the user's thumb is positioned to operate the
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`front control.”
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`Annotated FIGs 1 and 3 illustrate each of these claimed features:
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`6
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 10 of 31
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`As annotated, the top edge is the uppermost edge of the controller, which is
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`opposite the lowermost bottom edge comprising the medial portion. As depicted in
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`FIG. 3, the medial portion is part of the lowermost bottom edge that is between the
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`handles grasped by a user. Additionally, the front face includes front controls (e.g.,
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`5, 3, 2, 4), which are operated by a user’s thumb and are opposite the back of the
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`controller. See also Dkt. No. 1-1, ‘525 Patent at 1:16-32 (describing FIG. 1
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`layout).
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`Consistent with the claims themselves and the specification, the claimed
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`“top edge” is the “uppermost edge of the controller (i.e., the edge furthest from the
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`user when the controller is held horizontally). Similarly, the “front/front of the
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`controller” is the “front face of the controller (if a curved surface, the measurement
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`uses the tangent of the center point of the front face).” And the “medial portion” is
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`7
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 11 of 31
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`the “lowest edge of the controller (i.e., the edge closest to the user when the
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`controller is held horizontally) between the handles.”
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`b.
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`Collective Minds’ proposals seek to concretely define
`what is being measured to remove ambiguity for the fact
`finder
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`Collective Minds’ proposals seek to concretely define these measurement
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`limitations and to remove ambiguity that otherwise exists, as evidenced by
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`Ironburg’s infringement allegations. One such ambiguity exists in claim limitations
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`reciting a measurement based on the front of the controller (e.g., “the top edge is
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`substantially perpendicular to the front,” “one of the back controls is substantially
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`parallel to the front”). As illustrated above, the front of a controller generally
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`comprises the largest surface area of the entire controller. Further, modern
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`controllers, including those on which the Asserted Patents are based, include
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`curved surfaces for ergonomic purposes. This raises a question: Where on the
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`curved front face of a controller should the recited measurements be taken? The
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`patents themselves provide no clear guidance, so Collective Minds has proposed a
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`logical and straightforward solution. If the front face of the controller is curved, the
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`claimed measurements should be taken at the center point.
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`The following illustration depicts the issue:
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`8
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 12 of 31
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`As shown, the green curved front face is generally parallel with the blue elongate
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`member. If the measurement of the front face angle is taken at its center point, the
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`resulting comparison confirms that the front face and elongate member are in fact
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`parallel. But if the measurement of the front face is taken toward the edge of the
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`curved front face, the resulting conclusion is that the front face and elongate
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`member are not remotely parallel. The absurd conclusion that the above-depicted
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`curved front face and elongate member are not parallel can only be reached if
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`ambiguity is permitted as to what point on the surface of the front face forms the
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`basis of the comparison/measurement. To prevent such an absurd result in this
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`litigation, Collective Minds has proposed that the claimed “front/front of the
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`controller” be construed as the “front face of the controller (if a curved surface, the
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`measurement uses the tangent of the center point of the front face).”
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`9
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 13 of 31
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`c.
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`Ironburg admitted Collective Minds’ proposals are
`correct
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`Before the instant case was filed, Ironburg sued Valve Corp. (1:15-cv-4219-
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`TWT), asserting the four Paddle Patents. Valve alleged that many of the limitations
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`at issue here were indefinite because a POSITA could not understand their bounds.
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`Ex. A, Valve Opening Brief at 15-18. In response, Ironburg insisted a POSITA
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`would understand these clear limitations that are illustrated in the patent figures.
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`Ex. B, Ironburg Opening Brief at 12-14. To avoid an indefiniteness finding,
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`Ironburg even proposed constructions. Namely, Ironburg proposed that “top edge”
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`be construed as “the top (uppermost) surface of the controller” and “bottom edge”
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`(which includes the “medial portion”) be construed as “the bottom (lowest) surface
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`of the controller.” Ex. C, Joint Markman Chart at 5. These proposals are nearly
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`identical to Collective Minds’ proposals, yet Ironburg now protests that which it
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`previously proposed. These inconsistent positions should be rejected, and the Court
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`should adopt Collective Minds’ proposed constructions.
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`2.
`
`A Control Located At/On the Back of the Controller
`Describes Where the User Engages Said Control
`
`Claim Term/Phrase
`
`located at/on the back
`of the controller
`• ‘525 Claims 1, 20
`• ‘770 Claim 1
`
`Plaintiff’s Proposed
`Construction
`Plain and ordinary.
`
`Defendant’s Proposed
`Construction
`positioned to be engaged by the
`user at the back of the controller
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`
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`10
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`

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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 14 of 31
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`The claims of the ‘525 and ‘770 Patents each recite controls “located at/on
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`the back of the controller.” The intrinsic record is clear that the intended
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`interpretation of this phrase is that the controls are “positioned to be engaged by
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`the user at the back of the controller.” The specification consistently describes
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`control location in terms of the place where the user’s fingers will engage the
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`control. For example, the Summary of the Invention notes the subject controller
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`“further includes one or more additional controls located on the back of the
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`controller in a position to be operated by the user's other fingers.” Dkt. No. 1-1,
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`‘525 Patent at 1:56-58 (emphasis added). The patents even characterize this as the
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`feature that sets the claimed invention apart from other controllers – “the present
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`invention is particularly advantageous over controllers according to the prior art
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`as it comprises one or more additional controls located on the back of the
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`controller in a position to be operated by middle fingers of a user.” Id. at 2:21-
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`25 (emphasis added). Further, FIG. 3 clearly illustrates that locating controls at/on
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`the back of the controller means the controls are engaged by the user at the back of
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`the controller:
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`11
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 15 of 31
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`In sum, the intrinsic record supports Collective Minds’ construction that
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`clarifies controls “located on/at the back of the controller” are “positioned to be
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`engaged by the user at the back of the controller.”
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`3.
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`Confusing and Ambiguous Claim Language Must be
`Clarified
`
`In addition to ensuring claim language is properly interpreted in accordance
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`with the intrinsic record, a key goal of the claim construction process “is to
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`provide a construction that will be understood by the jury who might otherwise
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`misunderstand a claim term in the context of the patent specification and
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`prosecution history of the patent.” Recticel Automobilesysteme GmbH v. Auto.
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`Components Holdings, LLC, No. 2:10-CV-14097-SFC, 2012 WL 1276003, at *2
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`(E.D. Mich. Apr. 16, 2012) (citing Power–One, Inc. v. Artesyn Techs., Inc., 599
`
`F.3d 1343, 1348 (Fed. Cir. 2010) (emphasis added); see also Control Resources,
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`Inc. v. Delta Electronics, Inc., 133 F. Supp. 2d 121, 127 (D. Mass. 2001) (“It is not
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`12
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 16 of 31
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`enough simply to construe the claims so that one skilled in the art will have a
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`definitive meaning. The claims must be translated into plain English so that a jury
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`will understand. Thus, accurate words that convey the essence of the invention are
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`needed.”). Accordingly, where, as here, the claims themselves use confusing and
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`ambiguous language, the Court should construe the claims in a manner that can be
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`readily understood by a jury.
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`Claim Term/Phrase
`
`the medial portion is closer
`to the top edge than a distal
`end of each of the first
`handle and the second
`handle
`• ‘770 Claim 5
`
`Plaintiff’s
`Proposed
`Construction
`Plain and
`ordinary.
`
`Defendant’s Proposed
`Construction
`
`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
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`
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`Claim 5 from the ‘770 Patent recites “the medial portion is closer to the top
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`edge than a distal end of each of the first handle and the second handle.” This
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`language is ambiguous and subject to at least two interpretations. Namely, it could
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`either mean (1) that the medial portion is closer to the top edge than the medial
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`portion is to the ends of the handles (i.e., the handle extensions are longer than the
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`body of the controller is tall) or (2) that the medial portion is closer to the top edge
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`than the ends of the handles are to the top edge (i.e., that the handles extend any
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`amount from the controller body).
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`13
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 17 of 31
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`“Medial portion” is not described in the patent outside the claims
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`themselves, but the claim context establishes that the second interpretation above
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`must be rejected. Namely, Claim 3, from which Claim 5 depends, describes the
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`medial portion as residing between the convex portions that define the left and
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`right handles. In other words, Claim 3 requires two handles that extend from the
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`controller with convex profiles and a medial section between them. In order to
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`comply with this requirement, the medial portion is necessarily closer to the top
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`edge than the ends of the handles are to the top edge. Were it not, the handles
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`would not be convex shaped handles at all, but would instead be concave
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`indentations. Accordingly, the first interpretation should be adopted because the
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`second interpretation is inconsistent with Claim 3.
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`The patent figures also support adopting the first interpretation. Namely,
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`FIG. 2 illustrates a controller in which the distance between the top edge and
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`medial portion is shorter than the distance between the medial portion and the
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`handle ends. The following annotated FIG. 2 illustrates this arrangement:
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`14
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 18 of 31
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`In sum, the disputed claim language is subject to multiple possible
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`meanings. Because only Collective Minds’ proposal is consistent with the claims
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`and with the specification, it should be adopted to clarify the meaning of this
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`limitation.
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`Claim Term/Phrase
`
`first surface disposed
`proximate an outer surface
`of the case
`• ‘688 Claim 1
`first surface for being
`disposed proximate an outer
`surface of the base of the
`games controller
`• ‘688 Claim 30
`
`Plaintiff’s
`Proposed
`Construction
`Plain and
`ordinary.
`
`Plain and
`ordinary.
`
`Defendant’s Proposed
`Construction
`
`first surface proximate an outer
`surface of the case along the
`length of the first surface
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`first surface proximate an outer
`surface of the base of the games
`controller along the length of
`the first surface
`
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`The claims of the ‘688 Patent use confusing language to describe the key
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`point of the ‘688 Patent invention—back controls that have angled engagement
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`15
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 19 of 31
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`surfaces (i.e., the surface engaged by the user’s finger). Ironburg is attempting to
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`take advantage of this confusing claim language by asserting these claims against
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`back controls that do not remotely have angled engagement surfaces.
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`Importantly, there is no dispute that the focus of the ‘688 Patent is angling
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`the engagement surface of back paddle controls. Ironburg’s expert, Dr. Stevick,
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`submitted a declaration explaining the ‘688 Patent disclosure in response to a
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`petition for Inter Partes Review filed by Valve. In his declaration, Dr. Stevick
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`explained at length that the ‘688 Patent described paddle controls “oriented at an
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`angle β relative to the surface SB of the controller,” and concluded his overview of
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`the intrinsic record with the following:
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`The specification and prosecution history illustrate that the second
`surface, where the user places his or her finger, is oriented at an
`angle (i.e. non-parallel) with the surface of the back of the case
`where the elongate member is mounted.
`
`Ex. D, Stevick ‘688 Declaration at 10-14. The following figures from the ‘688
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`Patent illustrate this concept—each shows outer paddle controls 11A and 11D that
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`run along the back of the controller and have angled engagement surfaces:
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`16
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 20 of 31
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`Although both parties apparently agree that the ‘688 Patent claims are
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`directed toward back paddle controls having angled engagement surfaces,
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`Ironburg’s allegations conflict with this agreement, so Collective Minds proposes
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`that the claim language should be construed to remove apparent ambiguity. Claim
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`1 of the ‘688 Patent recites the following (key language emphasized)2:
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`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, the first additional control
`comprising a first elongate member displaceable by the user to
`activate a control function, wherein the first elongate member
`comprises a first surface disposed proximate an outer surface of
`the case and the first elongate member comprises a second surface
`opposing the first surface, the second surface being configured and
`arranged to be non-parallel with a portion of the outer surface of
`the back of the case to which the first elongate member is mounted
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`The key components here are (1) a paddle with two opposing surfaces where (2)
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`one surface is “disposed proximate an outer surface of the case” and (3) the other
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`2 Claim 30 includes substantively identical language with regard to the instant
`dispute.
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 21 of 31
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`surface is non-parallel with the outer surface of the case. Based on infringement
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`allegations in this case, the ambiguity on which Ironburg rests its hopes is the
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`meaning of “a first surface disposed proximate an outer surface of the case.”
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`Put simply, the issue for the Court is what does it mean to have one surface
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`of an elongate member “disposed proximate” to another surface. Collective Minds
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`proposes a clarifying construction that specifies the first surface is proximate the
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`case “along the length of the first surface.” In other words, the elongate member is
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`parallel or close to parallel with the controller along the distance of the elongate
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`member. This is distinct from the concept of an elongate member that is proximate
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`the controller case only at a discrete point. The following illustration depicts this:
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`
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`On the left, a green elongate member is proximate the blue surface at one discrete
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`point (its base), but Surface 1 is not proximate Surface 2. Conversely, on the right,
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`Surface 1 of the green elongate member is proximate Surface 2 along its length.
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`Consistent with this distinction, the proposed clarifying construction aligns
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`with the intrinsic record and with Ironburg’s own expert’s description of the ‘688
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`18
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 22 of 31
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`claims. Accordingly, it should be adopted to prevent Ironburg from taking
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`advantage of ambiguity that otherwise exists in the claims.
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`4.
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`An Engaging Surface is a Surface That is Engaged
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`Claim
`Term/Phrase
`engaging surface
`• ‘688 Claim 24
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`Plaintiff’s Proposed
`Construction
`Plain and ordinary.
`
`Defendant’s Proposed
`Construction
`surface contacted to engage
`switch
`
`Claim 24 of the ‘688 Patent recites a game controller “wherein a switch
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`mechanism is mounted to a rear panel of the case wherein the switch mechanism
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`comprises an engaging surface, the engaging surface being disposed in an aperture
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`in an outer surface of the rear panel and arranged flush with the outer surface of the
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`rear panel.” This dispute comes before the Court because Ironburg asserts Claim
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`24 against a product where the switch mechanism is disposed in an aperture in the
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`outer surface of the controller case, but engages the back paddle control away from
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`the controller case such that the switch mechanism is unquestionably not flush with
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`the controller case. Collective Minds cannot surmise any read of this claim
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`language that could possibly capture the accused arrangement. Accordingly,
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`Collective Minds proposes the clarifying construction that the “engaging surface”
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`recited herein is the surface contacted to engage the switch.
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`Other than regurgitation of the claim language, there is no discussion of a
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`switch “engaging surface” in the patent. There are, however, numerous uses of
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`19
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 23 of 31
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`“engaging surface” with regard to the back controls. And in each of these uses, the
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`‘688 Patent consistently describes the “engaging surface” as the surface contacted
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`to engage. See, e.g., Dkt. No. 1-3, ‘688 Patent at 5:66-6:1(“A user may displace or
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`depress any one of the paddles . . . by engaging an outer surface thereof.”); 7:1-2
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`(“a user may engage the paddles . . . with the tips of the fingers”). There is no
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`reason to depart from this straightforward meaning of “engaging surface” when
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`used in the context of a switch. Accordingly, the Court should adopt Collective
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`Minds’ proposed construction, which is entirely consistent with the use of this term
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`throughout the specification.
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`5.
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`Command Initiation Point is More Than a Physical Position
`
`Plaintiff’s Proposed
`Construction
`Plain and ordinary.
`
`Defendant’s Proposed
`Construction
`point in the throw of the actuator
`body at which a command is initiated
`
`Claim
`Term/Phrase
`command
`initiation point
`• ‘450 Claim 1
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`
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`The ‘450 Patent stands apart from the Paddle Patents addressed above.
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`While it also addresses video game controllers, the ‘450 Patent focuses on
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`adjustable triggers mounted on the front end of a video game controller, rather than
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`paddles mounted on the back. FIG. 2 illustrates the basic structure of the ‘450
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`Patent invention. As illustrated below, it depicts a movable actuator body 108 (the
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`20
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`Case 1:16-cv-04110-TWT Document 38 Filed 10/18/17 Page 24 of 31
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`trigger) whose start and stop point can be independently adjusted against strike
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`plate 124 using adjustment screws 118 and 120:
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`
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`The patent explains, “dependent upon the video game being played, it can
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`be necessary to depress the trigger a distance before the trigger initiation
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`point is reached and the command actually acknowledged.” Dkt. No. 1-5, ‘450
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`Patent at 1:34-37 (emphasis added). To minimize the amount of movement
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`necessary to initiate a command, the ‘450 Patent teaches the ability to make
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`“adjustments for the depression of the trigger so that it is already to some degree,
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`‘depressed,’ before any contact is actually made with the trigger by the operator
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`(player).” Id. at 2:4-7. To maximize efficiency, the trigger can be adjusted all the
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`way to the command initiation point “so that the command was prompted with
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`any amount of depression of the trigger body.” Id. at 4:60-65 (emphasis added).
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`Although related patents include claims that cover various iterations of the
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`adjustable trigger concept, only this latter scenario—where the trigger is adjusted
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