Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 1 of 29
`
`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 OPPOSITION CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
`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 OPPOSITION CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 2 of 29
`
`TABLE OF CONTENTS
`I. INTRODUCTION ............................................................................................... 1
`II. ARGUMENT ..................................................................................................... 4
`1. Ambiguity Cannot be Permitted to Remain in the
`Dimensional Limitations ...................................................................... 4
`1. Ironburg ignores that it proposed “uppermost” and
`the meaning of “top” and “lowermost” as the
`meaning of “bottom” ................................................................. 6
`2. There is no conflict between Collective Minds’
`proposals and the claim language or specification ................... 8
`3. Ironburg fails to address how the claimed
`measurements work with curved surfaces .................................. 9
`2. Ironburg Attempts to Remove All Meaning From ’770
`Patent Claim 5 .................................................................................... 10
`3. Located at/on the Back of the Controller Means the User
`Engages the Controls at the Back of the Controller ........................... 14
`4. ’525 Patent Claim 13 Does Not Require Two Distinct
`Convergences ..................................................................................... 16
`5. The Court Must Clarify the Meaning of a First Surface
`Proximate a Second Surface ............................................................... 19
`6. “Engaging Surface” is a Surface that is Engaged ................................... 20
`7. “Command Initiation Point” Must Have Meaning ................................. 21
`III. CONCLUSION ............................................................................................... 23
`
`
`
`
`
`i
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`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 3 of 29
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`TABLE OF AUTHORITIES
`
`Cases
`
`Court of Appeals for the Federal Circuit
`Digital–Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270
`(Fed. Cir. 2012) ....................................................................................................... 22
`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379 (Fed. Cir.
`2008) ....................................................................................................................... 17
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed.
`Cir. 2008) ............................................................................................................... 1-2
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358 (Fed. Cir.
`2008) ....................................................................................................................... 13
`
`District Courts
`Baxter Healthcare Corp. v. Mylan Labs. Ltd., No. CV 14-7094 (JBS/JS),
`2016 WL 1337279 (D.N.J. Apr. 5, 2016) ................................................................. 2
`Maytag Corp. v. Electrolux Home Prod., Inc., 411 F. Supp. 2d 1008 (N.D.
`Iowa 2006) ................................................................................................................ 3
`United Const. Prod., Inc. v. Ivica, No. 07-CV-00673-REB-CBS, 2009 WL
`179886 (D. Colo. Jan. 26, 2009) ............................................................................... 2
`VitalStim, LLC v. eSwallow USA, LLC, No. 1:12-CV-4169-TWT, 2014 WL
`13470614 (N.D. Ga. Apr. 4, 2014) ......................................................................... 22
`
`
`
`ii
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 4 of 29
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`I.
`
`INTRODUCTION
`
`With the single exception in which Ironburg seeks to wholly rewrite Claim
`
`13 of the ’525 Patent, the overriding theme of Ironburg’s Opening Brief is that “the
`
`words of the claim should be left largely if not wholly undisturbed” because they
`
`“are easily understood in context by a person having ordinary skill in the art at the
`
`time of the invention (POSITA).” Dkt. No. 39, Ironburg Brief at 1. Yet not once
`
`does Ironburg actually explain what the disputed claim language means or why
`
`Collective Minds’ clarifying constructions are incorrect. Instead, Ironburg argues
`
`that because a POSITA (e.g., the parties’ experts) could discern some meaning
`
`from the claim language, we should just let the experts present conflicting views of
`
`the claim scope and leave the jury to sort things out. See, e.g., Id. at 9 (concluding
`
`a “person of ordinary skill in the art would, with reasonable certainty, discern
`
`from the claim language and the specification the plain and ordinary meaning of
`
`“front” and top edge” without further embellishment,” but providing no actual
`
`explanation of what that meaning is).
`
`Critically, the law does not permit setting aside the claim construction
`
`process whenever a party’s expert could discern some meaning that benefits that
`
`party’s claims. Instead, “[w]hen the parties raise an actual dispute regarding the
`
`proper scope of these claims, the court, not the jury, must resolve that dispute.” O2
`
`
`
`1
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`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 5 of 29
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`Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir.
`
`2008).
`
`Here, Collective Minds has identified a number of terms and phrases whose
`
`plain meaning is either ambiguous on its face or has been applied by Ironburg in its
`
`infringement allegations in a manner totally divorced from the plain meaning of
`
`the claim language. To resolve the proper meaning, Collective Minds proposes
`
`straightforward and logical clarifying constructions directly tied to the intrinsic
`
`record. Ironburg objects to each of these clarifying constructions, repeatedly
`
`disputing the need to clarify the claim language without ever explaining what the
`
`actual meaning of the claim language is. This transparent attempt to maintain
`
`ambiguity in the claims is a common tactic by patentee plaintiffs that is routinely
`
`rejected by courts and should similarly be rejected here. See Baxter Healthcare
`
`Corp. v. Mylan Labs. Ltd., No. CV 14-7094 (JBS/JS), 2016 WL 1337279, at *6
`
`(D.N.J. Apr. 5, 2016) (“a blanket resort to the ‘ordinary’ meaning of the
`
`disputed claim terms would leave unresolved the parties' disputes, and would
`
`largely negate the importance of the claims construction process”); United
`
`Const. Prod., Inc. v. Ivica, No. 07-CV-00673-REB-CBS, 2009 WL 179886, at *2
`
`(D. Colo. Jan. 26, 2009) (“Plaintiff's tautological insistence that no claim
`
`construction is necessary at all because the words used in the patent are clear and
`
`
`
`2
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 6 of 29
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`unequivocal is unhelpful.”); Maytag Corp. v. Electrolux Home Prod., Inc., 411 F.
`
`Supp. 2d 1008, 1037 (N.D. Iowa 2006) (“It has been this court's experience that
`
`parties in patent cases rarely agree on the “ordinary meaning [of patent terms]
`
`as understood by a person of skill in the art,” so that asserting that such a
`
`meaning should apply, without further construction, merely begs the question
`
`of what that meaning is.”); see also Standing Patent Case Scheduling Order for
`
`Hon. Sue Robinson, District of Delaware, at 4 n.6 (“Resorting to ‘plain and
`
`ordinary’ meaning is not sufficient, as it effectively leaves claim construction in
`
`the hands of
`
`the experts rather
`
`than
`
`the court.”), available at
`
`http://www.ded.uscourts.gov/sites/default/files/Chambers/SLR/Forms/Sched-
`
`Order-Patent2-05-15.pdf.
`
`Where, as here, the parties have conflicting views of what the correct
`
`meaning of claim language is, that meaning must be resolved by the Court rather
`
`than left for the jury to sort. Because Ironburg has not only refused to clarify its
`
`ambiguous claim language, but has refused to explain what the plain meaning of
`
`this claim language is, the Court should adopt Collective Minds’ proposed
`
`constructions, which set forth concrete boundaries for the asserted claims and fully
`
`resolve the parties’ disputes.
`
`
`
`
`
`3
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`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 7 of 29
`
`II. ARGUMENT
`1.
`Ambiguity Cannot be Permitted to Remain in the Dimensional
`Limitations
`
`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
`
`Claims of
`
`the
`
`’525 and
`
`’770 Patents
`
`include a number of
`
`measurement/dimensional limitations, including the following:
`
`• “the top edge is substantially perpendicular to the front” – ‘525 Patent
`Claim 5
`• “at least one of the back controls is substantially parallel to the front
`of the controller” – ‘525 Patent Claim 17
`
`In its infringement allegations, Ironburg has refused to provide any detail
`
`whatsoever as to how these dimensional limitations are satisfied by the accused
`
`products. In fact, as illustrated in the following excerpts, Ironburg has refused to
`
`even identify the claimed boundaries (e.g., the “top edge,” the “front,” etc.):
`4
`
`
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 8 of 29
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`Ex. A, ‘525 Infringement Contentions at 12 (failing to identify the “top edge,” the
`“front,” and how they are substantially perpendicular).
`
`
`
` Id. at 25-26 (failing to identify the “front,” the “back controls,” and how they are
`substantially parallel).
`
`
`
`Infringement allegations this threadbare can only survive where ambiguity is
`
`
`
`permitted to exist in the claims themselves. Ironburg certainly recognizes this. At
`
`every turn, Ironburg insists that the claim language should remain as is, routinely
`
`rejecting even the most straightforward clarifying constructions proposed by
`
`
`
`5
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 9 of 29
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`Collective Minds that seek to remove the ambiguity on which Ironburg’s
`
`allegations depend. Ironburg justifies this approach by alleging that the claims are
`
`clear on their face. Yet Ironburg steadfastly refuses to explain what any of the
`
`disputed claim language actually means. This is insufficient under the law, and the
`
`parties’ legitimate disagreements must be resolved in the Markman process and
`
`may not simply be passed off for the jury to sort as Ironburg requests.
`
`1.
`
`Ironburg ignores that it proposed “uppermost” and the
`meaning of “top” and “lowermost” as the meaning of
`“bottom”
`
`What must not be lost among Ironburg’s numerous suggestions that the
`
`claim language is clear and requires no construction is the compelling fact that
`
`Ironburg previously proposed the very clarifying constructions of “top” and
`
`“bottom” that Collective Minds now asks the Court to adopt. As discussed in
`
`Collective Minds’ Opening Brief, when Valve asserted that the claim language at
`
`issue here was so ambiguous it could not be reasonably understood by a POSITA,
`
`Ironburg insisted that (1) the “top and bottom edges are shown in the figures,” (2)
`
`“top edge” is “the top (uppermost) surface of the controller,” (3) “bottom edge” is
`
`“the bottom (lowest) surface of the controller.”1 Dkt. No. 38, Opening Brief at 10
`
`
`1 Ironburg admits that “the ‘medial portion’ is on a bottom edge of the controller . .
`. between the first and second handles.” Dkt. No. 39, Ironburg Brief at 17. This is
`consistent with Collective Minds’ proposed construction that “medial portion” is
`6
`
`
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 10 of 29
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`(citing Dkt. No. 38-3 at 5). As reflected in its proposed constructions Collective
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`Minds agrees on all three points. But Ironburg now refuses to be held to its own
`
`prior representations in a transparent effort to maintain ambiguity in its claims.
`
`Ironburg’s reluctance to accept claim construction proposals that it
`
`previously proposed is particularly difficult to understand in light of the annotated
`
`figures they provided in their Opening Brief, which align with Collective Minds’
`
`annotated figures as well as Collective Minds’ proposed constructions:
`
`
`
`
`
`Left: Dkt. No. 39, Ironburg Brief at 18; Right: Dkt. No. 38, Opening
`Brief at 7 (both illustrating the “top edge” as the “uppermost” edge of
`the controller and the “medial portion as the “lowest” edge of the
`controller).
`
`Because Ironburg’s prior claim construction proposals and its current
`
`
`
`interpretation of the patent figures align with Collective Minds’ clarifying
`
`constructions, the Court should adopt these constructions and reject Ironburg’s
`
`the “lowest edge of the controller . . . between the handles.”
`
`
`
`7
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 11 of 29
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`attempt to maintain ambiguity in the claims.
`
`2.
`
`There is no conflict between Collective Minds’ proposals and
`the claim language or specification
`
`Ironburg repeatedly suggests that there is conflict between the clarifying
`
`constructions advanced by Collective Minds and the claim language itself. Dkt.
`
`No. 39, Ironburg Brief at 7 (arguing there is “tension” between Collective Minds’
`
`proposals and the “express claim language”); id. at 10 (same); id. at 17 (arguing
`
`the proposed constructions are “contrary to the teachings of the patent”). Yet
`
`Ironburg never identifies any such tension. Instead, Ironburg simply highlights the
`
`claims in which the disputed terms appear, and concludes “there is no requirement”
`
`that Collective Minds’ proposals be adopted. Id. at 8. This is not conflict. What
`
`Ironburg appears to be arguing is simply that Collective Minds’ clarifying
`
`constructions are not already an express part of the claims. Collective Minds does
`
`not dispute this. Were these clarifying proposals already express, the claim scope
`
`would be clear and there would be no need for the Court to intervene. As
`
`Collective Minds explained in its Opening Brief, however, the claim language is
`
`not clear and clarifying constructions are required to avoid the ambiguity on which
`
`Ironburg rests its infringement case.
`
`Ironburg also argues the Court should assign no affirmative meaning to the
`
`disputed terms because they are “merely
`8
`
`
`
`.
`
`.
`
`. distinguishing directional
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 12 of 29
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`reference[s].” Id. at 8-9 (citing the specification’s statement that “directional
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`references such as ‘top,’ ‘bottom,’ [and] ‘front,’ . . . do not limit the respective
`
`features to such orientation”). This portion of intrinsic record, however, does not
`
`support Ironburg’s argument. The patent is simply stating that the claimed
`
`invention is described in certain physical terms and that changing the controller’s
`
`orientation does not avoid infringement. For example, a controller that aligns with
`
`the claim limitations (including front controls to be operated by the user’s thumb
`
`and top edge controls to be operated by an index finger) infringes whether the user
`
`holds the controller horizontally such that the front faces the ceiling, or vertically
`
`such that the front faces the television. Importantly, this common sense proposal
`
`does not, as Ironburg alleges, mean that “top” has no meaning other than “opposite
`
`the bottom.” As all described embodiments depict and as Ironburg itself admitted
`
`in the Valve litigation, the “top edge” is in fact the “uppermost edge” of the
`
`controller that defines the outer boundary of the controller in that dimension.
`
`3.
`
`Ironburg fails to address how the claimed measurements work
`with curved surfaces
`
`In its Opening Brief, Collective Minds explained why a clarifying
`
`amendment is needed to account for the fact that the claimed measurements can
`
`involve curved surfaces. Dkt. No. 38, Opening Brief at 8-9 (justifying the express
`
`addition of “if a curved surface, the measurement uses the tangent of the center
`9
`
`
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 13 of 29
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`point of the front face”). Despite the fact that Ironburg was well aware of this
`
`proposed construction and that the accused products in this case do in fact include
`
`curved surfaces, it entirely fails to address how the claims are to be interpreted
`
`when, for example, a curved “front” must be parallel to a back control or
`
`perpendicular to the “top edge.” Ironburg’s silence is telling. It cannot dispute that
`
`there is a legitimate issue as to what its claims mean when applied to curved
`
`surfaces—the accused products here all include curved surfaces. Nor can it dispute
`
`that using the center point of a curved surface is the most logical means of
`
`addressing the issue. Instead, it again asks the Court not to resolve the issue so that
`
`its case can proceed on the back of this ambiguity. The Court should decline this
`
`request and should adopt Collective Minds’ proposals, which seek to concretely
`
`define otherwise ambiguous claim language.
`
`2.
`
`Ironburg Attempts to Remove All Meaning From ’770 Patent
`Claim 5
`
`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
`
`
`
`10
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 14 of 29
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`’770 Patent Claim 5 depends from Claim 3, and the language from both
`
`claims is as follows:
`
`3. The video game controller of claim 1, wherein the bottom edge
`includes:
`a first convex portion that defines the first handle;
`a second convex portion that defines the second handle; and
`a medial portion between the first convex portion and the second
`convex portion.
`5. The video game controller of claim 3, wherein the medial portion
`is closer to the top edge than a distal end of each of the first
`handle and the second handle.
`
`As emphasized in the above claim language, Claim 3 describes the shape of
`
`the claimed controller’s bottom edge. Namely, as depicted in the annotated figure
`
`below, the bottom edge described by Claim 3 has two protruding handles, which
`
`are defined by “convex portions” (i.e., curved) and separated by a “medial
`
`portion”:
`
`
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`11
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`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 15 of 29
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`Claim 5, as emphasized in the above claim language, further describes the
`
`shape of the controller, stating that “the medial portion is closer to the top edge
`
`than a distal end of each of the first handle and the second handle.” In its Opening
`
`Brief, Collective Minds noted that this language could either mean (1) that the
`
`medial portion is closer to the top edge than the medial portion is to the ends of the
`
`handles (i.e., the handle extensions are longer than the body of the controller is tall)
`
`or (2) that the medial portion is closer to the top edge than the ends of the handles
`
`are to the top edge (i.e., that the handles extend any amount from the controller
`
`body). Dkt. No. 38, Opening Brief at 13. Collective Minds further noted that
`
`because the second possible meaning is duplicative of Claim 3, it cannot be
`
`correct. Id. at 14.
`
`Ironburg, for the first time in its Opening Brief, commits to the second of the
`
`two possible readings. Dkt. No. 39, Ironburg Brief at 18-19. In other words,
`
`Ironburg contends that if the handles extend from the controller body by any
`
`amount, Claim 5 is satisfied. Ironburg recognizes that this interpretation “is in part
`
`what defines the contour and handles of the controller,” but fails to acknowledge
`
`that this contour is already expressly required by Claim 3 and that its proposed
`
`interpretation thus renders Claim 5 entirely duplicative of Claim 3. As the Federal
`
`Circuit has made clear, “this court strives to reach a claim construction that does
`
`
`
`12
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 16 of 29
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`not render claim language in dependent claims meaningless.” Ortho-McNeil
`
`Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008). Because
`
`Ironburg’s interpretation does in fact render Claim 5 meaningless, it should be
`
`rejected in favor of Collective Minds’ proposal.
`
`Additionally, Ironburg briefly addresses Collective Minds proposed
`
`construction—that Claim 5 requires the medial portion is closer to the top edge
`
`than the medial portion is to the ends of the handles. Namely, Ironburg asserts that
`
`“[t]he specification and drawings do not support Defendant’s proposed
`
`construction” and that this arrangement “is not shown or met by the controller
`
`shown in Figure 1 or described anywhere in the patent.” In fact, as Collective
`
`Minds illustrated in its Opening Brief (and as is reproduced below), FIG. 2 clearly
`
`illustrates the medial portion closer to the top edge than it is to the handle ends:
`
`
`
`
`
`13
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`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 17 of 29
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`Thus, Ironburg is simply incorrect. The ‘770 Patent, including FIG. 2,
`
`unambiguously supports Collective Minds’ proposed construction. Because
`
`Collective Minds’ proposal aligns with the intrinsic record and Ironburg’s
`
`interpretation renders Claim 5 meaningless, the Court should adopt Collective
`
`Minds’ proposed construction.
`
`3.
`
`Located at/on the Back of the Controller Means the User Engages
`the Controls at the Back of the Controller
`
`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
`
`It is undisputed that the Asserted Patents are directed to elongated back
`
`controls that are “positioned to be engaged by the user at the back of the
`
`controller.” As excerpted below, Ironburg itself emphasizes this key point:
`
`the hand-held controllers described and claimed in the patents-in-
`suit comprise a case shaped to be held in the hand of a user such that
`the user’s thumbs and index fingers are positioned to operate front
`and top controls, and additional controls are provided on the back
`of the controller, including elongated members, such that the
`user’s other fingers can be positioned to operate the back
`controls.
`
`Dkt. No. 39, Ironburg Brief at 2 (emphasis added). Consistent with this key
`
`concept and to avoid the ambiguity that exists in the claim language, Collective
`
`
`
`14
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 18 of 29
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`Minds proposes a clarifying construction that “located at/on the back of the
`
`controller” means “positioned to be engaged by the user at the back of the
`
`controller.”
`
`Ironburg, again, refuses to actually explain what the alleged “plain meaning”
`
`is and instead repeatedly argues that “a POSITA would understand” the claim
`
`language. Id. at 14-15. Without any explanation of what it means to have controls
`
`“located at/on the back of the controller,” however, Ironburg’s insistence that the
`
`phrase “would be interpreted normally by a POSITA, and given their plain and
`
`ordinary meaning, without embellishment of any kind” is meaningless and
`
`serves only to push off the parties’ disagreement to the factfinder, unnecessarily
`
`extending the life of the life of Ironburg’s otherwise meritless infringement
`
`allegations. Accordingly, Ironburg’s position should be rejected and Collective
`
`Minds’ clarifying construction adopted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`
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`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 19 of 29
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`4.
`
`’525 Patent Claim 13 Does Not Require Two Distinct
`Convergences
`
`Claim Term/Phrase
`
`front end of the controller
`• ‘525 Claim 13
`
`elongate members converge
`towards the front end of the
`controller with respect to one
`another
`• ‘525 Claim 13
`
`Plaintiff’s Proposed
`Construction
`
`Plain and ordinary.
`
`elongated members
`coverage towards one
`another and toward the front
`of the controller
`
`Defendant’s
`Proposed
`Construction
`front of the
`controller (as
`defined by Claim 1)
`Plain and ordinary.
`
`Despite insisting that the “words of the claim should be left largely if not
`
`wholly undisturbed” (Ironburg Brief at 1) and that all eight disputed claim terms
`
`“should be given their ordinary and customary meaning” (Id. at 5), Ironburg in fact
`
`seeks to entirely rewrite the plain language of ‘525 Patent Claim 13 to require two
`
`separate convergences, neither of which is supported by the claim language itself.
`
`The disputed language in Claim 13 is not complex. It states, the “elongate
`
`members converge towards the front end of the controller with respect to one
`
`another.” In other words the elongate members converge toward each other as
`
`they approach the “front end.” The Patent Office analyzed this language and
`
`reached this precise conclusion—“Claim 13 recites that the elongate members
`
`come closer together (‘converge . . . with respect to one another’) in a specified
`
`direction (‘towards the front end of the controller’).” Dkt. No. 38-6 at 23.
`
`
`
`16
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 20 of 29
`
`As described in Collective Minds’ Opening Brief, Ironburg recognized in the
`
`Valve litigation that the claimed convergence toward a “front end” should instead
`
`have stated the elongate members converge toward the “top edge.” But Ironburg
`
`ultimately dropped Claim 13 from that case rather than ask the Court to rewrite the
`
`claim. Dkt. No. 38, Opening Brief at 23-24. Ironburg has apparently had a change
`
`of heart with respect to rewriting Claim 13 and now proposes that Claim 13 should
`
`require (1) a first convergence of the paddles “when they are closer together near
`
`the top of the controller in a ‘snow-plow’ configuration” and (2) a second and
`
`distinct convergence where the paddles are “angled or inclined such that they
`
`converge toward the front of the controller.” Dkt. No. 39, Ironburg Brief at 11-
`
`12 (emphasis added).
`
`Starting with the first component, this simply revives Ironburg’s previously
`
`abandoned request for the Court to rewrite “front end” as “top edge.” As noted in
`
`Collective Minds’ Opening Brief, “[c]ourts cannot rewrite claim language.”
`
`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir.
`
`2008). Accordingly, Ironburg’s attempt to rewrite Claim 13 to require a
`
`convergence toward the top rather than the front must be rejected.
`
`Turning to the second component, Ironburg argues that Claim 13 also
`
`requires a convergence such that the paddles are angled toward the front of the
`
`
`
`17
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 21 of 29
`
`controller. Curiously, Ironburg notes that this convergence can be satisfied even
`
`where the paddles diverge from each other as they near the front of the controller.
`
`Dkt. No. 39, Ironburg Brief at 12 (“For example, the elongate members converge
`
`towards the front of the controller when they flare away (from a plane
`
`representing the front of the controller) from the top of the elongate members to
`
`the bottom.”) (emphasis added). This is in fact the precise opposite of the claim
`
`language, which requires a convergence, not divergence, as the paddles near the
`
`front of the controller. The impetus for Ironburg’s attempt to rewrite and reverse
`
`the claim language is transparent—the accused paddles in fact diverge from each
`
`other as they near the front of the controller. As with the first component of
`
`Ironburg’s strained rewrite, this second component should also be rejected.
`
`Claim 13, as the Patent Office has already held, means what it says and
`
`requires a single convergence of the paddles toward each other as they approach
`
`the front of the controller. Respectfully, this Court should follow the Patent
`
`Office’s reasoning and reject Ironburg’s attempt to dramatically rewrite the claim
`
`language.
`
`
`
`
`
`
`
`18
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 22 of 29
`
`5.
`
`The Court Must Clarify the Meaning of a First Surface Proximate
`a Second Surface
`
`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
`
`first surface proximate an outer
`surface of the base of the games
`controller along the length of
`the first surface
`
`
`Ironburg insists that the claims of the ‘688 Patent “do not need any further
`
`elaboration” and “merely require that a surface be disposed proximate an outer
`
`surface of the controller.” Dkt. No. 39, Ironburg Brief at 20. Once again, however,
`
`Ironburg has entirely failed to explain what it means to have one surface disposed
`
`proximate to another. As explained and illustrated in Collective Minds’ Opening
`
`Brief, the surface of an elongate member disposed proximate the outer surface of
`
`the controller case means that the elongate member’s surface must be proximate
`
`the controller case along its length, rather than simply at one discrete point. Dkt.
`
`No. 38, Opening Brief at 17-18. This clarifying construction is consistent with the
`
`intrinsic record and with Ironburg’s own expert, whose description of the intrinsic
`
`record precisely aligns with Collective Minds’ proposed construction. Id. at 16-17.
`19
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 23 of 29
`
`Ironburg’s sole attempt to engage in the substance of Collective Minds’
`
`proposal is the following allegation: “the definitions proposed by Defendant are
`
`improper as they seek to narrow the claims of the patent in a manner that is in
`
`conflict with the patent.” Dkt. No. 39, Ironburg Brief at 20. Yet Ironburg fails to
`
`elaborate in any way as to how the proposed clarifying constructions conflict with
`
`the patent. Ironburg’s unsupported and unexplained argument should thus be
`
`rejected and Collective Minds’ clarifying construction adopted.
`
`6.
`
`“Engaging Surface” is a Surface that is Engaged
`
`Claim
`Term/Phrase
`engaging surface
`• ‘688 Claim 24
`
`Plaintiff’s Proposed
`Construction
`Plain and ordinary.
`
`Defendant’s Proposed
`Construction
`surface contacted to engage
`switch
`
`Regarding the proper construction of “engaging surface,” Ironburg’s Brief
`
`follows the same format as prior sections—it states that the claim language is clear,
`
`recites the subject claim language, and concludes (without substantively engaging
`
`in the merits of the dispute) that “no further construction should be made.” Id. at
`
`21-22. Ironburg’s refusal to engage on the substance is particularly frustrating in
`
`light of the straightforward nature of the “engaging surface” issue.
`
`At a loss to understand how the accused products could possibility satisfy a
`
`requirement that the “engagement surface” of a “switch mechanism” is “arranged
`
`flush with the outer surface” of the controller, Collective Minds proposed a
`
`
`
`20
`
`
`
`Case 1:16-cv-04110-TWT Document 41 Filed 11/07/17 Page 24 of 29
`
`clarifying construction that “engaging surface” is simply the “surface contacted to
`
`engage [the] switch.” Although this construction would appear unnecessary given
`
`the plain meaning of “engagement surface,” Ironburg’s refusal to accept this
`
`common
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