Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 1 of 30
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`
`
`
`IRONBURG INVENTIONS LTD. a
`United Kingdom Limited Company,
`
`Plaintiff,
`
`vs.
`
`COLLECTIVE MINDS GAMING
`CO. LTD.,
`
`
`
`
`
`Civil Action No. 1:16-cv-04110-TWT
`
`
`Defendant.
`
`PLAINTIFF IRONBURG INVENTIONS LTD’S OPPOSTION CLAIM
`CONSTRUCTION BRIEF
`
`-i-
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 2 of 30
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`
`B.
`
`INTRODUCTION .......................................................................................... 1
`STATEMENT OF LAW ................................................................................ 1
`A.
`The Patent Specification May Not Be Used To Rewrite the
`Claims to Something More or Different Than What Its Words
`Express ................................................................................................. 2
`It Is Improper To Import Limitations Into The Claims From
`The Specification .................................................................................. 3
`III. DISCUSSION ................................................................................................. 3
`A.
`Collective Minds’ Assertion That Certain Constructions Are
`Necessary To Prevent Ironburg’s Unreasonable Application of
`Claim Language Is Unsupported And Clearly Erroneous ................... 3
`1.
`“Top Edge,” “Front” and “Medial Portion” are not
`Dimensional Limitations ............................................................ 6
`a.
`Collective Minds’ revisions go beyond
`distinguishing “top” from “bottom”; upper from
`lower; and “front” from back ........................................... 7
`Collective Minds seeks to improperly add a center
`point requirement to steer infringement decisions .......... 9
`Ironburg has not admitted collective minds’
`proposals are correct ...................................................... 11
`The Claims Do Not Require Back Controls “Positioned
`To Be Engaged By The User ................................................... 12
`Claim 5 of the ‘770 Patent Refers to Handles That
`Extend Below The Medial Portion .......................................... 13
`Claims 1 and 30 of the ‘688 Patent Do Not Require
`Construction ............................................................................. 17
`Engaging Surface of Claim 24 of the ‘688 Patent Does
`Not Require Construction ........................................................ 19
`
`b.
`
`c.
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`
`-i-
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 3 of 30
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`6.
`
`7.
`8.
`
`Command Initiation Point is No More Than a Physical
`Position ..................................................................................... 20
`Front End of the Controller Includes “End” ............................ 24
`Ironburg Does not Oppose Plain and Ordinary Meaning
`for the Convergence Clause in Claim 13 of the ‘525
`Patent ........................................................................................ 25
`IV. CONCLUSION ............................................................................................. 25
`
`
`
`-ii-
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 4 of 30
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page
`
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) .............................................................................. 1
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
`576 F.3d 1348 (Fed. Cir. 2009) .......................................................................... 10
`Every Penny Counts, Inc. v. Am. Express Co.,
`563 F.3d 1378 (Fed. Cir. 2009) ........................................................................ 4, 5
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ............................................................................ 2
`Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc.,
`628 F.3d 1359 (Fed. Cir. 2010) ............................................................................ 5
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384,
`134 L.Ed.2d 577 (1996) ........................................................................................ 5
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................... 1, 2, 3
`Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co.,
`425 F.3d 1366 (Fed. Cir. 2005) .......................................................................... 10
`White v. Dunbar,
`119 U.S.47 (1886) ............................................................................................. 2, 4
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
`442 F.3d 1322 (Fed. Cir. 2006) ............................................................................ 5
`RULES
`LPR 6.5 ...................................................................................................................... 1
`
`
`
`
`-iii-
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 5 of 30
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to Patent Local Rules LPR 6.5, Plaintiff Ironburg Inventions Ltd.
`
`(“Ironburg”) submits this Responsive Claim Construction Brief in support of its
`
`proposed constructions of the identified disputed terms of the five patents-in-
`
`suit: U.S. Patent Nos. 8,641,525 (“‘525” Patent), 9,089,770 (“‘770” Patent),
`
`9,289,688 (“‘688” Patent), 9,352,229 (“‘229” Patent), and 9,308,450 (“‘450”
`
`Patent). See Declaration of Robert D. Becker In Support of Ironburg’s Opening
`
`Claim Construction Brief (“Becker Decl.”) Exhibits 1-5.
`
`Ironburg respectfully requests that this Court decline to rewrite the claims
`
`as urged by Collective Minds.
`
`II.
`
`STATEMENT OF LAW
`
`Ironburg agrees with Collective Minds. “When construing claims, a court
`
`must begin by ‘look[ing] to the words of the claims themselves ... to define the
`
`scope of the patented invention.’” Acumed LLC v. Stryker Corp., 483 F.3d 800,
`
`805 (Fed. Cir. 2007), citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`
`Cir. 2005) (en banc). “[T]he claims themselves provide substantial guidance as
`
`to the meaning of particular claim terms.” Phillips, 415 F.3d at 1314. Beyond
`
`the claims themselves, courts look principally to the intrinsic evidence of a
`
`patent to determine the ordinary and customary meaning of a claim term. This
`
`intrinsic record includes the specification and the patent’s prosecution history.
`
`
`
`-1-
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 6 of 30
`
`“[T]he person of ordinary skill in the art is deemed to read the claim term not
`
`only in the context of the particular claim in which the disputed term appears,
`
`but in the context of the entire patent, including the specification.” Id.
`
`Ironburg also agrees with Collective Minds that the prosecution history
`
`consists of the record of the proceedings before the PTO. Id. at 1317. Because
`
`the prosecution history represents an ongoing negotiation between the PTO and
`
`the applicant, rather than the final product of that negotiation, it often lacks the
`
`clarity of the specification and thus is less useful for claim construction
`
`purposes. Id.
`
`
`A. The Patent Specification May Not Be Used To Rewrite the Claims
`to Something More or Different Than What Its Words Express
`
`Additionally, and importantly here, Ironburg agrees with Collective Minds
`
`that “the goal of construing patent claims is not to rewrite the claims, but to
`
`explain to the trier of fact, where necessary, how the terms chosen by the
`
`patentee would have been understood by one of ordinary skill in the art.
`
`Collective Minds’ brief at p. 2 (emphasis added), citing See K-2 Corp. v.
`
`Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999). The US Supreme Court
`
`succinctly illustrated this legal point more than 100 years ago in White v.
`
`Dunbar, 119 U.S. 47, 51-52 (1886)(emphasis added).
`
`-2-
`
`
`
`
`
`
`
`

`

`
`
`
`
`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 7 of 30
`
`
`Some persons seem to suppose that a claim in a patent is like a
`nose of wax, which may be turned and twisted in any direction, by
`merely referring to the specification, so as to make it include
`something more than, or something different from, what its words
`express. The context may undoubtedly be resorted to, and often is
`resorted to, for the purpose of better understanding the meaning of
`the claim, but not for the purpose of changing it and making it
`different from what it is. The claim is a statutory requirement,
`prescribed for the very purpose of making the patentee define
`precisely what his invention is, and it is unjust to the public, as
`well as an evasion of the law, to construe it in a manner different
`from the plain import of its terms.
`
`B.
`
`It Is Improper To Import Limitations Into The Claims From The
`Specification
`
`Finally, as has been stressed by the Federal Circuit, it is improper to
`
`import limitations from preferred embodiments under the guise of claim
`
`construction. A cardinal rule forbids importing limitations from the specification
`
`into patent claims. Phillips v. AWH Corp., 415 F.3d 1303, 1319-20 (Fed. Cir.
`
`2005) (en banc). Unfortunately, that is what Collective Minds advocates .
`
`
`III. DISCUSSION
`A. Collective Minds’ Assertion That Certain Constructions Are
`Necessary To Prevent Ironburg’s Unreasonable Application of
`Claim Language Is Unsupported And Clearly Erroneous
`
`
`
`
`
`Collective Minds asserts that a first group of simple terms “is comprised
`
`of claim language that is either ambiguous on its face or that has been applied
`
`-3-
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 8 of 30
`
`by Ironburg (as evidenced by itsinfringement allegations) in a manner
`
`inconsistent with a reasonable interpretation of the claim language. Collective
`
`Minds’ brief at p. 3. Collective Minds further asserts “Ironburg asks the Court to
`
`not construe these terms and phrases at all, hoping to maintain the very
`
`ambiguity that claim construction is meant to address.” Id.
`
`There is no factual support for Collective Minds’ assertions and none is
`
`provided. Pointedly, Ironburg has made no attempt to apply any claim language
`
`in an unreasonable manner. On the contrary, Ironburg asserts that terms like
`
`“front” are simple directional references that are understandable and used in an
`
`ordinary way. This is obvious from the evidence and from fact that CM actually
`
`reuses many of the words at issue here, including “front”, in its proposed
`
`constructions even as it improperly attempts to rewrite the claims with additional
`
`or different limitations.
`
`Collective Minds’ reliance on Every Penny Counts, Inc. v. Am. Express
`
`Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009) is inapposite. While it is true that claim
`
`construction is for the court, and not the jury, it is legal error for the court to
`
`interpret a claim so as to make it something more than, or something different
`
`from, what its words express as explained by the Supreme Court in White v.
`
`Dunbar. It is also legal error to interpret a claim such that an accused product
`
`infringes or does not infringe. This is because patent infringement analysis involves
`
`-4-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 9 of 30
`
`two steps: claim construction, a legal issue for the court, and application of the
`
`construed claim to the accused process or product, a factual issue for the jury. See
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en
`
`banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). See Wilson
`
`Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326 (Fed. Cir.
`
`2006).
`
`In Every Penny Counts, Inc., the Federal Circuit expressly reminded the
`
`parties that “A court may not use the accused products for the sole purpose of
`
`arriving at a construction of the claim terms that would make it impossible for the
`
`plaintiff to prove infringement.” Id. at 1383. See also Lazare Kaplan Int’l, Inc. v.
`
`Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010)(courts should not
`
`resolve questions that do not go to claim scope, but instead go to infringement).
`
`In Lazare Kaplan, Lazare argued that a new trial was necessary because the
`
`district court erred by failing to further construe the “positional accuracy of
`
`placement” limitation of an asserted claim. The Federal Circuit disagreed, finding
`
`that the dispute concerned factual questions relating to the test for infringement and
`
`not the legal inquiry of the appropriate scope of the “positional accuracy”
`
`limitation:
`
`This court agrees with the Defendants that the parties’ dispute
`concerns factual questions relating to the test for infringement and
`not the legal inquiry of the appropriate scope of the “positional
`accuracy” limitation. Id.
`
`-5-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 10 of 30
`
`
`
`Collective Minds is clearly asking the court to step over the line as it
`
`expressly states that several proposed constructions are necessary to prevent
`
`Ironburg from applying the claims in an “unreasonable” manner in its
`
`infringement contentions.
`
`1.
`“Top Edge,” “Front” and “Medial Portion” are not
`Dimensional Limitations. It Would Be Clearly Erroneous To Add The
`Proposed Additional Limits To The Claims
`
`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
`(with added limitations lined out)
`
`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
`
`As discussed above, claim construction is to explain to the trier of fact,
`
`where necessary, how the terms chosen by the patentee would have been
`
`understood by one of ordinary skill in the art. Collective Minds urges the court
`
`to construe these simple claim terms, but construction is not necessary and
`
`-6-
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 11 of 30
`
`Collective Minds failed to present any evidence to show that the terms would
`
`have been understood by one of ordinary skill in the art in any manner other
`
`than the plain and ordinary import of the terms as written.
`
`Each of the above disputed terms is simple and needs no further
`
`embellishment or elaboration. The terms are directional, not dimensional, and
`
`are merely used to distinguish the features from one another. For example, as
`
`claimed, the front of the controller is opposite the back, and the top edge of the
`
`controller is opposite the bottom edge. This is expressly defined in the
`
`specification (but omitted from Collective Minds’ brief). The specifications
`
`provide:
`
`“It will be recognised that as used herein, directional references
`such as “top”, “bottom”, “front”, “back”, “end”, “side”, “inner”,
`“outer”, “upper”, and “lower” do not limit the respective features
`to such orientation, but merely serve to distinguish these features
`from one another.” Exhibit 1, 4:26-31 (emphasis added).
`
`
`a.
`
`Collective Minds’ revisions go beyond distinguishing
`“top” from “bottom”; upper from lower; and “front”
`from back
`
`In the patents, as shown, the terms are defined as being directional and
`
`merely serve to distinguish directional features from one another. Claims 1, 3
`
`and 5 of the ‘770 patent claims use the terms in the same manner:
`
`1. A video game controller, comprising:
`
`an outer case comprising:
`
`-7-
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 12 of 30
`
`a front and a back, wherein the back is opposite the front;
`a top edge and a bottom edge, wherein the top edge is opposite the
`bottom edge;
`…;
`wherein the first elongate member extends along at least half of a
`first distance between the top edge and the bottom edge, the first
`distance being measured along a longitudinal axis of the first
`elongate member; ….
`
`
`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 can be seen from the claims, the terms are directional and merely serve
`
`to distinguish the features from one another as stated in the specifications. Given
`
`the claims and the express teaching of the specifications, it would be improper to
`
`add adjectives such as “uppermost” or “lowest” as those qualifiers go beyond
`
`distinguishing “top” from “bottom” and would compel a specific orientation.
`
`Collective Minds refers to the following annotated FIGs 1 and 3 from the
`
`‘525 and ‘770 patents (annotations added by Collective Minds):
`
`-8-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 13 of 30
`
`
`
`Although these figures are illustrative of the concepts being discussed,
`
`they illustrate a preferred embodiment, and do not limit the claim terms beyond
`
`their plain meaning. In the illustrated preferred embodiment, and in the
`
`orientation shown, there is a top edge, and the top edge is opposite the bottom
`
`edge. The bottom edge includes a medial portion (Claim 3 provides “wherein
`
`the bottom edge includes …a medial portion between the first convex portion
`
`and the second convex portion.”) The medial portion is the portion of the edge
`
`between the two convex handles shown in the figures. However, the orientation
`
`shown is merely an exemplary orientation, and the embodiment is merely an
`
`exemplary embodiment.
`
`b.
`
`Collective Minds seeks to improperly add a center point
`requirement to steer infringement decisions
`
`Collective Minds refers to a hypothetical controller with a curved face,
`
`asks a hypothetical infringement question, i.e., “Where on the curved front face
`
`of a controller should the recited measurements be taken?”, proposes what it
`
`-9-
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 14 of 30
`
`calls a “logical and straightforward” answer not compelled by the patent or
`
`supported by any intrinsic, expert or other extrinsic evidence, and then adds the
`
`answer as a further limitation to the claims. This is entirely improper as it merely
`
`rewrites the claims to predetermine infringement determinations. See Lazare
`
`Kaplan, supra. See also Union Carbide Chems. & Plastics Tech. Corp. v. Shell
`
`Oil Co., 425 F.3d 1366, 1377 (Fed. Cir. 2005) (“Because the claim language
`
`[**39] does not require a particular form of testing, this inquiry is not a claim
`
`construction question, which this court reviews de novo. Rather, this court
`
`reviews this inquiry as a question of fact.”), overruled on other grounds by
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348 (Fed. Cir. 2009).
`
`Claims 5 and 17 of the ‘525 patent are at issue here. The claims provide:
`
`5. The controller of claim 2, wherein the top edge is substantially
`perpendicular to the front.
`
`17. The controller of claim 1, wherein at least one of the back
`controls is substantially parallel to the front of the controller.
`
`In order to show infringement of these claims, the issue will be whether
`
`
`
`Ironburg can prove that the accused device has a top edge that is substantially
`
`perpendicular to the front (Claim 5) or a back control that is substantially
`
`parallel to the front of the controller (Claim 17). These are factual issues and
`
`proof will likely come in the form of expert testimony. Collective Minds seeks
`
`to limit Ironburg’s proof, however, by adding a “center point” limitation, i.e., if
`
`-10-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 15 of 30
`
`a curved surface, the measurement uses the tangent of the center point of the
`
`front face. There is no support for this limitation in the patent and it would be
`
`clearly erroneous to add it. The claims merely require proof that “substantially
`
`perpendicular” is met (claim 5) or “substantially parallel” (claim 17). There is
`
`no requirement that the proof of infringement be limited to measurements taken
`
`at “center point” and there is no support for that in the specification of the
`
`patents as Collective Minds seems to admit by proposing a “logical and
`
`straightforward” limitation without reference to the patent.
`
` Curiously,
`
`Collective Minds attempts to show how its proposed “measurement” [sic] point
`
`would lead to infringement while others would not, but that is beside the point
`
`and only illustrates that it would be improper to direct the jury to a conclusion
`
`of
`
`infringement or non-infringement based under
`
`the guise of claim
`
`construction.
`
`c.
`
`Ironburg has not admitted collective minds’ proposals are
`correct
`
`The issues presented here were not at issue in the referenced case,
`
`Ironburg v. Valve Corp. (1:15-cv-4219- TWT), and the definitions proposed here
`
`by Collective Minds were not proposed by Ironburg. In the prior case, the issue was
`
`whether certain claims were indefinite. The word “uppermost” was used by
`
`Ironburg in parenthesis to denote where the surface was shown in the preferred
`
`-11-
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 16 of 30
`
`embodiment. It was not to further limit the claim. Moreover, the definitions that
`
`Collective Minds refers to from the exchanges in the Valve case are not the same as
`
`the definitions it has proposed here. Simply, the parties did not brief these issues and
`
`there is no admission. The patent itself is very clear as to the meanings, as discussed
`
`above, and it controls.
`
`2.
`The Claims Do Not Require Back Controls “Positioned To
`Be Engaged By The User.
`
`Plaintiff’s Proposed
`Construction
`Plain and ordinary.
`
`Defendant’s Proposed
`Construction
`positioned to be engaged by the
`user at the back of the controller
`
`Claim Term/Phrase
`
`located at/on the back
`of the controller
`• ‘525 Claims 1, 20
`• ‘770 Claim 1
`
`
`Collective Minds’ proposed construction is nothing more than a wholesale
`
`rewriting of the claims. Collective Minds removes the structural requirements
`
`describing the location of the controls, and replaces them with its own
`
`requirements describing a relationship between the user and the controls. This
`
`eliminates the chosen limitations and adds new ones. It is not a claim
`
`construction and is clearly improper.
`
`While it is true that the claims of the ‘525 and ‘770 Patents recite controls
`
`“located at/on the back of the controller” and that the specifications for these
`
`patents describe control locations in terms of the place where the user’s fingers
`
`-12-
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 17 of 30
`
`will engage the control, the patentee elected to claim the relationship between the
`
`controls and the back of the controller, and not a positional relationship with the
`
`user. The fact that there is a relationship between these claiming concepts is not
`
`material (see Figure 3, below). The patentee did not elect the claiming strategy
`
`that Collective Minds seeks to impose here. It would be clearly erroneous to
`
`rewrite the claims as suggested.
`
`
`
`As discussed above, a patent claim may not be turned and twisted in any
`
`direction, by merely referring to the specification, so as to make it include
`
`something more than, or something different from, what its words express.
`
`
`3.
`Claim 5 of the ‘770 Patent Refers to Handles That Extend
`Below The Medial Portion
`
`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
`
`-13-
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 18 of 30
`
`Claim 5 from the ‘770 Patent recites “the medial portion is closer to the
`
`top edge than a distal end of each of the first handle and the second handle.”
`
`This language concerns proximity to the top edge (basically “A is closer than
`
`B”) expressly provides that the medial portion of the bottom edge is closer than
`
`the distal ends of the bottom edge. This merely refers to the fact that the distal
`
`ends of the handles on the bottom edge extend below the medial portion of the
`
`bottom edge such that the medial portion of the bottom edge is closer to the top
`
`edge than the distal ends of the handles are. This relationship is shown in every
`
`figure and was already known in the art. There is no ambiguity in this phrase,
`
`as Collective Minds suggests. It does not require any construction.
`
`The claims of the ‘770 patent describe a controller with a top edge and a
`
`bottom edge. Claim 3 further specifies that the bottom edge includes a medial
`
`portion between two convex handles. Contrary to Collective Minds’ argument,
`
`however, there is no requirement in Claim 3 that the distal ends of the convex
`
`handles extend some distance from the bottom of the controller. That limitation
`
`is in Claim 5. To understand this, one need only envision a controller where
`
`the ends of the convex handles and the medial portion of the bottom edge all
`
`rest on a desk when the controller is placed on a desk and held as in figures 1.
`
`Claims 1, 3 and 5 of the ‘770 patent are set forth here (emphasis added):
`
`1. A video game controller, comprising:
`an outer case comprising:
`
`-14-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 19 of 30
`
`…
`a top edge and a bottom edge, wherein the top edge is opposite the
`bottom edge;
`…;
`wherein the first elongate member extends along at least half of a
`first distance between the top edge and the bottom edge, the first
`distance being measured along a longitudinal axis of the first
`elongate member; ….
`
`
`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 can be seen, the requirement that the distal ends of the convex
`
`handles extend further downward is in Claim 5. Claim 5 requires that the distal
`
`ends of the handles extend some distance down from the controller such that
`
`the distal ends of the handles are further away from the top edge (stated
`
`alternatively, the medial portion of the bottom edge is closer to the top edge).
`
`Furthermore, the patent specification and figures do not support
`
`Collective Minds’ interpretation, which relies on an angled measurement that
`
`finds no basis in the specification. In the specification, the discussion focuses
`
`on the relative length of components as measured along an up/down
`
`longitudinal axis when the controllers are positioned as shown in the figures,
`
`-15-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 20 of 30
`
`and this is carried into the claims which refer to “longitudinal” measurements
`
`(see annotated Claim 1, above). An annotated version of Figure 1 is set forth
`
`here.
`
`
`
`As can be seen, three blue lines are drawn at points on (1) the top edge,
`
`(2) the medial portion of the bottom edge, and (3) the distal ends of the handles
`
`on the lower edge. The medial portion is closer to the top edge as claimed.
`
`CM’s reliance on an annotated figure 2( reproduced here) is inapposite.
`
`
`
`Collective Minds measures a longitudinal distance in annotated Figure 2
`
`between the top edge and the medial portion of the bottom edge, but then
`
`compares that measurement to an angled measurement that is meaningless for
`
`-16-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 21 of 30
`
`at least two reasons. First, given the way Figure 2 is drawn to illustrate the 3D
`
`contour of the back of the controller, and the longitudinal length of the paddles
`
`with respect to the top and bottom edges, the angled measurement is not to
`
`scale and the comparison of the two 2-d lines is not appropriate. Indeed, from
`
`that drawing, it is not possible to determine what is being measured regardless
`
`of the scale issues. Second, there is nothing in the patent that discusses or is
`
`concerned in any way with the angled line that Collective Minds selected and
`
`Collective Minds presents no expert or other extrinsic evidence to support it. It
`
`is simply a line picked by because it appears to be longer than the other
`
`measurement.
`
`In sum, the claimed invention concerns relative measurements made
`
`along a “longitudinal” dimension. There is no support for the angled
`
`measurement made by Collective Minds.
`
`4.
`Claims 1 and 30 of the ‘688 Patent Do Not Require
`Construction
`
`
`Claim Term/Phrase
`
`first surface disposed
`proximate an outer surface
`of the case
`• ‘688 Claim 1
`
`Plaintiff’s
`Proposed
`Construction
`Plain and
`ordinary.
`
`Defendant’s Proposed
`Construction
`
`first surface proximate an outer
`surface of the case along the
`length of the first surface
`
`-17-
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 22 of 30
`
`first surface for being
`disposed proximate an outer
`surface of the base of the
`games controller
`•
`‘688 Claim 30
`
`Plain and
`ordinary.
`
`first surface proximate an outer
`surface of the base of the games
`controller along the length of
`the first surface
`
`Contrary to the assertions of Collective Minds, the claims of the ‘688
`
`Patent do not use confusing language. Claims 1 and 30 state that elongate
`
`members include a first surface “disposed proximate” an outer surface of the
`
`case. This is clear from the fact that Collective Minds reuses the term
`
`“proximate.” As can be seen, Collective Minds merely seeks to add further
`
`limitations requiring that the surface be proximate at all points along the length of
`
`the controller, and it does this to steer infringement decisions as discussed above.
`
`There is no requirement in the claims that the surface be proximate at all locations
`
`along the length of the elongate members, and the specifications do not support
`
`let alone compel this rewriting of the claims.
`
`In the specification, a controller is shown with paddles that are attached to
`
`the back of the controller near the top edge. This can be seen in the figure used
`
`by Collective Minds, reproduced below. However, the paddles (and paddle
`
`surfaces) in the illustrated preferred embodiments go further away from the outer
`
`surface of the case as one proceeds from the top edge to the bottom edge.
`
`Clearly, the patent does not contemplate the limitation proposed by Collective
`
`Minds requiring proximity at all points along the length of the control. The
`
`-18-
`
`
`
`
`
`
`
`
`
`

`

`Case 1:16-cv-04110-TWT Document 42 Filed 11/07/17 Page 23 of 30
`
`opposite is true. The patent contemplates divergence along the length of the first
`
`surface. Were it not for the divergence, paddle travel would be inhibited.
`
`As can be seen, the paddles are actually attached near the top edge (Figure
`
`
`
`2) and diverge from top to bottom (Figure 6).
`
`5.
`Engaging Surface of Claim 24 of the ‘688 Patent Does Not
`Require Construction
`
`Claim
`Term/Phrase
`engaging surface
`•
`‘688 Claim 24
`
`Plaintiff’s Proposed
`Construction
`Plain and ordinary.
`
`Defendant’s Proposed
`Construction
`surface contacted t