Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 1 of 8
`
`
`
`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.,
`
`Defendant.
`
`Civil Action No. 1:16-cv-04110-TWT
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF ROBERT D. BECKER IN SUPPORT OF PLAINTIFF
`IRONBURG INVENTIONS LTD’S OPPOSITION TO MOTION TO STAY
`CASE PENDING INTER PARTES REVIEW
`
`
`
`
`
`
`
`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.,
`
`Defendant.
`
`Civil Action No. 1:16-cv-04110-TWT
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF ROBERT D. BECKER IN SUPPORT OF PLAINTIFF
`IRONBURG INVENTIONS LTD’S OPPOSITION TO MOTION TO STAY
`CASE PENDING INTER PARTES REVIEW
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 2 of 8
`
`
`
`I, Robert D. Becker, do hereby state, as follows:
`
`1.
`
`I am an attorney with Manatt, Phelps & Phillips, counsel for Plaintiff
`
`Ironburg Inventions Ltd. (“Plaintiff”). I was granted permission to appear pro hac
`
`vice in the above-captioned action by Order dated March 24, 2017. (Dkt. 19). I
`
`have personal knowledge of the matters described in this declaration, including
`
`through my work with other attorneys on this matter, and am competent to testify
`
`about these matters.
`
`2.
`
`Plaintiff initiated this action against Defendant Collective Minds
`
`Gaming Co. Ltd. (“Defendant”) on November 2, 2016, based on its claims that
`
`Defendant’s “Strike Pack” product and Defendant’s “Trigger Grips” product
`
`(collectively, “Accused Products”) infringe Plaintiff’s patents. Defendant induces
`
`others to infringe by modifying controllers produced by third parties to make the
`
`patented invention, and also modifies the same third party controllers to make the
`
`patented invention and then advertises that patented invention to promote sales of
`
`the Accused Products. The Accused Products, when used as intended to modify
`
`video gaming controllers, directly compete with video game controller products
`
`made by Plaintiff’s licensees, Microsoft and Scuf Gaming.
`
`3.
`
`As early as March 4, 2016, Plaintiff notified Defendant that its
`
`Accused Products, when used as intended to modify Xbox One gaming controllers,
`
`resulted in gaming controllers that infringed Plaintiff’s Patents-in-Suit.
`
`
`
`-1-
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 3 of 8
`
`
`
`4.
`
`Since Plaintiff filed its Complaint over a year ago, the parties have
`
`engaged in motion practice on the pleadings, completed disclosure of the asserted
`
`patent claims, exchanged infringement and validity contentions, and conducted
`
`discovery. (See Dkts. 14, 17, 20, 21, 34, 38, 39, 41, and 42.) Plaintiff served
`
`Defendant requests for production of documents. The Court set a Markman
`
`hearing for February 6, 2018. A true and correct copy of Defendant’s Response to
`
`Infringement Contentions and Initial Invalidity Contentions is attached hereto as
`
`Exhibit L.
`
`5.
`
`Plaintiff has another patent infringement action pending against Valve
`
`Corporation (“Valve”) that involves certain of the Patents-in-Suit in this action:
`
`Ironburg Inventions Ltd. v. Valve Corporation, Case No. 17-cv-01182-TSZ (Dkt.
`
`117) (W.D. Wash. Aug. 4, 2017). Plaintiff’s action against Valve was initially
`
`pending in this Court but was transferred to the Western District of Washington on
`
`August 4, 2017. In April 2016, Valve first filed two inter partes review (“IPR”)
`
`petitions with the United States Patent and Trademark Office Appeals Board
`
`(“PTAB”) challenging the validity of the patents-in-suit. Specifically, Valve filed
`
`two Petitions with the PTAB on April 22, 2016 seeking review of all twenty claims
`
`in two patents-in-suit owned by Plaintiff: U.S. Patent No. 8,641,525 (the “‘525
`
`Patent”) and U.S. Patent No. 9,089,770 (the “‘770 Patent”), which is a continuation
`
`of the ‘525 Patent. True and correct copies of Valve’s Petition against the ‘525
`
`
`
`-2-
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 4 of 8
`
`
`
`Patent is attached hereto as Exhibit A, and Valve’s Petition against the ‘770 Patent
`
`is attached hereto as Exhibit B.
`
`6.
`
`In September 2016, the PTAB agreed to institute review of all but
`
`three of the claims in the ‘525 (claims 12 and 15) and ‘770 (claim 13) patents.
`
`True and correct copies of the PTAB’s Decision to institute review of the ‘525
`
`Patent in IPR2016-00948 (the “948 IPR”) is attached hereto as Exhibit C, and the
`
`PTAB’s Decision to institute review of the ‘770 Patent in IPR2016-00949 (the
`
`“949 IPR”) is attached hereto as Exhibit D.
`
`7.
`
`Valve subsequently instituted four additional IPR proceedings with
`
`the PTAB challenging the validity of the patents-in-suit. Specifically, Valve filed
`
`(1) a Petition on October 25, 2016 making additional challenges to the ‘525 Patent;
`
`(2) a Petition on October 25, 2016 making additional challenges to the ‘770 Patent;
`
`(3) a Petition on February 7, 2017 challenging the claims in U.S. Patent No.
`
`9,289,688 (the “‘688 Patent”); and (4) a Petition on August 9, 2017 challenging the
`
`claims in U.S. Patent No. 9,352,229 (the “‘229 Patent”). The PTAB instituted all
`
`four IPRs but refused to institute on various claims, including the same three
`
`claims from the ‘525 (Claims 12 and 15) and ‘770 (claim 13) patents. The PTAB
`
`also narrowed its review to just claim 20 of the ‘525 patent and a subset of the
`
`claims it previously agreed to review from the ‘770 patent.
`
`
`
`-3-
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 5 of 8
`
`
`
`8.
`
`On September 22, 2017, the PTAB issued a Final Written Decision on
`
`Valve’s Petition in the 948 IPR. In that Final Decision, the PTAB found ten of the
`
`‘525 Patent’s claims patentable. A true and correct copy of the PTAB’s Final
`
`Decision in the 948 IPR is attached hereto as Exhibit E.
`
`9.
`
`Also, on September 22, 2017, the PTAB issued a Final Written
`
`Decision on Valve’s Petition in the 949 IPR. In that Final Decision, the PTAB
`
`found one of the ‘770 Patent’s Claims patentable. A true and correct copy of the
`
`PTAB’s Final Decision in the 949 IPR is attached hereto as Exhibit F.
`
`10. Based on the Final Decisions discussed above, Plaintiff sought and
`
`obtained an Order from the PTAB authorizing Plaintiff to file a motion under 35
`
`U.S.C. section 315(e)(1) with the PTAB to terminate Valve’s two other pending
`
`IPR petitions against the ‘525 and ‘770 Patents: IPR2017-00136 and IPR2017-
`
`00137. On January 25, 2018, the PTAB issued an Order granting Plaintiff’s
`
`motion to terminate Valve’s pending IPR petitions on the grounds that Valve is
`
`estopped from maintaining the IPRs under 35 U.S.C. § 315(e)(1). A true and
`
`correct copy of the PTAB’s Order is attached hereto as Exhibit G.
`
`11. Valve requested a rehearing of the Final Decisions in the 948 IPR and
`
`949 IPR. On November 15, 2017, the PTAB issued a Decision denying Valve’s
`
`request for rehearing of the Final Decision in the 949 IPR. A true and correct copy
`
`of the PTAB’s Order is attached hereto as Exhibit H. On January 26, 2018, the
`
`
`
`-4-
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 6 of 8
`
`
`
`PTAB issued an Order denying Valve’s motion for reconsideration of the Final
`
`Decision in the 948 IPR. A true and correct copy of the PTAB’s Order is attached
`
`hereto as Exhibit I. The PTAB’s orders confirmed its findings that claims of the
`
`‘525 Patent and ‘770 Patent are patentable.
`
`12. Defendant filed four IPR petitions on January 3, 2018, challenging the
`
`validity of the ‘525 Patent, ‘770 Patent, ‘688 Patent, and ‘229 Patent. The PTAB
`
`has not instituted review of these petitions, or assigned IPR case numbers.
`
`13. On September 28, 2017, Valve filed a motion to stay Plaintiff’s action
`
`against it in the Western District of Washington based on Valve’s pending IPRs
`
`with the PTAB relating to the Patents-in-Suit. On December 6, 2017, the Court
`
`issued an order denying in part and granting in part Valve’s motion to stay. A true
`
`and correct copy of the Court’s order is attached hereto as Exhibit J.
`
`14. On January 30, 2018, Plaintiff served discovery requests to Defendant
`
`seeking documents related to any communications or agreements between
`
`Defendant and Valve related the Patents-in-Suit.
`
`15. A true and correct copy of the Order issued by the PTAB on June 15,
`
`2015 in Maxlinear, Inc. v. Cresta Technology Corporation (IPR2015-00591) is
`
`attached hereto as Exhibit K.
`
`
`
`
`
`-5-
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 7 of 8
`
`
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct to the best of my knowledge.
`
`Executed this 2nd day of February, 2018.
`
`/s/ Robert D. Becker
`
`Robert D. Becker
`
`
`
`
`
`-6-
`
`
`
`
`
`
`
`
`
`Case 1:16-cv-04110-TWT Document 51 Filed 02/02/18 Page 8 of 8
`
`
`
`CERTIFICATE OF SERVICE
`
` I hereby certify that on February 2, 2018, I electronically filed the foregoing
`
`with the Clerk of Court using the CM/ECF system which will automatically send
`
`email notification of such filing to the attorneys of record.
`
`/s/ Robert D. Becker
`Robert D. Becker
`
`
`
`
`
`-7-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
