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`Paper No. 53
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`VALVE CORPORATION,
`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
`Patent Owner.
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`____________________
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`Case:
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`IPR2016-00948 (Patent 8,641,525)
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`____________________
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`REPLY RE: REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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`IPR2016-00948 REPLY RE: REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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`Ironburg incorrectly conflates the broadest reasonable interpretation (BRI)
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`standard with ordinary meaning. See, Paper 51 at 4. For example, Ironburg
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`complains that the petition’s construction “was not asserted to be a plain or
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`ordinary meaning of ‘flexible’ and was not asserted to be a special meaning of the
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`term.” Id. Hence, Ironburg essentially complains that the petition did not follow
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) in construing “flexible.”
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`But the Supreme Court has upheld the applicability of BRI in inter-partes
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`review proceedings, relying in part on the same standard being applicable during
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`patent examination. See, Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131,
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`2146 (2016). The BRI standard can properly lead to a substantially broader claim
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`interpretation than ordinary meaning (the starting point for a construction under
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`Phillips). See, e.g., PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
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`815 F.3d 734, 741-743 (Fed. Cir. 2015) (holding that the Board’s broader
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`interpretation of “continuity member” was correct under Cuozzo as the BRI in light
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`of the subject patent’s specification, even though the ordinary meaning of the term
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`under Phillips would have been significantly narrower).
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`Conflating BRI and ordinary meaning leads Ironburg to allege that Valve
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`“studiously avoided” flexibility in its petition. Paper 51 at 4. But Valve expressly,
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`broadly, and reasonably interpreted flexible “to mean that the elongated member
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`can be moved to a biased position by a user’s finger.” Paper 4 at 14. Indeed, the
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`teachings of the ’525 specification support such a displaceability interpretation of
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`IPR2016-00948 REPLY RE: REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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`“flexible” in this case. See, Request for Rehearing (Paper 45) at 3-4, quoting the
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`’525 Patent at 1:59-61, and at 4:17-20. Consistently, the ’525 patent expressly
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`defines “resilient” as returning “to an unbiased position” rather than returning to an
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`unbiased shape. ’525 Patent at 3:33-35.
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`Hence, Valve was never legally required to recite the well-known ordinary
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`meaning of “flexible” in its original petition, and it was proper – and correct – for
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`Valve to instead expressly assume a construction that corresponded to BRI. It was
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`also proper for Valve’s subsequent Reply (Paper 23) to react to arguments raised in
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`the Patent Owner’s Response (Paper 19) leveraging the Board’s sua sponte
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`adoption of a later-identified dictionary definition (Ex. 3001). See, 37 CFR
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`§ 42.23(b). Tellingly, only after the Board formulated its own narrower
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`construction of “flexible” did the Patent Owner first allege deficiency in the
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`petition’s showing of how Enright met that claim term. See, Paper 19 at 39-41.
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`The Petitioner respectfully submits that the Board’s construction of
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`“flexible,” which both parties recognize as an “ordinary meaning” (see, Paper 51,
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`at 1-2, and 5), was in error because it is narrower than BRI in this case. See,
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`Request for Rehearing (Paper 45) at 3-5. Even if the Board decides to maintain its
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`construction of “flexible,” the Petitioner requests that the Board reach the merits of
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`the arguments (under the Board’s construction) in section IV.D. of the Petitioner’s
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`Reply (Paper 23, pages 14-15). See, Request for Rehearing (Paper 45) at 8-9.
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`IPR2016-00948 REPLY RE: REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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`Dated: 08 January 2018
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`Respectfully submitted,
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
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`IPR2016-00948 REPLY RE: REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on 2018-01-08 a true copy of the foregoing
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`PETITIONER’S REPLY TO THE PATENT OWNER RESPONSE was served on
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`the Patent Owner electronically via PTAB E2E to:
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`Robert Becker, Reg. No. 37,778
`Manatt, Phelps & Phillips, LLP
`1841 Page Mill Road, Suite 200
`Palo Alto, CA 94304
`Tel: (650) 812-1370
`Fax: (650) 461-0312
`RBecker@manatt.com
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`Ehab M. Samuel, Reg. No. 57,905
`Manatt, Phelps & Phillips, LLP
`11355 W. Olympic Blvd.
`Los Angeles, CA 90064
`Tel: (310) 312-4000
`Fax: (310) 312-4224
`ESamuel-PTAB@manatt.com
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`Yasser El-Gamal, Reg. No. 45,339
`Manatt, Phelps & Phillips, LLP
`695 Town Center Drive, 14th Floor
`Costa Mesa, CA 92626
`Tel: (714) 371-2500
`Fax: (714) 371-2550
`YEIGamal@manatt.com
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`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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`Dated: 08 January 2018
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
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`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
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`Attorneys for Petitioner, Valve Corporation
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`IPR2016-00948 REPLY RE: REQUEST FOR REHEARING UNDER 37 CFR § 42.71(d)
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