UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`VALVE CORPORATION
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`_______________________
`
`Case IPR2016-00948
`Patent 8,641,525
`_______________________
`
`
`
`DECLARATION OF DR. GLEN STEVICK
`
`IN SUPPORT OF THE PATENT OWNER RESPONSE
`
`IRONBURG EX2002
`
`
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`VALVE CORPORATION
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`_______________________
`
`Case IPR2016-00948
`Patent 8,641,525
`_______________________
`
`
`
`DECLARATION OF DR. GLEN STEVICK
`
`IN SUPPORT OF THE PATENT OWNER RESPONSE
`
`IRONBURG EX2002
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`IV.
`
`
`V.
`
`
`
`
`
`Page
`INTRODUCTION ............................................................................................................. 1
`QUALIFICATION ............................................................................................................ 1
`INFORMATION CONSIDERED ..................................................................................... 5
`OVERVIEW OF THE LAW USED FOR THIS DECLARATION .................................. 6
`A. CLAIM CONSTRUCTION LAW ............................................................................... 7
`B. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ................................. 8
`CLAIM CONSTRUCTIONS FOR THE ‘525 PATENT .................................................. 9
`A. “HAND HELD CONTROLLER” .............................................................................. 9
`B. “LOCATED ON THE BACK OF THE CONTROLLER” ........................................ 12
`C. “RECESS” .................................................................................................................. 12
`D. “ELONGATE MEMBERS CONVERGE TOWARDS THE FRONT END OF THE
`CONTROLLER WITH RESPECT TO ONE ANOTHER” ............................................ 16
`THE TOSAKI REFERENCE (EX1002) ........................................................................ 19
`VI.
`VII. ENRIGHT (EX1003) IN VIEW OF TOSAKI (EX1002) ............................................... 22
`VIII. ENRIGHT (EX1003) IN VIEW OF TOSAKI (EX1002) AND OELSCH (EX1006) .... 33
`IX.
`REPRESENTATIONS .................................................................................................... 36
`
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`-1-
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`IRONBURG EX2002
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`IPR2016-00948
`Patent No. 8,641,525
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`I.
`
`I, Dr. Glen Stevick, declare and state as follows:
`
`INTRODUCTION
`1.
`
`I have been retained by Irongburg Inventions Ltd. (“Ironburg” or
`
`“Petitioner”) to consider the merits of Valve Corporation’s (“Valve”)
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`unpatentability claims set forth in the above-captioned Petition with regard
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`to United States Patent No. 8,641,525 (“the ‘525 patent”). I have personal
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`knowledge of the facts and opinions stated in this Declaration, and am
`
`competent to testify thereto.
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`2. My company, Berkeley Engineering And Research, Inc. (BEAR) is
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`being compensated for my time at my standard consulting rate of $450.00
`
`per hour. My compensation is not contingent upon the substance of my
`
`declaration, any statements or opinions made, or the outcome of this matter.
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`II. QUALIFICATIONS
`3.
`I understand that a true and accurate copy of my current curriculum
`
`vitae has been identified and will be filed by Ironburg as Exhibit 2003.
`
`Several of the details concerning my educational background, work
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`experience, academic appointments, honors, awards, and publications are
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`further discussed below.
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`1
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`IRONBURG EX2002
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`IPR2016-00948
`Patent No. 8,641,525
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`4.
`
`I have over 25 years experience in the general field of mechanical
`
`engineering and related engineering disciplines. My expertise includes years
`
`of experience in failure analysis and design of structures, consumer
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`products, industrial equipment and medical devices, including specifically
`
`mechanical-electrical systems, aortic, hip and knee implants, turbines and
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`reciprocating engines, automotive and aircraft components; structural
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`dynamics, electronic control systems, material behavior, heat transfer and
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`structure/fluid interaction.
`
`5.
`
`I received a Bachelors of Science degree in Mechanical Engineering
`
`from Michigan Technological University in 1980 and a Masters of Science
`
`degree in Mechanical Engineering from the University of California,
`
`Berkeley in 1981.
`
`6.
`
`I worked for Chevron Corporation during and after my time at
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`Michigan Technological University and U.C. Berkeley while working
`
`toward my Master’s degree.
`
`7.
`
`In 1989, I returned to the University of California, Berkeley and
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`started Berkeley Engineering And Research, Inc. (“BEAR”). BEAR
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`provides mechanical and electrical engineering services ranging from project
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`analysis and consultation to accident investigations and expert testimony.
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`2
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`8.
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`I completed my Ph.D. in Mechanical Engineering from the University
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`of California, Berkeley in 1993 majoring in material behavior and design,
`
`and minoring in structural analysis and dynamics and controls (electronic
`
`controls).
`
`9.
`
`I have more than 30 years of experience as a mechanical engineer,
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`which began with nearly a decade working for Chevron as a project engineer
`
`and engineering mechanics specialist.
`
`10.
`
`I am a registered Mechanical Engineer in California, Texas, Louisiana
`
`and Nevada and a member of the American Society of Mechanical
`
`Engineers.
`
`11. My experience with Chevron related to many mechanical and
`
`electrical engineering methods and technologies used to control downstream
`
`process equipment, upstream oil and gas equipment, surface processing
`
`equipment and well-control equipment such as blowout preventers. I also
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`provided advice and guidance concerning off-shore platforms in the Gulf of
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`Mexico and the North Sea, including the avoidance of structural vibrations,
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`the calculation of crack growth rates in platform structures, and the
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`determination of remaining life for the platforms when operating in offshore
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`environments. Assessment of these devices and structures involved detailed
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`stress analysis and fracture mechanics calculations.
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`12. Since 1986, I have also worked as a consulting engineer through
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`BEAR, and have provided engineering services related to various
`
`mechanical and electrical devices and systems.
`
`13.
`
`In addition, I have taught mechanical engineering at U.C. Berkeley,
`
`serving as an instructor for the department’s senior design course,
`
`“Mechanical Engineering Design,” and have conducted various lectures on
`
`mechanical engineering topics.
`
`14. Currently, I serve as a mechanical engineering consultant at BEAR,
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`specializing in failure analysis and design of dynamic structures, industrial
`
`equipment and consumer products, including mechanical and electrical
`
`systems.
`
`15.
`
`I am an author of numerous mechanical engineering publications and
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`reports listed in my Curriculum Vitae attached as Exhibit 2003, as well as
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`the co-inventor of U.S. Patent No. 6,119,461, entitled “Thermal-Electric
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`Container,” U.S. Patent No. 7,620,209, entitled “Method and Apparatus for
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`Dynamic Space-Time Imaging System,” and U.S. Patent No. 8,395,376,
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`entitled “Method and Apparatus for Magnetic Response Imaging System.
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`4
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`16.
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`I am currently a member of American Society of Testing and
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`Materials (ASTM) Committee E05 on Fire Standards, Committee F15 on
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`Consumer Products and Committee E08 on Fatigue and Fracture.
`
`17.
`
`I have led engineering teams at BEAR designing robotic inspection
`
`devices for piping systems, powerline detection (magnetic and electric field)
`
`devices for cranes and manlifts, microwave cauterizing forceps for surgery
`
`that detect and suppress spark development by modifying controller output,
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`and designing and implementing controller devices for testing devices. I
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`have also analyzed the failure of controllers, similar to the subject controller,
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`for a wide variety of equipment, including manlifts, automated welders and
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`cranes.
`
`III.
`
`INFORMATION CONSIDERED
`18.
`
`I have reviewed and am familiar with the ‘525 patent specification, its
`
`claims, and its file history.
`
`19.
`
`I have reviewed and am familiar with the Petition for Inter Partes
`
`Review of the ‘525 patent filed by Valve on May 2, 2016 (the “Petition”), as
`
`well as the April 19, 2016 Declaration of Dr. David Rempel filed in support
`
`thereof (the “Rempel Declaration”).
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`20.
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`I have reviewed and am familiar with the references cited in the
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`Petition. I refer to the following exhibits cited in the Inter Partes Review as
`
`set forth in the table below:
`
`
`
`Exhibit No. Reference
`1001
`U.S. Patent No. 8,641,525 (“the ‘525 Patent”)
`1002
`U.S. Patent No. 5,989,123 (“Tosaki”)
`1003
`US Publ. No. 20100073283 (“Enright”)
`1006
`US Patent No. 4,032,728 (“Oelsch”)
`1008
`Rempel Declaration
`2001
`Prosecution History of the ‘525 Patent
`2004
`Excerpts from MERRIAM-WEBSTER’S COLLEGIATE
`DICTIONARY (10th ed. 1998).
`
`2005
`
`2007
`
`
`21.
`
`Excerpts from WEBSTER’S NEW AMERICAN
`DICTIONARY (1995).
`
`U.S. Patent 7,859,514 (“Park”)
`
`21.
`
`I confirm that to the best of my knowledge that the above-noted
`
`dictionaries cited in my declaration - Exhibits 2004 and 2005 - are true and
`
`accurate copies of what they purport to be, and that an expert in the field
`
`would reasonably rely on them.
`
`22. Unless stated otherwise, I agree and apply the claim constructions set
`
`forth in the Institution Decision in this declaration. Paper 10.
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`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`23. While considering the ‘525 Patent and stating my opinions, I am
`
`relying on legal principles that have been explained to me by counsel.
`
`A. Claim Construction Law
`
`24.
`
`I have been instructed by counsel on the law regarding claim
`
`construction and patent claims, and understand that a patent may include two
`
`types of claims - independent claims and dependent claims. An independent
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`claim stands alone and includes only the features it recites. A dependent
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`claim can depend from an independent claim or another dependent claim. I
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`understand that a dependent claim includes all the features that it recites in
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`addition to all of the features recited in the claim from which it depends.
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`25.
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`I understand that in this inter partes review the claims must be given
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`their broadest reasonable interpretation, but that interpretation must be
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`consistent with the specification.
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`26.
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`I understand that claim terms are given their plain and ordinary
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`meaning as would be understood by a person of ordinary skill in the art,
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`unless the inventor provides a special meaning for a term.
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`27.
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`I understand that if there are specific statements in the specification
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`that define the invention, those statements are strong evidence of a definition
`
`for a term.
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`28.
`
`In this declaration, I have used the Broadest Reasonable Interpretation
`
`(“BRI”) standard when interpreting the claim terms.
`
`B. Person of Ordinary Skill in the Art (“POSITA”)
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`29.
`
`I understand that a person having ordinary skill in the art is a
`
`hypothetical person who is used to analyze the prior art without the benefit
`
`of hindsight. I further understand that a person of ordinary skill in the art is
`
`presumed to be one who thinks along the lines of conventional wisdom in
`
`the art and is not one who undertakes to innovate, whether by extraordinary
`
`insights or by patient and often expensive systematic research.
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`30.
`
`I have been asked to offer my opinion regarding the level of ordinary
`
`skill in the art with respect to the ’525 Patent. Based on my review of the
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`patent and the relevant art, my opinion is that the level of ordinary skill in
`
`the art relating to the ’525 Patent is low, specifically that of a person with no
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`more than a year of experience or other training in controller assembly or
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`tooling.
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`31. My opinions regarding the level of ordinary skill in the art are based
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`on my review of the ‘525 Patent, my education, my experience in the field of
`
`mechanical engineering, and my related experience.
`
`32.
`
`I meet these criteria and consider myself a person with at least
`
`ordinary skill in the art pertaining to the patent. I would have been such a
`
`person at the time of invention of the patent. I have supervised those with
`
`ordinary skill in the art and I am therefore familiar with their qualifications.
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`33.
`
`I also understand that the Rempel Declaration (¶ 11 at p. 2) asserts
`
`that a person of ordinary skill in the art of the ‘525 Patent is “designer of
`
`commercial video game controllers,” that [n]o collegiate education was
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`required to fully understand the particular subject matter of the ‘525 patent
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`at the time of its filing, or today” and that “one of ordinary skill in the video
`
`game controller design art when the ‘525 patent was filed would have
`
`typically had a bachelor’s degree in an industrial design or engineering field,
`
`and approximately two years of relevant experience.”
`
`34. My statements and opinions set forth herein are true and correct
`
`regardless of which of these two descriptions of a person of ordinary skill in
`
`the art is ultimately adopted.
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`V. CLAIM CONSTRUCTIONS FOR THE ‘525 PATENT
`A. “Hand Held Controller”
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`35.
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`Independent claims 1 and 20 of the ‘525 Patent recite the term “hand
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`held controller” in the preamble.
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`36.
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`I understand that a preamble will not be seen as limiting unless it
`
`breathes life and meaning into the claim. I also understand that the preamble
`
`can be limiting when elements in the preamble serve as an antecedent basis
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`for limitations in the claim body.
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`37.
`
`It is my opinion that the term “hand held controller” breathes life and
`
`meaning into the claim, and serves as an antecedent basis for the term “the
`
`controller” in independent claims 1 and 20, and therefore, I provide the
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`following construction.
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`38. The definition of “hand held,” as defined in MERRIAM-
`
`WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1998) is “held in the
`
`hand; esp to be operated while being held in the hand.” EX2004, p. 526.
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`39. The notion that the hand held controller is held in and operate by the
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`user’s hands is further supported in the claims, written description and the
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`drawings.
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`40. Figures 2 and 3 of the ‘525 are reproduced below.
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`10
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`41. Notably, the express language of claims 1 and 20 also recite that “the
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`controller is shaped to be held in the hand of a user such that the user’s
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`thumb is positioned to operate the front control.”
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`42. The specification repeatedly refers to the “hand held controller” as
`
`“the present invention” and that the controller is shaped to be held in and
`
`operated by both hands of the user. For example, the specification states:
`
` “Conventional controllers for most game consoles are intended to be held
`and operated by the user using both hands”. EX1001, 1:8-9.
`
`
` “The controller of the present invention may be very similar to
`controllers according to the prior art. In particular, the outer case of the
`controller … may be the same as a controller according to the prior art, as
`described above and as illustrated in the figures.” Id., 2:15-19.
`
` “An improved controller (10) for a game console that is intended to be
`held by a user in both hands … and has two additional controls (11)
`located on the back in positions to be operated by the middle fingers of a
`user.” Id., Abstract.
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` “The controller is shaped to be held in both hands of the user such that
`the user's thumbs are positioned to operate controls located on the front
`of the controller and the user's index fingers are positioned to operate
`controls located on the top edge of the controller.” Id., 1:52-56.
`
`48. Having studied the ‘525 Patent, the file history, and based on my
`
`experience, I believe that a POSITA would understand that the claimed
`
`“hand held controller” is “a controller that is held in and operated by both
`
`hands of a user.”
`
`B. “Located On The Back Of The Controller”
`
`49.
`
` Independent claims 1 and 20 recite the phrase “located on the back of
`
`the controller.”
`
`50. Given the proposed construction for “hand held controller” above, it is
`
`my opinion that the phrase “located on the back of the controller” means
`
`“located on the back of the hand-held controller that is held in and
`
`operated by both hands of a user.”
`
`C. “Recess”
`
`51. Claim 7 of the ‘525 Patent recites that the back of the hand-held
`
`controller has elongate members “mounted within a recess located in the
`
`case of the controller.”
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`52. Claim 8 of the ‘525 Patent recites that “each elongate member
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`comprises an outermost surface which is disposed in closer proximity to the
`
`outermost surface of the controller such that a user’s finger may be received
`
`in said respective recess.”
`
`53.
`
`I understand that Petitioner sought to construe “recess” as “any region
`
`between a first and second handle that is recessed towards the front of the
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`video game controller.” Pet. at 15.
`
`54.
`
`I also understand that the Institution Decision rejected Petitioner’s
`
`proposed construction and explained that this term is not “limited to a recess
`
`towards the front of the controller.” Paper 10 at 15.
`
`55.
`
`I agree with the Institution Decision and seek to further clarify the
`
`meaning of the term “recess.”
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`56. The definition of “recess,” as defined in WEBSTER’S NEW
`
`AMERICAN DICTIONARY (1995), is “an indentation in a line or surface
`
`(as an alcove in a room).” EX2005, p. 435.
`
`57.
`
`I have reviewed the ‘525 Patent and believe that the specification
`
`further informs the meaning of the term “recess” to a POSITA.
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`58. Based on the claims, written description and drawings of the ‘525
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`Patent, a POSITA would understand that the “recess” is for receiving the
`
`user’s fingers.
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`59. Notably, the express language of claim 8 requires that “a user’s finger
`
`may be received in said respective recess.”
`
`60. Although claim 8 expressly states that the “recess” is for “receiving a
`
`user’s finger,” it is my opinion that this serves to confirm what is explicitly
`
`and/or implicitly defined for this claim term in the specification.
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`61. The specification explains that the hand-held controller of the present
`
`invention has elongate members “mounted within a respective recess located
`
`in the case of the controller” and “comprises an outermost surface which is
`
`disposed in close proximity to the outermost surface of the controller such
`
`that the user’s finger may be received in said respective recess.” EX1001,
`
`1:62-67.
`
`62. Further, the ‘525 Patent states that the “controller of the present
`
`invention is particularly advantageous over controllers according to the prior
`
`art as it comprises on or more additional controls located on the back of the
`
`controller in a position to be operated by middle fingers of a user.” Id., 2:21-
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`25.
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`63. The ‘525 Patent also describes that the “paddles 11 are mounted
`
`within recesses located on the case of the controller 10; and are disposed in
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`close proximity to the outer surface of the controller body. In this way a
`
`user may engage the paddles 11 with the tips of the fingers, preferably the
`
`middle fingers, without compromising the user’s grip on the controller 10.
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`Id., 3:39-44.
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`64. Likewise, Figure 3 shows a recess on the back of the hand-held
`
`controller that joins the first handle and the second handle for receiving a
`
`user’s fingers when the user holds the first handle and the second handle.
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`(Id., Fig. 3.) This is shown in the annotated Figure 3 below:
`
`Second Handle
`
` Recess
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`15
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`
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`First Handle
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`65. Thus, in the context of the ‘525 Patent as a whole, I believe that a
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`POSITA would understand that the hand-held controller of the present
`
`invention has an indentation in the back surface of the hand held controller
`
`that joins the first handle and the second handle and that this indentation
`
`receives a user’s fingers when the user holds the first handle and the second
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`handle.
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`66. Further, based on the teachings of the ‘525 Patent, a POSITA would
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`also understand that the patentee disavowed claim scope on any recess or
`
`any indentation other than that for receiving a user’s fingers at the back of
`
`the hand-held controller. This is true because no other “recess” was
`
`discussed in the context of the disclosed “present invention.”
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`67. Thus, based on the specification of the ‘525 Patent, I believe the term
`
`“recess” means “an indentation in the back surface of the hand-held
`
`controller that joins the first handle and the second handle for receiving a
`
`user’s fingers.”
`
`D. “Elongate Members Converge Towards the Front End of The
`Controller with Respect to One Another”
`68. Claim 13 recites that the “elongate members converge towards the
`
`front end of the controller with respect to one another.”
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`69. The Institution Decision requested “that the parties further address
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`proper interpretation of claim 13 at trial.” Paper 10 at 9. In this regard, I
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`offer the following interpretation and construction.
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`70. As an initial matter, the Institution Decision stated that the “claims are
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`not limited to a specific contour of the surface of the back of the controller.”
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`Paper 10 at 15.
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`71.
`
`I agree that the back of the controller is not limited to a specific
`
`contour.
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`72. For purposes of claim 13, it is my opinion that the elongate members
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`not only converge with respect to one another, but also do so towards the
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`front (or front end) of the controller.
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`73. Claim 13 is supported in the specification. Specifically, the written
`
`description states that:
`
`In another embodiment, the elongate members converge
`towards the front end of the controller with respect to one
`another. EX1001, 2:5-7.
`
`74.
`
`I believe that a POSITA would readily understand that in order to
`
`converge, the elongate members must converge toward each other at one end
`
`(and not be parallel to one another).
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`75. For example, elongate members converge when they are closer
`
`together near the top of the controller in a “snow-plow” configuration.
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`76.
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`I believe that a POSITA would also understand based on the claim
`
`language and the specification that in order to converge towards the front
`
`end of the controller, the elongate members must also be angled or inclined
`
`such they converge toward the front of the controller.
`
`77. For example, the elongate members converge towards the front of the
`
`controller when they flare away (from a plane of the front of the controller)
`
`from the top of the elongate members to the bottom.
`
`78. This is readily apparent from the orientation and angular positioning
`
`of the elongate members in FIG. 3 of the ‘525 Patent. As shown in the
`
`annotated figure below, the red dashed lines (representing the angular
`
`positioning of the elongate members along their respective axis) converge
`
`towards the front (which is on the z-y plane) and intersects the x-axis at x1
`
`and at an angle θ.
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`79. Thus, based on the express claim language and the specification of the
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`‘525 Patent, I believe that the proper construction for the phrase “elongate
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`members converge towards the front end of the controller with respect to
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`one another” is “elongate members converge towards one another and
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`toward the front of the controller.” This allows for a natural sweep of the
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`fingers to continually contact the paddle controls.
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`VI. THE TOSAKI REFERENCE (EX1002)
`80. Tosaki describes a steering wheel control apparatus with a
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`fixed/thigh-held base casing to allow rotation of a steering wheel against the
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`base. The steering wheel includes gearshift levers that are positioned and
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`operated through arched openings. The steering wheel is integrally fixed to
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`and rotatably supported by a steering shaft. The rotation of the steering
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`wheel triggers the mechanical rotation of a control disk having a plurality of
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`circumferential holes passing through a light detector photodiode to detect
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`the rotational direction and angle of the steering wheel.
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`81.
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`In light of the teachings of Tosaki, it is my opinion that a POSITA
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`would not consider Tosaki’s fixed/thigh-held control apparatus to be a hand-
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`held controller.
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`82. Tosaki’s Fig. 10 reproduced below illustrates a side view of the
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`steering wheel control apparatus.
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`83. As shown, the “back of the steering wheel control apparatus” is
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`bottom plate 11 of the base casing 10. EX1002, 8:55-56.
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`84.
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`I understand that Petitioner and the Rempel Declaration took the
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`position that the back of the steering wheel is the back of the controller. I
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`disagree with their conclusion.
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`85. Based on my experience, at the time of the priority filing date of the
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`‘525 Patent (June 17, 2011), there was no “steering wheel control apparatus”
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`in the art where the back of the steering wheel was the back of the apparatus
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`as opposed to the back of the steering wheel itself.
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`86. Further, neither Petitioner nor the Rempel Declaration offers any
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`evidence to support the allegation that the back of the steering wheel is the
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`alleged back of the controller.
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`87. The back of the steering wheel in Tosaki is not the back of the
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`steering wheel control apparatus.
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`88.
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`I understand that Petitioner alleges that Tosaki’s gearshift levers
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`converge towards the front end of the controller. I disagree with Petitioner’s
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`conclusion because the gearshift levers are allegedly on the rear side of the
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`steering wheel and are parallel to the front, and therefore, could not possibly
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`converge to the front or front end.
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`89. Tosaki does not meet the limitations of claim 13 because Tosaki’s
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`gearshift levers are not oriented at an incline such that they converge toward
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`the front of the controller and each other.
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`90. Rather, as Petitioner notes in connection with claim 17, Tosaki’s
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`gearshift levers 125 and 126 are parallel to the front end 120a, as shown in
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`the cross-sectional view of the steering wheel reproduced below.
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`91. Since the gearshift levers are parallel to the front, they could not
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`possibly converge from the back to the front or front end because they do
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`not flare out from the back to the front of the controller. As such, a POSITA
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`would not consider Tosaki’s gearshift levers “elongate members [that]
`
`converge towards one another and toward the front of the controller.”
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`VII. ENRIGHT (EX1003) IN VIEW OF TOSAKI (EX1002)
`92. Enright is directed to a user-operated controller device with mode
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`switches on the underside of the controller to switch between a position
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`mode and a discrete mode.
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`
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`93. Based on my review of the prosecution history of the ‘525 Patent, it is
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`my opinion that Enright is merely cumulative to prior art previously
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`considered by the Examiner. For example, during the prosecution of the
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`‘525 Patent parent application, the Examiner cited to US Patent 7,859,514
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`(“Park reference”) that discloses a hand-operable controller with a plurality
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`of controls on the front and rear faces. (EX2006, p. 85; EX2007, FIGS. 1-2.)
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`94. Thus, in my opinion, Enright adds nothing new to what has already
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`been considered by the Examiner.
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`95. Enright does not disclose, teach or suggest the “inherently resilient
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`and flexible” back controls, as required in independent claim 1.
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`96. The Institution Decision concluded that the BRI for an elongate
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`member “inherently resilient and flexible” is “that it may be bent or flexed
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`by a load, such as that from a user’s finger, and will then return to its
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`unbiased position when not under load.” Paper 10 at 14. I agree with this
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`construction and apply it to Enright below.
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`97.
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`I understand that Petitioner and the Rempel Declaration allege that
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`Enright discloses mode switches that are inherently resilient and flexible.
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`98. Specifically, Petitioner states that:
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`Enright discloses that the elongate members (the buttons of
`mode switches 32, 34) are inherently resilient and flexible at
`paragraph [0035], which states “the user may quickly depress
`the mode switch 32, 34 when he or she desires to emulate a
`button press of X, Y, A or B without having to move his thumb
`off of the thumbstick, and then return to normal by releasing the
`mode switch when desired.” Pet. 34-35)
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`99. Likewise, the Rempel Declaration relies on the same excerpt from
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`Enright to suggest that the limitation of “inherently resilient and flexible” is
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`met.
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`100. I disagree with Petitioner and the Rempel Declaration. Nothing in this
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`quotation of Enright teaches or suggests to a POSITA that the mode
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`switches “may be bent or flexed by a load,” as required under the Board’s
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`construction.
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`101. A POSITA would understand that it merely suggests, like other
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`buttons, that the mode switches move to a biased position by a user’s finger,
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`and returns to an unbiased position when not under load.
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`102. Further, in my opinion, there is no motivation to combine Enright
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`with Tosaki. There are several reasons that form the basis of my opinion
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`that there is no motivation to combine, which are explained below.
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`103. First, it is my opinion that Tosaki teaches away from combining with
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`Enright because the gearshift levers are positioned and operated through
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`arched openings.
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`104. Tosaki states that “Gearshift levers 125 and 126 that control gears
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`during a car racing game are provided on the rear side of the steering wheel
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`14, so that the operating portion for each of the gearshift levers 125 and 126
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`is positioned in an arched opening 14e that lies between the steering wheel
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`center portion 14d and the hand grip 14a.” EX1002, 9:1-6 (emphasis added).
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`105. In my opinion, this statement would discourage a POSITA from using
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`Tosaki’s gearshift levers in Enright because it necessitates positioning and
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`operating the gearshift levers in arched openings.
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`106. These arched openings would take away from the limited available
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`space where existing buttons and thumbstick controls are positioned on the
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`front of the controller.
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`107. If the gearshift levers are positioned so as to extend “substantially the
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`full distance between the top edge and the bottom edge,” as required in
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`Claim 1, then there would essentially be no space left to keep the existing
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`front control buttons and thumbstick controls.
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`108. This is clearly illustrated in my annotated figure below, which shows
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`that combining the gearshift levers (yellow) with the arched openings
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`(orange) would complicate and disrupt the Enright controller design, and
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`discourage a POSITA from making such suggested combination.
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`109. Further, a POSITA would not want to have openings in the hand-held
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`controllers because it would impede the interior wiring and disrupt the
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`circuit board design. As shown below, the interior circuit board is occupied
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`with several electronic components and conductive tracks. By adding
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`arched openings in the controller and the circuit board, many of the internal
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`electronic components and conductive tracks would need to be removed
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`and/or relocated in the already
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