IPR2016-00948 for U.S. Patent 8,641,525
`
`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
`___________________
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`I. 
`
`II. 
`
`IPR2016-00948 for U.S. Patent 8,641,525
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1 
`
`Claim Construction .......................................................................................... 7 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Relevant Law ......................................................................................... 7 
`
`Technology Overview And State Of The Art ....................................... 7 
`
`All Intrinsic and Extrinsic Evidence Demonstrates The
`Construction Of A “Hand held Controller” Must Be “A
`Controller That Is Held In And Operated By Both Hands Of A
`User” ...................................................................................................... 9 
`
`“Located On The Back Of The Controller” Means “Located On
`The Back Of The Hand-Held Controller That Is Held In And
`Operated By A User Using Both Hands” ............................................ 14 
`
`“A Recess” Is Properly Construed As “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” ............................................................................................... 15 
`
`“Elongate Members Converge Towards The Front End Of The
`Controller With Respect To One Another” Means “Elongate
`Members Converge Towards One Another And Towards The
`Front Of The Controller” ..................................................................... 20 
`
`III.  Tosaki Does Not Anticipate Claims 1, 6, 13, 14, 16, 17, 19, And 20
`(Ground A) ............................................................................................................... 23 
`
`A. 
`
`B. 
`
`Tosaki Does Not Disclose A Hand-held Controller That Is Held
`In And Operated By Both Hands Of A User (Claims 1, 6, 13,
`14, 16, 17, 19, And 20) ........................................................................ 23 
`
`Tosaki’s “Gearshift Levers” On The Rear Side Of The
`“Steering Wheel” Do Not Anticipate The Claimed Elongate
`Members “Located On The Back Of The Controller” (Claims 1,
`6, 13, 14, 16, 17, 19, And 20) .............................................................. 27 
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`C. 
`
`Tosaki Does Not Disclose Elongate Members Converge
`Towards The Front End Of The Controller With Respect To
`One Another (Claim 13) ...................................................................... 31 
`
`IV.  The Proffered Combination Of Enright in view of Tosaki Does Not
`Render Obvious Any Of Claims 1-11, 13, 16, 17, and 20 (Ground B) ................... 32 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`Legal Standard For Combining References ........................................ 32 
`
`Level of Ordinary Skill ....................................................................... 34 
`
`1. 
`
`2. 
`
`Petitioner Conceded A Lower Level Of Ordinary Skill ........... 36 
`
`Petitioner Failed To Show That UK Examiner Qualifies
`As A POSITA Under Dr. Rempel’s Proposed Minimum
`Qualifications ............................................................................ 37 
`
`Petitioner Cherry-Picks Teachings From Enright And Tosaki
`Without Regard To How Such Features Would Actually Be
`Combined ............................................................................................ 38 
`
`Enright Does Not Disclose “Inherently Resilient And Flexible”
`Back Controls (Claim 1) ..................................................................... 39 
`
`Petitioner Cherry-Picks Teachings From Enright And Tosaki
`Without Regard To How Such Features Would Actually Be
`Combined ............................................................................................ 41 
`
`1.
`
`2.
`
`3.
`
`4.
`
`Tosaki Teaches Away From Combining With Enright
`Because The Gearshift Levers Are Positioned And
`Operated Through An Arched Openings .................................. 43 
`
`Petitioner Misrepresents The References and Fails To
`Explain How To Implement The Gearshift Levers Of
`Tosaki With The Enright Controller ......................................... 45 
`
`Tosaki’s Fixed Thigh-Held Steering Wheel Control
`Apparatus Is Non-Analogous Art ............................................. 47 
`
`Petitioner’s Obviousness Argument To Modify Enright
`In View Of Tosaki Is Only Driven By Impermissible
`Hindsight ................................................................................... 49 
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`IPR2016-00948 for U.S. Patent 8,641,525
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`F.
`
`Combining Enright With Tosaki Would Change Enright’s
`Principle Of Operation And Render It Inoperable Device For Its
`Intended Purpose ................................................................................. 52
`
`1. 
`
`2.
`
`3. 
`
`Petitioner Offers No Proof That The Alleged
`Combination Would Work ........................................................ 52 
`
`Tosaki’s Gearshift Levers In Arched Openings Would
`Change Enright’s Principle of Operation .................................. 53 
`
`Tosaki’s Gearshift Levers In Arched Openings Would
`Render Enright Inoperable For Its Intended Purpose ............... 55 
`
`G.
`
`Petitioner Improperly Conflates Enright’s “Mode Switches”
`With The Claimed “Paddle Levers” In Contradiction Of The
`Board’s Claim Construction (Claim 16) ............................................. 57
`
`V. 
`The Proffered Combination Of Enright in view of Tosaki and Oelsch
`Does Not Render Obvious Claim 18 (Ground C) .................................................... 58 
`
`VI.  Conclusion ..................................................................................................... 63 
`
` 
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`IPR2016-00948 for U.S. Patent 8,641,525
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page
`
` Apotex Inc. v. Wyeth LLC,
`IPR2015-00873, Paper 8, slip op at 11-12 (September 16, 2015) ...................... 63
`AVX Corp. v. Greatbatch Ltd.,
`IPR2015-00710, Paper 9 (August 12, 2015) ...................................................... 16
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 32
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 39
`Circuit Check Inc. v. QXQ Inc.,
`795 F.3d 1331 (Fed. Cir. 2015) .......................................................................... 47
`Connell v. Sears, Roebuck & Co.,
`722 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 30
`Cuozzo Speed Techs., LLC v. Lee,
`136 S.Ct. 2131 (2016) ........................................................................................... 7
`Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 53
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .......................................................................... 10
`Endo Pharmaceuticals v. Depomed,
`IPR2014-00652, Paper 12 at 10 (Sep. 29, 2014) ................................................ 39
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 at 9 (PTAB July 31, 2013) ....................................... 34
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 47
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ...................................................................... 33, 53
`In re Gordon,
`733 F.3d at 902 ................................................................................................... 55
`In re Irani,
`427 F.2d 806 (CCPA 1970) ................................................................................ 50
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`In re Kahn,
`441 F3.d 977, 988 (Fed. Cir. 2006) .................................................................... 33
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 59, 63
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 53
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ................................................................................ 33
`In re Royka,
`490 F.2d 981 (CCPA 1974) ................................................................................ 39
`In re Urbanski,
`809 F.3d 1237 (Fed. Cir. 2016) .......................................................................... 52
`In re Warner,
`379 F.2d 1011 (C.C.P.A. 1967) .......................................................................... 41
`In re Wertheim,
`541 F.2d 257 (CCPA 1976) ................................................................................ 10
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol
`Ltd.,
`IPR2014-00309, Paper 83, slip op. at 34, n. 17 (PTAB Mar. 23,
`2014) ................................................................................................................... 35
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................... 33, 34
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .......................................................................... 52
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026, Paper 17 at 19 (Dec. 21, 2012) ................................................ 39
`Mintz v. Dietz and Watson,
`679 F.3d 1372 (Fed. Cir. 2012) .................................................................... 50, 51
`Nike Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .......................................................................... 60
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) .............................................................................. 7
`Pacing Techs. LLC. v. Garmin Intern. Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) .................................................................... 10, 11
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`Plas-Pak Industries, Inc. v Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) ................................................ 33, 54, 55, 56
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2014-00518, Paper 47, slip op. at 17 (Sep. 17, 2015) .................................. 36
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00092, Paper 21 at 19, 28 (PTAB May 24, 2013) .............................. 34
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`IPR 2015-00951, Paper 8, slip. Op. at 15, 17 (September 17, 2015) ................. 63
`United States v. Adams,
`383 U.S. 39 (1966) .............................................................................................. 34
`STATUTES
`37 C.F.R. § 42.65(a) ............................................................................... 39, 42, 44, 45
`MPEP § 2143.01 ...................................................................................................... 33
`UK Patent Law ......................................................................................................... 38
`US Patent Law ......................................................................................................... 38
`OTHER AUTHORITIES
`MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY
`(10th ed. 1998) .................................................................................................... 14
`WEBSTER’S NEW AMERICAN DICTIONARY (1995) ..................................... 16
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`EXHIBIT LIST
`
`Exhibit No.
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`
`Description
`Patent 8,641,525 Prosecution History.
`Declaration of Dr. Glen Stevick.
`C/V of Dr. Glen Stevick.
`Excerpts from MERRIAM-WEBSTER’S COLLEGIATE
`DICTIONARY (10th ed. 1998).
`Excerpts from WEBSTER’S NEW AMERICAN
`DICTIONARY (1995).
`Declaration of Nicoleta Cosereanu
`U.S. Patent 7,859,514 (“Park”)
`LinkedIn Page of Simon Burgess
`LinkedIn Page of Duncan Ironmonger
`Scuf Gaming webpage
`Scuf Gaming Press Release
`Declaration of Ehab M. Samuel
`
`- viii -
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`I.
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`IPR2016-00948 for U.S. Patent 8,641,525
`
`Introduction
`The Board instituted two grounds for inter partes review of claims 1-11, 13,
`
`14, and 16-20 of U.S. Patent 8,641,525 (“the ‘525 Patent”) in the manner shown in
`
`the table below.1
`
`Grounds Claims
`1, 6, 13, 14, 16, 17, 19,
`A
`and 20
`1-11, 13, 16, 17, and 20
`
`B
`
`C
`
`18
`
`References
`Type
`Anticipation §102 Tosaki
`
`Obviousness §103 Enright and Tosaki
`Obviousness §103 Enright, Tosaki, and
`Oelsch
`
`The ‘525 Patent is directed to a hand-held controller for a video game
`
`console. Throughout the specification and prosecution history, the patentee made
`
`clear and unmistakable statements that the “the present invention” is a hand-held
`
`controller that is intended to be held in and operated by a user in both hands. On
`
`the back of the controller is a recess and elongate members. The recess joins a first
`
`handle to a second handle and receives a user’s fingers when the user holds the
`
`first handle and second handle. The elongate members extend substantially the full
`
`distance between the top edge and bottom edge of the hand-held controller, and are
`
`inherently resilient and flexible.
`
`
`1 The parties inadvertently overlooked that the stipulated date for Patent
`Owner Response fell on Martin Luther King day, and in light of the federal
`holiday, both parties agree and consent to roll over this deadline to the following
`day (Tuesday, January 17, 2017).
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`Tosaki, on the other hand, is directed to a steering wheel control apparatus
`
`with a thigh-held base casing to allow rotation of a steering wheel against the base.
`
`The steering wheel includes gearshift levers that are positioned and operated
`
`through arched openings. The steering wheel is integrally fixed to and rotatably
`
`supported by a steering shaft. The rotation of the steering wheel triggers the
`
`mechanical rotation of a control disk having a plurality of circumferential holes
`
`passing through a light detector photodiode to detect the rotational direction and
`
`angle of the steering wheel.
`
`The challenged claims of the ‘525 Patent have several requirements: (1)
`
`“hand held controller,” (2) “located at back of the controller,” (3) “recess,” (4)
`
`“inherently resilient and flexible,” (5) “elongate members converge towards the
`
`front end of the controller with respect to one another,” (6) “paddle levers,” and (7)
`
`“back controls is formed as an integral part of the outer case.” As explained
`
`below, the claims, specification and the prosecution history compel a construction
`
`for “hand held controller” as a “controller that is held in and operated by both
`
`hands of a user.” In this regard, “located on the back of the controller” should be
`
`construed as “located on the back of the hand-held controller that is held in and
`
`operated by both hands of a user.” Meanwhile, the “recess” is properly construed,
`
`in light of the specification, as “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
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`fingers.” Further, the proposed construction for “elongate members converge
`
`towards the front end of the controller with respect to one another” is “elongate
`
`members converge towards one another and towards the front of the controller.”
`
`Tosaki does not anticipate claims 1, 6, 13, 14, 16, 17, 19, and 20 for several
`
`reasons. First, Tosaki’s “control apparatus” is a thigh-held controller (not a hand-
`
`held controller). It is also not held in and operated by both hands of a user.
`
`Second, Tosaki’s gearshift levers on the reverse side of the steering wheel do not
`
`anticipate the claimed elongate members “located on the back of the controller”
`
`because the reverse side of the steering wheel is not the back of the steering wheel
`
`control apparatus. Third, Tosaki does not disclose elongate members converge
`
`towards one another and towards the front of the controller. Tosaki’s gearshift
`
`levers are not oriented at an incline such that they converge toward the front of the
`
`controller and each other. Rather, they are parallel to the front as Petitioner
`
`concedes, and therefore, cannot converge towards the front.
`
`Tosaki, in combination with Enright, also does not render obvious claims 1-
`
`11, 13, 16, 17, and 20.
`
`Enright is directed to a user-operated controller device with mode switches
`
`on the underside of the controller to switch between a position mode and a discrete
`
`mode. Although “Enright was not cited during prosecution of the applications that
`
`led to issuance of the ‘525 Patent,” as Petitioner notes in its Corrected Petition
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`(Paper 4, “Pet.” at 32), Enright is merely cumulative to prior art previously
`
`considered by the Examiner. For example, during the prosecution of the ‘525
`
`Patent, the Examiner cited to US Patent 7,859,514 (“Park reference”) that discloses
`
`a hand-operable controller with a plurality of controls on the front and rear faces.
`
`(EX2006, pg. 85; EX2007, FIGS. 1-2 .) Thus, Enright adds nothing new to what
`
`has already been considered by the Examiner.
`
`Further, Enright does not disclose the “inherently resilient and flexible” back
`
`controls limitation of claim 1. Petitioner sought a construction of this claim phrase
`
`that would eliminate the “flexible” claim limitation from this phrase; however, the
`
`Institution Decision properly accounted for this term to require a showing that the
`
`back controls “may be bent or flexed by a load,” which is not disclosed, taught or
`
`suggested in Enright.
`
`Understanding the premise of Enright and Tosaki, a person skilled in the art
`
`(“POSITA”) would have no reason to modify Enright in view of Tosaki. A
`
`POSITA would never think of modifying Enright in view of Tosaki because
`
`Tosaki teaches away from combining the two references. Tosaki teaches that the
`
`gearshift levers must be positioned in and operated through the arched openings,
`
`which if combined with Enright, would require eliminating or relocating control
`
`buttons and thumbstick controls on the Enright controller, and would impede the
`
`interior wiring and disrupt the interior circuit board design.
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`Moreover, a POSITA would have no reason to combine Tosaki with Enright
`
`because they are non-analogous art. Tosaki is a thigh-held control apparatus with a
`
`steering wheel that actuates a control disk to rotate along and its rotation to be
`
`detected by a light detector photodiode. In contrast, Enright’s hand-held controller
`
`is neither in the same field of endeavor nor is Tosaki reasonably pertinent to
`
`Enright’s particular problem.
`
`Also, a POSITA would not combine Enright with Tosaki because Tosaki’s
`
`gearshift levers in arched opening would change Enright’s principle of operation
`
`and would render it inoperable for its intended purpose. Notably, Petitioner offers
`
`no proof that the alleged combination would work, nor do Petitioner explain how
`
`to implement the grearshift levers of Tosaki with the Enright controller.
`
`Indeed, Petitioner’s obviousness argument to modify Enright is only driven
`
`by hindsight. Petitioner misrepresents Enright to suggest that it would be obvious
`
`to make the first mode switches longer “for easy operation” and “if ergonomically
`
`desired.” However, Enright merely made these statements in connection with the
`
`location (not the length) of the mode switches. More importantly, as of the priority
`
`date of the ‘525 Patent (June 17, 2011), a person skilled in the art would not find it
`
`obvious to have elongate members on the back of the controller as claimed. This is
`
`evidenced by the fact that not until recently has Microsoft® (which is a market
`
`leader in game consoles) launched its Xbox Elite Wireless Controller with elongate
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`members on the back. At bottom, Petitioner offers no rational underpinning or
`
`corroborating evidence to support a conclusion of obviousness.
`
`Further, the Institution Decision rejected Petitioner’s position that any
`
`button, trigger or control member qualifies as a paddle lever. Given that Petitioner
`
`relied on its rejected construction to allege that Enright’s switch mode button is the
`
`claimed “paddle lever” of claim 19, Petitioner’s position is legally deficient to
`
`meet this limitation.
`
`Finally, Oelsch, in combination with Enright and Tosaki, also does not
`
`render obvious claim 18. Dependent Claim 18 requires the back controls to be
`
`formed as an integral part of the outer case of the controller.
`
`Oelsch discloses a push button switch for use on keyboards. It does not
`
`disclose a controller, does not disclose a controller with back controls formed as an
`
`integral part of the outer case of a controller, and there is no expert testimony or
`
`other evidence that it does. Further, Petitioner failed to provide any particularized
`
`argument or supporting evidence as to how and why the three prior art references
`
`would be combined to achieve the claimed invention.
`
`For these reasons, as set forth below, the Board should hold all of the ‘525
`
`Patent’s challenged claims patentable.
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`IPR2016-00948 for U.S. Patent 8,641,525
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`II. Claim Construction
`A. Relevant Law
`For an unexpired patent in an inter partes review, the Board applies the
`
`broadest reasonable interpretation consistent with the specification. Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016). To be reasonable, the
`
`interpretation of the disputed terms must be read in light of both the claim
`
`language and the specification. PPC Broadband, Inc. v. Corning Optical
`
`Commc’ns RF, LLC, 815 F.3d 747, 752 (Fed. Cir. 2016). The claim language and
`
`the specification are, in turn, viewed through the eyes of a person of ordinary skill
`
`in the art at the time of the invention. Id.
`
`Technology Overview And State Of The Art
`
`B.
`To understand how a person of ordinary skill in the art would have viewed
`
`the claims and the specification, the problem addressed by the ’525 patent must be
`
`put in context with the overall technology. (Id.) There was a need for an improved
`
`hand-held controller that removed the need for the user to operate a plurality of
`
`buttons on the front of the controller with a single finger.
`
`The ‘525 Patent was filed on June 17, 2011. The claims are directed to a
`
`hand-held controller intended to be held by a user in both hands. (EX1001,
`
`Abstract.) It comprises an outer case with two handles, a front control, is shaped to
`
`be held in the hand of a user such that the user’s thumb is positioned to operate the
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`front control, and two back controls with elongated members along the
`
`longitudinal axes of the handles, such that the user’s other fingers are position to
`
`operate the back controls. (EX1001, 1:49-58.)
`
`Fig. 3 of the ‘525 Patent (EX1001)
`
`
`
`The ‘525 Patent is licensed to Scuf Gaming International LLC (“Scuf”).
`
`(EX2012, ¶3.) Scuf is a global leader and innovator in esports, providing video
`
`game controllers that have elongated back controls. (EX2012, ¶¶4, 8-10; EX2010)
`
`Over 90% of the top professional gamers in world use SCUF controllers.
`
`(EX2012, ¶ 9; EX2010.) Scuf is also the official controller partner of major
`
`gaming leagues, including CWL, MLG, ESL, UMG, Gfinity and EGL. (EX2012,
`
`¶12.)
`
`Scuf controller products are handheld video game controllers having a front,
`
`back, top, and bottom that have elongated back controls located on the back of the
`
`controller, where the elongated back controls extend substantially the full distance
`
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`IPR2016-00948 for U.S. Patent 8,641,525
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`between the top and bottom for the controller between the top and bottom of the
`
`controller, as in the claims of the ‘525 Patent. (EX2012, ¶14.) Scuf controller
`
`products allow a user to utilize more of their hands in games, shorten their
`
`response time when performing actions, access more activation points on paddles,
`
`and avoid playing “CLAW” and reduce hand strain. (EX2012, ¶¶ 10, 11;
`
`EX2010.)
`
`In October 2015, Microsoft entered a license with Ironburg Technologies,
`
`Ltd. and Scuf Gaming International LLC and that included among others the ‘525
`
`Patent. (EX2011.) Prior to entering a license with Ironburg, Microsoft did not sell
`
`any video game controllers that had back controls on the back of the controller.
`
`(EX2012, ¶16.)
`
`C. All
`Intrinsic and Extrinsic Evidence Demonstrates The
`Construction Of A “Hand held Controller” Must Be “A Controller That
`Is Held In And Operated By Both Hands Of A User”
`
`Independent claims 1 and 20 of the ‘525 Patent recite the term “hand held
`
`controller” in the preamble. Petitioner offers no construction for this claim term.
`
`(Pet. 17.) Instead, Petitioner asserts that “the other claim terms of the ‘525 Patent
`
`take on the customary and ordinary meaning that such terms have to one of
`
`ordinary skill in the art in view of the specification and prosecution history of the
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`‘525 Patent.” (Id.) The Institution Decision did not construe this term either.
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`IPR2016-00948 for U.S. Patent 8,641,525
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`Generally, a claim preamble will not be seen as limiting unless it “breathes
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`life and meaning into the claim.” In re Wertheim, 541 F.2d 257 (CCPA 1976).
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`Expanding on this issue, the Federal Circuit emphasized that the preamble can be
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`limiting when elements in the preamble serve as an antecedent basis for limitations
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`in the claim body. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339
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`(Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive
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`antecedent basis from the preamble, then the preamble may act as a necessary
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`component of the claimed invention.”).
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`In the present case, the term “hand held controller” breathes life and
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`meaning into the claim. Each limitation in the claim is describing and defining a
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`particular feature of the “hand held controller.” (EX1001, 4:43-55.) For example,
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`the express language of claims 1 and 20 both recite that “the controller is shaped to
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`be held in the hand of a user such that the user’s thumb is positioned to operate the
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`front control”. (Id., 4:47-49 & 6:19-21 (emphasis added).) The term “hand held
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`controller” is thus a limiting preamble and must be construed.
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`The term “hand held controller” also provides antecedent basis for “the
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`controller” in claims 1 and 20. Because the preamble term provides antecedent
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`basis for and is necessary to understand positive limitations in the body of claims 1
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`and 20 of the ‘525 Patent, this preamble term is limiting and must be construed.
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`See Pacing Techs. LLC. v. Garmin Intern. Inc., 778 F.3d 1021, 1024 (Fed. Cir.
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`IPR2016-00948 for U.S. Patent 8,641,525
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`2015). The construction must not be done however in isolation; rather, it requires
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`that the term “hand held controller” be construed in light of the specification and
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`prosecution history. Id.
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`The Federal Circuit explained that the specification and prosecution history
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`compel departure from the plain meaning of a term if there is a clear disavowal of
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`claim scope. Id. Disavowal requires that “the specification or prosecution history
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`make clear that the invention does not include a particular feature.” Id. By way of
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`example, the Federal Circuit has found disavowal in the following circumstances:
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`We have found disavowal or disclaimer based on clear and
`unmistakable statements by the patentee that limit the claims, such as
`“the present invention includes ...” or “the present invention is ...” or
`“all embodiments of the present invention are....” ... We have found
`disclaimer when the specification indicated that the invention operated
`by “pushing (as opposed to pulling) forces,” and then characterized
`the “pushing forces” as “an important feature of the present
`invention.” We also have found disclaimer when the patent repeatedly
`disparaged an embodiment as “antiquated,” having “inherent
`inadequacies,” and then detailed the “deficiencies [that] make it
`difficult” to use … When a patentee “describes the features of the
`‘present invention’ as a whole,” he alerts the reader that “this
`description limits the scope of the invention.” Id. at 1024-25 (internal
`citations omitted and emphasis added).
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`Here, the specification similarly contains clear and unmistakable statements
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`of disavowal that limits the scope of “hand held controller” to “a controller that is
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`held in and operated by both hands of a user.” In particular, the ‘525 Patent states:
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` “An improved controller (10) for a game console that is intended to be held
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`by a user in both hands … and has two additional controls (11) located on
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`IPR2016-00948 for U.S. Patent 8,641,525
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`the back in positions to be operated by the middle fingers of a user.”
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`(EX1001, Abstract (emphasis added).)
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` “Conventional controllers for most game consoles are intended to be held
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`and operated by the user using both hands (id., 1:8-9 (emphasis added).) …
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`The controller of the present invention may be very similar to controllers
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`according to the prior art. In particular, the outer case of the controller …
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`may be the same as a controller according to the prior art, as described
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`above and as illustrated in the figures.” (Id., 2:15-19 (emphasis added).)
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` “The controller is shaped to be held in both hands of the user such that the
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`user's thumbs are positioned to operate controls located on the front of the
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`controller and the user's index fingers are positioned to operate controls
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`located on the top edge of the controller.” (Id., 1:52-56 (emphasis added).)
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` “Further features and advantages of the present invention will be apparent
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`from the specific embodiment illustrated in the drawings and discussed
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`below.” (Id., 2:55-57 (emphasis added).)
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` “The game controller 10 according to the present invention is illustrated in
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`FIGS. 2 and 3.” (Id., 3:13-14 (emphasis added).)
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`The ‘525 Patent also describes the “present invention” in the context of
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`FIGS 2 and 3. Specifically, the patent states that “FIG. 2 is a schematic illustration
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`of the back of a game controller according to the present invention.” (Id., 2:63-64
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`IPR2016-00948 for U.S. Patent 8,641,525
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`(emphasis added).) Further, “FIG. 3 is a schematic illustration of the back of a
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`game controller according to the present invention as held and operated by a
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`user.” (Id., 2:65-67 (emphasis added).)
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`A POSITA would understand that the claimed “hand held controller” is “a
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`controller that is held in and operated by both hands of a user” in view of the
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`claims, specification and drawings. (EX2002, ¶48). The express language of
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`claims 1 and 20 require that “the controller is shaped to be held in the hand of a
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`user such that the user’s thumb is positioned to operate the front control”. (Id.,
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`4:47-49 & 6:19-21 (emphasis added)). The specification repeatedly refers to the
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`“hand held controller” as “the present invention.” (Id., ¶42.) It likewise repeatedly
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`refer to the controller as being shaped to be held in and operated by both hands of
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`the user. (Id.; EX1001, 1:52-56.)
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`Indeed, there is no dispute that the hand-held controller is held in and
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`operated by both hands of a user. Quoting the ‘525 Patent, P