Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 54
`Entered: January 26, 2018
`
`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 B2
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 54
`Entered: January 26, 2018
`
`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 B2
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`INTRODUCTION
`I.
`Valve Corporation (“Petitioner”) requests rehearing of our Final
`Written Decision (Paper 44, “Decision,” or “Dec.”) in this case. Paper 45
`(“Reh’g Req.”). Specifically, Petitioner asks that we: (1) reconsider and
`adopt the construction of “flexible” proposed in the Petition, (2) consider
`Section IV.D. of the Petitioner’s Reply, (3) determine that claims 1–11, 13,
`16, and 17 are obvious over Enright and Tosaki, and (4) correct three
`typographical errors.1 Id. at 1.
`Patent Owner submits a response asking that we deny Petitioner’s
`request, and Petitioner submits a reply. Paper 51 (“Resp.”); see also
`Paper 47 (authorizing Paper 51); Paper 53 (“Reply”); see also Paper 52
`(authorizing Paper 53).
`We reconsider whether Petitioner has demonstrated that claims 1–11,
`13, 16, and 17 are obvious over Enright and Tosaki in light of the record, to
`include Section IV.D. of Petitioner’s Reply.
`
`
`II. ANALYSIS
`
`A. OVERVIEW
`Claim 1 recites that each elongate member is “inherently resilient and
`flexible.” Claims 2–19 include this limitation by virtue of dependence from
`claim 1.
`
`
`1 We previously corrected the typographical errors pointed out by Petitioner.
`See Paper 46. Accordingly, we deny this portion of Petitioner’s request as
`moot.
`
`
`2
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`In our Final Written Decision, we determined an elongate member as
`claimed is inherently resilient in that it will return to its unbiased position
`when not under load, and it is flexible in that it may be bent or flexed by a
`load (e.g., from a user’s finger).2 Dec. 36. This meaning of flexible is the
`ordinary meaning that is consistent with the Specification. Id. In the Final
`Written Decision, we did not consider Section IV.D. of Petitioner’s Reply
`because Petitioner had not addressed in the Petition that the elongate
`members are flexible. Id. at 37–38.
`Petitioner does not dispute our interpretation of “inherently resilient;”
`rather, Petitioner contests our interpretation of the term “flexible.”
`In the Petition, Petitioner contends that the term “flexible” means that
`the elongated member “can be moved to a biased position by a user’s
`fingers.” Paper 1 (“Pet.”) 14. In the Request for Rehearing, Petitioner
`contends that the Petition correctly asserted that “flexible” as claimed is
`broad enough to “encompass merely allowing displacement.” Reh’g Req. 3.
`According to Petitioner, the Board’s construction of “flexible” does not have
`support in the intrinsic record because the ordinary meaning of “flexible” is
`not found in the language of ’525 patent or supported by the drawings. Id.
`at 4–5. Petitioner contends that the Petition made a prima facie case that
`Enright’s elongate members are “flexible” as claimed based on Petitioner’s
`claim interpretation, and for that reason we should have considered Section
`
`
`2 Our claim interpretation in the Final Written Decision is consistent with
`our interpretation in the institution decision, and for that reason, Petitioner’s
`analogy to SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed.
`Cir. 2016) is unpersuasive. Compare Dec. 36–37 with Paper 10 (Institution
`Decision), 14; Reh’g Req. 7.
`
`3
`
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`
`B.
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`Case IPR2016-00948
`Patent 8,641,525 B2
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`IV.D. of Petitioner’s Reply, which responds to arguments in Patent Owner’s
`Response. Id. at 5–8.
`
`“FLEXIBLE”
`For two reasons, we cannot agree with Petitioner’s contention that
`“flexible” means “can be moved to a biased position by a user’s fingers” and
`is broad enough to cover merely allowing displacement.
`Petitioner asks that we deviate from the ordinary meaning of
`“flexible,” yet neither identifies a lexicographical definition nor alleges that
`the prosecution history warrants such a deviation. See Resp. 1–2, 4–5
`(pointing out that Petitioner’s attempt to deviate from ordinary meaning is
`not well supported); see also Reply 2 (contending that the broadest
`reasonable interpretation of “flexible” is broader than its ordinary meaning,
`but not providing a reason for departing from ordinary meaning). Further,
`Petitioner’s suggestion that the ordinary meaning of a claim term must be
`expressly stated in the disclosure is incorrect and does not warrant deviation
`from the ordinary meaning of a term. The proper inquiry, as applied in both
`our Institution Decision and our Final Written Decision, is whether the
`ordinary meaning of a claim term is consistent with the specification. See
`Dec. 36–37; Paper 10, 13–14; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
`(the words of the claim must be given their plain meaning unless the plain
`meaning is inconsistent with the specification); Resp. 7.
`Second, Petitioner agrees that “inherently resilient” as claimed means
`that the elongate member will return to its unbiased position when not under
`load. Being capable of returning to an unbiased position when not under
`load of necessity includes being capable of being moved to a biased position
`
`4
`
`
`
`C.
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`Case IPR2016-00948
`Patent 8,641,525 B2
`
`under load. In other words, inherent resiliency requires that the elongate
`member may be moved to a biased position under load and then returns to an
`unbiased position when not under load. Inherent resiliency and flexibility as
`claimed are different characteristics. For example, an elongate member
`formed of hard plastic that could be biased/displaced by a user’s finger to
`activate a switch mechanism and then return to an unbiased position would
`be inherently resilient. That same elongate member formed of hard plastic
`would not itself bend or flex, and therefore would not be flexible as required
`by claim 1.
`
`“FLEXIBLE” IS A CHARACTERISTIC OF THE ELONGATE MEMBERS
`Significantly, whatever the claim term “flexible” means, it is a
`characteristic of the elongate member, and an elongate member as claimed is
`a distinct element from a switch mechanism. We interpret that the term
`“inherently” modifies both “resilient” and “flexible,” but even if it does not,
`for the reasons that follow, “flexible” is a characteristic of the elongate
`member itself.
`Claim 1 is directed to a controller that has a first and a second back
`control, and those controls include an elongate member that is inherently
`resilient and flexible.
`Dependent claims 9, 10, and 11 further limit the elongate member of
`claim 1 to a specified thickness.
`Dependent claim 14 further limits claim 1 to require the first and
`second controls to each be in registry with a switch mechanism so that
`displacement of at least one control activates the switch mechanism.
`Dependent claim 15 further limits claim 1 to add a switch mechanism
`
`5
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`Case IPR2016-00948
`Patent 8,641,525 B2
`
`disposed between each of the elongate members and an outer surface of the
`back of the controller.
`Claim 14 recites that at least one of the controls is in registry with a
`switch mechanism and does not recite that either the first or second back
`control includes a switch mechanism. Likewise, claim 15 recites the
`position of each switch mechanism with respect to each elongate member
`and does not recite that a control includes a switch mechanism.
`Consequently, a switch mechanism is not a subcomponent of the elongate
`member; rather, a switch mechanism and an elongate member are distinct
`elements. See Becton, Dickinson and Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249, 1253–54 (Fed. Cir. 2010) (Where a claim called for a “spring
`means connected to said hinged arm” the spring means and the hinged arm
`were distinct structural elements.); see generally Rambus Inc. v. Infineon
`Technologies AG et al., 318 F3d 1081, 1091–1093 (Fed. Cir. 2003)
`(determining that dependent claims demonstrated that an element of the
`independent claim was distinct from an element first recited in a dependent
`claim).
`Therefore, the claims suggest that an elongate member as claimed is
`distinct from a switch mechanism and must be inherently resilient and
`flexible. The remainder of the Specification confirms this interpretation.
`The ’525 patent describes that a user’s finger’s activate the controls.
`Ex. 1001, Abstract, 2:49–56. The ’525 patent describes that the controls are
`elongate members such as paddles 11. See id. at 1:59–61, 2:5–6, 3:51
`(paddles 11 are elongate in shape). The ’525 patent describes that
`paddles 11 (elongate members) are formed of a thin, flexible material of a
`specified thickness and are inherently resilient. See id. at 2:1–3, 3:28–39.
`
`6
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`Case IPR2016-00948
`Patent 8,641,525 B2
`
`The ’525 patent describes that elongate members and switch mechanisms are
`distinct elements. See id. at 2:8–14 (“a portion of each of the elongate
`members is in registry with a switch mechanism”); 3:35–39 (displacement of
`paddles 11 activates a switch mechanism). The Specification only describes
`the elongate members as inherently resilient and flexible and does not
`attribute those characteristics to other components such as the switch
`mechanism. The Specification does not describe a control or an elongate
`member as including a switch mechanism.
`A person of ordinary skill would understand that an elongate member
`is the portion of the control that is engaged by a user’s fingers, and the
`elongate member then engages a switch mechanism. The elongate member
`is a thin, flexible material that returns to the unbiased position when not
`under load.
`Consequently, a switch mechanism and an elongate member are
`distinct elements, and claim 1 requires that each elongate member is
`inherently resilient and flexible.
`
`D. RECONSIDERING OBVIOUSNESS
`The Petition
`1.
`The relevant portion of the Petition follows.
`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.” See the Rempel ‘525 Decl., Exhibit 1008,
`at ¶22, p. 4, lines 14-20.
`
`7
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`Case IPR2016-00948
`Patent 8,641,525 B2
`
`Pet. 34–35.
`Thus, Petitioner simply asserts that Enright’s switches 32, 34 may be
`biased (displaced). See Pet. 34–35. As detailed above, inherent resiliency
`requires that the elongate member may be moved to a biased position under
`load and then returns to an unbiased position when not under load.
`Therefore, the Petition only addresses inherent resiliency and not flexibility.
`
`Petitioner’s Reply
`2.
`In the Reply, Petitioner makes two contentions: one, that Enright’s
`switches 32, 34 are flexible in that they include some flexible element such
`as a spring, and two, that it would have been obvious to modify Enright’s
`switches to be made of a flexible material. See Paper 23 (“Pet. Reply”), 14–
`15.
`
`a) Spring
`Here, as in the Petition, Petitioner only addresses inherent resiliency
`of Enright’s switches 32, 34 (the capability to be biased under load and
`return to an unbiased position when not under load) and does not address the
`flexibility of elongate members as claimed. See Pet. Reply 14–15; Ex. 1021
`¶ 11. Petitioner relies on Dr. Rempel’s testimony that “mode switches 32,
`34 are or include some flexible element such as a spring, to provide . . .
`depressing to a biased position, and releasing to return.” Pet. Reply 15
`(citing Ex. 1021 ¶ 12). This testimony fails to establish that the elongated
`control surfaces on Enright’s switches 32, 34 are flexible as claimed. See
`Pet. Reply 14–15; Ex. 1021 ¶ 12.
`
`8
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`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`b) Modifying Enright’s switches 32, 343
`Petitioner also alleges that Patent Owner did not invent flexible
`materials; rather, it was well-known to fabricate switches to include a
`flexible element. Pet. Reply 15; Ex. 1021 ¶ 12.
`In the Petition, Petitioner alleges that Enright’s switches 32, 34
`correspond to elongate members as claimed, then in the Reply, Petitioner
`changes the theory to allege that it would have been obvious to modify
`Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet.
`Reply 15. We do not consider this contention because Patent Owner was not
`afforded notice and opportunity to respond to this new theory of
`unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin
`Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that
`the Administrative Procedure Act and due process require notice to a party
`and the opportunity to submit facts and argument); see also Intelligent Bio-
`Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)
`(“It is of the utmost importance that petitioners in the IPR proceedings
`adhere to the requirement that the initial petition identify ‘with particularity’
`the ‘evidence that supports the grounds for the challenge to each claim’” [as
`required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2).
`
`
`3 Petitioner’s Reply refers to the ground of unpatentability based on Enright,
`Tosaki, and Oelsch, but Petitioner has not requested that we reconsider that
`portion of our Final Written Decision. See Pet. Reply 15; Reh’g Req. 1
`(seeking reconsideration of the ground of unpatentability based Enright and
`Tosaki).
`
`9
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`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`Even considering this new theory, it does not demonstrate that the
`claimed subject matter would have been obvious because Petitioner provides
`no reason for modifying Enright’s switches 32, 34.
`
`CONCLUSION
`Having reconsidered our Final Written Decision in light of the full
`record, we determine that Petitioner has not demonstrated sufficiently that
`claims 1–11, 13, 16, and 17 are obvious over Enright and Tosaki.
`
`
`E.
`
`III. ORDER
`For the reasons given, we deny Petitioner’s Request for Rehearing.
`
`
`
`10
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`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`PETITIONER:
`Joshua Harrison
`Reynaldo Barcelo
`BARCELÓ, HARRISON & WALKER, LLP
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`
`PATENT OWNER
`Robert Becker
`Ehab M. Samuel
`Yasser El-Gamal
`MANATT, PHELPS & PHILLIPS, LLP
`RBecker@manatt.com
`ESamuel-PTAB@manatt.com
`YEIGamal@manatt.com
`
`11
`
`
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