`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Exhibit 1021
`
`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
`
`and
`
`Case IPR2016-00949
`Patent 9,089,770
`____________
`
`
`EXPERT DECLARATION OF DAVID REMPEL, M.D.,
`REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`I, David Rempel, M.D., hereby declare as follows:
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 001
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`1.
`
`I have been retained by Valve Corporation to provide my opinions as
`
`an expert witness regarding certain questions regarding the Patent Owner Reponses
`
`filed in the subject IPR proceedings.
`2.
`
`In forming the opinions stated in this declaration, I reviewed the Patent
`
`Owner Reponses filed in cases IPR2016-00948 and IPR2016-00949, the expert
`
`declarations by Dr. Glen Stevick in support of the foregoing Patent Owner
`
`Responses, U.S. Patent 8,641,525 (hereinafter the “’525 patent”), U.S. Patent
`
`9,089,770 (hereinafter the “’770 patent”), U.S. Patent 5,989,123 to Tosaki et al.
`
`(hereinafter “Tosaki”), U.S. Patent Application Publication 2010/0073283 to
`
`Enright (hereinafter “Enright”), and U.S. Patent 4,032,728 to Oelsch (hereinafter
`
`“Oelsch”).
`3.
`
`Information about my education, experience, publications, and awards
`
`are provided in my previous declarations filed as Exhibits 1008 and 1012 in the
`
`subject IPR proceedings, and in my CV filed as Exhibit 1009 in the subject IPR
`
`proceedings.
`
`4.
`
`I carefully considered the arguments, support, and associated
`
`OPINIONS
`
`19
`
`annotations to Fig. 3 of the ’525 patent shown at pages 21-22 of the Patent Owner
`
`20
`
`Response in IPR2016-00948, and I disagree with its conclusion for the reasons
`
`21
`
`stated in ¶¶ 4-7 herein. The only type of convergence that is actually shown in any
`
`22
`
`figure of the ’525 patent is convergence towards the top edge of the controller (i.e.,
`
`23
`
`24
`
`towards the top edge of the page).
`5.
`
`The lack of antecedent basis for “the front end” in claim 13 of the ’525
`
`25
`
`patent, suggests that the phrase “the front end” in claim 13 was a typographical
`
`26
`
`error. Convergence of the elongate members 11 towards the “front” (into the page)
`
`27
`
`cannot possibly be shown from the viewing angle that the patentee chose for Figs. 2
`
`28
`
`and 3 of the ’525 patent, and indeed is not shown anywhere in the ’525 patent
`
`
`
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`- 1 -
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 002
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`
`
`drawings. Hence, it is unlikely that the phrase “the front end” in claim 13 of the
`
`’525 patent was actually meant to refer to the front of the controller.
`6.
`
`The convergence of the elongate members 11 that is actually shown in
`
`Figs. 2 and 3 of the ’525 patent, and the associated description at 3:51-56, strongly
`
`suggest to one of ordinary skill in the art that the meaning of “the top edge” was
`
`intended by the claim phrase “the front end” in claim 13.
`7.
`
`Fig. 23 of Tosaki shows convergence of elongate members 125, 126, in
`
`the same manner as does the only disclosed embodiment of the ’525 patent. The
`
`similar claimed convergence is identified by annotation in the following drawing
`
`comparison of Fig. 2 of the ’525 patent versus Fig. 23 of Tosaki:
`
`A
`
`
`
`B
`
`
`
`A
`
`B
`
`Tosaki
`convergence: A < B
`
`‘525 patent
`convergence: A < B
`
`I disagree with the Patent Owner Responses’ allegation that the Tosaki
`
`
`
`8.
`
`
`
`
`
`reference is “non-analogous art.” One of ordinary skill in the art would recognize
`
`that a user might rest the bottom of the video game controller of the ’525 and ’770
`
`patents on his thighs when seated, to avoid fatigue from continuous lifting (e.g.,
`
`while playing a video game console from a couch). Persons of ordinary skill in June
`
`
`
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`- 2 -
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 003
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`2011 designed hand-held video game controllers that were operated by and held in a
`
`user’s hands, some of which also received support from a user’s lap or thighs
`
`intentionally or incidentally. All such controllers were considered to be in the same
`
`technical field of endeavor, were often sold by the same companies, and often had
`
`common designers (who kept abreast of advances in all types of video game
`
`controllers). Hence, a person of ordinary skill in the video game controller art in
`
`June 2011 would consider the ’525 and ’770 patents, and the Enright and Tosaki
`
`prior art references, all to be in the same technical field.
`9.
`
`I disagree with the position taken in the Patent Owner Responses that
`
`Tosaki’s “hand grips 14a” should not be considered as “handles.” There is no
`
`disclosure in the ‘525 or ‘770 patents that would suggest to one of ordinary skill in
`
`the art that Tosaki’s “hand grips 14a” should not be considered as “handles.” On the
`
`contrary, the abstract of Tosaki describes a “player’s hand holding the grip,” which
`
`would suggest to one of ordinary skill in the art that Tosaki’s “hand grips 14a”
`
`should be considered as “handles” (according to my understanding of the ordinary
`
`meaning of handles as applied in the context of the ’525 and ’770 patents).
`10.
`
`I disagree with the position taken in the Patent Owner Responses that
`
`Tosaki’s video game controller is not “hand held.” Tosaki discloses a video game
`
`controller that includes a steering wheel with two “hand grips 14a” (see Tosaki at
`
`8:63-64) and which expressly teaches that “the hand is holding the steering wheel”
`
`(see Tosaki at 3:32). Although Tosaki teaches that the video game controller may
`
`also be held in the thighs, that is not exclusive of being held in the hands, but rather
`
`is in addition to being held concurrently in the hands. Hence, one of ordinary skill
`
`in the video game controller art would consider the video game controller of Tosaki
`
`to qualify as a “hand-held” controller in the context of the ’525 and ’770 patents,
`
`even though the Tosaki video game controller may also be held in the thighs.
`11.
`
`I carefully considered the arguments at pages 39-41 of the Patent
`
`Owner Response in IPR2016-00948, and I disagree with Ironburg’s conclusion for
`
`
`
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`- 3 -
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 004
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`the reasons stated in ¶¶ 11-12 herein. Paragraph [0035] of Enright explains that “the
`
`user may quickly depress the mode switch 32, 34 […] and then return to normal by
`
`releasing the mode switch when desired.” One of ordinary skill in the art would
`
`interpret the foregoing disclosure of Enright to teach resiliency of the mode switches
`
`32, 34, because they return to an unbiased position when not under load.
`12. Paragraph [0035] of Enright would also suggest to a person of ordinary
`
`skill in June 2011 that the mode switches 32, 34 are or include some flexible
`
`element such as a spring, to provide the ubiquitous function that is described therein
`
`(i.e., depressing to a biased position, and releasing to return). For example, a
`
`person of ordinary skill in the art would have recognized that such functionality
`
`could be obtained by simply making the elongate member flexible. A person of
`
`ordinary skill in the art in June 2011 would have been aware of various well-known
`
`and conventional ways to fabricate the mode switches 32, 34 to be or include a
`
`flexible element – such as fabricating them from any flexible material.
`13.
`
`I disagree with the position taken in the Patent Owner Response that
`
`Tosaki does not disclose a “transition edge” as claimed in the ’770 patent. The left
`
`and right edges of the bottom wall 130 of the Tosaki steering wheel 14, shown in
`
`Fig. 24 of Tosaki (e.g., with annotated labels below), are disposed in a transition
`
`region between the central recessed portion and the handles 14a. Therefore, one of
`
`ordinary skill in the art would consider such edges to be “transition edges,” in the
`
`context of the ’770 patent. One of ordinary skill in the art would also consider the
`
`left and right edges of the bottom wall 130 of the Tosaki steering wheel 14 to be
`
`“transition edges,” in the context of the ’770 patent, because such edges are
`
`associated with a transition to the hand grips 14a that is realized in conjunction with
`
`the arched openings 14e in Tosaki. Therefore, one of ordinary skill in the art would
`
`consider the left and right edges of the bottom wall 130 of the Tosaki steering wheel
`
`14 to qualify both structurally and functionally as “transition edges,” in the context
`
`of the ’770 patent.
`
`- 4 -
`
`
`
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 005
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`I studied all of the arguments in the Patent Owner Responses alleging
`
`that there would be no motivation to modify Enright in view of Tosaki, and I
`
`disagree with them for the reasons stated in ¶¶ 14-16 herein. One of ordinary skill
`
`in the art in June 2011 would have been motivated to modify Enright in view of
`
`Tosaki, for several reasons. First, both references disclose hand-held video game
`
`controllers having front controls operated by a user’s thumbs and rear controls
`
`operated by fingers other than the thumb: namely, the mode switches 32, 34 shown
`
`in Fig. 5 of Enright, and the shift levers 125, 126 shown in Fig. 23 of Tosaki.
`
`Second, the longer appearance of the shift levers 125, 126 in Fig. 23 of Tosaki
`
`suggests to one of ordinary skill in the art to lengthen the mode switches 32, 34 of
`
`Enright. Such lengthening of the mode switches 32, 34 would be a useful
`
`alternative to the geometry of the Enright mode switches 32, 34 as originally
`
`disclosed, to advance the objectives expressed in paragraph ¶ [0032] of Enright (for
`
`the mode switches 32, 34 to be configured for ergonomics and easy operation by the
`
`user’s fingers on the back of the controller).
`15. Paragraph ¶ [0032] of Enright refers to the backside location of the
`
`elongate members (mode switches 32, 34) of Enright, rather than specifically
`
`referring to their length. However, viewing the longer appearance of the shift levers
`
`125, 126 on the back of the Tosaki steering wheel 14, while aware of the motivation
`
`
`
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`- 5 -
`
`left handle
`
`right handle
`
`Tosaki Fig. 24
`
`recessed
`portion
`
`right transition
`edge
`
`
`
`left transition
`edge
`
`14.
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 006
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`expressed in Enright for the mode switches 32, 34 to be configured for ergonomics
`
`and easy operation by the user’s fingers on the back of the controller (see Enright ¶
`
`[0032]), would rationally suggest to a person of ordinary skill in the art – without
`
`hindsight – to lengthen the mode switches 32, 34.
`16. One of ordinary skill in the art in June 2011 would understand that
`
`simply lengthening the mode switches 32, 34 of Enright can be done in place, for
`
`example without moving them to a different location on the Enright video game
`
`controller, or replacing them with any other structure taught by any other reference.
`
`For example, a person of ordinary skill in the art, if modifying the Enright video
`
`game controller in view of the Tosaki reference, would not bodily incorporate or
`
`transplant the arched openings 14e into the Enright video game controller. A person
`
`of ordinary skill in the art would consider Tosaki’s arched openings 14e as
`
`unnecessary to the Enright video game controller, which was not intended to
`
`resemble a steering wheel. One of ordinary skill in the art would understand that
`
`such a simple modification as lengthening the mode switches 32, 34 of Tosaki, in
`
`place, would be practically operable and would not change Enright’s principle of
`
`operation.
`17.
`
`I disagree with the position taken in the Patent Owner Responses that
`
`the teachings of Enright are insufficient to suggest a “paddle lever” to one of
`
`ordinary skill in the art. A person of ordinary skill in the art in June 2011 would
`
`have readily understood that the elongate mode switches 32, 34 of Enright could be
`
`attached in various well-known and conventional ways, some of which would fit the
`
`ordinary meaning of “paddle lever.” For example, if the mode switches 32, 34 were
`
`conventionally attached at only their top ends, they would have fit within the
`
`ordinary meaning of the claim term “paddle lever.” The conventional option to
`
`attach switch members (such as the Enright mode switches 32, 34) as paddle levers
`
`was common knowledge in June 2011.
`
`
`
`
`
`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
`
`
`
`
`
`- 6 -
`
`PETITIONER VALVE CORPORATION, EX. 1021 p. 007
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`

`

`PETITIONER VALVE CORPORATION, EX. 1021 p. 008
`VALVE CORP. v. IRONBURG INVENTIONS LTD. IPR2016-00948 - 00949
`
`