Paper No. 23
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`VALVE CORPORATION,
`
`Petitioner,
`
`v.
`
` IRONBURG INVENTIONS LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00948
`
`Patent 8,641,525
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`____________
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`PETITIONER’S REPLY TO THE PATENT OWNER’S RESPONSE
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`Exhibit List ……………………………………………………...….v
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`INTRODUCTION .............................................................................. 1
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`
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`CLAIM CONSTRUCTION ............................................................... 1
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Relevant law. ............................................................................ 1
`
`Technology overview. .............................................................. 1
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`“Hand-held” should be afforded the full scope of
`its ordinary meaning. ................................................................ 1
`
`The Patent Owner unnecessarily and improperly
`imports a hand-held requirement from different
`claim language into the phrase “located at the
`back of the controller.” ............................................................. 2
`
`The Patent Owner improperly imports
`description about a particular embodiment into
`the claim term “recess.” ........................................................... 2
`
`The Board should decline to correct the
`erroneous claim phrase: “elongate members
`converge towards the front end of the controller
`with respect to one another.” .................................................... 5
`
`III.
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`PATENT OWNER’S ARGUMENTS DO NOT
`NEGATE ANTICIPATION BY TOSAKI. ........................................ 7
`
`A.
`
`B.
`
`C.
`
`Tosaki discloses a hand-held controller that is
`held in and operated by both hands of a user. .......................... 7
`
`Tosaki discloses elongate members located on a
`back of the controller. ............................................................... 9
`
`Tosaki discloses elongate members that converge
`in the same manner as in the only disclosed
`embodiment of the ’525 patent. ............................................. 10
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`IV. CLAIMS 1-11, 13, 16, 17, AND 20 ARE
`UNPATENTABLE OVER ENRIGHT IN VIEW OF
`TOSAKI ............................................................................................ 12
`
`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`Legal standard for combining references. .............................. 12
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`Level of Ordinary Skill in the Art .......................................... 12
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`1.
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`The Patent Owner confirms a senseless
`qualification to be considered as a
`POSITA. ....................................................................... 12
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`2.
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`The UK Examiner is a POSITA. ................................. 13
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`Patent Owner mischaracterizes Petitioner’s
`challenge, by assuming whole Tosaki structures
`need be transplanted into Enright. .......................................... 14
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`Enright discloses elongate back controls that are
`inherently resilient and flexible. ............................................. 14
`
`Patent Owner mischaracterizes Petitioner’s
`challenge, by assuming whole Tosaki structures
`need be transplanted into Enright. .......................................... 16
`
`1.
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`2.
`
`3.
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`4.
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`The instituted challenge does not require
`the arched openings of Tosaki to be
`transplanted into Enright. ............................................. 17
`
`Petitioner’s challenge relies upon the
`existing structure of Enright’s mode
`switches, and uses Tosaki only for the
`suggestion to make them longer. ................................. 18
`
`Tosaki is analogous art................................................. 19
`
`Petitioner’s challenge is not based on
`impermissible hindsight. .............................................. 20
`
`Petitioner’s proposed modification of Enright
`would not change its principle of operation, nor
`render it inoperable. ................................................................ 23
`
`For enablement and written description support,
`the ’525 patent applicants relied upon the
`optional “paddle lever” being common
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`knowledge. ............................................................................. 24
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`V.
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`CLAIM 18 IS UNPATENTABLE OVER ENRIGHT
`IN VIEW OF TOSAKI, AND FURTHER IN VIEW
`OF OELSCH. .................................................................................... 25
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`VI. CONCLUSION ................................................................................ 27
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`EXHIBIT LIST
`
`
`Description
`U.S. Patent 8,641,525 to Burgess et al. (“ ’525 patent”)
`U.S. Patent 5,989,123 to Tosaki et al. (“Tosaki”)
`U.S. Patent App. Pub. 2010/0073283 to Enright (“Enright”)
`U.S. Patent App. Pub. 2001/0025778 to Ono
`“Rapid Fire Mod for Wireless Xbox 360 Controller, Step by Step
`Tutorial with Pictures,” posts 341-346 by Jimakos Sn, published
`08 July 2008 at http://forums.xbox-
`scene.com/index.php?/topic/643928-rapid-fire-mod-for-wireless-
`xbox-360-controller/page-23.
`U.S. Patent 4,032,728 to Oelsch (“Oelsch”)
`UK Search and Examination Report for Patent App. No.
`GB1011078.1, 16 May 2011, at 2.
`Expert Declaration of David Rempel, M.D., in Support of Valve
`Corporation’s Petition for Inter-Partes Review of U.S. Patent
`8,641,525.
`Curriculum Vitae of David Rempel, M.D. (also denominated as
`Ex. 1 to Ex. 1012).
`Photo of the Wireless Xbox 360 Controller, published on 13 May
`2005 at http://www.ign.com/articles/2005/05/13/xbox-360-
`wireless-controller-tour.
`U.S. Patent 9,089,770 to Burgess et al. (“ ’770 patent”)
`Expert Declaration of David Rempel, M.D., in Support of Valve
`Corporation’s Petition for Inter-Partes Review of U.S. Patent
`9,089,770.
`Declaration of Joshua C. Harrison.
`Diagram used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Shape 1, used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Shape 2, used in deposition of Dr. Glen Stevick, 09 March 2017.
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
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`1008
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`1009
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`1010
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`1011
`1012
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`1013
`1014
`(not filed)
`1015
`(not filed)
`1016
`(not filed)
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`Exhibit No.
`1017
`(not filed)
`1018
`(not filed)
`1019
`(not filed)
`1020
`(not filed)
`1021
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`1022
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`1023
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`1024
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`EXHIBIT LIST (CONTINUED)
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`
`Description
`Shape 3, used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Institution Decision in IPR2016-0949 (filed as Paper 10, but
`not filed as an exhibit).
`Annotated Fig. 1 of U.S. Patent 7, 859,514 to Park.
`
`Annotated Fig. 23 of U.S. Patent 5,989,123 to Tosaki et al.
`
`Expert Declaration of David Rempel, M.D., Regarding the PO
`Responses in cases IPR2016-00948 and IPR2016-00949.
`(“Rempel Reply Decl.”)
`Transcript of Deposition of Dr. Glen Stevick on 09 March 2017.
`(“Stevick Depo., Vol. I”)
`Transcript of Deposition of Dr. Glen Stevick on 15 March 2017.
`(“Stevick Depo., Vol. II”)
`Excerpt from USPTO Manual of Classification, January 2011,
`Class 463 Amusement Devices: Games.
`www.uspto.gov/web/patents/classification/uspc463/sched463.pdf
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`I.
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`INTRODUCTION
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`Petitioner has organized this Reply so that the section divisions and
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`numbers herein correspond to the section numbers of the Patent Owner
`
`Response in IPR2016-00948 (“PO Response”).
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`II. CLAIM CONSTRUCTION
`
`A. Relevant law.
`
`Petitioner applies the claim constructions adopted by the Board and the
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`applicable law.
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`B.
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`Technology overview.
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`Petitioner rests on the overview provided at pages 7-9 of the Petition
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`(Paper 1).
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`C.
`
`“Hand-held” should be afforded the full scope of its ordinary
`meaning.
`
`Petitioner agrees that the claims of the ’525 patent are limited to a hand-
`
`held controller.
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`“Hand-held” should be afforded the full scope of its ordinary meaning,
`
`because each of Ironburg’s examples of alleged disavowal of claim scope is
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`actually merely descriptive of a disclosed embodiment, and/or not sufficiently
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`clear and unmistakable to warrant a narrowing construction.
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`For example, Ironburg offers an excerpt (describing Figs. 2 and 3) at 3:13-
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`14 of the ’525 patent, as an example of alleged disavowal. See, PO Response at
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`pp. 12-13. However, 3:3-4 of the ’525 patent describes those figures as
`
`illustrating a “particular embodiment.” The inconsistency between those
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`excerpts, if any, does not provide a “clear and unmistakable” disavowal.
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`D. The Patent Owner unnecessarily and improperly imports a
`hand-held requirement from different claim language into the
`phrase “located at the back of the controller.”
`
`Ironburg improperly proposes importing a hand-held requirement from
`
`different claim language into the phrase: “located at the back of the controller.”
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`See, PO Response, pp. 14-15. However, there is no required relationship
`
`between the claim phrase “located at the back of the controller” and the hand-
`
`held requirement set forth elsewhere in the claims. For example, there is no
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`statement in the ’525 patent or its prosecution history that a device cannot have
`
`controls “located at the back of the controller” unless it is hand-held. Therefore,
`
`Ironburg’s proposed narrowing construction for “located at the back of the
`
`controller” should be rejected.
`
`E.
`
`The Patent Owner improperly imports description about a
`particular embodiment into the claim term “recess.”
`
`Attempting to narrow the claims of the ’525 patent without amendment,
`
`Ironburg proposes bloating the construction of “recess” by importing several
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`characteristics of a particular embodiment as follows: “an indentation in the
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`back surface of the hand-held controller that joins the first handle and the second
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`handle for receiving a user’s fingers.” See, PO Response at pp. 15-20. That is
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`improper for several reasons:
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`First, importing limitations of a particular embodiment of the specification
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`into the claims is improper, unless there has been a “clear and unmistakable”
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`disavowal of claim scope by the patent applicant. See Elbex Video, Ltd. v.
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`Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). Here,
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`however, all of the examples of alleged disavowal offered by Ironburg are
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`actually merely descriptive of a particular embodiment.
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`For example, Ironburg offers an excerpt of the ’525 patent at 3:39-44 as
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`an alleged disavowal of claim scope. See, PO Response at p. 17. However, as
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`noted at 3:3-4, that excerpt, like Fig. 3, is actually descriptive of a “particular
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`embodiment.” Ironburg also relies on 2:21-25 of the ’525 patent, but that does
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`not refer to any “recess,” but rather to “a position to be operated by middle
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`fingers of a user.”
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`Ironburg also relies upon language in dependent claim 8 of the ’525
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`patent, which expressly requires that “a user’s finger may be received in said
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`respective recess.” See, PO Response at pp. 17-18. However, that example
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`demonstrates that the patentee knew how to expressly require the type of recess
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`in which “a user’s finger may be received.” Such express language in claim 8
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`would be rendered superfluous if its requirement were improperly imported into
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`the meaning of the word “recess” in claim 7.
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`Ironburg misleadingly implies that 1:62-67 of the ’525 patent refers to
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`“the present invention” (see, PO Response, p. 18). It does not. Rather, it refers
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`to a preferred embodiment, as follows: “Preferably, each elongate member is
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`mounted within a respective recess located in the case of the controller.” 1 The
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`word “preferably” does not signal a clear and unmistakable disavowal of claim
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`scope – especially in a subsection of the ’525 patent that Ironburg’s own expert
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`considers “loosely written.” See Stevick Depo., Vol. II (Exh. 1023) at 0047:23-
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`0048:09.
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`Third, there is no written description support for the claims to require an
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`“indentation” to “join” the first handle and the second handle (as would be
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`required according to Ironburg’s proposed construction of “recess”). Neither
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`“indentation,” nor “join,” appear anywhere in the ’525 patent, and it is not
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`immediately clear how an indentation “joins” two handles together in this
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`context. Indeed, Ironburg’s proposed construction would itself require
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`construction.
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`1 All emphasis added herein unless otherwise noted.
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`Fourth, the narrowing construction of the claim term “recess” that
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`Ironburg proposes now, is refuted by Ironburg’s own earlier statements about
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`the very same claim term in this case: (see Patent Owner’s Preliminary
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`Response, page 9):
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`Should a trial be instituted, the Patent Owner proposes
`that the Board adopt the plain and ordinary meaning for the
`terms “thickness,” “elongate member,” “inherently resilient and
`flexible,” “recess,” “front end of the controller,” and“paddle
`lever.” Here, there is no clear lexicography or disavowal in
`the intrinsic record to deviate from the plain and ordinary
`meaning of these claim terms.
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`Patent Owner Preliminary Response, p. 9. Ironburg then stated that the “Patent
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`Owner submits that the term ‘recess’ is a common English term and needs no
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`construction.” Id. at p. 13.
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`Ironburg’s representations to the Board then are simply the opposite of the
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`representations that Ironburg is making to the Board now. There was never a
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`clear and unmistakable disavowal of claim scope that could justify the narrow
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`construction of “recess” that Ironburg now proposes.
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`F.
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`The Board should decline to correct the erroneous claim
`phrase: “elongate members converge towards the front end of
`the controller with respect to one another.”
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`Ironburg avoids explicitly acknowledging the indisputable fact that the
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`term “the front end” in claim 13 lacks antecedent basis, and therefore is a claim
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`drafting error. Still, Ironburg implicitly asks the Board to correct the claim
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`drafting error by construing “the front end” as “the front” – effectively
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`eliminating the word “end” from the claim entirely to hide the antecedent basis
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`problem rather than deliberately addressing it.
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`Ironburg’s position is unsupported by the ’525 patent, which does not
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`show in any figure, nor describe in any text, convergence towards the “front” of
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`the controller. Instead, convergence towards the “front” is a creature of only
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`Ironburg’s unsupported geometric arguments and extensively annotated figure
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`(PO Response at pp. 21-22). Indeed, convergence towards the “front” (into the
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`page) cannot possibly be shown from the viewing angle that the patentee chose
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`for the pertinent Figs. 2 and 3. See Rempel Reply Decl. at ¶5.
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`By contrast, the ’525 patent specification and figures strongly support that
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`the antecedent-lacking phrase “the front end” in claim 13 was actually meant to
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`have been written as “the top edge.” For example, the convergence of the
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`elongate members 11 that is actually shown in Figs. 2 and 3 of the ’525 patent,
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`and the associated description at 3:51-56, strongly suggests that claim 13 was
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`meant to refer to “the top edge” rather than “the front end.” See Rempel Reply
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`Decl. at ¶6. Specifically, the ’525 specification states at 3:53-56:
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`In one embodiment the paddles are orientated parallel with each other.
`In an alternative embodiment the paddles are orientated such that they
`converge towards the top edge with respect to each other.
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`Moreover, despite Ironburg’s creative annotations, the only type of convergence
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`that is actually shown in any figure of the ’525 patent is convergence towards
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`the top edge. See Rempel Reply Decl. at ¶4.
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`Since Ironburg’s proposed correction to claim 13 changes its scope, and
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`the deficiency of antecedent basis may be corrected by a more plausible
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`alternative, the Board should decline to correct the claim. See, e.g., Ultimax
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`Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir.
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`2009). The law holds a Patent Owner to its claim language as actually written,
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`examined, and allowed, rather than to unexamined language that the Patent
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`Owner wishes had been written. See, e.g., Chef America Inc. v. Lamb Weston,
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`Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004)
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`III. PATENT OWNER’S ARGUMENTS DO NOT NEGATE
`ANTICIPATION BY TOSAKI.
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`A. Tosaki discloses a hand-held controller that is held in and
`operated by both hands of a user.
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`Tosaki expressly discloses a hand-held controller that is held in and
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`operated by both hands of a user. For example, Tosaki discloses a video game
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`controller that includes a steering wheel with two “hand grips 14a” (see Tosaki
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`at 8:63-64) and which expressly teaches that “the hand is holding the steering
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`wheel” (see Tosaki at 3:32).
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`Rather than making any claim amendment to avoid Tosaki, Ironburg
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`proposes to narrowly interpret “hand-held” to require that the controller must be
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`supported by only the hands and nothing else. See, PO Response, p. 26.
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`However, there is nothing in the ’525 patent or its claims that disclaims or
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`forbids a portion of a hand-held video game controller from touching and/or
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`receiving additional support from another part of the user’s body, such as the
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`thighs.
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`On the contrary, one of ordinary skill in the art would recognize that a
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`user might rest the bottom of the controller of the ’525 patent on his thighs when
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`seated, to avoid fatigue from continuous lifting (e.g. while playing a video game
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`console from a couch). See Rempel Reply Decl. at ¶8. The ’525 patent does not
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`disavow such use, and that does not absurdly re-categorize an entire automobile
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`as being a type of video game controller (despite Ironburg’s flawed analogy at
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`page 26 of the PO Response).
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`Ironburg argues about what Tosaki allegedly “disparages,” and relies on
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`the appearance of “present invention” in Tosaki’s abstract. See, PO Response at
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`p. 24. But the scope of Tosaki’s claims is not at issue here. Rather, Tosaki
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`serves as prior art for all that it discloses, whether claimed or not.
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`Logically, if holding the base casing component 10 in the thighs makes
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`Tosaki “thigh held” (despite the steering wheel component 14 being held in the
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`hands) as Ironburg argues, then holding the steering wheel component 14 in the
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`hands equally makes Tosaki “hand held” (despite the base casing component 10
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`being held in the thighs).
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`Finally, Ironburg argues that the Tosaki “hand grips 14a” do not qualify
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`as “handles” as claimed in the ’525 patent. See, PO Response at p. 27. But the
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`Tosaki abstract describes a “player’s hand holding the grip.” Ironburg can point
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`to no disclosure in the ’525 patent that could possibly exclude Tosaki’s “hand
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`grips 14a” from being considered as “handles.” Of course they are “handles”
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`according to ordinary meaning (see Rempel Reply Decl. at ¶9), and Petitioner
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`asserted that such term should be interpreted according to its ordinary meaning.
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`See section V.B.10. of the Petition (Paper 1), p.17.
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`Therefore the video game controller disclosed by Tosaki qualifies as a
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`“hand-held” controller that is held in and operated by both hands of a user, as a
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`person of ordinary skill would understand such concepts in the context of the
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`’525 patent. See Rempel Reply Decl. at ¶10.
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`B.
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`Tosaki discloses elongate members located on a back of the
`controller.
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`Ironburg argues that only the bottom plate 11 of a base casing component
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`10 of the Tosaki video game controller can correspond to a “back of the
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`controller.” See, PO Response, p. 29. However, the base casing component 10
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`is not the only component of the Tosaki video game controller that has a back
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`surface, and the ’525 patent does not limit the phrase “back of the controller”
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`beyond its ordinary meaning. Hence, there is no disavowal in the ’525 patent
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`that would preclude the back surface of the Tosaki’s steering wheel component
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`14 from also being considered as a “back of the controller.”
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`Therefore, there is no inconsistency in the Petitioner’s positions, that: 1)
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`the steering wheel 14 of Tosaki is expressly described as held in the hands,
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`making the Tosaki controller “hand-held,” and 2) the steering wheel 14 of
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`Tosaki has a back surface, which can be considered as a back of the Tosaki
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`controller.
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`C.
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`Tosaki discloses elongate members that converge in the same
`manner as in the only disclosed embodiment of the ’525 patent.
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`As demonstrated by the Petition (Paper 1), pp. 23-24, Fig. 23 of Tosaki
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`clearly shows convergence of elongate members 125, 126, in the same manner
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`as does the only disclosed embodiment of the ’525 patent. Compare, Fig. 2 of
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`the ’525 patent and Fig. 23 of Tosaki – each depicting a video game controller
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`with similar claimed convergence identified by annotation (See Rempel Reply
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`Decl. at ¶7):
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`A
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`B
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`A
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`B
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`Tosaki
`convergence: A < B
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`’525 patent
`convergence: A < B
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`Ironburg argues that it cannot find convergence in Fig. 24 of Tosaki (see,
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`PO Response, p. 32), yet Ironburg needs only to review Tosaki’s Fig. 23 instead
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`(which corresponds to the viewing direction of Fig. 2 of the ’525 patent, from
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`which the claimed convergence in both references is visible). See Rempel Reply
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`Decl. at ¶7.
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`Therefore, to the extent that the antecedent-lacking phrase “the front end”
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`(of claim 13 of the ’525 patent) can be mapped to the ’525 patent’s own
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`disclosure, it can be similarly mapped to the disclosure of the Tosaki prior art
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`(as shown above).
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`PETITIONER’S REPLY TO PO RESPONSE IN IPR2016-00948
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`IV. CLAIMS 1-11, 13, 16, 17, AND 20 ARE UNPATENTABLE OVER
`ENRIGHT IN VIEW OF TOSAKI
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`A. Legal standard for combining references.
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`Ironburg accuses Petitioner of making only “conclusory allegations” to
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`support obviousness in its petition. See, PO Response, p. 34. However, that
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`allegation was already rejected by the Board. See, Institution Decision (Paper
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`10), p. 24. In fact, Petitioner provided a rationale that underpins why a POSITA
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`would lengthen the back controls (mode switches 32, 34) of Enright, based on
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`the longer appearance of the shift levers 125, 126 on the back of the Tosaki
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`steering wheel 14. See, e.g., Petition (Paper 1), pp. 29-32.
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`B.
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`Level of Ordinary Skill in the Art
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`1.
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`The Patent Owner confirms a senseless qualification to be
`considered as a POSITA.
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`Ironburg takes the illogical position that the training and experience
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`required to qualify as a POSITA in the field of video game controllers is: “less
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`than a year of experience or other training in controller assembly or tooling.”
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`See, PO Response, p. 34. Petitioner initially assumed that “less than” must have
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`been an unintended typographical error, because it leads to absurd results, e.g.:
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`The language of Ironburg’s proposal expressly excludes a person with two years
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`of experience and training, but a person with zero experience or training
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`expressly qualifies as a POSITA.
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`Initially on cross examination, Ironburg’s paid expert Dr. Stevick
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`acknowledged that Ironburg had actually meant to write “at least,” rather than
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`“less than.” See Stevick Depo., Vol. I (Exh. 1022) at 0031:20-0033:11.
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`However, when subsequently led on re-direct examination, he re-affirmed
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`Ironburg’s POSITA definition as originally worded. See Stevick Depo., Vol. II
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`(Exh. 1023) at 00122:20-0124:11. Strangely, in that re-direct testimony Dr.
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`Stevick was led to confirm that he was once a POSITA (under Ironburg’s absurd
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`definition) “at some point” in his career, back when he had less experience and
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`training. See, Id.
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`Hence, despite plain illogic in Ironburg’s proposal for the qualifications of
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`a POSITA, Ironburg stubbornly reaffirmed it. Therefore, the Board should
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`disregard Ironburg’s proposed definition of a POSITA.
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`2.
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`The UK Examiner is a POSITA.
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`The government of the United Kingdom evidently considered and
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`employed Mr. Brendan Donohoe (a patent examiner in the U.K. Intellectual
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`Property Office) as a POSITA in the video game controller art, and entrusted
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`him to judge patent applications in the same technical field as the ’525 patent.
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`That is an objective and sufficient showing to demonstrate that Mr. Donohoe is a
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`POSITA in the present context.
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`PETITIONER’S REPLY TO PO RESPONSE IN IPR2016-00948
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`Moreover, Ironburg asserts that the level of ordinary skill in the art is
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`“low” and that a POSITA needs “less than a year of experience or other training
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`in controller assembly or tooling.” See, PO Response at p. 40. Hence, there can
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`be no dispute that Mr. Donohoe meets the Patent Owner’s definition of a
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`POSITA. Although that definition is absurd, Ironburg has elected to maintain it,
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`and so Ironburg cannot now be heard to complain about Mr. Donohoe’s
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`credentials.
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`C.
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`Patent Owner mischaracterizes Petitioner’s challenge, by
`assuming whole Tosaki structures need be transplanted into
`Enright.
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`Section IV.C. of the PO Response appears to be inadvertently redundant
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`with section IV.E therein. Hence, Petitioner’s reply to both is provided in
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`Petitioner’s subsequent section IV.E. below.
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`D. Enright discloses elongate back controls that are inherently
`resilient and flexible.
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`Paragraph [0035] of Enright explains that “the user may quickly depress
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`the mode switch 32, 34 […] and then return to normal by releasing the mode
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`switch when desired.” Ironburg concedes that the foregoing language suggests
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`“like other buttons, that the mode switches move to a biased position by a user’s
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`finger, and returns [sic] to an unbiased position when not under load.” See, PO
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`Response, p. 41. Hence, it is beyond reasonable dispute that the foregoing
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`disclosure of Enright teaches resiliency of the mode switches 32, 34 (see
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`Rempel Reply Decl. at ¶11), and Ironburg challenges only whether the prior art
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`teachings are sufficient to suggest flexibility of the mode switches 32, 34.
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`The foregoing excerpt of Enright would suggest to a POSITA in June
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`2011 that the mode switches 32, 34 are or include some flexible element such as
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`a spring, to provide the ubiquitous function that is described therein (i.e.
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`depressing to a biased position, and releasing to return). See Rempel Reply Decl.
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`at ¶12. A POSITA in June 2011 would have been aware of various well-known
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`and conventional ways to fabricate the mode switches 32, 34 to be or include a
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`flexible element – such as fabricating them from any flexible material. See Id.
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`Ironburg did not invent flexible materials, nor was Ironburg the first make
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`a switch from an elongate flexible beam. See, e.g., Oelsch2 at 2:53-57
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`(describing the use of a flexible material for “switch element 6,” which includes
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`a “center zone 7” that defines an elongate “contact tongue 10”). Hence, a
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`POSITA would have recognized that the functionality of the mode switches 32,
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`34 described in Enright paragraph [0035], could be obtained by simply making
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`the elongate member flexible. See Rempel Reply Decl. at ¶12. Thus a flexible
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`back control is obvious over Enright.
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`2 Petitioner alleges that the combination of Enright, Tosaki, and Oelsch
`teaches all of the elements of dependent claim 18, which necessarily includes all
`of the limitations of independent claim 1.
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`E.
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`Patent Owner mischaracterizes Petitioner’s challenge, by
`assuming whole Tosaki structures need be transplanted into
`Enright.
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`Ironburg misinterprets the instituted basis for challenge when arguing that
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`“Petitioner attempts to plug in Tosaki’s gearshift levers into Enright’s hand-held
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`controller.” See, PO Response, pp. 38, 41. Actually, Petitioner never proposed
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`that, and the Board never instituted trial on that basis. Rather, Petitioner
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`continues to rely upon the structure of Enright’s mode switches 32, 34
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`themselves (for the teaching of elongate members), and uses Tosaki only for the
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`suggestion to make those Enright mode switches longer.
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`Contrary to Ironburg's position, a proof of obviousness does not require
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`that structures of Tosaki can be bodily incorporated (i.e. transplanted) into the
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`Enright device. See, Allied Erecting and Dismantling Co., Inc. v. Genesis
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`Attachments, LLC, 825 F.3d 1373, 1380-81 (Fed. Cir. 2016) (“The test for
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`obviousness is not whether the features of a secondary reference may be bodily
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`incorporated into the structure of the primary reference, but rather whether a
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`skilled artisan would have been motivated to combine the teachings of the prior
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`art references to achieve the claimed invention.”) (citations and internal
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`quotations omitted)
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`PETITIONER’S REPLY TO PO RESPONSE IN IPR2016-00948
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`1.
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`The instituted challenge does not require the arched
`openings of Tosaki to be transplanted into Enright.
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`Ironburg assumes that modifying Enright (in view of Tosaki) would
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`somehow require a transplant of Tosaki’s arched openings 14e into the Enright
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`controller. See, e.g. the annotated figure on page 44 of the PO Response.
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`However, that is a self-serving and unnecessary (see, Allied Erecting at 1380-
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`81) mischaracterization of Petitioner’s instituted challenge.
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`In fact, the instituted challenge modifies Enright only by simply
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`lengthening the existing back controls (mode switches 32, 34), as suggested by
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`the longer appearance of the shift levers 125, 126 on the back of the Tosaki
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`steering wheel 14. See, e.g., Petition (Paper 1), pp. 30-31; see also, annotated
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`Fig. 5 of Enright, below. However, Ironburg does not respond to that reasonable
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`challenge, and Ironburg’s expert never considered it or formed any opinion
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`about it. See Stevick Depo. , Vol. I (Exh. 1022) at 0153:15-0154:12.
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`Enright Fig. 5
`(annotated)
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`Elongate members (mode
`switches 32, 34), already exist
`on the back of Enright, and can
`be simply lengthened in place,
`without requiring any transplant
`of structure from Tosaki.
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`Dr. Stevick admitted that the purpose of the arched openings 14e is to
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`fashion the Tosaki’s video game controller to better “approximate a real steering
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`wheel.” See Stevick Depo., Vol. I (Exh. 1022) at 0128:23-0129:01. Naturally
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`then, a POSITA would consider Tosaki’s arched openings 14e as unnecessary to
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`the Enright video game controller, which was never intended to resemble a
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`steering wheel. See Rempel Reply Decl. at ¶16.
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`Hence, all of the alleged problems with bodily incorporation of Tosaki’s
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`arched openings 14e into Enright (as shown in the annotated figure on page 44
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`of the PO Response) are irrelevant to the instituted challenge. Ironburg merely
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`attacks a straw man.
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`2.
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`Petitioner’s challenge relies upon the existing structure of
`Enright’s mode switches, and uses Tosaki only for the
`suggestion to make them longer.
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`Ironburg’s arguments against the proposed modification of Enrigh