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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,
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`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
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`Patent Owner.
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`____________
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`Cases
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`IPR2016-00948 (Patent 8,641,525 B2)
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`IPR2016-00949 (Patent 9,089,770 B2)
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`PATENT OWNER’S OBJECTIONS TO EVIDENCE RELIED
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`UPON IN PETITIONER’S REPLY
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`IPR2016-00948
`IPR2016-00949
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Ironburg Inventions Ltd.
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`(“Patent Owner”) submits the following objections to evidence relied upon by
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`Petitioner Valve Corporation (“Petitioner”) in Petitioner’s Reply to the Patent
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`Owner Response, which was filed on March 28, 2017.
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` Patent Owner’s objections are as follows:
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`EXHIBIT 1007 – Hearsay (FRE 802), Authentication (FRE 901), Relevance
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`(FRE 402), Confusion/Misleading (FRE 403)
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`Patent Owner objects to Exhibit 1007 as containing inadmissible hearsay,
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`pursuant to Fed. R. Evid. 802. If, as here, an exception does not apply, the rule
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`against hearsay operates to prohibit out-of-court statements from being offered to
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`prove the truth of the matter asserted. Fed. R. Evid. 801–803.
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`Here, Exhibit 1007 is inadmissible hearsay evidence including specific
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`statements by a UK examiner, Mr. Donohue, in an unrelated application.
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`Petitioner quotes the UK examiner’s statements as follows:
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`“It is extremely well known in the art to modify gamepads to
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`suit the requirements of a particular game or gamer. […] The
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`features defined in your claims are typical features of gamepad
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`controls/buttons. As evidenced by the documents listed above, the
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`skilled person would consider them as nothing more than routine
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`modifications or variations to literally any gamepad. Moreover, the
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`skilled person would find it entirely obvious to modify or tailor a
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`given conventional gamepad to suit the needs of any individual, and
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`1
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`IPR2016-00948
`IPR2016-00949
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`would possess (or have ready access to) the skills and knowledge
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`required to do so.” Petitioner’s Reply to the Patent Owner Response,
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`IPR2016-00949, Paper 24 at 22 (March 28, 2017) (emphasis in
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`original); Petitioner’s Reply to the Patent Owner Response, IPR2016-
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`00948, Paper 23 at 21 (March 28, 2017) (emphasis in original).1
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`In reliance on this out-of-court statement, Petitioner concludes in its Reply
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`that “[e]vidently such modifications were typically obvious to a POSITA without
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`hindsight, and implemented successfully. That is corroborated by a timely
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`description of the state of the video game controller art by Mr. Donohoe, a
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`POSITA speaking for the UK Intellectual Property Office …” Id.
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`Petitioner offered the statement to prove the truth of the matter asserted
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`therein. Specifically, this Exhibit 1007 is hearsay because Petitioner is using the
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`out-of-court statements to prove what was known in the art at the time of the
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`invention. Here, the UK examiner's statement is not prior art, not from before the
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`application was filed, not sworn testimony, and is therefore hearsay not subject to
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`any hearsay exception. See, e.g., Standard Innovation Corp. v. Lelo, Inc.,
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`IPR2014-00148, Paper 41 at 13-15 (April 23, 2015) (hearsay statements not
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`subject to exceptions were found inadmissible in PTAB proceeding).
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`Patent Owner also objects to Exhibit 1007 as lacking proper authentication
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`1 This statement was previously objected to by Patent Owner on November 1, 2016
`under hearsay (FRE 802), authentication (FRE 901), and relevance (FRE 402).
`Petitioner re-stated the UK Examiner’s out-of-court statements in its Reply, which
`Patent Owner now objects to under 37 C.F.R. § 42.64(b)(1).
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`2
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`IPR2016-00948
`IPR2016-00949
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`as required by Fed. R. Evid. 901. Petitioner has not established this exhibit as self-
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`authenticating, nor has Petitioner authenticated these documents, for example, by
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`testimony from a witness with personal knowledge that the documents are what
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`they are claimed to be.
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`Patent Owner further objects to Exhibit 1007 is also irrelevant, misleading,
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`and confusing. Fed. R. Civ. 401, 403. Exhibit 1007 is irrelevant, misleading, and
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`confusing because the statements were not made in the context of the Challenged
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`Claims nor in the context of applicable U.S. law. The statements are not relevant
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`to the patentability of the Challenged Claims, particularly to the extent it has not
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`been shown to be prior art or evidence of the level of ordinary skill in the art at the
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`relevant time period. It is also irrelevant because Petitioner failed to carry its
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`burden of establishing the UK Examiner qualifies as a POSITA. Petitioner makes
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`no effort to present the UK Examiner’s educational background, whether the UK
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`Examiner even had any prior experience in video game controller technology, or
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`even if he did, how the UK Examiner’s prior experience was relevant to the video
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`game controller industry. Petitioner also failed to explain how a UK Examiner,
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`presumably trained under UK Patent Law, and not US Patent Law or video game
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`technology, is actually a skilled artisan with respect to the technology of the ‘770
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`Patent and the ‘525 Patent.
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`3
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`IPR2016-00948
`IPR2016-00949
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`4
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`Date: April 4, 2017
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`IPR2016-00948
`IPR2016-00949
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
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`that on November 1, 2016, a complete and entire electronic copy of this PATENT
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`OWNER’S OBJECTIONS TO EVIDENCE RELIED UPON IN PETITIONER’S
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`REPLY, was served via PTAB E2E to Petitioner’s counsel of record at the
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`following address:
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`Date: April 4, 2017
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`318498234.1
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`5
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