BARCELÓ, HARRISON & WALKER, LLP
`Joshua C. Harrison, USPTO Reg.# 45,686
`Reynaldo C. Barceló, USPTO Reg.# 42,290
`E-mail: josh@bhiplaw.com
`2901 West Coast Hwy, Suite 200
`Newport Beach, California 92663
`Telephone: (949) 340-9736
`Facsimile:
` (949) 258-5752
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`Attorneys for Petitioner, Valve Corporation
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Mail Stop Patent Board
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`Patent Trial and Appeal Board
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`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.
`IPR Petition Filing Date: 2016-04-22
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`Trial Number: To Be Assigned
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`Panel: To Be Assigned
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`Patent filing date: 2011-06-17
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`Patent issue date: 2014-02-04
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`Title: CONTROLLER FOR VIDEO
` GAME CONSOLE
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`Purported Inventors: Simon Burgess
` Duncan Ironmonger
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`Purported assignee:
`IRONBURG INVENTIONS LTD.
`a United Kingdom Limited Company
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`I, David Rempel, M.D., hereby declare as follows:
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`cover page
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`

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`
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`1.
`an expert witness regarding certain questions regarding U.S. Patent 8,641,525
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`I have been retained by Valve Corporation to provide my opinions as
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`(hereinafter the “ ‘525 patent”), U.S. Patent 5,989,123 to Tosaki et al. (hereinafter
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`“Tosaki”), U.S. Patent Application Publication 2010/0073283 to Enright
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`(hereinafter “Enright”), U.S. Patent Application Publication 2001/0025778 to Ono
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`(hereinafter “Ono”), U.S. Patent 4,032,728 to Oelsch (hereinafter “Oelsch”), and
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`“Rapid Fire Mod for Wireless Xbox 360 Controller, Step by Step Tutorial with
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`Pictures,” posts 341-346 by Jimakos Sn, published 09 July 2008 at
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`http://forums.xbox-scene.com/index.php?/topic/643928-rapid-fire-mod-for-wireless-
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`xbox-360-controller/page-23 and at http://forums.xbox-
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`scene.com/index.php?/topic/643928-rapid-fire-mod-for-wireless-xbox-360-
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`controller/page-24 (hereinafter “Jimakos”).
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`EDUCATION AND EXPERIENCE
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`2.
`of California, Berkeley. I am also a Professor of Medicine Emeritus in the
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`I am a Professor in the Department of Bioengineering at the University
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`Department of Medicine at the University of California, San Francisco, where I have
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`worked for more than 26 years. I have held a California Medical License since
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`In my current capacity, I am affiliated with the Ergonomics Program, in
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`1982.
`3.
`the Division of Occupational and Environmental Medicine.
`4.
`Certified Professional Ergonomist by Board of Certification in Professional
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`I am a Fellow of the Human Factors and Ergonomics Society, and a
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`Ergonomics (1994).
`5.
`Mouse Device,” filed on 22 February, 2000.
`6.
`Safety and Ergonomics.
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`I am a named inventor on U.S. Patent 6,509,891, entitled “Ergonomic
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`In 2006 I was awarded the IEA/Liberty Mutual Prize in Occupational
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000001
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`In 2007, I was awarded the HFES/User-Centered Product Design
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`7.
`Award.
`8.
`the Applied Ergonomics journal, and the IIE Transactions on Occupational
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`I am a member of the Editorial Boards of the Human Factors journal,
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`Ergonomics and Human Factors. I have also served as a reviewer of professional
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`authorship submitted to the International Journal of Industrial Ergonomics, and the
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`Journal of Hand Surgery (Am).
`9.
`field, 18 books, chapters, or guidelines, and numerous government reports and
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`I am an author or co-author of 150 peer-reviewed publications in my
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`conference presentations. Many of these were pertenent to the ergonomic
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`evaluation and design of hand held devices.
`10. Additional information on my education, experience, publications, and
`awards are found in my CV, attached as Exhibit 1 to this Declaration.
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`OPINIONS
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`11.
`‘525 patent is that of a designer of commercial video game controllers. No
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`In my opinion, the level of ordinary skill in the art pertaining to the
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`collegiate education was required to fully understand the particular subject matter of
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`the ‘525 patent at the time of its filing, or today. However, one of ordinary skill in
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`the video game controller design art when the ‘525 patent was filed would have
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`typically had a bachelor’s degree in an industrial design or engineering field, and
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`approximately two years of relevant experience.
`12. The disclosure of the ‘525 patent fails to adequately distinguish
`“thickness” from width, and therefore one of ordinary skill in the art would have
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`considered the claim term “thickness” to have been vague and ambiguous at the
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`time that the ‘525 patent was filed.
`13. The term “inherently resilient” is expressly defined at col. 3, lines 34-
`35 of the ’525 patent to mean that the elongate members “return to an unbiased
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000002
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`position when not under load.” One of ordinary skill in the art would understand
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`that the “load” in this context clearly must be supplied by the user’s finger(s).
`14. The ‘525 patent does not describe any difference between a “paddle
`lever” versus a “button,” a “trigger,” or any other control member, and so one of
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`ordinary skill in the art would have generally considered prior art buttons, triggers,
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`and other control members to qualify as a “paddle lever” in the context of the ‘525
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`patent when it was filed.
`15. One of ordinary skill in the art would have considered the controller
`embodiments disclosed by Tosaki to have been hand held, when the ‘525 patent was
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`filed, before, and since.
`16. Each of the elongate members (shift levers 126, 125) of Tosaki extends
`substantially the full distance between a top edge and a bottom edge of the Tosaki
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`controller.
`17. One of ordinary skill in the art when the ‘525 patent was filed would
`have considered it to be an obvious variation to lengthen the shift levers 126, 125 of
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`Tosaki. For example, one of ordinary skill in the art would have been motivated to
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`make the shift levers 126, 125 of Tosaki longer, to better accommodate locating and
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`lifting the shift levers 126, 125.
`18. Tosaki also expressly describes a situation where the shift levers are
`resilient and flexible, at col. 14, lines 19-24 (emphasis added): “In the modification
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`shown in FIGS. 23 and 24, the integrally formed shift lever will be elastically
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`deformed if a player pushes up on both sides of the shift lever with a stronger than
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`usual pressure ...” The term “elastically,” in the above quote, implies that the
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`Tosaki shift levers would return to an unbiased position upon the removal of the
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`deforming load in the described situation.
`19. The first and second back controls 126, 125 of Tosaki are positioned to
`be operated by a middle finger of a user, as the user positions the thumbs on the
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000003
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`front casing 120a, and the other fingers wrap around the back casing 120b to operate
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`the back controls 126, 125.
`20. One of ordinary skill in the art when the ‘525 patent was filed would
`have considered it to be an obvious variation to lengthen the mode switches 32, 34
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`of Enright. For example, one of ordinary skill in the art would have been motivated
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`to make the mode switches 32, 34 longer “for easy operation of the invention” or “if
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`ergonomically desired,” per Enright paragraph [0032].
`21. One of ordinary skill in the art when the ‘525 patent was filed would
`have been motivated to combine Enright and Tosaki, because both references
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`disclose hand-held video game controllers having front controls operated by a user’s
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`thumbs and rear controls operated by fingers other than the thumb, and because the
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`Tosaki reference may suggest an alternative rear control geometry that could be
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`useful for Enright.
`22. One of ordinary skill in the art would understand that the elongate
`members of Enright (the buttons of mode switches 32, 34) are inherently resilient
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`and flexible, at least because Enright paragraph [0035] states “the user may quickly
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`depress the mode switch 32, 34 when he or she desires to emulate a button press of
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`X, Y, A or B without having to move his thumb off of the thumbstick, and then
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`return to normal by releasing the mode switch when desired.”
`23. The controller shown in Fig. 5 of Enright has control triggers located
`on the top edge of the controller, and the controller is shaped such that the user's
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`index fingers may be positioned to operate those top edge control triggers.
`24. Enright paragraph [0035] states that “the user may quickly depress the
`mode switch 32, 34 [back controls shown in Fig. 5] when he or she desires to
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`emulate a button press of X, Y, A or B [which are front controls labeled as 25 in
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`Figs. 4 and 6]…” One of ordinary skill in the art would consider the term
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`“emulate,” as used in Enright paragraph [0035], to include a meaning within the
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`scope of the term “replicate,” as used in claim 3 of the ‘525 patent.
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000004
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`25. Enright paragraph [0032] states that the controller device may be
`configured such that either of the mode switches 32, 34 [back controls] will “change
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`the mode of” the thumbstick 26 [front control]. In this context, to “change the mode
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`of” implies an additional function as claimed in claim 2 of the ‘525 patent.
`26. Fig. 5 of Enright shows that a central region of the housing of the
`controller is recessed between (and relative to) the left and right handles, and that
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`the elongated members of the back controls (i.e. mode switches 32, 34) are mounted
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`within such recessed region between the left and right handles. Each of the elongate
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`members of Enright (buttons of mode switches 32, 34) has an outermost surface
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`which is disposed in close proximity to the outermost surface of the controller
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`housing 24 such that a user's finger may be received in said respective recess. This
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`is disclosed by Enright because each of the mode switches 32, 34 is meant to be
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`pressed by the fingers of the user.
`27. One of ordinary skill in the art would have been motivated to make
`each of the elongate members of Enright (buttons of mode switches 32, 34) have
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`appropriate dimensions for quick depression and easy operation by fingers other
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`than the thumb, which is the very same context, purpose, and motivation for the
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`elongate members of the back controls of the ‘525 patent. Hence, whichever
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`interpretation of “thickness” is assumed (see paragraph 12 herein), based on Enright,
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`routine experimentation would have led one of ordinary skill to choose an elongate
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`member “thickness” within the ranges claimed in claims 9-11 of the ‘525 patent.
`28. Each of the back controls disclosed by Enright (e.g. the mode switches
`32 and 34), suggests a “paddle lever” in the context of claim 16 of the ’525 patent,
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`at least because the specification of the ’525 patent does not adequately structurally
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`distinguish a “paddle lever” from any other type of button or trigger.
`29. One of ordinary skill in the art would have been motivated to combine
`Enright and Ono, at least because both are expressly directed to the video game
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`controller art, and because Ono discloses a switch structure, for example at Ono
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000005
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`paragraph [0005], that may enhance the operability of the elongate mode switches
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`32, 34 of Enright (see, e.g., Ono at paragraph [0005]).
`30. One of ordinary skill in the video controller arts would have naturally
`expected that the first and second back controls (e.g. Enright mode “switches” 32,
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`34) would have been in conventional registry with switch mechanisms and activate
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`them by displacement.
`31. One of ordinary skill in the art would have been motivated to combine
`Tosaki and Jimakos, at least because Tosaki teaches a video game controller and
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`Jimakos teaches how to modify and improve a video game controller.
`32.
`Wireless Xbox 360 Controller (that Jimakos was modifying) already included four
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`It was already common knowledge and well known in the art that the
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`controls located on the top edge of the controller: two triggers and two shoulder
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`buttons. It is well known that those four top edge controls were necessarily present
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`in the Wireless Xbox 360 Controller that Jimakos was modifying. Moreover, those
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`top edge controls were shaped such that the user's index fingers may be positioned
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`to operate them.
`33. The Jimakos publication is intended to provide a “Rapid Fire Mod for
`Wireless Xbox 360 Controller” (see Jimakos at Page 23, emphasis added), which
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`then would suggest to one of ordinary skill in the art that at least one of the back
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`controls has functions in addition to the top edge control and the front control.
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`Moreover, even assuming (counter-factually) that the Jimakos back controls had no
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`practical or additional function whatsoever, still their existence would suggest the
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`idea of back controls having additional functions to one of ordinary skill in the art.
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`Indeed it has always been expected in the art that an additional button or control
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`may have or provide an additional function.
`34. Each switch mechanism of Jimakos’ back controls is disposed between
`a corresponding elongate member and an outside surface of the back of Jimakos’
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`modified Wireless Xbox 360 Controller.
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000006
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`35. Each elongate member of limakos is in registry with a corresponding
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`switch mechanism, so that the elongate members can be used to activate the switch
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`mechanisms. Specifically, the elongate members of limakos appear to be in registry
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`with underlying round switch mechanisms.
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`36. One of ordinary skill in the art would have been motivated to combine
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`Enright and Oelsch, at least because Oelsch discloses a switch structure at Figs. 2-4
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`that may simplify the manufacture of the elongate mode switches 32, 34 of Enright.
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`37. One of ordinary skill in the video controller arts would have known that
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`the back controls (e.g. Enright mode switches 32, 34) could be conventionally
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`formed as an integral part of the outer case, when the '525 patent was filed.
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`38. My compensation for work on this declaration is not contingent on any
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`VERIFICATION
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`outcome in this case.
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`39.
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`Pursuant to 28 U.S.C. §1746, I declare under penalty of perjury that the
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`foregoing is true and correct.
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`Executed on: April 19,2016
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`EXPERT DECLARATION IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8.641.525
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`PETITIONER VALVE CORPORATION, Ex. 1008
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`p. 000007