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
`
`Attorneys for Petitioner, Valve Corporation
`
`
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`
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO.
`8,641,525, UNDER 37 C.F.R. § 42.100
`IPR Petition Filing Date: 2016-04-22
`
`Trial Number: To Be Assigned
`
`Panel: To Be Assigned
`
`
` Patent filing date: 2011-06-17
`
`Patent issue date: 2014-02-04
`
`Title: CONTROLLER FOR VIDEO
` GAME CONSOLE
`
`Purported Inventors: Simon Burgess
` Duncan Ironmonger
`
`Purported assignee:
`IRONBURG INVENTIONS LTD.
`a United Kingdom Limited Company
`
`Inter partes review is respectfully requested for claims 1-20 (all the claims) of
`U.S. Patent No. 8,641,525 (hereinafter “the ’525 Patent” – Exhibit 1001).
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,641,525
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`I.  
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`TABLE OF CONTENTS
`
`MANDATORY NOTICES UNDER 37 C.F.R. §
`42.8(a)(1) ................................................................................................ 1  
`
`Page
`
`
`
`A.  
`
`B.  
`
`C.  
`
`Real Parties-In-Interest Under 37 C.F.R. §
`42.8(b)(1) ...................................................................................... 1  
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................. 1  
`
`Lead and Back-Up Counsel Under 37 C.F.R. §
`42.8(b)(3) ...................................................................................... 2  
`
`D.  
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ...................... 2  
`
`II.  
`
`PAYMENT OF FEE UNDER 37 C.F.R. § 42.103 ................................. 3  
`
`III.   GROUNDS FOR STANDING UNDER 37 C.F.R. §
`42.104(a) ................................................................................................. 3  
`
`IV.   RELIEF REQUESTED ........................................................................... 4  
`
`V.  
`
`IDENTIFICATION OF CHALLENGES UNDER 37
`C.F.R. §42.104(b) ................................................................................... 4  
`
`A.  
`
`Identification of Challenged Claims and Specific
`Statutory Grounds for Challenge Under 37 C.F.R. §
`42.104(b)(1)-(b)(2) ....................................................................... 4  
`
`1.  
`
`2.  
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`3.  
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`4.  
`
`5.  
`
`First Statutory Ground for Challenge. ................................ 4  
`
`Second Statutory Ground for Challenge. ........................... 5  
`
`Third Statutory Ground for Challenge. .............................. 5  
`
`Fourth Statutory Ground for Challenge. ............................. 6  
`
`Fifth Statutory Ground for Challenge. ............................... 6  
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`B.  
`
`Identification of How the Challenged Claims Are to
`Be Construed Under 37 C.F.R. § 42.104(b)(3) ............................. 7  
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`1.  
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`2.  
`
`3.  
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`4.  
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`5.  
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`6.  
`
`7.  
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`8.  
`
`9.  
`
`Overview of the ‘525 Patent. .............................................. 7  
`
`Level of ordinary skill, and state of the art. ........................ 9  
`
`Directional references in the claims. ................................ 11  
`
`“thickness” ........................................................................ 12  
`
`“elongate member” ........................................................... 13  
`
`“inherently resilient and flexible” .................................... 14  
`
`“recess” ............................................................................. 14  
`
`“front end of the controller” ............................................. 15  
`
`“paddle lever” ................................................................... 16  
`
`10.   Other claim terms in the ‘525 Patent. ............................... 17  
`
`C.  
`
`Identification of How the Construed Claims Are
`Unpatentable and Supporting Evidence Under 37
`C.F.R. § 42.104(b)(4)-(b)(5) ....................................................... 17  
`
`1.  
`
`2.  
`
`3.  
`
`4.  
`
`5.  
`
`Claims 1, 6, 13, 14, 16, 17, 19, and 20 are
`anticipated by U.S. Patent 5,989,123 to
`Tosaki et al. ...................................................................... 18  
`
`Claims 1-11, 13, 16, 17, and 20 are
`unpatentable under 35 U.S.C. § 103 as
`obvious in view of U.S. Patent Application
`Publication 2010/0073283 to Enright in view
`of Tosaki. .......................................................................... 31  
`
`Claims 14, 15, and 19 are obvious over
`Enright, in view of Tosaki, and further in
`view of U.S. Patent App. Pub. 2001/0025778
`to Ono. .............................................................................. 47  
`
`Claims 2, 4, 5, 7, 8, 12, 14-16, and 19 are
`obvious over Tosaki, in view of Jimakos. ........................ 51  
`
`Claim 18 is obvious over Enright, in view of
`Tosaki, and further in view of U.S. Patent
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`4,032,728 to Oelsch. ......................................................... 59  
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`VI.   CONCLUSION ..................................................................................... 60  
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`
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`EXHIBIT LIST
`
`
`Description
`U.S. Patent 8,641,525 to Burgess et al.
`U.S. Patent 5,989,123 to Tosaki et al.
`U.S. Patent App. Pub. 2010/0073283 to 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, as evidenced by the Internet
`Archive “Way Back Machine” on 07 November 2014, and at
`http://forums.xbox-scene.com/index.php?/topic/643928-rapid-
`fire-mod-for-wireless-xbox-360-controller/page-24, as evidenced
`by the Internet Archive “Way Back Machine” on 08 November
`2014.
`U.S. Patent 4,032,728 to 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. 1008).
`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.
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`The following mandatory notices are provided as part of this Petition.
`
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Valve Corporation, having a business address at 10900 NE 4th Street,
`
`Bellevue, Washington 98004, USA, referred to herein as “Petitioner,” is the real
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`party-in-interest for Petitioner.
`
`B.
`
` Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`On 2015-12-03, Ironburg Inventions Ltd., a U.K. Corporation, the
`
`purported assignee of the ’525 Patent, filed a complaint against the Petitioner for
`
`alleged infringement of the ’525 Patent in the U.S. District Court for the
`
`Northern District of Georgia (Case Docket No. 1:15-cv-04219-MHC).
`
`Ironburg Inventions Ltd., a U.K. Corporation, the purported assignee of
`
`the ’525 Patent, and its purported licensee Scuf Gaming International LLC, a
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`Georgia Corporation, also filed an earlier complaint against Playrapid Eurl, a
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`French Corporation, for alleged infringement of the ’525 Patent in the U.S.
`
`District Court for the Northern District of Georgia (Case Docket No. 1:13-cv-
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`03224-TWT).
`
`Pending US Patent Application 14/754,789 and pending US Patent
`
`Application 14/754,793 claim priority to the ‘525 Patent, through a chain of
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`continuation applications. U.S. Patent 9,089,770 also claims priority to the ‘525
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`patent, as a continuation, and is the subject of another petition for inter-partes
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`review brought concurrently by Petitioner.
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`Petitioner is not aware of any other judicial or administrative matter that
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`would affect, or be affected by, a decision in the current proceeding related to
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`the ’525 Patent.
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`C.
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` Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Pursuant to 37 C.F.R. § 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`following designation of counsel.
`
`Lead Counsel
`Joshua C. Harrison
`USPTO Reg. # 45,686
`Barceló, Harrison & Walker, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, California 92663
`E-mail: josh@bhiplaw.com
`Telephone: (949) 340-9736
`Facsimile:
` (949) 258-5752
`
`Back-Up Counsel
`Reynaldo C. Barceló
`USPTO Reg. # 42,290
`Barceló, Harrison & Walker, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, California 92663
`E-mail: rey@bhiplaw.com
`Telephone: (949) 340-9736
`Facsimile:
` (949) 258-5752
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`D.
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents via hand-delivery may be made at the postal
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`mailing address of the respective lead or back-up counsel designated above, or
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`service can be effected by email to the email addresses of the respective lead or
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`back-up counsel designated above (including phone and fax numbers).
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`II.
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`PAYMENT OF FEE UNDER 37 C.F.R. § 42.103
`
`The undersigned authorizes the Patent and Trademark Office to charge
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`Deposit Account No. 50-4119 for the fee set forth in 37 C.F.R. § 42.15(a), and
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`any other applicable fees, for this Petition for Inter Partes Review. The
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`undersigned further authorizes payment for any additional fees that may be due
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`in connection with this Petition to be charged to the above-referenced Deposit
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`Account.
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`
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`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner hereby certifies the ’525 Patent is eligible for inter partes
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`review and that the Petitioner is not barred or estopped from requesting an inter
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`partes review challenging the patent claims on the grounds identified in this
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`Petition. Ironburg Inventions Ltd. filed its complaint on 2015-12-03 in the U.S.
`
`District Court for the Northern District of Georgia (Case Docket No. 1:15-cv-
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`04219-MHC), but first attempted to serve Petitioner on 2016-03-02, hence there
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`has been no service more than one year before the filing of this Petition.
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`Petitioner has not initiated a civil action challenging the validity of any claim of
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`the ‘525 Patent.
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`IV. RELIEF REQUESTED
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`Petitioner asks that the Board review the accompanying prior art and
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`analysis, institute a trial for inter partes review of claims 1-20 (all claims) of the
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`’525 Patent, and cancel those claims as invalid. Petitioner provides a full
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`statement of the reasons for the relief requested and addresses the remaining
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`requirements of 37 C.F.R. §42.104(b) in the following sections. As established
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`in detail in the sections that follow, there is a reasonable likelihood that
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`Petitioner will prevail in its challenge of patentability for at least one of claims
`
`1-20 of the ‘525 Patent.
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`
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`V.
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`IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R.
`
`§42.104(b)
`
`A.
`
`Identification of Challenged Claims and Specific Statutory
`Grounds for Challenge Under 37 C.F.R. § 42.104(b)(1)-(b)(2)
`
`The following specific statutory grounds for challenge of claims 1-20 of
`
`the ‘525 Patent, and the patents or printed publications relied upon for each
`
`ground, are identified as follows.
`
`1.
`
`First Statutory Ground for Challenge.
`
`Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable under 35 U.S.C. §
`
`102(b) as being anticipated by U.S. Patent 5,989,123 to Tosaki et al. – Exhibit
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`1002 (“Tosaki”). Tosaki qualifies as prior art to the ’525 Patent under 35 U.S.C.
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`§ 102(b) because Tosaki was published on 1999-11-23, more than a decade
`
`before the earliest priority date of the ’525 Patent (2011-06-17).
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`2.
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`Second Statutory Ground for Challenge.
`
`Claims 1-11, 13, 16, 17, and 20 are unpatentable under 35 U.S.C. § 103 as
`
`obvious over U.S. Patent App. Pub. 2010/0073283 to Enright – Exhibit 1003
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`(“Enright”) in view of Tosaki. Enright qualifies as prior art to the ’525 Patent,
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`at least under 35 U.S.C. § 102(b) and 35 U.S.C. § 103, because Enright was
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`published on 2010-03-25, more than one year before the earliest priority date of
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`the ’525 Patent (2011-06-17).
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`3.
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`Third Statutory Ground for Challenge.
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`Claims 14, 15, and 19 are unpatentable under 35 U.S.C. § 103 as obvious
`
`over U.S. Patent App. Pub. 2010/0073283 to Enright, in view of Tosaki, and
`
`further in view of U.S. Patent App. Pub. 2001/0025778 to Ono – Exhibit 1004
`
`(hereinafter “Ono”). Ono qualifies as prior art to the ’525 Patent, at least under
`
`35 U.S.C. § 102(b) and 35 U.S.C. § 103, because Ono was published on 2001-
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`10-04, more than one year before the earliest priority date of the ’525 Patent
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`(2011-06-17).
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`4.
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`Fourth Statutory Ground for Challenge.
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`Claims 2, 4, 5, 7, 8, 12, 14-16, and 19 are unpatentable under 35 U.S.C. §
`
`103 as obvious over U.S. Patent 5,989,123 to Tosaki et al., in view of “Rapid
`
`Fire Mod for Wireless Xbox 360 Controller, Step by Step Tutorial with
`
`Pictures,” posts 341-346 by Jimakos Sn, published 09 July 2008 at
`
`http://forums.xbox-scene.com/index.php?/topic/643928-rapid-fire-mod-for-
`
`wireless-xbox-360-controller/page-23 and at http://forums.xbox-
`
`scene.com/index.php?/topic/643928-rapid-fire-mod-for-wireless-xbox-360-
`
`controller/page-24 – included herein as Exhibit 1005 (hereinafter “Jimakos”).
`
`Jimakos qualifies as prior art to the ’525 Patent, at least under 35 U.S.C. §
`
`102(b) and 35 U.S.C. § 103, because Jimakos was published on 2008-07-09,
`
`more than one year before the earliest priority date of the ’525 Patent (2011-06-
`
`17).
`
`5.
`
`Fifth Statutory Ground for Challenge.
`
`Claim 18 is unpatentable under 35 U.S.C. § 103 as obvious over U.S.
`
`Patent App. Pub. 2010/0073283 to Enright, in view of Tosaki, and further in
`
`view of U.S. Patent 4,032,728 to Oelsch – Exhibit 1006 (hereinafter “Oelsch”).
`
`Oelsch qualifies as prior art to the ’525 Patent, at least under 35 U.S.C. § 102(b)
`
`and 35 U.S.C. § 103, because Oelsch was published on 1977-06-28, more than
`
`one year before the earliest priority date of the ’525 Patent (2011-06-17).
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`B.
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`Identification of How the Challenged Claims Are to Be
`Construed Under 37 C.F.R. § 42.104(b)(3)
`
`Petitioner’s construction of claim terms herein is not binding upon
`
`Petitioner in any other proceeding, such as any district court litigation related to
`
`the ’525 Patent.
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`1. Overview of the ‘525 Patent.
`
`The ‘525 Patent discloses placing two paddle levers 11 on the back of an
`
`otherwise conventional game controller, as shown in Figure 3 below.
`
`
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`Figure 3 depicts “a schematic illustration of the back of a game controller
`
`according to the present invention as held and operated by a user.” See ‘525
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`Patent at col. 2, lines 65-67. The ‘525 Patent specification describes the
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`elements depicted in this figure as follows: item 10 is the “game controller”
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`(col. 3, line 14); items 6 and 7 are the “left trigger” and the “right trigger,”
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`respectively (col. 1, lines 27-28), the two items labeled 11 are “two paddle
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`levers 11 located on the back of the controller” (col. 3, lines 23-24), and the two
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`items labeled 12 are “the middle fingers of a user” (col. 3, line 26), which
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`operate paddle levers 11. The ’525 specification admits that: “The controller of
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`the present invention may be very similar to controllers according to the prior
`
`art. In particular, the outer case of the controller and the type, number and
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`positioning of the controls located on the front and top edge of the controller
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`may be the same as a controller according to the prior art.” See ‘525 Patent at
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`col. 2, lines 15-20.
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`The ’525 specification also expressly describes the similarities and
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`alleged difference between the disclosed invention and the prior art, as follows:
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`“The front of the game controller 10 of FIGS. 2 and 3 is the same as a
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`conventional controller 1, as illustrated in FIG. 1 and as discussed above. […]
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`Game controller 10 differs from the conventional controller 1 in that it
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`additionally comprises two paddle levers 11 located on the back of the
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`controller. The paddle levers 11 are vertically oriented with respect to the
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`controller 10 and are positioned to be operated by the middle fingers of a user
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`12, as shown in FIG. 3.” See ‘525 Patent at col. 3, lines 14-27 (emphasis
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`added). The paddles 11 are elongate in shape and substantially extend in a
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`direction from the top edge to a bottom edge of the controller 10.” Id., at col. 3,
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`lines 51-53.
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`The addition of the two back controls 11 to the otherwise-conventional
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`controller is allegedly advantageous over the prior art, according to the ‘525
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`Patent at col. 3, lines 64-67, because the back controls 11 “allow a user to
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`operate the functions of the relevant buttons using his or her middle fingers 12,
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`without the need to remove either of his or her thumbs from the left or right
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`thumb stick 2, 3.” However, such advantage may be obtained in various ways
`
`that allow for variations in design, because “[w]hile the example shows the
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`paddles 11 engaged by the middle fingers, they could also be engaged by the
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`index, ring, or little fingers.” See ‘525 Patent at col. 3, lines 45-47.
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`As will be described in detail in subsequent sections of this petition,
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`however, the prior art had also disclosed video game controllers with elongated
`
`back controls, and expressly directed to achieve precisely the same advantages.
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`The prior art references that form the basis of this Petition were not cited during
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`prosecution of the applications that led to issuance of the ‘525 Patent.
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`2.
`
`Level of ordinary skill, and state of the art.
`
`To determine the level of ordinary skill in the art, a number of factors may
`
`be considered, including the “type of problems encountered in the art; prior art
`
`solutions to those problems; rapidity with which innovations are made;
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`sophistication of the technology; and educational level of active workers in the
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`field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The video game
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`controller art is global. Those skilled in the video game controller art reside in
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`every developed nation, and include designers of controllers, users who modify
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`controllers, and patent examiners.
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`One such skilled artisan is Mr. Brendan Donohoe, a patent examiner in
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`the United Kingdom (UK) Intellectual Property Office. Mr. Donohoe searched
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`and examined a UK counterpart to the US ‘525 Patent (UK Patent App. No.
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`GB1011078.1, published as GB 2481633A), which has essentially the same
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`disclosure as the US ‘525 Patent, as well as a common applicant (Simon
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`Burgess). Mr. Donohoe, speaking for the UK Intellectual Property Office,
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`described the state of the video game controller art as follows (emphasis added):
`
`It is extremely well known in the art to modify gamepads to
`suit the requirements of a particular game or gamer. This is
`prevalent both on a professional basis (as represented by the
`'Firestorm' and 'RND' documents), and on an amateur basis (as
`represented by the 'Mod' document). Indeed, the 'Mod' document
`should be understood as purely representative of a thriving
`'modding' community, in which gamers modify their gamepads on
`an almost adhoc basis according to personal preference.
`The features defined in your claims are typical features of
`gamepad controls/buttons. As evidenced by the documents listed
`above, the skilled person would consider them as nothing more
`than routine modifications or variations to literally any gamepad.
`Moreover, the skilled person would find it entirely obvious to
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`modify or tailor a given conventional gamepad to suit the needs of
`any individual, and would possess (or have ready access to) the
`skills and knowledge required to do so.
`With this in mind, I am having great difficulty seeing
`anything in your application which could form the basis of a
`novel and inventive claim.
`
`See UK Search and Examination Report for Patent App. No. GB1011078.1, 16
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`May 2011, at 2 – Exhibit 1007 (emphasis added). Accordingly, the UK
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`counterpart to the US ‘525 Patent (UK Patent App. No. GB1011078.1) was duly
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`refused by the UK Intellectual Property Office on 27 April 2015.
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`3.
`
`Directional references in the claims.
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`The specification of the ‘525 Patent broadens the meaning of the
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`directional references made in the claims, expressly. At col. 4, lines 28-32, the
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`specification of the ‘525 Patent states: “It will be recognized that as used herein,
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`directional references such as ‘top,’ ‘bottom,’ ‘front,’ ‘back,’ ‘end,’ ‘side,’
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`‘inner,’ ‘outer,’ ‘upper,’ and ‘lower,’ do not limit the respective features to such
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`orientation, but merely serve to distinguish these features from one another.”
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`The foregoing quoted statement in the specification of the ‘525 Patent
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`puts the public on notice that any side of a video controller may be considered as
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`the “back,” and another side as the “front,” so long as the “back is opposite the
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`front,” as required by claim 1. Likewise, any edge can be considered as a “top”
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`edge, so long as is opposite a “bottom” edge, etc. Although the ordinary
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`meaning of “top” or “back” may be less broad, col. 4, lines 28-32 of the ’525
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`specification expressly disclaims narrower orientation limitations, instead stating
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`that claim terms like “top” or “back” – “as used herein” – do not limit the
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`respective features to such orientation, but merely serve[s] to distinguish […]
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`features from one another.”
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`Hence, in the context of the ‘525 Patent, any surface of the video game
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`controller can be considered as the “back,” so long as the “opposite” side is
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`consistently considered to correspond to the “front,” and any edge can be a “top”
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`edge, so long as it is opposed to a “bottom” edge.
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`4.
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`“thickness”
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`Claims 9, 10, and 11 of the ‘525 Patent specify a “thickness” of an
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`elongate member, however the dimension of the elongate member that should
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`correspond to such thickness is not identified in any figure of the ‘525 Patent.
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`The written description requirement of 35 U.S.C. §112, and the requirement of
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`37 C.F.R. §1.83(a) that “[t]he drawing in a nonprovisional application must
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`show every feature of the invention specified in the claims,” are intended to
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`prevent such omissions as this in the ‘525 Patent. Such omission in the ‘525
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`Patent disclosure causes the claim term “thickness” to be vague and ambiguous
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`(e.g. inadequately distinguished from width). See, e.g., the Expert Declaration
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`of David Rempel, M.D., in Support of Valve Corporation’s Petition for Inter-
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`Partes Review of U.S. Patent 8,641,525 (hereinafter, the “Rempel ‘525 Decl.”),
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`Exhibit 1008, at ¶12, p. 2, lines 23-26. Lacking specific direction from the ‘525
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`specification or drawings, the claim term “thickness” is assumed herein to
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`correspond to any dimension of the elongate member except for its length.
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`5.
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`“elongate member”
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`The word “elongate” is used as an adjective in the claim term “elongate
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`member” of the ‘525 Patent. The ordinary meaning of such adjective is simply:
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`“Having more length than width; slender.” See, e.g.,
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`www.thefreedictionary.com/elongated .
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`Additionally, all disclosed embodiments in the ‘525 Patent exhibit a
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`particular direction for such elongation, as described at col. 3, lines 51-53: “The
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`paddles 11 are elongate in shape and substantially extend in a direction from the
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`top edge to a bottom edge of the controller 10.” (referring to Figures 2 and 3).
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`Moreover, the specification of the ‘525 Patent assigns special importance to that
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`direction of elongation of the paddle members, because such elongation
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`direction allegedly allows a user an improved variety of finger choice to engage
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`the paddle members. See col. 3, lines 51-61.
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`6.
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`“inherently resilient and flexible”
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`The term “inherently resilient and flexible” is used in claim 1 of the ‘525
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`Patent. The term “inherently resilient” is expressly defined at col. 3, lines 34-35
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`to mean that the elongate members “return to an unbiased position when not
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`under load.” The “load” in this context clearly must be supplied by the user’s
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`finger(s). See the Rempel ‘525 Decl., Exhibit 1008, at ¶13, p. 2, line 27 - p. 3,
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`line 3. Although the term “flexible” is used at col 3, lines 29-31 in the
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`specification of the ‘525 Patent with reference to the paddles being “formed
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`from a thin flexible material such as plastics material for example polyethylene,”
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`the ‘525 Patent does not make clear what else may qualify as “flexible.” In view
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`of the lack of description in the ‘525 Patent specification, and considering the
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`purpose of the elongate members, the source of the applied load, and the
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`applicant’s express definition for “inherently resilient,” the term “flexible” is
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`assumed herein to mean that the elongated member can be moved to a biased
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`position by a user’s finger. Hence, the phrase “inherently resilient and flexible”
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`is assumed herein to mean: “can be moved to a biased position by a user’s
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`finger, and returns to an unbiased position when not under load.”
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`7.
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`“recess”
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`The term “recess” is used in claims 7 and 8 of the ‘525 Patent, but is not
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`described anywhere else in the patent, and is not identified in any of the
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`drawings of the patent. The written description requirement of 35 U.S.C. §112,
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`and the requirement of 37 C.F.R. §1.83(a) that “[t]he drawing in a
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`nonprovisional application must show every feature of the invention specified in
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`the claims,” are intended to prevent such omissions as this in the ‘525 Patent.
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`Lacking specific direction from the ‘525 specification or drawings, the
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`Petitioner assumes that any region between a first and second handle that is
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`recessed towards the front of the video game controller can qualify as a “recess.”
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`8.
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` “front end of the controller”
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`The term “front end of the controller” is used in claim 13 of the ‘525
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`Patent, but is not described anywhere else in the patent, and is not identified in
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`any of the drawings of the patent. The written description requirement of 35
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`U.S.C. §112, and the requirement of 37 C.F.R. §1.83(a) that “[t]he drawing in a
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`nonprovisional application must show every feature of the invention specified in
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`the claims,” are intended to prevent such omissions as this in the ‘525 Patent.
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`Lacking specific direction from the ‘525 specification or drawings, and based on
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`usage in claim 13, the Petitioner will assume that the “front end” of the
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`controller can be any end of the controller (e.g. the top edge of the controller).
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`9.
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`“paddle lever”
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`The term “paddle lever” is used in claim 16 of the ‘525 Patent, but the
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`specification of the ‘525 Patent does not adequately structurally distinguish it
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`from any other type of button, trigger, or control member. The only examples of
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`a “paddle lever” that are included in the ‘525 Patent are the elongated paddles
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`that are labeled as “11” in Figs. 2 and 3. However, no structural characteristics
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`are described in the ‘525 Patent that could distinguish such a “paddle” from any
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`other kind of button, trigger, or control member. Rather, the elongated paddles
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`11 are merely drawn in Figs. 2 and 3 of the ‘525 Patent as simple ovals, and are
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`generally referred to as “paddles” in the written description - without providing
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`any specific structure that distinguishes a “paddle lever” from other controller
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`type such as a button or a trigger. Hence, the difference between a “paddle
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`lever” versus a “button” or a “trigger” is vague and indefinite in the ‘525 Patent,
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`and one of ordinary skill in the art would have generally considered prior art
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`buttons, triggers, and other control members to qualify as a “paddle lever” in the
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`context of the ‘525 patent when it was filed. See the Rempel ‘525 Decl., Exhibit
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`1008, at ¶14, p. 3, lines 3-8.
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`Whatever a “paddle lever” is, it is clear that the term “elongate member”
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`is not limited to just that, but can be any other type of trigger, button, or control.
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`For example, at col. 3, lines 9-13, the specification states: “[T]he additional
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`controls are described below as two paddle levers but the term ‘control’ as used
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`in the claims, unless otherwise made clear in the claim, refers to paddle levers as
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`well as other controls such as buttons, analogue control sticks, bumpers, and
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`triggers.”
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`10. Other claim terms in the ‘525 Patent.
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`Petitioner submits, for the purposes of this inter partes petition only, that
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`the other claim terms of the ‘525 Patent take on the customary and ordinary
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`meaning that such terms would have to one of ordinary skill in the art in view of
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`the specification and prosecution history of the ’525 Patent. However, Petitioner
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`expressly reserves the right to propose a different interpretation later in this
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`proceeding should the Patent Trial and Appeal Board request the Petitioner to
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`provide a more definite interpretation of one or more of such claim terms.
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`C.
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`Identification of How the Construed Claims Are Unpatentable
`and Supporting Evidence Under 37 C.F.R. § 42.104(b)(4)-(b)(5)
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`An explanation of how the construed claims 1-20, i.e., all the claims of
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`the ’525 Patent, are each unpatentable under 35 U.S.C. § 103, including
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`identification of where each element of the claim is found in the prior art, is
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`provided in the claim charts that follow. The evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of evidence that support the challenge, are provided
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`in the following sections and in the corresponding claim charts.
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`1.
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`Claims 1, 6, 13, 14, 16, 17, 19, and 20 are anticipated by
`U.S. Patent 5,989,123 to Tosaki et al.
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`Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable under 35 U.S.C. §
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`102(b) as anticipated by U.S. Patent 5,989,123 to Tosaki et al. (“Tosaki”).
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`Tosaki qualifies as prior art to the ’525 Patent under 35 U.S.C. § 102(b) because
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`Tosaki was published on 1999-11-23, more than a decade before the earliest
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`priority date of the ’525 Patent (2011-06-17). Tosaki was not cited during
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`prosecution of the application that led to issuance of the ‘525 Patent. The
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`specific mapping1 of Tosaki’s teachings to claims 1, 6, 13, 14, 16, 17, 19, and 20
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`of the ‘525 Patent, is given in the following tables.
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`Independent claim 1 of
`U.S. Patent 8,641,525
`1. A hand held controller
`for a game console
`comprisi