0
`
`Valve Corporation
`v.
`Ironburg Inventions Ltd.
`
`IPR2016-00948 (Patent 8,641,525)
`IPR2016-00949 (Patent 9,089,770)
`
`Patent Owner’s Demonstratives
`June 5, 2017
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`IPR2016-00948, EX2014
`IPR2016-00949, EX2015
`
`
`
`Valve Corporation
`v.
`Ironburg Inventions Ltd.
`
`IPR2016-00948 (Patent 8,641,525)
`IPR2016-00949 (Patent 9,089,770)
`
`Patent Owner’s Demonstratives
`June 5, 2017
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`IPR2016-00948, EX2014
`IPR2016-00949, EX2015
`
`
`
`Agenda
`
`1
`
` Instituted Grounds
` The Burgess Patents
` Tosaki, Enright & Oelsch
` Overview of Arguments
` Tosaki Does not Disclose a Hand-Held Controller
` Tosaki Does not Disclose Controls “Located on/at the Back
`of the Controller”
` Enright Does not Disclose Flexible Elongate Member
` No Motivation to Combine Tosaki with Enright
` No Motivation to Combine Oelsch with Tosaki and Enright
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`2
`
`INSTITUTED GROUNDS
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Instituted Grounds
`
`3
`
`Grounds Claims
`1, 6, 13, 14, 16,
`17, 19, and 20
`1-11, 13, 16,
`17, and 20
`18
`
`A
`
`B
`
`C
`
`IPR2016-00948 (Patent 8,641,525)
`Type
`References
`Anticipation
`§102
`Obviousness
`§103
`Obviousness
`§103
`
`Tosaki
`
`Enright and Tosaki
`
`Enright, Tosaki, and Oelsch
`
`Grounds Claims
`1, 3-12, 15-17,
`19 and 20
`
`A
`
`B
`
`1-12 and 14-20
`
`IPR2016-00948, Institution Decision, Paper 10 at 30
`IPR2016-00949 (Patent 9,089,770)
`Type
`References
`Anticipation
`§102
`Obviousness
`§103
`
`Tosaki
`
`Enright and Tosaki
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`IPR2016-00949, Institution Decision, Paper 10 at 21
`
`
`
`4
`
`THE BURGESS PATENTS
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Background
`
`5
`
` “The present invention relates to video
`game consoles, in particular to hand held
`controllers for video game consoles.”
`See, e.g., EX1001, col. 1:6-7.
` “Conventional controllers for most game
`consoles are intended to be held and
`operated by the user using both hands.”
`Id., col. 1:8-9.
` The only way to operate the four buttons
`4 is for the user to remove his or her right
`thumb from the right thumb stick 3. This
`takes time and, in some games, can
`cause a loss of control.
`Id., col. 1:33-36.
` “In light of the above, there is a need for
`an improved controller which removes
`the need for a user to remove his or her
`thumb from the left or right thumb stick 2,
`3 in order to operate additional actions
`controlled by the four buttons 4 and/or
`the direction pad 5.”
`Id., col. 1:41-45.
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`“Hand Held Controller” – Claims 1 & 20 of ‘525 Patent
`
`6
`
`Independent Claim 1
`
`Independent Claim 20
`
`IPR2016-00948, EX1001, col. 4:41-55
`
`IPR2016-00948, EX1001, col. 6:13-26
`
` The preamble term “hand held controller” provides antecedent basis
`for “the controller,” which is recited as a distinct limitation in the body
`of Claims 1 and 20.
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Preamble limiting because it provides antecedent basis to “the
`controller” in the body of claims 1 and 20
`
`7
`
` Pacing Techs. LLC v. Garmin Intern., Inc., 778 F.3d 1021, 1024 (Fed. Cir.
`2015)
`– the terms “user” and “repetitive motion pacing system” in the preamble provide antecedent
`basis for the terms in the body, and are limiting.
` Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)
`– “When limitations in the body of the claim rely upon and derive antecedent basis from the
`preamble, then the preamble may act as a necessary component of the claimed invention.”
`– The body of the claim has two steps:
` The first step requires “retaining said vehicle master clutch (8) engaged during the gear
`ratio shift in said drive train.” This step refers to structure that is identified and defined in the
`preamble.
` The second step of the method also requires the operation of structure that is first identified
`in the preamble, including a “first clutch,” “first and second members of said first clutch,”
`and “the vehicle engine.”
`– Thus, holding the preamble limits the claimed invention.
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`“Hand Held Controller” – Claims 1 & 20 of ‘525 Patent
`
`8
`
` Claims 1 and 20 expressly require that the “controller is shaped to be held in
`the hand of a user.”
`IPR2016-00948, EX1001, col. 4:47-48 & 6:19-20
`
` “Petitioner agrees that the claims of the ‘525 patent are limited to a hand-held
`controller.”
`
`IPR2016-00948, Petitioner’s Reply Brief, Paper 23 at 1
`
` “Hand-Held,” as defined in MERRIAM-WEBSTER’S COLLEGIATE
`DICTIONARY (10th ed. 1998) means “held in the hand; esp to be operated
`while being held in the hand.”
`
`IPR2016-00948, EX2004, p. 526
`
` Consistent with the specification and the prosecution history, and compel a
`conclusion that the “controller” of Claims 1 and 20 of the ‘525 Patent is a
`hand-held controller for a video game console that is held in and operated by
`a user’s hand(s).
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Specification: the present invention is a hand-held controller
`that is held in both hands
`Specification
`
`9
`
`IPR2016-00948, EX1001, col. 1:4-7
`
`IPR2016-00948, EX1001, col. 1:47-58
`
`IPR2016-00948, EX1001, col. 2:55-57
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Use of “present invention” is limiting
`
`10
`
` Pacing Techs. LLC v. Garmin Intern., Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015):
`– “We have found disavowal or disclaimer based on clear and unmistakable statements by the
`patentee that limit the claims, such as “the present invention includes ...” or “the present
`invention is ...” or “all embodiments of the present invention are....” See, e.g., Regents of Univ.
`of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int'l, Inc. v. ITT
`Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006)”
`
` Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013):
`– “every single embodiment disclosed in the ′291 patent's drawings and its written description is
`made up of two separate disks. The ′291 patent explains that [t]he present invention provides
`a simple, reliable device for effectively occluding a septal defect. .... When a patent thus
`describes the features of the ‘present invention’ as a whole, this description limits the scope of
`the invention.”
`
` Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006):
`– “On at least four occasions, the written description refers to the fuel filter as ‘this invention’ or
`‘the present invention’: This invention relates to a fuel filter … According to the present
`invention, a fuel filter for a motor vehicle is made from a moldable material … This and other
`advantages of the present invention will become apparent from the following descriptions …
`The public is entitled to take the patentee at his word and the word was that the invention is a
`fuel filter.”
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`‘525 Prosecution History: the claimed “controller” is hand-held
`Prosecution History
`
`11
`
`IPR2016-00948, EX2001, Page 158
`
`IPR2016-00948, EX2001, Page 191
`
`Burns Reference, IPR2016-00948, EX2001, Page 173
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`12
`
`“Video Game Controller” – Claim 1 of ‘770 Patent
`Independent Claim 1
`
`The preamble term “video
`game controller” is limiting
`because it provides
`antecedent basis for “the
`controller,” which is recited
`as a distinct limitation in the
`body of Claim 1
`The specification and
`prosecution history limit
`the scope of the term
`“controller” to a hand-held
`controller for a video game
`console that is that is held
`in and operated by a user’s
`hand(s).
`
`IPR2016-00949, EX1011, col. 4:39-60
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Specification: the present invention is a hand-held controller
`that is held in both hands
`Specification
`
`13
`
`IPR2016-00949, EX1011, col. 1:4-7
`
`IPR2016-00949, EX1011, col. 1:47-58
`
`IPR2016-00949, EX1011, col. 2:55-57
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`‘770 Prosecution History: the claimed “controller” is hand-held
`Prosecution History
`
`14
`
`IPR2016-00949, EX2001, Page 56
`
`IPR2016-00949, EX2001, Page 48
`
`Burns Reference, IPR2016-00949, EX2006, Page 173
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`15
`
`TOSAKI, ENRIGHT & OELSCH
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Tosaki
`
`16
`
` Tosaki is a steering wheel control
`apparatus that is thigh-held
`EX1002, Abstract, 4:36-54,
`9:17-21, 15:26-52, 22:8-20
`
` The rotation of the
`steering wheel
`actuates the
`mechanical rotation
`of a control disk
`having a plurality of
`circumferential holes
`passing through a
`light detector
`photodiode to detect
`the rotational
`direction and angle of
`the steering wheel.
`EX1002, 20:58-67, FIG. 13
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`EX1002, 4:30-54
`
`
`
`Enright
`
`17
`
` Enright is directed to a user-operated
`controller device with mode switches
`on the underside of the controller to
`switch between a position mode and
`a discrete mode.
`
`EX1003, ¶¶ 1, 12
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Oelsch
`
`18
`
`EX1006, col. 2:3-13
`
`Oelsch is directed to a
`push button switch for
`use on keyboards
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`EX1006, col. 3:1-18
`
`
`
`19
`
`OVERVIEW OF ARGUMENTS
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Overview of Arguments
`
`20
`
` Tosaki Does not Disclose a Hand-Held Controller
`(Ground A for IPR2016-00948 and IPR2016-00949)
` Tosaki Does not Disclose Controls “Located on/at the Back of the Controller”
`(Ground A for IPR2016-00948 and IPR2016-00949)
` Enright Does not Disclose Flexible Elongate Member
`(Ground B, Claims 1-11, 13, 16, &17 for IPR2016-00948)
` No Motivation to Combine Tosaki with Enright
`(Ground B for IPR2016-00948 and IPR2016-00949)
` No Motivation to Combine Oelsch with Tosaki and Enright
`(Ground C for IPR2016-00948)
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`21
`
`TOSAKI DOES NOT DISCLOSE A
`HAND-HELD CONTROLLER
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`The Claims Require a Hand-Held Controller
`
`22
`
` Tosaki controller is held in place by
`the player’s thighs
` While the player in Tosaki does
`grasp the steering wheel with the
`player’s hands for rotational
`purposes, neither the steering
`wheel nor the steering wheel
`control apparatus are
`– held in the hand of a user; or
`– operated while being held in the
`hand
` To suggest otherwise would mean
`that even a car (with a steering
`wheel grasped by a driver’s hand)
`is a hand-held controller
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`EX1002, FIG. 9
`
`EX1002, FIG. 11
`
`
`
`23
`
`TOSAKI DOES NOT DISCLOSE CONTROLS
`“LOCATED ON/AT THE BACK
`OF THE CONTROLLER”
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`The Claims Require Back Controls Located on/at
`the Back of the Controller
`
`24
`
`IPR2016-00948, EX1001, col. 4:41-55, 6:13-26
`
`IPR2016-00949, EX1011, col. 4:39-60
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Petitioner conflates the back of the “steering wheel” with
`the back of the “controller”
`
`25
`
`Petitioner’s Inconsistent Positions
`–On the one hand, Petitioner notes that Tosaki’s “steering
`wheel control apparatus” meets the “video game controller”
`and “hand held controller” limitations in the preamble
`
`IPR2016-00949, Corrected Petition, Paper 4 at 19
`IPR2016-00948, Corrected Petition, Paper 4 at 19 & 25
`
`–On the other hand, despite the antecedent basis, Petitioner
`relies on a component of that “steering wheel control
`apparatus,” namely the “steering wheel” alone, to meet the
`claim limitation of “the controller”
`
`IPR2016-00949, Corrected Petition, Paper 4 at 21
`IPR2016-00948, Corrected Petition, Paper 4 at 21 & 27
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`The Claims Require Back Controls Located on/at
`the Back of the Controller
`
`26
`
` Petitioner’s position also fails
`because the back of the
`steering wheel in Tosaki is
`not the back of the steering
`wheel control apparatus.
` Since there is no “first back
`control” and “second back
`control” located on the “back
`of the steering wheel control
`apparatus,” the limitation
`“located on/at the back of the
`controller” is not anticipated
`by Tosaki.
`
`Back of the steering wheel
`control apparatus
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`27
`
`ENRIGHT DOES NOT DISCLOSE
`FLEXIBLE ELONGATE MEMBER
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Claim 1 of the ‘525 Patent Requires Flexible Elongate Member
`
`28
`
` Board held that “flexible” to mean
`“may be bent or flexed by a load”
`IPR2016-00948, Institution Decision, Paper 10 at 14
`
` Ordinary meaning of “flexible” is
`“capable of being bent or flexed”
`IPR2016-00948, EX3001
`
`IPR2016-00948, EX1001, col. 4:41-55
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Petitioner ignores the “flexible” claim limitation
`
`29
`
` Petitioner: “Enright discloses that the elongate members (the buttons of mode
`switches 32, 34) are inherently resilient and flexible at paragraph [0035],
`which states ‘the user may quickly depress the mode switch 32, 34 when he
`or she desires to emulate a button press of X, Y, A or B without having to
`move his thumb off of the thumbstick, and then return to normal by releasing
`the mode switch when desired.’”
`IPR2016-00948, Corrected Petition, Paper 4 at 34-35
`EX1008, ¶22
`
` Nothing in this quotation of Enright, however, teaches or suggests that the
`mode switches “may be bent or flexed by a load”
`
` Board recently agreed with Patent Owner in IPR2017-00136 (‘525 Patent):
`– “In this ground of unpatentability, Petitioner contends that Enright discloses
`elongate members that are inherently resilient and flexible as claimed because
`Enright’s buttons may be depressed and return to the same position after force is
`removed. Our analysis here parallels that of claim 1 in the previous ground.
`Specifically, Petitioner does not address the requirement that the elongate
`members are flexible.”
`
`IPR2017-00136, Institution Decision, Paper 12 at 15
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`Petitioner’s Reply is Equally Deficient
`
`30
`
` Recognizing the deficiency in its Petition, Petitioner advances 4 new arguments and evidence:
`– A POSITA would have been aware of various “well-known and conventional ways” to fabricate modes switches 32,
`34 from any “flexible material”
`– “Oelsch at 2:53-57” describes a the use of a “flexible material for ‘switch element 6’”
`– A POSITA would have “recognized that the functionality of the mode switches 32, 34 described in Enright
`paragraph [0035], could be obtained by simply making the elongate member flexible”
`IPR2016-00948, Paper 23 at 15
`– A flexible back control is obvious over Enright
`IPR2016-00948, EX1021, § 12
`
` This “new evidence” is a belated attempt to support Petitioner’s prima facie case for obviousness
`that could have been presented with the Petition in connection with Ground B for IPR2016-00948,
`and therefore, should not be considered by the Board. See Patent Office Trial Practice Guide, 77
`Fed. Reg. at 48,767.
`
` Regardless, this “new evidence” lacks merit because Petitioner fails to provide:
`
`– any underlying facts or data for these conclusory statements. See 37 C.F.R. § 42.65
`
`– any motivation to combine the switch modes in Enright’s hand-held controller with Oelsch’s push button switch for
`use in keyboards
`
` IPR2017-00136 (‘525 Patent): Board rejected a similar conclusory argument made by Petitioner, namely that “it
`was notoriously old and well known common knowledge in the art to make a control button resilient and flexible”
`IPR2017-00136, Institution Decision, Paper 12 at 12-13
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`31
`
`NO MOTIVATION TO COMBINE
`TOSAKI WITH ENRIGHT
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`“Easy Operation” or “Ergonomically Desired” pertain to Position
`(not Length) of Switches
`
`32
`
` Petitioner contends that it would have been obvious to lengthen Enright’s
`switch, based on the teaching of Tosaki, “for easy operation of the
`invention” or “if ergonomically desired.”
`
`IPR2016-00949, Corrected Petition, Paper 4 at 37-38
`IPR2016-00948, Corrected Petition, Paper 4 at 31-32
`
` These cited portions from Enright pertain to the position of the switches and
`not the length.
`
` Board recently agreed with Patent Owner in IPR2017-00137 (‘770 Patent):
`– “Each of the quoted disclosures pertains to the position of the switches and not the
`length of the switches. See Pet. 35 (quoting Ex. 1004 ¶ 32). Specifically, positioning
`mode switches 32 and 34 on the underside of the controller in proximity to a user’s
`fingers is what makes for easy operation, and the switches may provide the same
`benefit if positioned elsewhere on the housing. Ex. 1004 ¶ 32. These disclosures do
`not relate to the length of the switches and do not provide a rational underpinning
`for the proposed modification.”
`
`IPR2017-00137, Institution Decision, Paper 10 at 14-15
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`No Reason to Combine Enright with Tosaki
`
`33
`
` Petitioner provides 3 other reasons for the proposed modification:
`
`– “both references disclose hand-held video game controllers having front controls
`operated by a user’s thumbs and rear controls operated by fingers other than the
`thumb”
` Not a reason to combine
`
`– “Tosaki reference may suggest an alternative rear control geometry for Enright”
` Fail to cogently explain what advantage would be provided by Tosaki’s
`alternative geometry
`
`– “it would have been an obvious variation - in a predictable art - to make the mode
`switches 32, 34 of Enright longer, for example based on the teachings of Tosaki”
` Not a reason to combine
`
`IPR2016-00949, Corrected Petition, Paper 4 at 36-38
`IPR2016-00948, Corrected Petition, Paper 4 at 29-31
`
` The Board recently agreed with Patent Owner and rejected the same
`arguments in IPR2017-00137 (‘770 Patent)
`
`IPR2017-00137, Institution Decision, Paper 10 at 14-15
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`No Explanation of How to Combine
`
`34
`
` Tosaki requires gearshift levers be positioned
`and operated through arched openings.
`IPR2016-00949, EX1002, 9:1-6
`
` Petitioner does not explain:
`– how a POSITA would implement Tosaki’s
`gearshift levers into the Enright controller to
`obtained the claimed inventions without
`frustrating Tosaki’s requirement that the
`gearshift levers are positioned and operated
`in arched openings
`– how a skilled artisan would redesign the
`interior circuit board to accommodate for the
`gearshift levers and the arched openings
`
`IPR2016-00949, Corrected Petition, Paper 4 at 42
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`IPR2016-00949, Patent Owner
`Response, Paper 19 at 46
`
`
`
`35
`
`NO MOTIVATION TO COMBINE
`OELSCH WITH TOSAKI AND ENRIGHT
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
`
`No Reason to Combine Oelsch with Tosaki and Enright
`
`36
`
` Petitioner provides 3 reasons for the proposed modification:
`
`– “Oelsch discloses a switch structure at Figs. 2-4 that may simplify the manufacture
`of the elongate mode switches 32, 34 of Enright”
` Fail to cogently explain how or why Oelsch’s internal switch elements for a keyboard push
`button would simplify the manufacture of Enright’s switch modes
`
`– A POSITA “would have known the back controls (e.g. Enright mode switches 32,
`34) could be conventionally formed as an integral part of the outer case”
` Petitioner fails to provide any underlying facts or data for that conclusion. 37 C.F.R. § 42.65
` Not a reason to combine
`
`– “such common knowledge in the prior art was relied upon by the ‘525 Patent itself.
`Specifically, the back controls 11 of the ‘525 Patent are drawn in Figs. 2 and 3 as
`mere ovals, without identifying which portion (if any) is formed integrally with the
`outer case”
` Not a reason to combine
`
`IPR2016-00948, Corrected Petition, Paper 4 at 51
`
` Also, this combination fails for all the reasons set forth with respect to Tosaki and Enright
`
`Valve Corporation v. Ironburg Inventions Ltd. | Manatt, Phelps & Phillips, LLP
`
`
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