IPR2016-00948
`IPR2016-00949
`
`US. Patent 8,641,525
`
`US. Patent 9,089,770
`
`Oral Argument
`Valve Corp. v. Ironburg Inventions Ltd.
`
`Trial Hearing
`05 June 2017, 1pm
`
`US Patent & Trademark Office
`Madison Building East, 9th floor
`600 Dulany Street,
`Alexandria, VA 22314.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 001 of 013
`
`
`IPR2016-00949
`
`US. Patent 8,641,525
`
`US. Patent 9,089,770
`
`Oral Argument
`Valve Corp. v. Ironburg Inventions Ltd.
`
`Trial Hearing
`05 June 2017, 1pm
`
`US Patent & Trademark Office
`Madison Building East, 9th floor
`600 Dulany Street,
`Alexandria, VA 22314.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 001 of 013
`
`
`
`Tosaki is analogous art.
`
`Ironburg:
`
`Tosaki is “non-analogous” to hand-held controllers like ’525 patent and Enright.
`See, PO Response IPR2016-00948, pp. 47-49.
`
`USPTO:
`
`Tosaki = same U.S. Classification as ’525 patent:
`463/37: Amusement Devices: Games: Hand manipulated.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 002 of 013
`
`
`
`Tosaki is “hand-held.”
`
`(Tosaki prior art.)
`
`Toskaki prior art:
`
`“Hand grips 14a” – are within the ordinary meaning of “handles.”
`
`Tosaki abstract: “player’s hand holding the grip.”
`
`Ironburg:
`
`Makes no claim amendment to avoid Tosaki.
`
`Wants narrow construction of “hand-held”:
`Controller can be supported by only the hands and nothing else?
`
`Subject patents:
`
`No disavowal: hand-held controller may have additional support (e.g. from thighs).
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 003 of 013
`
`
`
`“back of the controller” not limited to the base
`
`Toskaki prior art:
`
`The base casing 10 and the steering wheel 14
`have back surfaces.
`
`Ironburg:
`
`Only the base casing 10 has a back surface?
`
`Subject patents:
`
`“Back of the controller” gets ordinary meaning.
`
`No disavowal: Tosaki’s steering wheel 14 may
`include a “back of the controller.”
`
`Tosaki Fig. 10
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 004 of 013
`
`
`
`Same convergence.
`
`Toskaki prior art:
`
`Shows same convergence as in ’525 patent.
`
`Towards the top edge.
`
`Ironburg:
`
`Convergence towards the “front” (into the page)?
`The subject patents never say that.
`The ’525 drawings cannot not show that.
`
`Subject patents:
`
`“[T]he paddles are orientated
`such that they converge
`towards the top edge with
`respect to each other.”
`’525 at 3:53-56 (emphasis added)
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 005 of 013
`
`
`
`Tosaki has “recessed portion.”
`
`Tosaki:
`
`Meets ordinary meaning of “recessed portion,” as shown above.
`
`Ironburg now:
`
`Proposes to construe “recessed portion” to require joining handles and
`receiving a user’s fingers. See, PO Response IPR2016-0949, at pp. 17-22.
`
`Improper to import limitations of a particular embodiment.
`See Elbex Video v. Sensormatic, 508 F.3d 1366, 1371 (Fed. Cir. 2007).
`
`Ironburg then (correct):
`
`“[N]o clear lexicography or disavowal in the intrinsic record to deviate from the
`plain and ordinary meaning of [‘recessed portion’] … a common English term ...”
`PO Prelim. Response IPR2016-00949, pp. 7, 11.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 006 of 013
`
`
`
`Tosaki has “transition edges.”
`
`Tosaki:
`
`Meets ordinary meaning of “transition edge,” as shown above.
`
`Ironburg now:
`
`Proposes construction: replace “edge” with “intersection.”
`
`No transition edge shown or described in patent.
`See, Stevick Depo. Vol. I, Exh. 1022, at 0075:19-0076:06.
`
`“Intersection” absent in patent.
`
`Ironburg then (correct):
`
`“[N]o clear lexicography or disavowal in the intrinsic record to deviate from the plain
`and ordinary meaning of [‘transition edge’].” PO Prelim. Response IPR2016-00949, p. 7.
`
`“‘[T]ransition edge’ requires no … restriction beyond the plain language of the claims.”
`PO Prelim. Response IPR2016-00949, p. 12.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 007 of 013
`
`
`
`Enright in view of Tosaki.
`
`Instituted combination:
`
`Relies on Tosaki only for longer appearance of the shift levers 125, 126
`- to suggest lengthening existing Enright back controls (switches 32, 34).
`
`Motivation:
`
`Enright ¶ [0032]: teaches ergonomics and easy operation of switches 32, 34.
`
`Refers to position of switches, but in view of Tosaki would rationally suggest
`to POSITA to lengthen. See, Rempel Reply Decl. at ¶¶14-16.
`
`Law:
`
`Does not require that Tosaki structures can be bodily incorporated
`(i.e. transplanted) into the Enright device.
`See, Allied Erecting and Dismantling v. Genesis Attachments, 825 F.3d 1373, 1380-81 (Fed. Cir. 2016)
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 008 of 013
`
`
`
`No transplant required, only slight lengthening.
`
`Enright discloses (Fig. 5):
`
`Switches 32, 34 already extend almost ½ distance.
`
`Ironburg’s expert admits that greater than 50% distance would
`constitute “substantially all.” See, Stevick Depo., Vol. I (Exh. 1022) at 0215:9-216:19.
`
`Ironburg assumes:
`
`Entire structure of Tosaki shift levers 125, 126 must be transplanted
`into the Enright controller?
`
`Alleged problems with transplanting
`shift levers into Enright
`
`Straw man
`argument.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 009 of 013
`
`
`
`Arched openings: Irrelevant.
`
`Arched openings of Tosaki: to better “approximate a real steering wheel.”
`See, Stevick Depo., Vol. I (Exh. 1022) at 0128:23-0129:01.
`
`Enright not intended to resemble a steering wheel, so arched openings would
`not be transplanted into Enright. See, Rempel Reply Decl. at ¶16.
`
`∴∴∴∴
`
`Alleged problems with transplanting
`arched openings into Enright
`
`irrelevant to the
`instituted challenge
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 010 of 013
`
`
`
`Enright switches must include an
`“inherently resilient and flexible” element.
`
`Enright prior art:
`
`Enright ¶ [0035]: “the user may quickly depress the mode switch 32, 34 […]
`and then return to normal by releasing the mode switch when desired.”
`
`POSITA:
`
`Then the mode switches 32, 34 must include a flexible element (e.g. spring).
`See Rempel Reply Decl. at ¶12.
`
`Ironburg did not invent:
`
`Flexible materials.
`
`Making a switch from an elongate flexible beam. (See, e.g., Oelsch at 2:53-57.)
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 011 of 013
`
`
`
`“paddle levers” were common knowledge
`
`’525 and ’770 Patents:
`
`Paddle levers 11 drawn as simple oval outlines.
`
`No guidance to distinguish other types of controls.
`
`∴∴∴∴
`
`Ironburg did not invent:
`
`Paddle levers.
`
`To be enabled & have written description support,
`paddle levers must have been common knowledge.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 012 of 013
`
`
`
`… further in view of Oelsch
`
`Motivation:
`
`Oelsch’s integral switch teaching would simplify
`manufacture of Enright’s mode switches.
`See, Rempel Reply Decl. at ¶18.
`
`Ironburg:
`
`Enright:
`
`Oelsch does not disclose “a controller with back
`controls formed as an integral part of the outer case
`of a controller.” See, PO Response IPR2016-00948, pp. 58-59.
`
`Already discloses: controller with back controls
`formed on outer case.
`
`Instituted combination:
`
`Did not rely upon Oelsch for teaching of controller
`or outer case.
`
`Oelsch used only for teaching of integrally-formed
`switch. See, Rempel Reply Decl. at ¶19.
`
`Petitioner Exhibit 1030, IPR2016-00948 -00949, p. 013 of 013
`
`
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