Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 44
`Entered: September 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 44
`Entered: September 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
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`Case IPR2016-00948
`Patent 8,641,525 B2
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`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Valve Corporation (“Petitioner”) filed a corrected Petition (Paper 4,
`“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
`8,641,525 B2 (Ex. 1001, “the ’525 patent”). Pet. 1. Ironburg Inventions Ltd.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to
`the Petition. We instituted an inter partes review of claims 1–11, 13, 14, and
`16–20, and did not institute review of claims 12 and 15. Paper 10 (“Dec.”).
`Subsequently, Patent Owner filed a Patent Owner Response (Paper 19,
`“PO Resp.”), and Petitioner filed a Reply (Paper 23, “Pet. Reply”).
`Oral hearing was held on June 5, 2017, and a transcript of the oral
`hearing is included in the record. Paper 36 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to under 35 U.S.C. § 318(a) as to the
`patentability of the claims on which we instituted trial.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 6, 13, 14, 16, 17, 19, and 20
`of the ’525 patent are unpatentable, but has not made such a showing with
`regard to claims 2–5, 7–11, and 18. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d).
`
`RELATED PROCEEDINGS
`The parties indicate that the ’525 patent is at issue in: Ironburg
`Inventions Ltd. v. Valve Corp., Case No. 1:15-cv-04219-MHC (N.D. Ga.).
`Pet. 1; Paper 6, 1.
`
`B.
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`Petitioner also filed a petition against U.S. Patent 9,089,770 B2 (“the
`’770 patent”), the subject of inter partes review IPR2016-00949 (“the ’949
`IPR”). The ’770 patent issued from an application that was a continuation of
`application 13/162,727, now the ’525 patent. These inter partes reviews
`have proceeded on the same schedule.
`Petitioner filed a second petition against both the ’525 patent and the
`’770 patent (IPR2017-00136 and IPR2017-00137, respectively), and each
`petition was accompanied by a Motion for Joinder/Consolidation. In
`IPR2017-00136, we instituted review of claim 20 and denied the Motion for
`Joinder/Consolidation. IPR2017-00136, Paper 12. In IPR2017-00137, we
`denied institution and denied the Motion for Joinder/Consolidation.
`IPR2017-00137, Paper 10.
`
`
`A.
`
`II. PRELIMINARY MATTERS
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`Patent Owner moves to exclude (1) Exhibits 1025–1027 and the
`associated Paper (Paper 25), and (2) Exhibit 1007. Paper 28. Petitioner
`filed an opposition to the Motion (Paper 32) and Patent Owner filed a Reply
`to the Opposition (Paper 33). Patent Owner has the burden of establishing
`that evidence should be excluded. See 37 C.F.R. § 42.20(c), § 42.22. For
`the reasons that follow, we deny Patent Owner’s Motion.
`Exhibits 1025–1027 and Associated Paper
`1.
`Petitioner filed Exhibits 1025–1027 with an associated Paper (Paper
`25) on April 13, 2017, as supplemental evidence in response to Patent
`Owner’s second set of objections to Exhibit 1007. See Paper 24 (Patent
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`Owner’s second set of objections); Paper 25 (asserting that the subject
`information was only being used regarding the admissibility of Ex. 1007);
`Paper 32, 11–12 (acknowledging that the subject information is
`supplemental evidence only).
`These Exhibits and the associated Paper are not evidence on the
`merits of this case; they are in the record for the limited purpose of the
`admissibility of Exhibit 1007. Consequently, these Exhibits and the
`associated Paper are not the proper subject of a Motion to Exclude.
`Exhibit 1007
`2.
`Exhibit 1007 is a United Kingdom (UK) Search and Examination
`Report for the counterpart to the application that became the ’525 patent.
`Petitioner submitted Exhibit 1007 in association with the Petition, and as
`such, it is evidence submitted during a preliminary proceeding.1 See
`37 C.F.R. § 42.2 (defining preliminary proceeding).
`A timely objection is a prerequisite to a Motion to Exclude. See
`37 C.F.R. § 42.64(b)(1), (c). Patent Owner purports to have made three sets
`of objections to Exhibit 1007 in the following papers: (1) the Preliminary
`Response, (2) Paper 15, and (3) Paper 24. Paper 28, 1.
`a) Preliminary Response
`Patent Owner asserted in the Preliminary Response that Exhibit 1007
`is “hearsay and is not prior art,” and “should be excluded in its entirety.”
`Prelim. Resp. 28.
`
`1 Exhibit 1007 was served on Petitioner in association with Paper 1 (the
`original Petition) and was not served a second time with Paper 4 (the
`corrected Petition). See Paper 1, 61; Paper 4, 54. This distinction is
`immaterial to our analysis.
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`In our Decision to Institute, we explained that a preliminary response
`cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered
`on September 27, 2016). First, objections must be made after institution of
`trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from
`institution of trial). Second, an objection and a preliminary response may
`not be combined into a single document. See 37 C.F.R. § 42.6(a)(3)
`(prohibiting combined documents).
`b) Paper 15
`On Wednesday, October 26, 2016, the Board held a conference call at
`Patent Owner’s request. Paper 13. During that call, Patent Owner asked
`again whether the Preliminary Response had served as a timely objection to
`Exhibit 1007. See Paper 13, 2–3. We reiterated that the statements in the
`Preliminary Response were not an effective objection, and explained that
`Patent Owner was raising the issue after expiration of the time-period for an
`objection. Id. at 3. Patent Owner maintained the request to object to
`Exhibit 1007. Id. Before ending the call, we informed the parties that we
`would enter an order shortly.
`On Thursday, October 27, 2016, the next business day after the call,
`the Board entered the anticipated Order. Paper 13. In that Order, we
`permitted Patent Owner two business days (until Monday, October 31, 2016)
`to file objections to Exhibit 1007. See Paper 13, 4. Entry of that Order
`triggered an automated email to the email address of record entered by
`
`
`2 In the interest of brevity, we incorporate by reference our analysis at
`Paper 13 pages 2–4.
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`Patent Owner. See Tr. 41:12–44:5 (summarizing the situation). On Tuesday,
`November 1, 2016, after the allotted period for filing objections had expired,
`Patent Owner filed objections. See Paper 13, 4; Paper 15, 1.
`During the oral hearing, Patent Owner acknowledged filing the
`objections after the deadline. Tr. 44:15–16. Patent Owner elaborated that he
`received the email notice, but did not review the content of that notice
`because he was traveling, and because it was “buried with a whole bunch of
`other things.” Tr. 44:16–45:15. Patent Owner orally requested that we
`excuse the late filing of Paper 15 under 37 C.F.R. § 42.5(c)(3). Tr. 45:10–
`46:4.
`Patent Owner knew that the objections were late when filed on
`November 1, 2016, and took no action until the oral hearing on June 5, 2017.
`Such lengthy inaction diminishes the persuasiveness of Patent Owner’s
`request to excuse its late filing of objections. See 37 C.F.R. § 42.25(b) (“A
`party should seek relief promptly after the need for relief is identified. Delay
`in seeking relief may justify a denial of relief sought.”) Perhaps more
`importantly, a request to excuse a late action must be in the form of a
`motion. See 37 C.F.R. §§ 42.5(c)(3), 42.20. Patent Owner did not request
`authorization to file such a motion. Consequently, a proper request for relief
`is not before us.
`Patent Owner did not submit Paper 15 within the allotted time, and
`consequently that Paper is not an effective set of objections.
`c) Paper 24
`In response to evidence relied upon in Petitioner’s Reply, Patent
`Owner filed another set of objections (Paper 24) including objections to
`Exhibit 1007.
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`Rule 42.64(b)(1) provides that during trial, objections must be filed
`within five business days of “service of evidence to which the objection is
`directed.” Petitioner served Exhibit 1007 on Patent Owner in association
`with the Petition, not in association with Petitioner’s Reply. Although
`Paper 24 was filed within five business days of filing of Petitioner’s Reply,
`is was not served within five business days of service of Exhibit 1007.
`Thus, by strict application of the rule, Paper 24 was not timely.
`We recognize that under the Federal Rules of Evidence the use of
`evidence may affect the admissibility of that evidence. For example, a
`single piece of evidence might be capable of a use that would be
`inadmissible hearsay and a use that would not be hearsay. Thus, if evidence
`were submitted in association with a petition and relied upon in a first
`manner, and then relied upon in a second, different manner in a subsequent
`paper (e.g., petitioner’s reply), the second use could create a potential
`objection to that evidence that was not present with the use in the petition.
`Such a situation might warrant permitting the submittal of the subsequent
`paper (e.g., Petitioner’s Reply) to trigger an opportunity to submit an
`objection. See 37 C.F.R. § 42.5(b) (permitting waiver of requirements of
`part 42). With this in mind, we compare the objections of Paper 15 to those
`of Paper 24.
`In Paper 24, Patent Owner asserts that Exhibit 1007: contains
`inadmissible hearsay under Federal Rule of Evidence (Fed. R. Evid.) 802;
`lacks proper authentication under Fed. R. Evid. 901; is irrelevant under Fed.
`R. Evid. 401; and, has probative value outweighed by one of the enumerated
`dangers of Fed. R. Evid. 403. Paper 24, 1–3.
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`Regarding hearsay, both sets of objections assert that Exhibit 1007 “is
`not prior art, not from before the application was filed, not sworn testimony,
`and is therefore hearsay not subject to any hearsay exception.” Paper 15, 3;
`Paper 24, 2. Further, in Paper 15, Patent Owner asserts that the portion of
`Exhibit 1007 that is quoted by Petitioner is hearsay because it is offered to
`prove the truth of the matter asserted, namely, “what was known in the art at
`the time of the invention.” Paper 15, 2–3 (citing Pet. 10–11 (citing
`Ex. 1007, 2)). Likewise, in Paper 24, Patent Owner asserts that the same
`portion of Exhibit 1007 is hearsay because it is offered to prove the truth of
`the matter asserted, namely, “what was known in the art at the time of the
`invention.” Paper 24, 2 (citing Pet. Reply, 21 (citing Ex. 1007, 2)). Patent
`Owner’s hearsay objections in Paper 24 have no meaningful distinction from
`the objections in Paper 15.
`Regarding authentication, Patent Owner’s objections are the same.
`Compare Paper 15, 3 with Paper 24, 2–3.
`Regarding relevance, in Paper 24, Patent Owner asserts that
`Exhibit 1007 is irrelevant, misleading, and confusing because the statements
`were not made in the context of the challenged claims or applicable United
`States law. Paper 24, 3. Patent Owner elaborates that Petitioner has not
`sufficiently explained the evidence. Id. Patent Owner makes no distinction
`between reliance on Exhibit 1007 in the Petition and in the Petitioner’s
`Reply.
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`B.
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`Given that Petitioner relies on Exhibit 1007 in the same manner in the
`Petition as in the Reply,3 and the lack of a meaningful distinction between
`the two sets of objections, we determine that Rule 42.64(b)(1) set the
`deadline for objecting to Exhibit 10017 as ten days after institution of trial
`and that waiver of this rule is not warranted.
`In light of this, Patent Owner did not make a timely objection, and
`consequently we deny Patent Owner’s Motion to Exclude.
`
`EXHIBIT 1028
`Petitioner filed Exhibit 1028, a duplicate of Exhibit 1027, in
`association with Petitioner’s opposition to Patent Owner’s Motion to
`Exclude. See Paper 32, 12–13. Petitioner did not seek Board authorization
`for filing a duplicate, and accordingly we expunge this Exhibit. See
`37 C.F.R. § 42.6(d) (stating that documents already of record in the
`proceeding may not be filed without express Board Authorization); see also
`37 C.F.R. § 42.7(a) (authoring the Board to expunge unauthorized papers).
`
`SCOPE OF PETITIONER’S REPLY
`During the oral hearing, Patent Owner objected to Petitioner’s
`demonstrative exhibits as containing information beyond the scope of a
`permissible reply. Based on this, we authorized Patent Owner to file a paper
`identifying such information, and we authorized Petitioner a response.
`
`3 In both the Petition and Petitioner’s Reply, Petitioner relies on
`Mr. Donohoe’s opinion as evidence of the state of the video game controller
`art as of the critical date of the ’525 patent. Compare Pet. 9–11 with Pet.
`Reply 21.
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`C.
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`Paper 37, 3–4 (authorization); Paper 39 (Patent Owner); Paper 41
`(Petitioner). In the analysis that follows, we address these contentions with
`respect to information in Petitioner’s Reply that we rely upon in making this
`decision, but we do not address information that we did not rely upon.
`
`
`A.
`
`III. THE CLAIMED SUBJECT MATTER
`INTRODUCTION
`The ’525 patent relates to handheld controllers for video game
`consoles. Ex. 1001, 1:6–7.
`As background, the ’525 patent describes that conventional controllers
`were intended to be held and operated by the user using both hands, and
`describes that the plurality of controls were mounted on the front and top
`edge. Id. at 1:8–17; Fig. 1. The drawback of this design was that the user
`was required to remove his or her thumb from one control to operate another
`control, causing loss of control, such as aiming. Id. at 1:33–40. The
`’525 patent was intended to address this problem. Id. at 1:41–45.
`The controller of the ’525 patent is very similar to controllers of the
`prior art with respect to the outer case and the front and top controls. Id.
`at 2:15–20; compare Fig. 1 (prior art, id. at 2:61–62) to Figs 2, 3.
`Controller 10 of the ’525 patent includes a plurality of controls on the
`front and top edge like a conventional controller, and includes additional
`controls on the back, such as paddles 11, that are operable by fingers other
`than the thumb. Id. at 1:51–58; 3:14–17; Fig. 1 (front of conventional
`controller and controller 10), 2 (back of controller 10). Figure 2 follows:
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`Figure 2 is a schematic illustration of the back of game controller 10. Id. at
`2:63–64.
`
`B.
`
`CHALLENGED CLAIMS
`Of the challenged claims, 1 and 20 are independent. Claim 1 follows:
`1.
`A hand held controller for a game console comprising:
`an outer case comprising
`a front, a back, a top edge, and a bottom edge,
`wherein the back of the controller is opposite the front of
`the controller and the top edge is opposite the bottom edge;
`and
`
`a front control located on the front of the controller;
`wherein the controller is shaped to be held in the
`hand of a user such that the user’s thumb is positioned to
`operate the front control; and
`a first back control and a second back control, each
`back control being located on the back of the controller
`and each back control including an elongate member that
`extends substantially the full distance between the top
`edge and the bottom edge and is inherently resilient and
`flexible.4
`
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`
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`4 A line break was added for readability.
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`C.
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`CLAIM INTERPRETATION
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation. See 37 C.F.R. § 42.100(b).
`For the purposes of this decision, and on this record, we determine
`that only the following claim terms require express interpretation. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(only those terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy).5
`Directional References
`1.
`The claims recite words indicating relative position or direction such
`as “front,” “back,” “top,” and “bottom” without expressly stating a frame of
`reference for interpreting these words. In the Institution Decision, we
`interpreted directional words in the claims to be terms that merely
`distinguish one feature from another and define positions relative to each
`other. Dec. 8–9. For example, “front” is opposite the “back,” and the “top”
`is opposite the “bottom.” This is true because the ’525 patent explicitly
`states that directional words, such as front, back, top, and bottom, merely
`serve to distinguish those features from one another and do not limit the
`respective features to a particular static orientation. Id. at 8 (citing Pet. 11–
`12; Ex. 1001, 4:28–32). The parties do not challenge this interpretation, and
`we adopt it here.
`
`
`5 Some aspects of claim construction, such as Patent Owner’s assertions
`regarding “flexible,” are addressed in the patentability analysis below.
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`Thickness
`2.
`In the Institution Decision, we determined that the broadest reasonable
`interpretation of “thickness” as used in claims 9–11 is the dimension of the
`elongate member perpendicular to the surface of the elongate member (i.e.,
`also the direction of displacement when the user activates the control
`function). Dec. 10–11. The parties do not challenge this interpretation, and
`we adopt it here.
`Extension of Elongate Members
`3.
`Independent claims 1 and 20 recite that each elongate member on the
`back of the controller “extends substantially the full distance between the top
`edge and the bottom edge” of the outer case of the controller. Claims 2–19
`include this limitation by virtue of dependence from claim 1.
`In the Institution Decision, we determined that the claims require that
`the elongate members extend largely but not necessarily the entire distance
`between the top and the bottom edges. Dec. 11–13. The parties do not
`challenge this interpretation, and we adopt it here.
`Recess
`4.
`Claim 7 recites “[t]he controller of claim 1, wherein each elongate
`member is mounted with a recess located in the case of the controller.”
`Claim 8 recites, “[t]he controller of claim 7, wherein each elongate
`member comprises an outermost surface which is disposed in close
`proximity to the outermost surface of the controller such that a user’s fingers
`may be received in said respective recess.”
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`We address two aspects of the claimed “recess:” one, the direction of
`the recess, and two, whether the user’s fingers must be received in the
`recess.
`
`a) Direction of the Recessed Portion
`In the Petition, Petitioner asserted that, “any region between a first
`and second handle that is recessed towards the front of the video game
`controller can qualify as a ‘recess’” as claimed. Pet. 15 (emphasis added).
`In the Institution Decision, we determined that a “recess” as claimed is not
`limited to be recessed towards the front of the controller. Dec. 14–15. The
`parties do not contest this determination, and we adopt it here.
`b) User’s Fingers
`Patent Owner contends that a “recess” as claimed is required to
`receive a user’s finger and Petitioner argues the claims are not limited in that
`manner. PO Resp. 15–20; Pet. Reply 2–5. We disagree with Patent
`Owner’s assertion for several reasons.
`First, in the Preliminary Response, Patent Owner asserted that the
`claim term “recess” should be given its ordinary meaning. Prelim. Resp. 9,
`13; see also Pet. Reply 5 (pointing out this earlier statement). In the
`Response, Patent Owner asserts that a recess as claimed must receive the
`user’s fingers based on claim scope disavowal. PO Resp. 15–20. Patent
`Owner’s change in interpretation significantly undermines Patent Owner’s
`position.
`Second, Patent Owner’s analogy to AVX Corporation is not
`persuasive because the claim interpretation to which Patent Owner
`analogizes was changed on rehearing. See PO Resp. 16–17 (citing AVX
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`Corp. v. Greatbatch Ltd., Case No. IPR2015-00710, slip op. at 5–12, (PTAB
`Aug. 12, 2015) (Paper 9)); AVX, Paper 13 (PTAB Jan. 13, 2016) (rehearing).
`Third, for the reasons that follow, claim 8 undermines rather than
`supports Patent Owner’s position. Claim 1 requires that the elongate
`members are located on the back of the controller, and dependent claim 7
`adds that the elongate members are mounted in “a recess” located in the case
`of the controller. Ex. 1001, 4:40–55, 5:4–6. Claim 8 depends from claim 7
`and adds that each elongate member includes an outermost surface that is
`disposed in close proximity to the outermost surface of the controller so that
`a user’s finger may be received in the recess. The presence of the explicit
`requirement in claim 8 that the recess receives the user’s fingers suggests
`that a recess as recited in claim 7 does not include such a requirement. See
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir. 2004) (the
`presence of a dependent claim that adds a particular limitation gives rise to a
`presumption that the limitation in question is not present in the independent
`claim).6 In other words, if, as Patent Owner contends, a recess as claimed
`must receive the user’s fingers, such interpretation would render the explicit
`requirement in claim 8 superfluous. Bicon Inc. v. Straumann Co., 441 F.3d
`945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward
`giving effect to all terms in the claim.”); Stumbo v. Eastman Outdoors, Inc.,
`508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that
`render phrases in claims superfluous).
`
`
`6 We presume this principle applies to claim 8 by virtue of dependence from
`claim 7 even though claim 7 is not independent.
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`The ’525 patent does not include a lexicographical definition of
`“recess.” An ordinary meaning of a “recess” is “an indentation in a line or a
`surface (as an alcove in a room).” See Ex. 2005, 4357 (defining recess); see
`also PO Resp. 16 (asserting that this definition of recess is the ordinary
`meaning, but contending such meaning does not apply due to claim scope
`disavowal). The claims recite that a recess as claimed is included in the
`back of the outer case of the controller (a surface). This suggests that the
`claims require the back of the outer case of the controller to include an
`indentation. We consider this ordinary meaning in light of the
`Specification.8
`The ’525 patent describes that
`Preferably, each elongate member is mounted within a
`respective recess located in the case of the controller.
`Preferably, each elongate member comprises an outermost
`surface which is disposed in close proximity to the outermost
`surface of the controller such that the user’s finger’s may be
`received in said respective recess.
`Ex. 1001, 1:62–67. The ’525 patent describes that the
`controller of the present invention is particularly advantageous
`over controllers according to the prior art as it comprises one or
`more additional controls located on the back of the controller in
`a position to be operated by middle fingers of a user.
`Id. at 2:21–25. The ’525 patent describes that
`The paddles 11 are mounted within recesses located on the case
`of the controller 10; and are disposed in close proximity to the
`outer surface of the controller body. In this way a user may
`engage the paddles 11 with the tips of the fingers, preferably the
`
`7 This refers to the native page number of the Exhibit.
`8 The disclosures that follow are those portions of the ’525 patent cited by
`Patent Owner as evidencing disavowal.
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`middle fingers, without compromising the user’s grip on the
`controller 10.
`Id. at 3:39–44. Figure 3 of the ’525 patent, as annotated by Patent Owner,
`follows.
`
`
`
`Annotated Figure 3 depicts the back of a game controller as held and
`operated by a user, and includes Patent Owner’s identification of the first
`and second handle and the recess. See PO Resp. 19; Ex. 1001, 2:65–67.
`
`Patent Owner’s argument is that the ’525 patent expresses a clear
`intent to disavow controllers having a recess that does not receive a user’s
`fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner
`argues that the ’525 patent expresses a clear intent to cover only recesses
`that receive a user’s fingers. Patent Owner does not identify, nor do we
`discern, any explicit disclosure in the ’525 patent that the invention includes
`only recessed portions that receive a user’s fingers. The description that
`“preferably” each elongate member is mounted in a recess such that a user’s
`finger may be received in the recess is an exemplary disclosure of a
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`preferred embodiment. See Ex. 1001, 1:62–67. Likewise, the disclosures
`that the elongate members (e.g., paddles 11) are mounted within recesses so
`that a user may engage the elongate members with the tips of the fingers are
`exemplary. See id. at 2:21–25, 3:39–44, Fig. 3. Consequently, the ’525
`patent does not express a clear intent to limit the claimed invention to
`recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys.
`Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir.
`2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
`1571 (Fed.Cir. 1988) (“Although the specification may aid the court in
`interpreting the meaning of disputed claim language, particular embodiments
`and examples appearing in the specification will not generally be read into
`the claims.”).
`
`In light of the disclosures above, the ordinary meaning that a recess is
`an indentation is consistent with the Specification.
`
`The claims require that the outer case of the controller includes a
`recess (indentation), and the claims are not limited to a recess that permits
`receipt of a user’s fingers.
`Handheld Controller
`5.
`Patent Owner contends that a “handheld controller” as recited in
`independent claims 1 and 20 requires that the controller must be “held in and
`operated by both hands of a user.” PO Resp. 9. Our inquiry focuses on two
`aspects of Patent Owner’s contention: one, whether the device must be held
`in a single hand or in both, and two, whether the operability requirement
`precludes support of the controller from other than the user’s hands. We
`address these contentions in turn.
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`a) Single Hand or Both Hands
`In support of the argument that claims 1 and 20 each require the
`controller to be held in and operated by both hands of a user, Patent Owner
`contends that the preamble is limiting, that a controller that may be held in
`one hand has been disavowed, and that the ordinary meaning supports such
`an interpretation. PO Resp. 9–14, 23–26, Paper 38, 1–2.
`As detailed below in the analysis of the ground of unpatentability
`based on anticipation by Tosaki, Petitioner has demonstrated adequately that
`Tosaki’s controller may be held in and operated by one or both hands.
`Consequently, we need not determine if the claims are limited as Patent
`Owner asserts. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011) (Claim terms need only be construed to the extent
`necessary to resolve the controversy).
`b) Preclusion of Other Support
`We begin by clarifying Patent Owner’s contention. Patent Owner
`contends that Tosaki’s controller is not “handheld” as claimed because it is
`held between a player’s thighs. PO Resp. 23–26; Tr. 107:11–14. This
`contention implies the underlying claim interpretation that the claims
`preclude support by anything other than a player’s hands. During the oral
`argument, we asked Patent Owner if their argument was that the claims
`preclude support from other than a user’s hands. Tr. 107:15–19. Patent
`Owner replied, “No, your honor. My argument is that it must be – must be
`held by the hand and operated while being held in the hand.” Id. at 107:20–
`22; see also 112:8–9 (stating “We’re not saying no to other support other
`than the hands.”). Patent Owner elaborated that Tosaki’s device would not
`be operable for its intended purpose when supported only by a user’s hands
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`because without such support the steering wheel would not be able to move
`relative to the steering wheel base. Id. at 108:18–111:16. In other words,
`the steering wheel only operates properly with support other than the user’s
`hands (e.g., the base resting on a table or held between a user’s thighs).
`Although Patent Owner disagrees, Patent Owner’s argument is premised on
`the interpretation that the claims require the device to be fully operable when
`supported only by the user’s hands, which precludes support from other than
`the user’s hands.
`The preamble of claims 1 and 20 each recite, “A handheld controller
`for a game console comprising.” The body of each claim recites that, “the
`controller is shaped to be held in the hand of a user such that the user’s
`thumb is positioned to operate the front control.” The language of claims 1
`and 20 requires the controller to be handheld and requires the controller to
`have a particular shape (i.e., a shape permitting the user’s thumb to be
`positioned to operate the front control).
`The language of the claims does not support Patent Owner’s
`argument. See Renishaw PLC, 158 F.3d 1243, 1248. Neither claim
`explicitly recites that the controller is (1) supported only by the user’s hands
`or (2) is operable only when supported only by the user’s hands alone.
`Further, claims 1 and 20 each use the open-ended term “comprising,” so that
`other support (e.g., a user’s thighs or a steering wheel base) is not precluded.
`See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
`(“Comprising” is a term of art used in claim language which means that the
`named elements are essential, but other elements may be added and still
`form a construct within the scope of the claim.).
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`Patent Owner repeatedly emphasizes that the proffered interpretation
`is the ordinary meaning of “handheld.”9 See, e.g., Tr. 106:15–22; 112:8–16;
`116:10–12. In support, Patent Owner contends the ordinary meaning of
`“handheld” is, “held in the hand; esp to be operated while being held in the
`hand.” PO Resp. 14 (citing Ex. 2004, p. 526). This definition does not
`preclude support other than a user’s hands; rather, it means that the device
`must be held in the hand and operable when so held. With this ordinary
`meaning in mind, we turn to the claims.
`The ordinary meaning of “handheld” as being held in the hand and
`operable when so held is consistent with the Specification. See, e.g.,
`Ex. 1001, Abstract, 1:49–56, 3:14–15, Fig. 3. That ordinary meaning does
`not preclude support from other than a user’s hands.
`Patent Owner’s argument is unpersuasive for other reasons. First,
`Patent Owner contends that Tosaki’s steering function is inoperable when the
`device is held only in the hands, but
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