UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VALVE CORPORATION,
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`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
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`Patent Owner.
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`____________
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`Cases
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`IPR2016-00948 (Patent 8,641,525 B2)
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`IPR2016-00949 (Patent 9,089,770 B2)
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
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`PURSUANT TO 37 C.F.R. § 42.64
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`VALVE CORPORATION,
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`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
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`Patent Owner.
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`____________
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`Cases
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`IPR2016-00948 (Patent 8,641,525 B2)
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`IPR2016-00949 (Patent 9,089,770 B2)
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
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`PURSUANT TO 37 C.F.R. § 42.64
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` Patent Owner Ironburg Inventions Ltd. (“Patent Owner”) submits the
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`IPR2016-00948
`IPR2016-00949
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`following objections to evidence served by Petitioner Valve Corporation
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`(“Petitioner”) in its Petition. Patent Owner appreciates the Board’s authorization
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`to file objections under 37 C.F.R. § 42.64. See Conduct of Proceedings, Paper 13
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`(October 27, 2016). The Board’s notice via PTAB E2E was sent to only one of the
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`two counsel’s of record for Patent Owner, Ehab Samuel, who was traveling during
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`the 2-day period authorized by the Board for filing the objections. Patent Owner
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`kindly requests that future notices are also emailed to Patent Owner’s back-up
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`counsel of record, Danielle Mihalkanin at: DMihalkanin@manatt.com. See , e.g.,
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`Power of Attorney, Paper No. 8 at IPR2016-00949. Further, the email for Patent
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`Owner’s lead counsel, Ehab Samuel, has changed to esamuel-PTAB@manatt.com.
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` Patent Owner’s objections is as follows:
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`EXHIBIT 1007 – Hearsay (FRE 802), Authentication (FRE 901), Relevance
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`(FRE 402)
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`Patent Owner objects to Exhibit 1007 as containing inadmissible hearsay,
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`pursuant to Fed. R. Evid. 802. If, as here, an exception does not apply, the rule
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`against hearsay operates to prohibit out-of-court statements from being offered to
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`prove the truth of the matter asserted. Fed. R. Evid. 801–803.
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`Here, Exhibit 1007 is inadmissible hearsay evidence including specific
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`statements by a UK examiner, Mr. Donohue, in an unrelated application.
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`1
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`Petitioner quotes the UK examiner’s statements as follows:
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`IPR2016-00948
`IPR2016-00949
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`“It is extremely well known in the art to modify gamepads to
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`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.
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`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.
`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.
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`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.” Corrected Petition, IPR2016-00949, Paper 4 at
`9-10 (May 2, 2016) (underlining in the Corrected Petition); Corrected
`Petition, IPR2016-00948, Paper at 10-11 (May 2, 2016) (underlining in the
`Corrected Petition).
`In reliance on this out-of-court statement, Petitioner concludes that “[a]ccordingly,
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`the UK counterpart to the US ‘525 Patent (UK Patent App. No. GB1011078.1) was
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`duly refused by the UK Intellectual Property Office on 27 April 2015.” Id.
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`2
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`Petitioner offered the statement to prove the truth of the matter asserted
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`IPR2016-00948
`IPR2016-00949
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`therein. Specifically, this Exhibit 1007 is hearsay because Petitioner is using the
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`out-of-court statements to prove what was known in the art at the time of the
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`invention. Here, the UK examiner's statement is not prior art, not from before the
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`application was filed, not sworn testimony, and is therefore hearsay not subject to
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`any hearsay exception. See, e.g., Standard Innovation Corp. v. Lelo, Inc.,
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`IPR2014-00148, Paper 41 at 13-15 (April 23, 2015) (hearsay statements not
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`subject to exceptions were found inadmissible in PTAB proceeding).
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`Patent Owner also objects to Exhibit 1007 as lacking proper authentication
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`as required by Fed. R. Evid. 901. Petitioner has not established this exhibit as self-
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`authenticating, nor has Petitioner authenticated these documents, for example, by
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`testimony from a witness with personal knowledge that the documents are what
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`they are claimed to be.
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`Patent Owner further objects to Exhibit 1007 as lacking relevance, under
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`Fed. R. Evid. 402. Exhibit 1007 is not relevant to the patentability of the
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`Challenged Claims, particularly to the extent it has not been shown to be prior art
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`or evidence of the level of ordinary skill in the art at the relevant time period.
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`3
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`IPR2016-00948
`IPR2016-00949
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`Date: November 1, 2016
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
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`IPR2016-00948
`IPR2016-00949
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`that on November 1, 2016, a complete and entire electronic copy of this PATENT
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`OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE PURSUANT TO 37
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`C.F.R. § 42.64, was served via PTAB E2E to Petitioner’s counsel of record at the
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`following address:
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`Date: November 1, 2016
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`317888600.1
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`5
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