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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`VALVE CORPORATION
`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
`Patent Owner.
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`___________________
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`IPR2016-00948 (Patent 8,641,525)
`___________________
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`PATENT OWNER RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`IPR2016-00948 for U.S. Patent 8,641,525
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`TABLE OF CONTENTS
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`B.
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`Page
`INTRODUCTION .......................................................................................... 1
`I.
`STANDARD OF REVIEW ............................................................................ 3
`II.
`III. ANALYSIS ..................................................................................................... 4
`A.
`The Board Did Not Misapprehend The Record: Petitioner
`Studiously Avoided Flexibility In The Petition ................................... 4
`Petitioner’s Contention That The Assumption It Made In The
`Corrected Petition Accords With The BRI Of Flexible And Is
`Supported By The '525 Patent Specification Is Incorrect And
`Irrelevant .............................................................................................. 6
`Petitioner’s Contention That The Board’s Construction Is
`Unsupported By The Intrinsic Record Is Incorrect And
`Untimely ............................................................................................... 7
`Petitioner Did Not Meet Its Prima Facie Burden To Show That
`Enright Includes “Flexible” Elongate Members .................................. 8
`Petitioner's Reply Arguments Were Untimely And Irrelevant ............ 8
`E.
`IV. CONCLUSION ............................................................................................... 9
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`C.
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`D.
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`IPR2016-00948 for U.S. Patent 8,641,525
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`Arnold Partnership v. Dudas,
`362 F.3d 1338 (Fed. Cir. 2004) ............................................................................ 4
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ............................................................................ 1
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) .......................................................................... 2, 3
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 9
`Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc.,
`IPR2015-00249, Paper 37 at 9 (P.T.A.B. July 20, 2015) ..................................... 9
`SAS Institute, Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ........................................................................ 4, 8
`STATUTES
`35 U.S.C. § 312(a)(e)(3) ............................................................................................ 3
`35 U.S.C. § 316(e) ..................................................................................................... 3
`REGULATIONS
`37 C.F.R. § 42.23 ....................................................................................................... 8
`37 C.F.R. § 42.23(a) ................................................................................................... 8
`37 C.F.R. § 42.71(c) & (d) ......................................................................................... 3
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 3
`37 C.F.R. §§ 42.104(b)(4)-(b)(5) ............................................................................... 9
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ........................................................................ 9
`77 Fed. Reg. 48,767 (Aug. 14, 2012) .................................................................... 3, 9
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`IPR2016-00948 for U.S. Patent 8,641,525
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`I.
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`INTRODUCTION
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`Ironburg Inventions, Ltd. (“Patent Owner”) hereby submits this response to
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`Valve Corporation’s (“Petitioner”) Request for Rehearing (Paper 45). Petitioner
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`asserts that the Board misapprehended its arguments regarding the proper
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`construction of the term “flexible.” Respectfully, Petitioner’s Request should be
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`denied. The Board did not misapprehend or overlook any matters in its Final
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`Written Decision (“FWD”) and Petitioner has not shown that the Board abused its
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`discretion in confirming the patentability of claims 1-11, 13, 16 and 17. In the
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`Institution Decision, the Board provided an ordinary meaning for the term
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`“flexible” as the Petitioner failed to do so. Petitioner filed a Reply, but did not
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`object to the ordinary meaning provided by the Board. Rather, it replied by
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`supplying new argument and evidence directed for the first time to the flexibility of
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`the art – something it should have done in the Petition. Once the Board identified
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`new issues presented for the first time in reply, the Board was not required to
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`consider any part of it.
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`
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`A “claim term will not receive its ordinary meaning if the patentee acted as
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`his own lexicographer and clearly set forth a definition of the disputed claim term
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`in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick
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`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Such definitions must be set forth
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`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475
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`IPR2016-00948 for U.S. Patent 8,641,525
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`1480 (Fed. Cir. 1994).
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`In the Corrected Petition, Petitioner admitted that no special definition of the
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`term “flexible” had been set forth in the specification with reasonable clarity,
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`deliberateness, and precision, but nonetheless failed to provide the plain or
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`ordinary meaning of the term. (Paper 4 at 14.) Instead, for its own tactical
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`reasons, it “assumed” a special meaning (requiring movement – but not flexibility)
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`in the Petition and presented argument based on its assumed meaning rather than
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`on the ordinary meaning of this term. (Id.) Given that Petitioner provided neither
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`the plain meaning nor a special meaning clearly set forth in the specification or file
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`history, it would have been legal error for the Board to adopt Petitioner’s assumed
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`meaning. Ground (1) of the Request should therefore be denied. (Paper 45 at 1-6.)
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`In the Institution Decision, citing Exhibit 3001, the Board provided an
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`ordinary meaning of the term “flexible” (i.e., “capable of being bent or flexed”).
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`(Paper 10 at 14.) In its Reply Brief, Petitioner did not argue that the Board’s
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`construction was incorrect. (Paper 23 at 14-15.) Rather, relying exclusively on a
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`Reply Declaration of its expert Rempel, it attempted to show for the first time that
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`the Enright art “suggested flexibility of the mode switches 32, 34.” (Id.) Petitioner
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`argued that Enright would have suggested to a person of ordinary skill in the art
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`that mode switches 32, 34 include some flexible element such as a spring, but that
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`IPR2016-00948 for U.S. Patent 8,641,525
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`argument was presented for the first time in the Reply Brief. (Id.) Indeed,
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`Petitioner relied exclusively on the Reply Rempel Declaration for support of its
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`new argument and made no effort to refer to the Petition.
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`It was Petitioner’s burden to show, in the Petition, that the Enright prior art
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`met the “flexible” limitation, and it did not do that. See 35 U.S.C. § 312(a)(e)(3);
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`37 C.F.R. § 42.104(b)(4). This failure cannot be corrected in the Reply. See
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`Office Patent Trial Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not
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`raise a new issue or belatedly present evidence). Furthermore, contrary to
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`Petitioner’s arguments, Petitioner’s Reply on this point cannot be said to be merely
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`in reply to arguments made by the Patent Owner. (Paper 45 at 6-7.) Petitioner
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`made no flexibility showing in the Petition, and attempted to belatedly supply that
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`showing for the first time in the Reply. As such, Grounds (2) and (3) of the
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`Request should be denied. (Paper 45 at 6-8.) Ground (3) should also be denied
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`because the Petition did not show that the prior art met the flexibility limitation.
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`II.
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`STANDARD OF REVIEW
`In an inter partes review, the Petitioner has the burden of showing
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`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The
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`standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d). As
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`the party challenging the Board’s decision, Petitioner bears the high burden of
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`showing that the Board abused its discretion in rendering its decision. 37 C.F.R. §
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`IPR2016-00948 for U.S. Patent 8,641,525
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`42.71(c) & (d); IBM Corp. v. Intellectual Ventures II, LLC, IPR2014-00587, Paper
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`57 at 3 (P.T.A.B. Nov. 6, 2015). An abuse of discretion may be determined if a
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`decision is based on an erroneous interpretation of law, a factual finding is not
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`supported by substantial evidence, or a decision that represents an unreasonable
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`judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d
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`1338, 1340 (Fed. Cir. 2004). None of these errors are present here.
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`III. ANALYSIS
`A. The Board Did Not Misapprehend The Record: Petitioner
`Studiously Avoided Flexibility In The Petition
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`Petitioner asserts that it expressly proposed a construction for the term
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`“flexible” at page 14 of the Corrected Petition. (Paper 45 at 3.) In truth, the
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`Corrected Petition at page 14 expressly provided what Petitioner would assume
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`“flexible” to mean. (Paper 4 at 14.) The text of the Corrected Petition on this
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`point is as follows:
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`Although the term “flexible” is used at col 3, lines 29-31 in the specification
`of the ‘525 Patent with reference to the paddles being “formed from a thin
`flexible material such as plastics material for example polyethylene,” the
`‘525 Patent does not make clear what else may qualify as “flexible.” In view
`of the lack of description in the ‘525 Patent specification, and considering
`the purpose of the elongate members, the source of the applied load, and the
`applicant’s express definition for “inherently resilient,” the term “flexible”
`is assumed herein to mean that the elongated member can be moved to a
`biased position by a user’s finger.” (Id. (emphasis added))
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`Petitioner’s assumption, however, was not asserted to be a plain or ordinary
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`meaning of “flexible” and was not asserted to be a special meaning of the term. As
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`IPR2016-00948 for U.S. Patent 8,641,525
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`such, it would have been legal error to adopt this assumed definition.
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`By assuming a meaning that did not embrace flexing or flexibility, Petitioner
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`consciously avoided giving credit and meaning to the term “flexible.”
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`Nonetheless, Petitioner was in a position to make a showing on the issue of
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`flexibility at the outset, but failed to do so.
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`In the Institution Decision, citing Exhibit 3001, the Board provided an
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`ordinary meaning of the term “flexible” (i.e., “capable of being bent or flexed”).
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`(Paper 10 at 14.) In its Reply, Petitioner did not assert that the Board’s
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`interpretation was in error. (Paper 23 at 14-15.) Rather, it attempted to show, for
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`the first time, that the mode switches of Enright are flexible – something it avoided
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`previously. (Id.) In so doing, Petitioner used the claim term “flexible”, but did not
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`refer to the ordinary meaning assigned by the Board. As such, it was not
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`responding to new issues. Rather, it was attempting to belatedly present evidence
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`on the issue of flexibility. The text of Petitioner’s Reply is set forth here:
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`… Ironburg challenges only whether the prior art teachings are sufficient to
`suggest flexibility of the mode switches 32, 34.
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`The foregoing excerpt of Enright would suggest to a POSITA in June 2011
`that the mode switches 32, 34 are or include some flexible element such as
`a spring, to provide the ubiquitous function that is described therein (i.e.
`depressing to a biased position, and releasing to return). See Rempel Reply
`Decl. at ¶12. A POSITA in June 2011 would have been aware of various
`well-known and conventional ways to fabricate the mode switches 32, 34 to
`be or include a flexible element – such as fabricating them from any flexible
`material. See Id.
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`IPR2016-00948 for U.S. Patent 8,641,525
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`Ironburg did not invent flexible materials, nor was Ironburg the first make a
`switch from an elongate flexible beam. See, e.g., Oelsch2 at 2:53-57
`(describing the use of a flexible material for “switch element 6,” which
`includes a “center zone 7” that defines an elongate “contact tongue 10”).
`Hence, 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. See Rempel Reply Decl. at
`¶12. Thus a flexible back control is obvious over Enright. (Id.(emphasis
`added.))
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`In view of the above, it is clear that the Board correctly found that the
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`Petitioner failed to address a claimed characteristic of the elongate members —
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`flexibility — and that this failing could not be corrected in Petitioner’s Reply.
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`(Paper 44 at 36-38.) Petitioner asserts that it did provide a definition in the
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`Corrected Petition, but Petitioner certainly did not provide a definition that
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`embraced flexibility and it did not attempt to show that Enright included elongate
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`members that were flexible or capable of being bent or flexed. As a consequence,
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`it is clear that Petitioner has failed to demonstrate that the Board misapprehended
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`or overlooked the record, as is required.
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`B.
`Petitioner’s Contention That The Assumption It Made In The
`Corrected Petition Accords With The BRI Of Flexible And Is
`Supported By The '525 Patent Specification Is Incorrect And Irrelevant
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`Petitioner’s assertion that the assumption made in the Corrected Petition,
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`that the elongate member can be moved to a biased position by a user’s finger,
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`accords with the BRI and is supported by the patent specification, is incorrect and
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`irrelevant. (Paper 45 at 3-4.) The claim limitation at issue is flexibility. Petitioner
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`IPR2016-00948 for U.S. Patent 8,641,525
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`acknowledged in the Corrected Petition that the ‘525 patent provided the following
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`description of the elongate members – “formed from a thin flexible material such
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`as plastics material for example polyethylene,” and further acknowledged that no
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`special definition had been provided, but then ignored the phrase and studiously
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`avoided providing a plain or ordinary meaning for the term “flexible”. (Paper 4 at
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`14; EX1001, 3:28-31.) Although the specification clearly teaches that the elongate
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`members can be moved, and thus movement is in accord with the specification,
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`that does not address flexibility of the elongate members.
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`C.
`Petitioner’s Contention That The Board’s Construction Is
`Unsupported By The Intrinsic Record Is Incorrect And Untimely
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`The Board found that the BRI of “flexible” meant that the elongate members
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`could be “bent or flexed” (Paper 10 at 13-14; Paper 44 at 36-37). Contrary to
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`Petitioner’s assertion here, the finding is supported by the specification which
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`discloses elongate members “formed from a thin flexible material such as plastics
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`material for example polyethylene.” (EX1001, 3:28-31.) Although the words “bent
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`or flexed” may not appear in the specification, that is irrelevant. Petitioner has not
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`attempted to show that the Board’s construction is not the ordinary meaning of the
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`term “flexible” or that the specification clearly compels its assumed definition.
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`Petitioner’s challenge to the Board’s construction is also untimely.
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`Petitioner did not address or dispute the Board’s construction in its Reply. Thus,
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`its new challenge to the Board’s construction is improper, see Marvell, IPR2014-
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`01562, Paper 13 at 5, and any material fact as to the Board’s construction should
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`IPR2016-00948 for U.S. Patent 8,641,525
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`be deemed admitted per 37 C.F.R. § 42.23(a).1
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`D.
`Petitioner Did Not Meet Its Prima Facie Burden To Show That
`Enright Includes “Flexible” Elongate Members
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`As set forth above, Petitioner studiously avoided flexibility in the Corrected
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`Petition and instead asserted that Enright met the “flexible” limitation because
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`elements could be moved or “depressed.” (See Paper 4 at 14, 34-35.) Petitioner
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`asserts that its approach (avoidance) was appropriate, but it cites no support for the
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`argument. (Paper 45 at 5-6.) There is no support. On the contrary, member
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`flexibility was raised by the claims themselves and all of Petitioner’s arguments
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`regarding flexibility were to be included in the Petition.
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`Petitioner's Reply Arguments Were Untimely And Irrelevant
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`E.
`Petitioner’s Reply arguments were not merely in reply to arguments made by
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`the Patent Owner. Petitioner made no flexibility showing in the Petition, and it
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`attempted to supply that showing for the first time in the Reply. In this regard,
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`1 Petitioner contends that SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d
`1341 (Fed. Cir. 2016) requires the Board to consider Petitioner’s new arguments in
`the Reply. (Paper 45 at 7.) However, SAS is inapposite. There, the Board adopted
`a new construction in its FWD, that varied significantly from its initial
`interpretation, without giving the parties reasonable notice of the change and an
`opportunity to present argument under the new theory. 825 F.3d at 1351. In
`contrast, here the Board’s FWD remained true to its construction of “flexible” in
`its Institution Decision, and Petitioner did have an opportunity in its Reply brief to
`address and/or dispute the Board’s construction, but chose instead to present new
`flexibility arguments on Enright’s switches in violation of 37 C.F.R. §42.23.
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`IPR2016-00948 for U.S. Patent 8,641,525
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`the Board correctly concluded that Petitioner’s Reply arguments were untimely
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`(Paper 44 at 38). Thus, the Board’s decision to not consider Petitioner’s belated
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`arguments is not an abuse of discretion. See 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
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`2012); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
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`1369 (Fed. Cir. 2016)( petitioner failed to provide all its arguments with
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`particularity in its initial petition).
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`Further, Petitioner’s Reply arguments are irrelevant for purposes of
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`satisfying Petitioner’s prima facie burden. The “relevant inquiry is whether the
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`Petition explained adequately how the construed claim is unpatentable, to include
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`specifying where each element of the claim is found in the prior art and the
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`relevance of evidence relied upon.” Nestle Healthcare Nutrition, Inc. v. Steuben
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`Foods, Inc., IPR2015-00249, Paper 37 at 9 (P.T.A.B. July 20, 2015) (citing 37
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`C.F.R. §§ 42.104(b)(4)-(b)(5)). Petitioner failed to show that the Board’s factual
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`finding regarding the Petition’s deficiency is unsupported by substantial evidence.
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`IV. CONCLUSION
`Patent Owner submits that all requested relief should be denied.
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`Date: December 26, 2017
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`Respectfully submitted,
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`By: /s/ Robert Becker
`Robert Becker
`Attorney for Patent Owner
`Reg. No. 37,778
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`IPR2016-00948 for U.S. Patent 8,641,525
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`RESPONSE TO PETITIONER’S REQUEST FOR REHEARING was served
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`in its entirety electronically 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/ Robert Becker
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`Robert Becker
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`Attorney for Patent Owner
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`Reg. No. 37,778
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`Date: December 26, 2017
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