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`Paper No. 25
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`____________________
`
`Cases:
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`____________________
`
`
`SUPPLEMENTAL EVIDENCE FILED IN RESPONSE TO
`PATENT OWNER’S EVIDENTIARY OBJECTIONS
`
`
`1
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`
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`I.
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`Procedural authorization to file supplemental evidence.
`
`Petitioner disagrees with the objections to evidence that Patent Owner filed
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`on 04 April 2017, and reserves the right to rebut each of those objections in an
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`opposition, if Patent Owner brings a motion to exclude based upon such
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`objections. Under 37 CFR §42.64(b)(2), and pursuant to the Board’s order dated
`
`27 October 2016 (Paper 13, at p. 4), the Petitioner is now entitled to file
`
`supplemental evidence (before the ten-business-day deadline which expires on 18
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`April 2017), in response to the Patent Owner’s evidentiary objections filed 04
`
`April 2017.
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`II. The supplemental evidence filed herewith, is proper and authentic.
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`Three exhibits containing supplemental evidence are being filed herewith.
`
`Each of these exhibits is proper and authentic as described below.
`
`A. Exhibit 1025, the Prosecution History of U.K. Patent App. No.
`GB1011078.1.
`
`The undersigned attorney declares under penalty of perjury, pursuant to 28
`
`U.S.C. §1746 and 18 U.S.C. §1001, that Petitioner’s Exhibit 1025 submitted
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`herewith into the record of instituted trials IPR2016-00948 and IPR2016-00949, is
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`a true and correct copy of the publicly available and official prosecution history of
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`Patent App. No. GB1011078.1, and matches in all material aspects the version
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`publicly available for download from the Online Patent Information and Document
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`Inspection Service (Ipsum) of the U.K. Intellectual Property Office, at
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`
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`2
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`
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`www.ipo.gov.uk/p-ipsum/Case/PublicationNumber/GB2481633. It includes, at
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`pages 21-29 & 42 (using the page number of the electronic PDF version of the
`
`file), the UK Search and Examination Report for Patent App. No. GB1011078.1,
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`dated 16 May 2011, that was filed in this action as Exhibit 1007 on 22 April 2016
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`(which was previously downloaded from the same U.K. Intellectual Property
`
`Office website, as stated under penalty of perjury by the undersigned attorney in
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`Exhibit 1013, at paragraph 7).
`
`Based on the above, Petitioner’s Exhibit 1025 is not excluded by the rule
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`against hearsay because it qualifies as a public record under the Federal Rules of
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`Evidence (FRE) §803(8). Also, its availability from the official web domain
`
`www.ipo.gov.uk, and its other characteristics, evidence its authenticity under FRE
`
`§901(a), FRE §901(b)(1), FRE §901(b)(4), and FRE §901(b)(7)(B).
`
`B.
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`Exhibit 1026, WIPO Study on Inventive Step.
`
`The undersigned attorney declares under penalty of perjury, pursuant to 28
`
`U.S.C. §1746 and 18 U.S.C. §1001, that Petitioner’s Exhibit 1026 submitted
`
`herewith into the record of instituted trials IPR2016-00948 and IPR2016-00949, is
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`a true and correct copy of the publicly available “Study on Inventive Step,”
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`published on 06 July 2015 by the World Intellectual Property Organization
`
`(WIPO) for the 22nd Session of the Standing Committee on the Law of Patents held
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`in Geneva on 27-31 July 2015, a summary of which is available in six languages,
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`3
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`and matches in all material aspects the version that is publicly available for
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`download from WIPO at www.wipo.int/edocs/mdocs/scp/en/scp_22/scp_22_3.pdf .
`
`Based on the above, Petitioner’s Exhibit 1026 is not excluded by the rule
`
`against hearsay because it qualifies as a public record under the Federal Rules of
`
`Evidence (FRE) §803(8). Also, its availability from the official web domain
`
`www.wipo.int, and its other characteristics, evidence its authenticity under FRE
`
`§901(a), FRE §901(b)(1), FRE §901(b)(4), and FRE §901(b)(7)(B)..
`
`C. Exhibit 1027, Abstracts of a Subset of Patent Documents
`Previously Examined by Mr. Brendan Donohoe.
`
`The undersigned attorney declares under penalty of perjury, pursuant to 28
`
`U.S.C. §1746 and 18 U.S.C. §1001, that Petitioner’s Exhibit 1027 submitted
`
`herewith into the record of instituted trials IPR2016-00948 and IPR2016-00949, is
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`a true and correct copy of a selection of three publicly available abstracts (with
`
`corresponding search reports) of published patent documents officially examined
`
`by Mr. Brendan Donohoe of the U.K. Intellectual Property Office, and match in all
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`material aspects the abstracts and search reports that are publicly available for
`
`download from the Online Patent Information and Document Inspection Service
`
`(Ipsum) of the U.K. Intellectual Property Office, at the following three Internet-
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`accessible locations:
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`• https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB0816492.3
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`• https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB0816482.4
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`
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`4
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`
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`• https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB0816493.1
`
`Petitioner’s Exhibit 1027 is not excluded by the rule against hearsay because
`
`it qualifies as a public record under the Federal Rules of Evidence (FRE) §803(8).
`
`Also, its availability from the official web domain www.ipo.gov.uk, and its other
`
`characteristics, evidence its authenticity under FRE §901(a), FRE §901(b)(1), FRE
`
`§901(b)(4), and FRE §901(b)(7)(B).
`
`III. Updated complete list of exhibits.
`
`Starting on the following page, is a complete list of Petitioner’s exhibits,
`
`updated to include the supplemental evidence filed herewith, and including all
`
`exhibits filed by petitioner to date.
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`IV. Conclusion.
`
`The supplemental evidence filed herewith is proper and authentic, as
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`described previously herein.
`
`Respectfully submitted,
`
`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
`
`
`
`
`
`
`
`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
`Attorneys for Petitioner, Valve Corporation
`
`
`Dated: 13 April 2017
`
`
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`5
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`1012
`
`1013
`1014
`(not filed)
`
`
`
`
`
`UPDATED EXHIBIT LIST
`
`Description
`U.S. Patent 8,641,525 to Burgess et al. (“ ’525 patent”)
`U.S. Patent 5,989,123 to Tosaki et al. (“Tosaki”)
`U.S. Patent App. Pub. 2010/0073283 to Enright (“Enright”)
`U.S. Patent App. Pub. 2001/0025778 to Ono
`“Rapid Fire Mod for Wireless Xbox 360 Controller, Step by Step
`Tutorial with Pictures,” posts 341-346 by Jimakos Sn, published
`08 July 2008 at http://forums.xbox-
`scene.com/index.php?/topic/643928-rapid-fire-mod-for-wireless-
`xbox-360-controller/page-23.
`U.S. Patent 4,032,728 to Oelsch (“Oelsch”)
`UK Search and Examination Report for Patent App. No.
`GB1011078.1, 16 May 2011, at 2.
`Expert Declaration of David Rempel, M.D., in Support of Valve
`Corporation’s Petition for Inter-Partes Review of U.S. Patent
`8,641,525.
`Curriculum Vitae of David Rempel, M.D. (also denominated as
`Ex. 1 to Ex. 1012).
`Photo of the Wireless Xbox 360 Controller, published on 13 May
`2005 at http://www.ign.com/articles/2005/05/13/xbox-360-
`wireless-controller-tour.
`U.S. Patent 9,089,770 to Burgess et al. (“ ’770 patent”)
`Expert Declaration of David Rempel, M.D., in Support of Valve
`Corporation’s Petition for Inter-Partes Review of U.S. Patent
`9,089,770.
`Declaration of Joshua C. Harrison.
`Diagram used in deposition of Dr. Glen Stevick, 09 March 2017.
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`6
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`Exhibit No.
`1015
`(not filed)
`1016
`(not filed)
`1017
`(not filed)
`1018
`(not filed)
`1019
`(not filed)
`1020
`(not filed)
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
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`UPDATED EXHIBIT LIST (CONTINUED)
`
`
`Description
`Shape 1, used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Shape 2, used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Shape 3, used in deposition of Dr. Glen Stevick, 09 March 2017.
`
`Institution Decision in IPR2016-0949 (filed as Paper 10, but
`not filed as an exhibit).
`Annotated Fig. 1 of U.S. Patent 7, 859,514 to Park.
`
`Annotated Fig. 23 of U.S. Patent 5,989,123 to Tosaki et al.
`
`Expert Declaration of David Rempel, M.D., Regarding the PO
`Responses in cases IPR2016-00948 and IPR2016-00949.
`(“Rempel Reply Decl.”)
`Transcript of Deposition of Dr. Glen Stevick on 09 March 2017.
`(“Stevick Depo., Vol. I”)
`Transcript of Deposition of Dr. Glen Stevick on 15 March 2017.
`(“Stevick Depo., Vol. II”)
`Excerpt from USPTO Manual of Classification, January 2011,
`Class 463 Amusement Devices: Games.
`www.uspto.gov/web/patents/classification/uspc463/sched463.pdf
`Prosecution history of Patent App. No. GB1011078.1, from the
`Online Patent Information and Document Inspection Service
`(Ipsum) of the U.K. Intellectual Property Office.
`www.ipo.gov.uk/p-ipsum/Case/PublicationNumber/GB2481633
`“Study on Inventive Step,” 06 July 2015, World Intellectual
`Property Organization (WIPO), 22nd Session of the Standing
`Committee on the Law of Patents, Geneva.
`www.wipo.int/edocs/mdocs/scp/en/scp_22/scp_22_3.pdf
`Abstracts (and corresponding search reports) of three published
`patent documents officially examined by Mr. Brendan Donohoe
`of the U.K. Intellectual Property Office.
`
`
`7
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that on
`
`13 April 2017 a true copy of the foregoing SUPPLEMENTAL EVIDENCE FILED
`
`IN RESPONSE TO PATENT OWNER’S EVIDENTIARY OBJECTIONS, and
`
`Exhibits thereto under 37 C.F.R. § 42.64(b)(2), were served in its entirety on the
`
`Patent Owner via electronic mail and electronically via PTAB E2E to:
`
`Ehab Samuel
`Reg. No. 57,905
`Email: esamuel@manatt.com
`
`Danielle Mihalkanin
`Reg. No. 69,506
`Email: dmihalkanin@manatt.com
`
`Manatt, Phelps & Phillips, LLP
`11355 W. Olympic Blvd.
`Los Angeles, CA 90064
`
`
`
`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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`
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`Dated: 13 April 2017
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`
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
`
`
`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
`
`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
`
`Attorneys for Petitioner, Valve Corporation
`
`
`
`
`8
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`
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