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`Paper No. 35
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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)
`
`____________________
`
`
`OBJECTIONS TO
`PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`- i -
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`Exhibit List ……………………………………………………...….iii
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`INTRODUCTION .............................................................................. 1
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`
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`LEGAL STANDARDS ...................................................................... 1
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`III.
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`SPECIFIC OBJECTIONS .................................................................. 2
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`IV. REQUEST FOR RELIEF ................................................................... 4
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`- ii -
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
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`1006
`1007
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`1008
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`1009
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`1010
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`1011
`1012
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`1013
`1014
`(not filed)
`1015
`(not filed)
`1016
`(not filed)
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`EXHIBIT LIST
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`
`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.
`
`Shape 1, used in deposition of Dr. Glen Stevick, 09 March 2017.
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`Shape 2, used in deposition of Dr. Glen Stevick, 09 March 2017.
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`- iii -
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`Exhibit No.
`1017
`(not filed)
`1018
`(not filed)
`1019
`(not filed)
`1020
`(not filed)
`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
`1030
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`EXHIBIT LIST (CONTINUED)
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`
`Description
`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.
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`Annotated Fig. 23 of U.S. Patent 5,989,123 to Tosaki et al.
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`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.
`Abstracts (and corresponding search reports) of three published
`patent documents officially examined by Mr. Brendan Donohoe
`of the U.K. Intellectual Property Office.
`(duplicate of Exhibit 1027 served on 13 April 2017)
`Petitioner’s demonstrative exhibit for hearing.
`Petitioner’s demonstrative exhibit for hearing (first revised).
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`- iv -
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`I.
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`INTRODUCTION
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`The Petitioner served objections to the Patent Owner’s demonstrative exhibit
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`on 29 May 2017. The parties attempted to resolve these objections without
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`involving the Board, through email and telephone communications during the
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`period 29-30 May 2017. Although some of the objections were resolved through
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`such communications, several objections remain unaddressed. The Petitioner
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`requests that the Board consider the remaining objections set forth herein, and
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`require the removal of improper content in the Patent Owner’s demonstrative
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`exhibit prior to the hearing.
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`II.
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`LEGAL STANDARDS
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`“Unlike trials conducted in district courts, a trial before the Board is
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`conducted on paper. By the time the proceeding reaches final oral hearing, nothing
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`new can be presented, no new evidence, no new arguments. Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). “At that stage, the trial is
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`already completed, and the final oral hearing is not an opportunity to add anything
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`to a party’s case. Whatever a party desires to present, for whatever reason, should
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`have already been presented in the party’s petition, response, opposition, motion,
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`reply, declarations, observations on cross-examination, or other exhibits presented
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`at an appropriate time during the trial. It is from that perspective that we read the
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`prohibition in the Board’s Patent Trial Practice Guide against presenting new
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`- 1 -
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`evidence or new arguments in the demonstrative exhibits at final oral hearing.”
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`CBS Interactive Inc., et al. v. Helferich Patent Licensing, LLC, et al., IPR2013-
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`00033 (PTAB October 23, 2013) (Paper 118), at 2-3.
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`“Similarly, demonstrative exhibits are not an opportunity for additional
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`briefing. Arguments that have not been made previously cannot be made at the
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`trial hearing, and thus, cannot be in a demonstrative exhibit.” St. Jude Medical,
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`Cardiology Division, Inc. v. The Board of Regents of the University of Michigan,
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`IPR2013-00041 (PTAB January 27, 2014) (Paper 65), at 3.
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`III. SPECIFIC OBJECTIONS
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`Five of the thirty-six slides of Patent Owner’s demonstrative exhibit are
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`improper for including new arguments, not previously presented in the Patent
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`Owner’s response, motions, declarations, or exhibits presented at an appropriate
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`time during the trial. The improper content is described in the following table:
`
`PATENT
`OWNER’S
`SLIDE #
`10
`
`IMPROPER CONTENT
`
`PAGE
`#
`11 New arguments. This slide analogizes, quotes, and cites to
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`the following two new authorities that were never cited
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`before by Patent Owner:
`• Regents of Univ. of Minn. v. AGA Med. Corp., 717
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`F.3d 929, 936 (Fed. Cir. 2013)
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`• Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312,
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`1318 (Fed. Cir. 2006)
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`- 2 -
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`29
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`30 New argument analogizing to an institution decision in
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`IPR2017-00136, which is not anywhere in the record of
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`IPR2016-00948 -00949, neither in any brief nor any exhibit.
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`30
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`31 New arguments. This slide includes a new that was never
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`before made in this case, in which the Patent Owner newly
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`objects to content in Petitioner’s reply brief. This slide also
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`includes a new argument analogizing to an institution
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`decision in IPR2017-00136, which is not anywhere in the
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`record of IPR2016-00948 -00949, neither in any brief nor
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`any exhibit.
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`32
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`33 New argument analogizing to an institution decision in
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`IPR2017-00136, which is not anywhere in the record of
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`IPR2016-00948 -00949, neither in any brief nor any exhibit.
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`33
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`34 New argument analogizing to an institution decision in
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`IPR2017-00136, which is not anywhere in the record of
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`IPR2016-00948 -00949, neither in any brief nor any exhibit.
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`Even if the Patent Owner may make a new argument orally during the
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`hearing to object to something in Petitioner’s reply brief, the rules and authority
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`regarding demonstrative exhibits do not allow the Patent Owner’s slides to be an
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`opportunity for new written briefing. Therefore, all of the portions of the Patent
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`Owner’s slides listed in the foregoing table are improper when presented in a
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`demonstrative exhibit.
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`- 3 -
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`IV. REQUEST FOR RELIEF
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`The Petitioner requests that the Board order the Patent Owner to remove all
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`of the improper content in its demonstrative exhibit, as listed in the foregoing table.
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`Counsel for Petitioner is available for a conference call with the Board and counsel
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`for Patent Owner to discuss these Objections prior to the oral hearing.
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`Dated: May 31, 2017
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`Respectfully submitted,
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
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`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that on
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`31 May 2017 a true copy of the foregoing OBJECTIONS TO PATENT
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`OWNER’S DEMONSTRATIVE EXHIBIT was served in its entirety on the Patent
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`Owner electronically via PTAB E2E to:
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`Ehab M. Samuel, Reg. No. 57,905
`MANATT, PHELPS & PHILLIPS. LLP
`11355 W. Olympic Blvd. Los Angeles, CA 90064
`Tel: (310) 312-4000 Fax: (310) 312-4224
`ESamuel@manatt.com
`Danielle Mihalkanin, Reg. No. 69,506
`MANATT, PHELPS & PHILLIPS, LLP
`1841 Page Mill Road, Suite 200, Palo Alto, CA 94304
`Tel: (650) 812-1300 Fax: (650) 213-0260
`DMihalkanin@manatt.com
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
`695 Town Center Drive, 14th Floor, Costa Mesa, CA 92626
`Tel: (714) 371-2500 Fax: (714) 371-2550
`YElGamal@manatt.com
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`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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`Dated: 31 May 2017
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
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`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
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`Attorneys for Petitioner, Valve Corporation
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`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBIT
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`- 5 -
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