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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 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`___________________
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`PATENT OWNER’S SUBMISSION
`RE: SCOPE OF PETITIONER’S REPLY
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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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`Pursuant to the Board’s Order, Patent Owner makes this submission to
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`identify new issues in Petitioner’s Reply (Paper No. 23 in the 948 IPR (“948
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`Reply”), and Paper No. 24 in the 949 IPR (“949 Reply”)) that exceed the proper
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`scope of a reply and/or should have been in the Petition. 37 C.F.R. § 42.23; Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“a reply
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`that raises a new issue or belatedly presents evidence will not be considered and
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`may be returned. The Board will not attempt to sort proper from improper portions
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`of the reply.”).
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`Specifically, Petitioner advanced the following new arguments:
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` The entire section titled “Tosaki is analogous art” contains new
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`arguments, including (1) that Tosaki has the same U.S. Classification and same
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`Field of Search as the challenged patents, and (2) reference to the USPTO Manual
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`of Classification. See 948 Reply at 19; 949 Reply at 20-21; and EX1024.
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` Petitioner’s new argument that hand grips 14 are within the ordinary
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`meaning of “handles.” See 948 Reply at 9; 949 Reply at 10; and Rempel Reply
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`Decl. (EX1021), ¶9.
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` Petitioner’s new argument that Enright’s ¶0032 refers to position of
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`switches, but in view of Tosaki would “rationally suggest to a POSITA” to
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`“lengthen,” and Petitioner’s attempt to support its new obviousness argument with
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`UK Examiner’s statements See 948 Reply at 20-21; 949 Reply at 21-22; and
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`Rempel Reply Decl., ¶¶14-16.
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` Petitioner’s new arguments (a) that the mode switches 32, 34 must
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`include some flexible element such as a spring, (b) that Ironburg did not invent
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`flexible materials, and (c) reliance on Oelsch to suggest the making of a switch
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`from an elongate flexible beam. See 948 Reply at 15; and Rempel Reply Decl.,
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`¶12.
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` The entire section on “paddle levers were common knowledge”
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`contains new arguments, including arguments made therein that (a) ‘paddle levers’
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`were common knowledge, (b) the challenged patent depicts them as “simple
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`elongate oval outlines,” (c) specification “lacks description or guidance to
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`distinguish a paddle lever from other types of controls, (d) Ironburg did not invent
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`paddle levers, and (e) to be enabled and have written description support, paddle
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`levers must have been assumed common knowledge. See 948 Reply at 24-25; 949
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`Reply at 25-26; and Rempel Reply Decl., ¶17.
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`As the Federal Circuit explained, “[o]nce the Board identifies new issues
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`presented for the first time in reply, neither this court nor the Board must parse the
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`reply brief to determine which, if any, parts of that brief are responsive and which
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`are proper.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d
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`1359, 1369 (Fed. Cir. 2016).
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`- 2 -
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`Date: July 10, 2017
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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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`Reg. No. 57,905
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`Yasser El-Gamal
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`Reg. No. 45,339
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`Attorneys for Patent Owner
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`- 3 -
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`SUBMISSION RE: SCOPE OF PETITIONER’S REPLY was served in its
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`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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`Date: July 10, 2017
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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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`- 4 -
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