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`Paper No. 41
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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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`Cases:
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`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
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`____________________
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`SUBMISSION REGARDING SCOPE OF REPLY
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`- i -
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`PETITIONER’S RESPONSE TO P.O. SUBMISSION RE: SCOPE OF REPLY
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`Under 37 CFR § 42.23(b), the proper scope of Petitioner’s Reply may
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`include arguments responding to the Patent Owner Response (Paper 19 in each of
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`IPR2016-0948 and IPR2016-0949, hereinafter referred to as the “0948 PO
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`Response,” or the “0949 PO Response,” respectively). Here, every argument that
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`the Patent Owner alleges as “new,” in its Submission Re: Scope of Petitioner’s
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`Reply, responds to an argument in the Patent Owner Response, as follows:
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`• The section of Petitioner’s Reply entitled “Tosaki is analogous art”
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`responds to Patent Owner’s arguments that Tosaki is non-analogous art, at pp. 47-
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`49 of the 0948 PO Response, and at pp. 49-51 of the 0949 PO Response.
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`• Petitioner’s argument that hand grips 14 of Tosaki are “handles,”
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`within that term’s ordinary meaning, responds to Patent Owner’s argument that
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`Tosaki does not disclose any “handles,” at p. 27 of the 0948 PO Response and at
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`p. 27 of the 0949 PO Response. Petitioner also made the argument regarding
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`handles in the original Petition in IPR2016-00949, Paper 1, at pp. 20-21.
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`• Petitioner’s argument that Enright ¶0032 would rationally suggest to a
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`POSITA to lengthen Enright’s mode switches, responds to Patent Owner’s
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`argument that Enright’s ¶0032 suggests only the position of the mode switches, at
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`pp. 49-50 of the 0948 PO Response and at pp. 51-52 of the 0949 PO Response.
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`Petitioner also made the lengthening argument in the original petitions (see,
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`IPR2016-00948, Paper 1, at p. 37, and IPR2016-00949, Paper 1, at p. 43).
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`PETITIONER’S RESPONSE TO P.O. SUBMISSION RE: SCOPE OF REPLY
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`- 1 -
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`• Petitioner’s arguments that the Enright mode switches 32, 34 must
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`include a flexible element such as a spring, that Ironburg did not invent flexible
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`materials, and that Oelsch suggests making a switch from an elongate flexible
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`beam, respond to Patent Owner’s argument about whether Enright “teaches or
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`suggests that the mode switches ‘may be bent or flexed by a load,’ as required
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`under the Board’s construction.” See, 0948 PO Response at pp. 40-41. The earliest
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`opportunity for the Petitioner to address that claim construction, or the Patent
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`Owner’s arguments based upon it, was in the Petitioner’s Reply.
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`• Petitioner’s arguments regarding “paddle levers” respond to Patent
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`Owner’s argument that Enright fails to disclose paddle levers “under the Board’s
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`construction1,” at pp. 57-58 of the 0948 PO Response and at pp. 59-60 of the 0949
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`PO Response. Petitioner’s arguments that paddle levers were common knowledge,
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`and drawn merely as simple ovals, were also made in the original petitions (see,
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`IPR2016-00948, Paper 1, at p. 16, and IPR2016-00949, Paper 1, at p. 28-29.)
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`Therefore, in this case each Petitioner’s Reply has proper scope under
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`37 CFR § 42.23(b).
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`1 Actually the Board did not construe “paddle lever,” but rather disagreed with a
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`proposed construction. See, e.g., IPR2016-0948, Paper 10, at p. 16.
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`PETITIONER’S RESPONSE TO P.O. SUBMISSION RE: SCOPE OF REPLY
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`- 2 -
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`Dated: 13 July, 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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`PETITIONER’S RESPONSE TO P.O. SUBMISSION RE: SCOPE OF REPLY
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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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`13 July 2017 a true copy of the foregoing PETITIONER’S RESPONSE TO
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`PATENT OWNER’S SUBMISSION REGARDING SCOPE OF REPLY was
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`served in its entirety on the Patent 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: 13 July 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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`- 4 -
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`PETITIONER’S RESPONSE TO P.O. SUBMISSION RE: SCOPE OF REPLY
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