IPR2017-00136
`IPR2017-00137
`
`US. Patent 8,641,525
`
`US. Patent 9,089,770
`
`Oral Argument
`Valve Corp. v. Ironburg Inventions Ltd.
`
`Trial Hearing
`17 January 2018
`
`US Patent & Trademark Office
`Madison Building East, 9th floor
`600 Dulany Street,
`Alexandria, VA 22314.
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 001 of 008
`
`
`IPR2017-00137
`
`US. Patent 8,641,525
`
`US. Patent 9,089,770
`
`Oral Argument
`Valve Corp. v. Ironburg Inventions Ltd.
`
`Trial Hearing
`17 January 2018
`
`US Patent & Trademark Office
`Madison Building East, 9th floor
`600 Dulany Street,
`Alexandria, VA 22314.
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 001 of 008
`
`
`
`Ironburg's Motion to Terminate Should be Denied
`(if still pending)
`
`Contrary to Ironburg’s arguments …
`
`Petitioner did not fail to argue: a skilled & diligent search could not reasonably
`have been expected to discover Wörn.
`See, Petitioner’s Opposition, Paper 33, at 7-11.
`See also, Cotropia Decl. (Ex. 1020) at ¶ ¶ 61-67.
`
`Petitioner does not argue that Dr. Rubinger’s reliance on the Examiner’s
`classification was premised on hindsight, but rather that Dr. Rubinger’s
`departure from the examiner’s classification was premised on hindsight.
`See, Petitioner’s Opposition, Paper 33, at 11-12.
`The patent examiner searched the entire USPC 463 and USPC
`D14 classes (>100,000 prior art references), yet did not search
`USPC 345/169. See, Cotropia Decl. (Ex. 1020) at ¶¶ 61-67.
`
`For an issued patent, seeking “the help of the patent examiner in finding
`subclasses” = checking what subclasses the examiner actually searched.
`Landon IP did that. See, Cotropia Decl. (Ex. 1020) at ¶¶ 16, 32, 45, and 48-53.
`Examiner did not search USPC 345/169. See, Id. at ¶¶ 61-67.
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 002 of 008
`
`
`
`“for a game console” & “video game”
`= non-limiting statements of intended use
`
`USPTO:
`
`The Board already concluded that the preambles of ’525 patent claim 20,
`and ’770 patent claim 1, are not limiting.
`See, IPR2017-00136, Paper 12 at 8-11; see also, IPR2017-00137, Paper 10 at 9.
`Federal Circuit:
`Statements of intended use are not limiting, unless used during prosecution to
`distinguish prior art.
`See, Catalina Marketing Int., Inc., v. Coolsavings.com, Inc., 289 F.3d 801, 1781, 1785 (Fed. Cir. 2002).
`See also, C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1348-49 (Fed. Cir. 1998).
`’525 & ’770 Patents:
`preamble: “for a game console” or “video game”
`
` never used during prosecution to distinguish prior art
` not referenced in the body of the claim
` doesn’t provide antecedent basis
`body of claim: positive limitations
` describes a structurally complete device
` understood without preamble
` applicable to ergonomics of controllers for any use (not just games)
`
`
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 003 of 008
`
`
`
`Broadest reasonable interpretation:
`“for a game console” & “video game” controller
`
`Assuming (counterfactually) that preambles are limiting:
`
`only the controller component is claimed
`not the system being controlled
`
`requires only: can be used to control a video game
`use for a game console may be primary or alternative use
`if alternative use, may have different primary use
`
`’525 Fig. 2
`
`does not say: “for only a game console”
`
`any controller that can control a downstream microprocessor,
`can also be used to control a video game
`’525 and ’770 patents are about hand ergonomics, not downstream electronics
`makes no difference if downstream microprocessor operates
`a real robot or a virtual robot in a game
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 004 of 008
`
`
`
`Wörn controller can be used to
`control a video game.
`
`Express disclosure:
`Wörn at 1:14-17
`Wörn device outputs “control and program data”
`= controller
`transmitted to a conventional personal computer
`
`Inherent disclosure:
`See, Rempel Reply Declaration at ¶¶ 9-10
`Always true: a conventional personal computer
`can be programmed to run a video game
`= game console.
`
`Wörn Fig. 6
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 005 of 008
`
`
`
`Broadest reasonable interpretation:
`“convex portions” (’770 patent claims 3-4)
`
`Ironburg wants to require optional features of an example embodiment
`
`’770 Figs. 1 and 2
`extend downwards?
`bulge outwards?
`but figures are not the claims
`not legally proper to read into claims
`
`dictionary definition
`sphere as example of bulging surface?
`bulges only with respect to its interior, just like any rounded corner
`
`’770 Fig. 2
`
`Valve: “convex portion” entitled to its broadest reasonable interpretation
`a rounded corner is convex
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 006 of 008
`
`
`
`Wörn controller includes convex portions.
`
`See, Rempel Reply Declaration at ¶ 11
`
`Wörn Fig. 6:
`
`Rounded corners of Wörn controller:
`not straight or concave
`
`part of the bottom edge
`helps define outer portion
`that is held by the user (i.e., a handle)
`like dictionary example of “convex” (sphere)
`•
`bulge outwards relative to their interior
`
` within the ordinary meaning (and BRI) of “convex portions”
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 007 of 008
`
`
`
`’770 patent claim 18 falls with claim 17.
`
`Limitation added by claim 18:
`Mounting (specified by claim 17) is “by a screw”
`Undisputed:
`Ironburg did not invent screws for mounting.
`’770 screw is merely conventional
`•
`no special or unique characteristics described in the ’770 patent
`•
`applicant relied on common knowledge of conventional screws
`
`Fig. 2
`
`Legal consequence:
`Official notice: a screw for mounting is capable of instant
`and unquestionable demonstration as being well-known
`in this predictable mechanical art.
`No independent basis for the patentability of claim 18
`– stands or falls with claim 17.
`
`Petitioner Exhibit 1021, IPR2017-00136 -00137, p. 008 of 008
`
`
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