Trials@uspto.gov
`571-272-7822
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`Paper 43
`Date: January 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`_______________
`
`IPR2017-00136 (Patent 8,641,525 B2) 1
`IPR2017-00137 (Patent 9,089,770 B2)
`_______________
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion to Terminate
`37 C.F.R. § 42.71
`
`
`
`
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 43
`Date: January 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`_______________
`
`IPR2017-00136 (Patent 8,641,525 B2) 1
`IPR2017-00137 (Patent 9,089,770 B2)
`_______________
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion to Terminate
`37 C.F.R. § 42.71
`
`
`
`
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`
`Ironburg Inventions Ltd. (“Patent Owner”) seeks to terminate the
`instant inter partes reviews, because, pursuant to 35 U.S.C. § 315(e)(1),
`Valve Corporation (“Petitioner”) is estopped from maintaining the inter
`partes reviews. Paper 262 (“Mot.”). Section 315(e)(1) of the statute
`provides:
`(e) Estoppel. —
`(1) Proceedings before the office.—The petitioner in an inter
`partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a) . . . may
`not request or maintain a proceeding before the Office with
`respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.
`35 U.S.C. § 315(e)(1); see 37 C.F.R. 42.73(d).
`Each of the claims challenged in the instant proceedings were subject
`to a final written decision under 35 U.S.C. § 318(a) in the earlier
`proceedings. In IPR2017-00136, Petitioner challenges claim 20 of U.S.
`Patent No. 8,641,525 B2 (Ex. 1001, “the ’525 patent”) as anticipated by
`Wörn3. In IPR2016-00948, Petitioner also challenged claim 20 of the ’525
`patent and, on September 22, 2017, we issued a Final Written Decision
`finding claim 20 unpatentable. IPR2016-00948, Paper 44, 50.4 Likewise, in
`IPR2017-00137, Petitioner challenges claims 1–4, 12, 15–18, and 20 of U.S.
`Patent No. 9,089,770 B2 (Ex. 1002, “the ’770 patent”) as anticipated by
`Wörn. In IPR2016-00949, Petitioner also challenged claims 1–4, 12, 15–18,
`
`
`2 For the purposes of this Order, IPR2017-00136 is representative and all
`citations are to papers in IPR2017-00136 unless otherwise noted.
`3 U.S. Patent No. 6,362,813 B1, issued Mar. 26, 2002 (Ex. 1003).
`4 Although there is an outstanding request for rehearing in this case, it does
`not address claim 20. See Paper 45.
`
`2
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`and 20 of the ’770 patent and, on September 22, 2017, we issued a Final
`Written Decision finding claims 1–4, 12, 15–18, and 20 unpatentable.
`IPR2016-00949, Paper 45, 55.
`Petitioner did not raise grounds based on Wörn in either IPR2016-
`00948 or IPR2016-00949. IPR2016-00948, Paper 1, 4–6; IPR2016-00949,
`Paper 1, 4–6. Patent Owner contends that Petitioner reasonably could have
`raised the grounds based on Wörn in these earlier inter partes reviews. See
`Mot.
`
`The legislative history of the America Invents Act broadly describes
`what “could have been raised” to include “prior art which a skilled searcher
`conducting a diligent search reasonably could have been expected to
`discover.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of
`Sen. Kyl); see id. at S1376 (statement of Sen. Kyl) (“This [estoppel]
`effectively bars such a party . . . from later using inter partes review . . .
`against the same patent, since the only issues that can be raised in an inter
`partes review . . . are those that could have been raised in [an] earlier post-
`grant or inter partes review.”); 157 Cong. Rec. S951–52 (daily ed. Feb. 28,
`2011)(statement of Sen. Grassley) (“It also would include a strengthened
`estoppel standard to prevent petitioners from raising in a subsequent
`challenge the same patent issues that were raised or reasonably could have
`been raised in a prior challenge.”); see Dell Inc. v. Elecs. and Telecomms.
`Research Inst., IPR2015-00549, slip. op. 4–6 (PTAB Mar. 26, 2015) (Paper
`10) (representative).
`Patent Owner and Petitioner dispute whether a skilled searcher
`conducting a diligent search reasonably could have been expected to
`discover Wörn. See generally, Mot.; Paper 33 (“Opp.”); Paper 34 (“Reply”).
`
`3
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`Patent Owner provides a Declaration of Bruce Rubinger to support its
`Motion. Ex. 2034; see also Ex. 1018 (cross-examination testimony of Bruce
`Rubinger). Petitioner provides a Declaration of Reynaldo C. Barcelo
`(Ex. 1012), a Declaration of Christopher A. Cotropia (Ex. 1020), and a
`Declaration of Jamila Williams (Ex. 1019) to support its Opposition.
`
`Considering all of Patent Owner’s and Petitioner’s evidence, we
`determine that the evidence sufficiently establishes that a skilled searcher
`conducting a diligent search reasonably could have been expected to
`discover Wörn.
`
`A skilled searcher performing a diligent search “begins with selecting
`one or more patent classifications and sub-classification” in the United
`States Patent Classification (“USPC”). Ex. 1020 ¶ 20; see also Ex. 1019,
`App. 15, 256 (“Since patent classification systems were designed to assist
`with patent searching, they are a good place to start.”); Ex. 1019 ¶¶ 8–9
`(“Once the most pertinent search classes & sub-classes . . . were initially
`identified . . . .”). “[A] professional search requires more than text
`searching. A systematic and exhaustive search of ‘core’ and ‘peripheral’
`subclasses is imperative to a reliable search.” Ex. 1019, App. 1, 47–48.
`The testimony of the declarants indicates that a skilled searcher would
`look to the class, subclass descriptions in the USPC to identify relevant
`
`
`5 Appendix 1 of Exhibit 1019 includes excerpts of the book, “Patent
`Searching: Tools and Techniques,” by David Hunt et al., ISBN: 978-0-0471-
`78379-4, John Wiley & Sons, 2007. Exhibits 1016 and 2035 contain
`excerpts of the same book.
`
` We reference the page numbers in the lower right corner rather than those
`in the upper right corner.
`
` 6
`
`4
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`searches. See Ex. 1020 ¶ 43; Ex. 2035¶¶ 42–43. The ’525 patent and the
`’770 patent are classified in class 463, “Amusement Devices: Games”
`(Ex. 3001, 1). Ex. 1001, (58); Ex. 1002, (58). The ’525 patent and the ’770
`patent are both classified in subclass 37, “Hand manipulated (e.g., keyboard,
`mouse, touch panel, etc.)” (Ex. 3001, 16). Id. In the USPC, Subclass 37 is
`indented under subclass 36, “Player-actuated control structure (e.g., brain-
`wave or body signal, bar-code wand, foot pedal, etc.,” which in turn is
`indented under subclass 1. Ex. 3001, 16. The USPC classification
`description for class 463/1 is “Including Means for Processing Electronic
`Data (e.g., Computer/Video Game, etc.)” and provides references to other
`classes. Id. at 4. It states:
`SECTION III – REFERENCES TO OTHER CLASSES
`SEE OR SEARCH CLASS:
`. . .
`345, Computer Graphics Processing and Selective Visual
`Display Systems, appropriate subclass for a selectively
`controlled visual display system which may either form
`part of a game or not be limited to a game.
`
`Id. at 2.
`
`A skilled searcher also would look to the classes, subclasses of
`pertinent prior art to identify relevant searches. Ex. 2034 ¶ 6; Ex. 1019,
`App. 1, 27–29. The ’525 patent and the ’770 patent cite multiple patents
`classified in class 345. Ex. 1001, (56); Ex. 1002, (56). Some of the cited
`patents are classified in class 345, subclass 169. Id.
`The description for class 345 is “Computer Graphics Processing and
`Selective Visual Display Systems.” Ex. 3002, 1. Subclass 156 is “Display
`Peripheral Interface Input Device.” Id. at 20. Subclass 169 “Portable (i.e.,
`handheld, calculator, remote controller),” is indented under subclass 168,
`
`5
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`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`“Including keyboard,” which is described as: “Subject matter wherein the
`operator uses plural keys for selectively inputting information data to control
`the display device.” Id. at 21–22. Subclass 168 is indented under subclass
`156. Id. at 21. The USPC classification description for class 345 states:
`SECTION III – REFERENCES TO OTHER CLASSES
`SEE OR SEARCH CLASS:
`. . .
`463, Amusement Devices: Games, subclasses 1 through 47,
`where there is a recited method or apparatus for moving or
`processing information specified as game or content
`information (e.g., a video game, etc.) . .
`
`Id. at 3.
`
`Given the above, we determine that a skilled searcher performing a
`diligent search would have searched class 345 and, in particular, subclass
`169. As can be seen from the quoted portions of the USPC above, the USPC
`cross-references class 345 and class 463 and the descriptive titles of class
`463, subclass 37 and class 345, subclass169 are similar. See also Ex. 1020
`¶ 53 (“The Landon IP search even went beyond the USPC classes searched
`by the ’525 Patent examiner, to include searches in more USPC subclasses
`of classes 273 and 345”); Ex. 1019, App. 2, 44 (including a search in class
`345, subclass 156 at line 22).
`
`Petitioner’s declarant, Mr. Cotropia, testifies, “most skilled searchers
`would consider the relative applicability of the descriptive titles of the
`classes and subclasses, and on that basis USPC 345/169 would not be
`searched.” Ex. 1020 ¶ 20. Mr. Cotropia, however, does not provide a
`persuasive explanation why a skill searcher would not search class 345,
`subclass 169, as the descriptive titles of class 463, subclass 37 and class 345,
`subclass 169 are similar.
`
`6
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`The testimony of the declarants indicates that a skilled searcher would
`
`manually search patents having a date prior to the critical date of the
`’525 patent and ‘770 patent in identified class, subclasses. Ex. 2034 ¶¶ 8,
`10; see also Ex. 1019 ¶ 9 (indicating that “[s]everal manual searches” were
`performed), App. 1, 37 (“You should search the drawings in technical fields
`where images are essential to the description of the invention.”); Ex. 1020
`¶ 36 (“the key point of novelty of the Subject Patents appears to be a
`comparison of the length of a back control relative to a greater dimension of
`a housing. Such a feature is likely to be located only in the drawings . . .”).
`Wörn is a patent having an appropriate date and classified in class 345,
`subclass 169. Ex. 1003, (52). The testimony indicates that a skilled searcher
`would have identified Wörn as pertinent prior art when manually searching
`class 345, subclass 169. See e.g., Ex. 1012 ¶ 17 (“the drawings of the Wörn
`prior art reference show the length limitations (for the elongate members of
`the back controls) of the claims of the ’525 and ’770 Patents are met”).
`
`Additionally, the testimony of the declarants indicates that a skilled
`searcher would search prior art in the identified classes, subclasses using
`keywords. Ex. 1019, App. 1, 27; Ex. 2034 ¶¶ 8, 10; Ex. 1020 ¶ 22.
`Dr. Rubinger’s testimony indicates that a skilled searcher would have
`identified Wörn as pertinent prior art using a pertinent keyword search.
`Ex. 2034 ¶ 8. Dr. Rubinger testifies that the results of the following
`keyword search, performed using Derwent Innovation, found Wörn:
`“(remote* OR controller*) AND (middle finger) AND ((button* OR puch*
`OR depress* OR swith *) SAME (back* OR under* OR behind OR rear*
`OR posterior*)).” Ex. 2034, ¶ 10; see also Ex.1012 ¶ 15, App. 2. (indicating
`
`7
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`that a search that discovered Wörn7 used similar keywords); Ex. 1019,
`App. 2 (indicating that searches used similar keywords). This search
`identified Wörn as one of only 49 patents that could have then been
`identified with a manual review. Ex. 2034, ¶ 10; Mot. 6.
`
`Given the above, we determine that the preponderance of evidence
`establishes that a skilled searcher conducting a diligent search reasonably
`would have been expected to discover Wörn and that Petitioner reasonably
`could have raised the grounds based on Wörn in the earlier inter partes
`reviews. We, thus, determine that Petitioner is estopped under 35 U.S.C.
`§ 315(e)(1) from maintaining the instant inter partes reviews.
`Rule 42.72 states: “The Board may terminate a trial without rendering
`a final written decision, where appropriate . . . .” 37 C.F.R. § 42.72. The
`rules are construed to “secure the just, speedy, and inexpensive resolution of
`every proceeding.” 37 C.F.R. § 42.1(b); see 36 U.S.C. § 316(b). At this
`stage of the proceeding, an oral hearing, which was requested by Patent
`Owner (see Paper 31 27; 35 U.S.C. § 316(a)(10) (“providing either party
`with the right to an oral hearing as part of the proceeding”)), has not yet
`been held and a decision on the merits has not yet been reached.
`Considering all of the circumstances of the proceedings, we determine it is
`appropriate to terminate these inter partes reviews as to both Petitioner and
`Patent Owner and not render a final written decision.
`
`
`
`7 Wörn was discovered during a search performed after Patent Owner
`amended its District Court complaint to assert related U.S. Patent No.
`9,352,229. See Ex. 1012.
`
`8
`
`
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`Accordingly, it is:
`
`ORDERED that IPR2017-00136 and IPR2017-00137 are terminated;
`
`FURTHER ORDERED that the oral argument scheduled for February
`
`1, 2018 is canceled.
`
`
`PETITIONER:
`Joshua Harrison
`Reynaldo Barcelo
`BARCELÓ, HARRISON & WALKER, LLP
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`
`PATENT OWNER
`Robert Becker
`Ehab M. Samuel
`Yasser El-Gamal
`MANATT, PHELPS & PHILLIPS, LLP
`RBecker@manatt.com
`ESamuel-PTAB@manatt.com
`YEIGamal@manatt.com
`
`
`9
`
`
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