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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________
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`VALVE CORPORATION
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`_______________________
`
`Case IPR2017-00136
`Patent 8,641,525
`_______________________
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`
`
`DECLARATION OF DR. GLEN STEVICK
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`IN SUPPORT OF THE PATENT OWNER PRELIMINARY RESPONSE
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`IRONBURG EX2002
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`
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`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`IV.
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`
`
`V.
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`
`
`Page
`INTRODUCTION ............................................................................................................. 1
`QUALIFICATION ............................................................................................................ 1
`INFORMATION CONSIDERED ..................................................................................... 5
`OVERVIEW OF THE LAW USED FOR THIS DECLARATION .................................. 7
`A. CLAIM CONSTRUCTION LAW ............................................................................... 7
`B. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ................................. 8
`C. TECHNOLOGY OVERVIEW AND STATE OF THE ART .................................. 10
`CLAIM CONSTRUCTIONS FOR THE ‘525 PATENT ................................................ 11
`A. “HAND HELD CONTROLLER FOR A GAME CONSOLE” ................................ 11
`B. “ELONGATE MEMBERS CONVERGE TOWARDS THE FRONT END OF THE
`CONTROLLER WITH RESPECT TO ONE ANOTHER” ............................................ 13
`THE WÖRN REFERENCE (EX1003) ........................................................................... 17
`VI.
`VII. ENRIGHT (EX1004), DATE (EX1005), AND LEE (EX1006), AND OELSCH
`(EX1007) ......................................................................................................................... 21
`VIII. REPRESENTATIONS .................................................................................................... 30
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`-1-
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`IRONBURG EX2002
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`IPR2017-00136
`Patent No. 8,641,525
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`I.
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`I, Dr. Glen Stevick, declare and state as follows:
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`INTRODUCTION
`1.
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`I have been retained by Ironburg Inventions Ltd. (“Ironburg” or
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`“Petitioner”) to consider the merits of Valve Corporation’s (“Valve”)
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`unpatentability claims set forth in the above-captioned Petition with regard
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`to United States Patent No. 9,089,770 (“the ‘770 patent”). I have personal
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`knowledge of the facts and opinions stated in this Declaration, and am
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`competent to testify thereto.
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`2. My company, Berkeley Engineering and Research, Inc. (BEAR) is
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`being compensated at my standard consulting rate of $450.00 per hour. My
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`compensation is not contingent upon the substance of my declaration, any
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`statements or opinions made, or the outcome of this matter.
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`II. QUALIFICATIONS
`3.
`I have over 25 years of experience in the general field of mechanical
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`engineering and related engineering disciplines. My expertise includes years
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`of experience in failure analysis and design of structures, consumer
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`products, industrial equipment and medical devices, including specifically
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`mechanical-electrical systems, aortic, hip and knee implants, turbines and
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`reciprocating engines, automotive and aircraft components; structural
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`dynamics, electronic control systems, material behavior, heat transfer and
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`structure/fluid interaction.
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`4.
`
`I received a Bachelor’s of Science degree in Mechanical Engineering
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`from Michigan Technological University in 1980 and a Master’s of Science
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`degree in Mechanical Engineering from the University of California,
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`Berkeley in 1981.
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`5.
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`I worked for Chevron Corporation during and after my time at
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`Michigan Technological University and U.C. Berkeley while working
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`toward my Master’s degree.
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`6.
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`In 1989, I returned to the University of California, Berkeley and
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`started Berkeley Engineering And Research, Inc. (“BEAR”). BEAR
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`provides mechanical and electrical engineering services ranging from project
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`analysis and consultation to accident investigations and expert testimony.
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`7.
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`I completed my Ph.D. in Mechanical Engineering from the University
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`of California, Berkeley in 1993 majoring in material behavior and design,
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`and minoring in structural analysis dynamics and controls (electronic
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`controls).
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`8.
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`I have more than 30 years of experience as a mechanical engineer,
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`which began with nearly a decade working for Chevron as a project engineer
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`and engineering mechanics specialist.
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`9.
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`I am a registered Mechanical Engineer in California, Texas, Louisiana
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`and Nevada and a member of the American Society of Mechanical
`
`Engineers.
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`10. My experience with Chevron related to many mechanical and
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`electrical engineering methods and technologies used to control downstream
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`process equipment, upstream oil and gas equipment, surface processing
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`equipment and well-control equipment such as blowout preventers. I also
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`provided advice and guidance concerning off-shore platforms in the Gulf of
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`Mexico and the North Sea, including the avoidance of structural vibrations,
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`the calculation of crack growth rates in platform structures, and the
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`determination of remaining life for the platforms when operating in offshore
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`environments. Assessment of these devices and structures involved detailed
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`stress analysis and fracture mechanics calculations.
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`11. Since 1986, I have also worked as a consulting engineer through
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`BEAR, and have provided engineering services related to various
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`mechanical and electrical devices and systems.
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`12.
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`In addition, I have taught mechanical engineering at U.C. Berkeley,
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`serving as an instructor for the department’s senior design course,
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`“Mechanical Engineering Design,” and have conducted various lectures on
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`mechanical engineering topics.
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`13. Currently, I serve as a mechanical engineering consultant at BEAR,
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`specializing in failure analysis and design of dynamic structures, industrial
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`equipment and consumer products, including mechanical and electrical
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`systems.
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`15.
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`I am an author of numerous mechanical engineering publications and
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`reports listed in my Curriculum Vitae attached as Exhibit 2003, as well as
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`the co-inventor of U.S. Patent No. 6,119,461, entitled “Thermal-Electric
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`Container,” U.S. Patent No. 7,620,209, entitled “Method and Apparatus for
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`Dynamic Space-Time Imaging System,” and U.S. Patent No. 8,395,376,
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`entitled “Method and Apparatus for Magnetic Response Imaging System.”
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`16.
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`I am currently a member of American Society of Testing and
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`Materials (ASTM) Committee E05 on Fire Standards, Committee F15 on
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`Consumer Products and Committee E08 on Fatigue and Fracture.
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`17.
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`I have led engineering teams at BEAR designing robotic inspection
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`devices for piping systems, powerline detection (magnetic and electric field)
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`devices for cranes and manlifts, microwave cauterizing forceps for surgery
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`that detect and suppress spark development by modifying controller output,
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`and designing and implementing controller devices for testing devices. I
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`have also analyzed the failure of controllers, similar to the subject controller,
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`for a wide variety of equipment, including manlifts, automated welders and
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`cranes.
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`III.
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`INFORMATION CONSIDERED
`18.
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`I have reviewed and am familiar with the ‘525 patent specification, its
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`claims, and its file history, as well as its related ‘770 patent specification and
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`file history.
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`19.
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`I have reviewed and am familiar with the Second Petition for Inter
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`Partes Review of the ‘525 patent filed by Valve on October 25, 2016 (the
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`“Second Petition”), as well as the October 24, 2016 Declaration of Dr. David
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`Rempel filed in support thereof (the “Rempel Declaration”).
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`20.
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`I have reviewed and am familiar with the references cited in the
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`Petition. I refer to the following exhibits cited in the Inter Partes Review as
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`5
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`set forth in the table below:
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`IPR2017-00136
`Patent No. 8,641,525
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`Exhibit No. Reference
`1001
`U.S. Patent No. 8,641,525 (“the ‘525 Patent”)
`1002
`U.S. Patent No. 9,089,770 (“the ‘770 Patent”)
`1003
`U.S. Patent No. 6,362,813 (“Wörn”)
`1004
`U.S. Patent Publication No. 2010/0073283 (“Enright”)
`1005
`U.S. Patent No. 6,153,843 (“Date”)
`1006
`U.S. Patent No. 6,364,771 (“Lee”)
`1007
`U.S. Patent no. 4,032,728 (“Oelsch”)
`1009
`Rempel Declaration
`2006
`Prosecution History of the ‘525 Patent
`2004
`Excerpts from MERRIAM-WEBSTER’S COLLEGIATE
`DICTIONARY (10th ed. 1998).
`
`Excerpts from WEBSTER’S NEW AMERICAN
`DICTIONARY (1995).
`
`Prosecution History of the ‘770 Patent
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`First Petition filed by Petitioner in the 948 IPR
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`PTAB’s Institution Decision in the 948 IPR
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`Select Pages from KRC2 Controller Workbook
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`Webpage from www.GebrauchtRoboter.com on Kuka’s KRC2
`Controller
`Webpage from www.eurobots.net on Kuka’s KRC2 Controller
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`Webpage from www.ebay.com on Kuka’s KRC2 Controller
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`2005
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`21.
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`I confirm that to the best of my knowledge that the above-noted
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`exhibits cited in my declaration–including Exhibits 2004, 2005 and 2017-
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`2020–are true and accurate copies of what they purport to be, and that an
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`expert in the field would reasonably rely on them.
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`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`23. While considering the ‘525 Patent and stating my opinions, I am
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`relying on legal principles that have been explained to me by counsel.
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`A. Claim Construction Law
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`24.
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`I have been instructed by counsel on the law regarding claim
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`construction and patent claims, and understand that a patent may include two
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`types of claims - independent claims and dependent claims. An independent
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`claim stands alone and includes only the features it recites. A dependent
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`claim can depend from an independent claim or another dependent claim. I
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`understand that a dependent claim includes all the features that it recites in
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`addition to all of the features recited in the claim from which it depends.
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`25.
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`I understand that in this inter partes review the claims must be given
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`their broadest reasonable interpretation, but that interpretation must be
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`consistent with the specification.
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`26.
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`I understand that claim terms are given their plain and ordinary
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`meaning as would be understood by a person of ordinary skill in the art,
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`unless the inventor provides a special meaning for a term.
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`27.
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`I understand that if there are specific statements in the specification
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`that define the invention, those statements are strong evidence of a definition
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`for a term.
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`28.
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`In this declaration, I have used the Broadest Reasonable Interpretation
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`(“BRI”) standard when interpreting the claim terms.
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`B. Person of Ordinary Skill in the Art (“POSITA”)
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`29.
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`I understand that a person having ordinary skill in the art is a
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`hypothetical person who is used to analyze the prior art without the benefit
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`of hindsight. I further understand that a person of ordinary skill in the art is
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`presumed to be one who thinks along the lines of conventional wisdom in
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`the art and is not one who undertakes to innovate, whether by extraordinary
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`insights or by patient and often expensive systematic research.
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`30.
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`I have been asked to offer my opinion regarding the level of ordinary
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`skill in the art with respect to the ’525 Patent. Based on my review of the
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`patent and the relevant art, my opinion is that the level of ordinary skill in
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`the art relating to the ’525 Patent is low, specifically that of a person with no
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`more than a year of experience or other training in video game controller
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`assembly or tooling.
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`31. My opinions regarding the level of ordinary skill in the art are based
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`on my review of the ‘525 Patent, my education, my experience in the field of
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`mechanical engineering, and my related experience.
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`32.
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`I meet these criteria and consider myself a person with at least
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`ordinary skill in the art pertaining to the patent. I would have been such a
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`person at the time of invention of the patent. I have supervised those with
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`ordinary skill in the art and I am therefore familiar with their qualifications.
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`33.
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`I also understand that the Rempel Declaration (¶ 11 at p. 2) asserts
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`that a person of ordinary skill in the art of the ‘525 Patent is “designer of
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`commercial video game controllers,” that [n]o collegiate education was
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`required to fully understand the particular subject matter of the ‘525 patent
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`at the time of its filing, or today” and that “one of ordinary skill in the video
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`game controller design art when the ‘525 patent was filed would have
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`typically had a bachelor’s degree in an industrial design or engineering field,
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`and approximately two years of relevant experience.”
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`34. My statements and opinions set forth herein are true and correct
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`regardless of which of these two descriptions of a person of ordinary skill in
`
`the art is ultimately adopted.
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`C. Technology Overview and State of the Art
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`35. To understand how a POSITA would have viewed the claims and the
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`specification, the problem addressed by the ‘525 patent must be put in
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`context with the overall technology. At the time of the priority date of the
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`‘525 Patent, there was a need for an improved hand-held game controller
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`that removed the need for the gamer to move his or her thumb over to
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`operate additional controls, which takes time and can cause a loss of control.
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`EX1001, 1:33-45.
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`36. The ‘525 Patent is directed to a hand-held controller intended to be
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`held by a user in both hands. EX1001, Abstract. It comprises an outer case
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`with two handles, a front control, is shaped to be held in the hand of a user
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`such that the user’s thumb is positioned to operate the front control, and two
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`back controls with elongated members along the longitudinal axes of the
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`handles, such that the user’s other fingers are position to operate the back
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`controls. Id., 1:49-58.
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`37.
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`I understand that the ‘525 Patent is licensed to Scuf Gaming
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`International LLC (“Scuf”).
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`38. Scuf controller products are handheld video game controllers having a
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`front, back, top, and bottom that have elongated back controls located on the
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`back of the controller, where the elongated back controls extend
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`substantially the full distance between the top edge and bottom edge of the
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`controller, as required in independent claims 1 and 20 of the ‘525 Patent.
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`V. CLAIM CONSTRUCTIONS FOR THE ‘525 PATENT
`A. “Hand Held Controller For a Game Console”
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`35.
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`Independent claims 1 and 20 of the ‘525 Patent recite the term “hand
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`held controller for a game console” in the preamble.
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`36.
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`I understand that a preamble will not be seen as limiting unless it
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`breathes life and meaning into the claim. I also understand that the preamble
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`can be limiting when elements in the preamble serve as an antecedent basis
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`for limitations in the claim body.
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`37.
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`It is my opinion that the term “hand held controller” breathes life and
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`meaning into the claim, and serves as an antecedent basis for the term “the
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`controller” in independent claims 1 and 20, and therefore, I provide the
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`following construction.
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`38. The definition of “hand held,” as defined in MERRIAM-
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`WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1998) is “held in the
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`hand; esp to be operated while being held in the hand.” EX2004, p. 526.
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`39. The notion that the hand held controller is held in and operate by the
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`user’s hands is further supported in the claims, written description and the
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`drawings.
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`40. Figures 2 and 3 of the ‘525 are reproduced below.
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`41. Notably, the express language of claims 1 and 20 also recite that “the
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`controller is shaped to be held in the hand of a user such that the user’s
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`thumb is positioned to operate the front control.”
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`42. The specification repeatedly refers to the “hand held controller” as
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`“the present invention” and that the controller is shaped to be held in and
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`operated by both hands of the user. For example, the specification states:
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` “Conventional controllers for most game consoles are intended to be held
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`and operated by the user using both hands”. EX1001, 1:8-9.
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`
` “The controller of the present invention may be very similar to
`controllers according to the prior art. In particular, the outer case of the
`controller … may be the same as a controller according to the prior art, as
`described above and as illustrated in the figures.” Id., 2:15-19.
`
` “An improved controller (10) for a game console that is intended to be
`held by a user in both hands … and has two additional controls (11)
`located on the back in positions to be operated by the middle fingers of a
`user.” Id., Abstract.
`
` “The controller is shaped to be held in both hands of the user such that
`the user's thumbs are positioned to operate controls located on the front
`of the controller and the user's index fingers are positioned to operate
`controls located on the top edge of the controller.” Id., 1:52-56.
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`48. Having studied the ‘525 Patent, the file history, and based on my
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`experience, I believe that a POSITA would understand that the claimed
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`“hand held controller” is “a controller for a video game console that is held
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`in and operated by both hands of a user.”
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`B. “Elongate Members Converge Towards the Front End of The
`Controller with Respect to One Another”
`49. Claim 13 recites that the “elongate members converge towards the
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`front end of the controller with respect to one another.”
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`50. The institution decision for the IPR2016-00948 (“the Institution
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`Decision”) requested “that the parties further address proper interpretation of
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`claim 13 at trial.” EX2016, Paper 10 at 9. In this regard, I offer the
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`following interpretation and construction.
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`51. As an initial matter, the Institution Decision stated that the “claims are
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`not limited to a specific contour of the surface of the back of the controller.”
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`Paper 10 at 15.
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`52.
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`I agree that the back of the controller is not limited to a specific
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`contour.
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`53. For purposes of claim 13, it is my opinion that the elongate members
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`not only converge with respect to one another, but also do so towards the
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`front (or front end) of the controller.
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`54. Claim 13 is supported in the specification. Specifically, the written
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`description states that:
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`In another embodiment, the elongate members converge
`towards the front end of the controller with respect to one
`another. EX1001, 2:5-7.
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`55.
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`I believe that a POSITA would readily understand that in order to
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`converge, the elongate members must converge toward each other at one end
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`(and not be parallel to one another).
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`56. For example, elongate members converge when they are closer
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`together near the top of the controller in a “snow-plow” configuration.
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`57.
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`I believe that a POSITA would also understand based on the claim
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`language and the specification that in order to converge towards the front
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`end of the controller, the elongate members must also be angled or inclined
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`such they converge toward the front of the controller.
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`58. For example, the elongate members converge towards the front of the
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`controller when they flare away (from a plane of the front of the controller)
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`from the top of the elongate members to the bottom.
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`59. This is readily apparent from the orientation and angular positioning
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`of the elongate members in FIG. 3 of the ‘525 Patent. As shown in the
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`annotated figure below, the red dashed lines (representing the angular
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`positioning of the elongate members along their respective axis) converge
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`towards the front (which is on the z-y plane) and intersects the x-axis at x1
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`and at an angle θ.
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`60. Thus, based on the express claim language and the specification of the
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`‘525 Patent, I believe that the proper construction for the phrase “elongate
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`members converge towards the front end of the controller with respect to
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`one another” is “elongate members converge towards one another and
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`toward the front of the controller.” This allows for a natural sweep of the
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`fingers to continually contact the paddle controls.
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`VI. THE WÖRN REFERENCE (EX1003)
`80.
` Wörn describes a large programming device that enables a user to
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`program and control a large multiaxial industrial robots. EX1003 at 1:1 &
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`3:40-42; 6:8-10 & 6:53-56. Here, Wörn addressed the problem of prior art
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`programming devices for industrial robots with limited programming and
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`display screen capabilities. EX1003, 1:20-41) Their display screens were
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`relatively small and monochromatic, and additional programming would
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`need to be performed in the robot’s control box as opposed to from the
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`programming device.
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`81. Wörn addressed this problem with an integrated display screen and
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`programming device to allow for “entry of additional programming data and
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`their direct transmission to the robot control”. Id., 7:13-17.
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`82.
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`In view of the differences between Wörn’s field of endeavor and the
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`problem it addressed, in my opinion, the programming device described by
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`Wörn is used for an entirely different purpose than the hand-held video
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`game controller of the ‘770 Patent, and would not have logically
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`commended itself to the attention of a POSITA, particularly given the low
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`level of ordinary skill in the art.
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`83. EX2017-EX2020 show a product embodying the Wörn reference,
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`which is manufactured by the assignee Kuka Roboter GmBH. This product
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`is a large programming device for controlling industrial robots.
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`84.
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`In light of the teachings of Wörn, it is my opinion that a POSITA
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`would not look to the device of Wörn to solve the problem of loss of control
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`and time due to a video game player moving his or her thumb over to
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`operate additional controls on the hand-held video game controller.
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`85.
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`In light of the teachings of Wörn, it is also my opinion that a POSITA
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`would not look to the device of Wörn to solve the problem of hand strain or
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`injury from having to operate many different controls on the front of a video
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`game controller with only a user’s thumbs.
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`86. Wörn’s Fig. 3 reproduced below illustrates a front view of the
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`programming device.
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`87. As shown, the programming device has grip strips 16, 17 located on
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`various locations around the programming device, including on the outer
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`edges of the housing of the programming device.
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`88.
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`It is my opinion that a POSITA would not view the grip strips at the
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`outer edges of the housing as a handle.
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`89. As shown, the programming device has keyboard 14 located on the
`
`front of the programming device. The keyboard “may contain an
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`alphanumeric keypad or typewriter keyboard and optionally additional
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`control keys, such as cursor keys or the like.” EX1003, 5:47-49.
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`90.
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`It is my opinion that the keyboard 14 on the front of the programming
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`device, as well as the other controls on the front of the programming device,
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`could be operated by fingers other than a user’s thumbs.
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`91. Wörn’s Fig. 6 reproduced shows the switching keys 21 on the rear of
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`the programming device.
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`92. The Institution Decision for IPR2016-00948 concluded that the BRI
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`for an elongate member “inherently resilient and flexible” is “that it may be
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`bent or flexed by a load, such as that from a user’s finger, and will then
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`return to its unbiased position when not under load.” IPR 2016-00948, Paper
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`10 at 14. I agree with this construction and apply it to Wörn. As shown and
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`20
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`IRONBURG EX2002
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`described in Wörn, there is no teaching or suggestion that the switching keys
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`are resilient or flexible or may be bent or flexed by a load. In my opinion,
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`merely displacing buttons from a biased to an unbiased position does not
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`mean that the buttons are flexible. Nor is it inherent that the switching keys
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`are flexible since is neither inevitably present in the disclosure nor must
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`invariably happen in this instance.
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`VII. ENRIGHT (EX1004), DATE (EX1005), LEE (EX1006), AND OELSCH
`(EX1007)
`92.
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`In my opinion, a POSITA would not have used the industrial
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`programming device of Wörn in combination with Enright, Date, Lee, or
`
`Oelsch.
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`93. As an initial matter, Wörn is non-analogous art to Enright, Date, Lee
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`and Oelsch references, and therefore, there is no reason to combine these
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`references.
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`94. Here, the pertinent field of endeavor for Enright and Date is directed
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`to hand held video game controllers (EX1004, ¶1; EX1005, Abstract), Lee is
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`directed to a toy with a pivoted shark head design (EX1006, Abstract); and
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`Oelsch is directed to a push button switch mounted on a conductor-carrying
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`insulator plate. EX1007, Abstract.
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`21
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`95. Meanwhile, Wörn is not directed to hand held video game controllers
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`or toys with a pivoted shark head or button switces, but rather to a “control
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`and programming unit” for “a manipulator (2), preferably a multiaxial
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`industrial robot.” EX1003 at 1:1 & 3:40-42; 6:8-10 & 6:53-56.
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`96. Wörn also is not reasonably pertinent to the problems addressed for
`
`the video game controllers in Enright and Date, the shark toy of Lee, or the
`
`push button of Oelsch. EX1004, 1:20-41.
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`97. Thus, in my opinion, Wörn would not have logically commended
`
`itself to the attention of a POSITA, particularly given the low level of
`
`ordinary skill in the art, to combine with Enright, Date, Lee or Oelsch.
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`98.
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`Indeed, Petitioner does not explain or show how or why a POSITA
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`with “[n]o college education” or one “in the video game controller design
`
`art,” as suggested by Petitioner’s expert, would have looked at Wörn’s
`
`industrial robotic controller to combine with Enright, Date, Lee or Oelsch.
`
`99.
`
`In light of the above, a POSITA would have no reason to combine
`
`Wörn with Enright, Date, Lee or Oelsch because they are non-analogous art.
`
`100. Enright is also directed to a user-operated controller device with mode
`
`switches on the underside of the controller to switch between a position
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`mode and a discrete mode.
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`22
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`101. Enright does not disclose, teach or suggest the “inherently resilient
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`and flexible” back controls, as required in independent claim 1.
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`102. The Institution Decision for IPR2016-00948 concluded that the BRI
`
`for an elongate member “inherently resilient and flexible” is “that it may be
`
`bent or flexed by a load, such as that from a user’s finger, and will then
`
`return to its unbiased position when not under load.” IPR 2016-00948, Paper
`
`10 at 14. I agree with this construction and apply it to Enright below.
`
`103. I understand that Petitioner and the Rempel Declaration allege that
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`Enright discloses mode switches that are inherently resilient and flexible.
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`104. Specifically, Petitioner states that:
`
`Enright discloses that the elongate members (the buttons of
`mode switches 32, 34) are inherently resilient and flexible at
`paragraph [0035], which states “the user may quickly depress
`the mode switch 32, 34 when he or she desires to emulate a
`button press of X, Y, A or B without having to move his thumb
`off of the thumbstick, and then return to normal by releasing the
`mode switch when desired.” (Second Pet. 38)
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`105. Likewise, the Rempel Declaration relies on the same excerpt from
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`Enright to suggest that the limitation of “inherently resilient and flexible” is
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`met.
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`106. I disagree with Petitioner and the Rempel Declaration. Nothing in this
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`quotation of Enright teaches or suggests to a POSITA that the mode
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`switches “may be bent or flexed by a load,” as required under the Board’s
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`claim construction for IPR2016-00948.
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`107. A POSITA would understand that it merely suggests, like other
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`buttons, that the mode switches move to a biased position by a user’s finger,
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`and returns to an unbiased position when not under load.
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`108. Further, Enright’s Fig. 5 reproduced below, illustrates the back of the
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`controller device of Enright and the mode switches 34.
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`
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`109. As shown, Enright does not teach or suggest mode switches that are at
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`an incline such that they converge toward the front of the controller and each
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`other. The mode switches do not flare out from the back of the controller.
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`24
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`IRONBURG EX2002
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`110. Enright discloses a mode switch “connected to the housing enabling a
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`user to select a position mode or a discrete mode.” Enright, ¶ 13. “The
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`device may be configured such that either of the mode switches 32, 34 will
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`change the mode of the thumbstick 26.” Enright, ¶ 32.
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`111. Nothing in Enright’s specification teaches or suggests that the mode
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`switches flare out of the back of the controller or converge toward the front
`
`of each other, or each other.
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`112. Meanwhile, Date is directed to a user-operated controller device that
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`is shaped to be held in both hands of a user and has no controls on the
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`outside surface of the back of the controller.
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`113. Date’s Fig. 13A, reproduced below illustrates a front view of the
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`controller. L button 251 is located on the top left of the controller and not on
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`the back of the controller. The figure also shows controls on the front of the
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`controller.
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`25
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`IRONBURG EX2002
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`114. Date’s Fig. 17 reproduced below illustrates an elevational view of the
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`L button 251 that has been incorporated into the device. L button 251 is not
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`located on the back of the controller.
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`26
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`IRONBURG EX2002
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`
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`115. As described in the specification, “shapes of an L button 251 and an R
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`button 252 shown in FIGS. 13A through 13F, and 14 are different from the
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`shapes of the L button 51 and R button 52 in the control-key device 10 in the
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`first embodiment.” 13:50-53.
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`116. Lee is directed to a handheld electronic game apparatus having an
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`attacking feature – a simulated shark head is pivotally supported upon an
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`upper housing and forming an upper jaw that can rapidly descend to close
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`the upper jaw on the miniature surfboard supported on the upper end of a
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`joystick post. Lee has no controls on the back of the controller.
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`27
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`IRONBURG EX2002
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`117. Lee’s Fig. 2 reproduced below illustrates a side view of the shark head
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`toy of Lee.
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`
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`118. In Fig. 2, the toy surfboard 42 is supported by joystick post 40 “which
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`the user manipulates using a finger.” EX1006, 2:39-40.
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`119. I understand that Petitioner relies on Date and Lee references to
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`suggest that claim 15 is obvious.
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`120. Claim 15 depends on independent claim 1, which requires the
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`“elongate members” to be “located on the back of the controller.” Id., 4:50-
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`52.) Thus, a POSITA would understand that the manner in which the
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`elements of claim 15 are arranged requires that (i) the elongate members be
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`28
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`IRONBURG EX2002
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`located on the back of the controller and (ii) a switch mechanism be
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`disposed between each of the elongate members and an outer surface of the
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`back of the controller.
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`121. In my opinion
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