UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00948
`Patent 8,641,525
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`IRONBURG EX2016
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00948
`Patent 8,641,525
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`IRONBURG EX2016
`
`
`
`A. OVERVIEW
`
`I.
`
`INTRODUCTION
`
`Valve Corporation (“Petitioner”) filed a corrected Petition (Paper 4,
`
`“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
`
`8,641,525 B2 (Ex. 1001, “the ’525 patent”). Pet. 1. Ironburg Inventions
`
`Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim.
`
`Resp.”) to the Petition.
`
`Upon consideration of the Petition and the Preliminary Response, for
`
`the reasons explained below, Petitioner has demonstrated a reasonable
`
`likelihood of prevailing with respect to at least one of the challenged claims.
`
`We institute an inter partes review of claims 1–11, 13, 14, and 16–20 of the
`
`’525 patent. We do not institute review of claims 12 and 15.
`
`
`
`B.
`
`RELATED PROCEEDINGS
`
`The parties indicate that the ’525 patent is at issue in: Ironburg
`
`Inventions Ltd. v. Valve Corp., Case No. 1:15-cv-04219-MHC (N.D. Ga.).
`
`Pet. 1; Paper 6, 1.
`
`Petitioner also filed a petition against U.S. Patent 9,089,770 B2 (“the
`
`’770 patent”), the subject of inter partes review IPR2016-00949 (“the ’949
`
`IPR”). The ’770 patent issued from an application that was a continuation of
`
`application 13/162,727, now the ’525 patent.
`
`IRONBURG EX2016
`
`
`
`II. PRELIMINARY MATTERS
`
`A.
`
`PETITIONER’S CLAIM INTERPRETATIONS
`
`Patent Owner asks that we dismiss the Petition because Petitioner’s
`
`claim interpretations are the “bald conclusions of its expert,” made without
`
`utilizing the intrinsic record as required. Prelim. Resp. 9–10, 16.
`
`Pursuant to 37 C.F.R. § 42.104(b)(3), the Petition is to include a
`
`statement of how each challenged claim is to be construed. The Office
`
`Patent Trial Practice Guide (“Practice Guide”) states that, “it may be
`
`sufficient for a party to provide a simple statement that the claim terms are
`
`to be given their broadest reasonable interpretation, as understood by one of
`
`ordinary skill in the art and consistent with the disclosure.” 77 Fed. Reg.
`
`48764 (Aug. 14, 2012). Here, Petitioner explicitly construes some terms and
`
`asserts that the remaining terms carry their ordinary and customary meaning.
`
`Pet. 11–17. Such an assertion is consistent with an assertion that the claims
`
`should be given their broadest reasonable interpretation. Consequently, we
`
`do not dismiss the Petition on this basis.
`
`Somewhat relatedly, Patent Owner contends that the Petition should
`
`be denied because it argues that the written description requirement of
`
`35 U.S.C. § 112 is not met. Prelim. Resp. 8 (citing Pet. 12, 15, and 43). We
`
`agree with Patent Owner that a petitioner in an inter partes review may not
`
`assert a ground of unpatentability based on 35 U.S.C. § 112. 35 U.S.C.
`
`§ 311(b); Prelim. Resp. 8. Here, Petitioner addresses an alleged lack of
`
`written description in the context of construing claim limitations, and does
`
`not assert a ground of unpatentability based on 35 U.S.C. § 112. See Pet.
`
`IRONBURG EX2016
`
`
`
`Accordingly, we do not deny the Petition for asserting an unauthorized
`
`ground of unpatentability because no such ground was asserted.
`
`
`
`B.
`
`LEVEL OF SKILL IN THE ART
`
`Petitioner contends that patent examiners are persons of ordinary skill
`
`in the relevant art, and provides a statement from Mr. Brendan Donohoe, a
`
`patent examiner in the United Kingdom (UK), regarding examination of the
`
`UK counterpart to the ’770 patent. Pet. 9–11. In that statement,
`
`Mr. Donohoe contends that it was well known to modify gamepads to suit
`
`the requirements of a particular game or gamer, and that the features claimed
`
`were typical features. Ex. 1007 ¶¶ 5–7.
`
`Patent Owner asks that we dismiss the Petition because Petitioner has
`
`failed to establish the level of skill in the art. Prelim. Resp. 28. According
`
`to Patent Owner, Petitioner’s statements from a UK examiner are
`
`inadmissible hearsay and are not prior art.1 Id. Patent Owner asks that we
`
`exclude this section of the Petition in its entirety. Id.
`
`As an initial matter, we observe that Petitioner has not explained
`
`persuasively how observations from a UK patent examiner, which
`
`presumably are based on UK law and not United States law, are of use in our
`
`proceeding. Despite this shortcoming, we do not dismiss the Petition as
`
`1 We agree that Mr. Donohoe’s statement is not a prior art publication.
`Nevertheless, Mr. Donohoe’s statement, which appears to have been made
`on May 16, 2011, before the June 17, 2011, filing date of the ’525 patent,
`may be probative of the level of skill in the art at the time of invention.
`Ex. 1007, 1; Ex. 1001 (22). We do not express any opinion at this time
`regarding the admissibility of Mr. Donohoe’s statement as evidence.
`
`IRONBURG EX2016
`
`
`
`Patent Owner requests, because an explicit definition of the level of skill is
`
`not required, where, as here, the prior art of record is indicative of the level
`
`of skill in the art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001).
`
`Patent Owner’s assertion that Dr. Donohoe’s statements are
`
`inadmissible hearsay is premature. Rule 42.64 provides the framework for
`
`Patent Owner to object to information proffered as evidence and move to
`
`exclude objectionable material from evidence during the trial. See 37 C.F.R.
`
`§ 42.64.
`
`If the parties further develop this issue, we ask that the parties focus
`
`on the role the level of skill in the art plays in an obviousness analysis. See
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau,
`
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (The “level of skill in the art is a prism
`
`or lens through which a judge, jury, or the Board views the prior art and the
`
`claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed.
`
`Cir. 1991) (“The importance of resolving the level of ordinary skill in the art
`
`lies in the necessity of maintaining objectivity in the obviousness inquiry”).
`
`
`
`III. THE CLAIMED SUBJECT MATTER
`
`A.
`
`INTRODUCTION
`
`The ’525 patent relates to hand held controllers for video game
`
`consoles. Ex. 1001, 1:6–7.
`
`As background, the ’525 patent describes that conventional controllers
`
`were intended to be held and operated by the user using both hands, and the
`
`plurality of controls were mounted on the front and top edge. Id. at 1:8–17;
`
`IRONBURG EX2016
`
`
`
`Fig. 1. The drawback of this design was that the user was required to
`
`remove his or her thumb from one control to operate another control,
`
`causing loss of control, such as aiming. Id. at 1:33–40. The ’525 patent was
`
`intended to address this problem. Id. at 1:41–45.
`
`Controller 10 of the ’525 patent includes a plurality of controls on the
`
`front and top edge like a conventional controller, and includes additional
`
`controls on the back, such as paddles 11, that are operable by fingers other
`
`than the thumb. Id. at 1:51–58; 3:14–17; Fig. 1 (front of conventional
`
`controller and controller 10), 2 (back of controller 10). Figure 2 follows:
`
`Figure 2 is a schematic illustration of the back of game controller 10. Id. at
`
`
`
`2:63–64.
`
`
`
`B.
`
`ILLUSTRATIVE CLAIM
`
`Of the challenged claims, 1 and 20 are independent. Claim 1 follows:
`
`1.
`
`A hand held controller for a game console comprising:
`
`an outer case comprising a front, a back, a top edge, and a
`bottom edge, wherein the back of the controller is opposite the
`
`IRONBURG EX2016
`
`
`
`front of the controller and the top edge is opposite the bottom
`edge; and
`
`a front control located on the front of the controller;
`
`wherein the controller is shaped to be held in the hand of
`a user such that the user’s thumb is positioned to operate the front
`control; and
`
`a first back control and a second back control, each back
`control being located on the back of the controller and each back
`control including an elongate member that extends substantially
`the full distance between the top edge and the bottom edge and
`is inherently resilient and flexible.
`
`
`
`C.
`
`CLAIM INTERPRETATION
`
`In an inter partes review, the Board interprets claim terms in an
`
`unexpired patent according to the broadest reasonable interpretation in light
`
`of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016) (upholding the use of the broadest reasonable interpretation
`
`approach).
`
`For the purposes of this decision, and on this record, we determine
`
`that only the following claim terms need express interpretation. See Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(only those terms which are in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy).
`
`We emphasize that these claim interpretations are preliminary. During
`
`the remainder of this proceeding, the parties are permitted to develop
`
`argument and evidence regarding claim interpretation as appropriate.
`
`IRONBURG EX2016
`
`
`
`1.
`
`Directional References (all claims)
`
`The claims recite words indicating relative position or direction such
`
`as “front,” “back,” “top,” and “bottom” without expressly stating a frame of
`
`reference for interpreting these words. Because the claims do not recite an
`
`express frame of reference for these words, Petitioner contends that any
`
`frame of reference may apply such that: (1) any side of the video controller
`
`may be considered the “back,” and another side as the “front,” so long as the
`
`“back is opposite the front,” as required by claim 1, and (2) any edge may be
`
`considered as a “top” edge so long as it is opposite the “bottom” edge. Pet.
`
`11–12 (citing Ex. 1001, 4:28–32).
`
`A “claim term will not receive its ordinary meaning if the patentee
`
`acted as his own lexicographer and clearly set forth a definition of the
`
`disputed claim term in either the specification or prosecution history.” CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Such definitions must be set forth with reasonable clarity, deliberateness,
`
`and precision. In re Paulsen, 30 F.3d 1475 1480 (Fed. Cir. 1994). Here, we
`
`agree with Petitioner that the ’525 patent explicitly states that directional
`
`words, such as front, back, top, and bottom, merely serve to distinguish
`
`those features from one another and do not limit the respective features to a
`
`particular static orientation. See Pet. 11–12; Ex. 1001, 4:28–32.
`
`Consequently, the ’525 patent has supplanted the ordinary meaning of
`
`directional references.
`
`We interpret directional words in the claims to be terms that merely
`
`distinguish one feature from another and define positions relative to each
`
`IRONBURG EX2016
`
`
`
`other. For example, the “front” is opposite the “back,” and the “top” is
`
`opposite the “bottom.”
`
`Claim 13 requires additional analysis. Claim 13 depends from claim 1
`
`and recites, “wherein the elongate members converge towards the front end
`
`of the controller with respect to one another.”
`
`It is unclear how this claim should be construed. First, the claim term
`
`“the front end” has no antecedent basis. Independent claim 1 recites a
`
`“front” and a “top edge,” but does not recite a “front end” or “end.” Second,
`
`claim 13 appears to use the term “front” in two manners: one, to mean the
`
`portion of the controller opposite the back and having front controls, and
`
`two, to identify a portion of the end of the controller (i.e., the “front end”)
`
`shown in Figure 2 towards which the elongated members converge.
`
`The Specification sheds little light on proper interpretation of this
`
`limitation. The summary of the invention portion of the Specification
`
`describes that the elongate members may converge towards the “front end”
`
`of the controller, Ex. 1001, 2:4–7, but the detailed description of the
`
`invention portion of the Specification does not describe such an
`
`embodiment, id. at 3:1–4:38. Rather, the detailed description portion of the
`
`Specification describes that elongate members, in the form of paddles 11,
`
`may be oriented so that they converge towards the “top edge.” Id. at 2:63–
`
`64; 3:14–15, 54–56; Fig. 2 (depicting the “back” of the controller).
`
`We ask that the parties further address proper interpretation of claim
`
`13 at trial.
`
`IRONBURG EX2016
`
`
`
`2.
`
`Thickness (claims 9–11)
`
`Independent claim 1 is directed to a hand held controller that includes
`
`a first and second back control, each back control including an inherently
`
`resilient and flexible elongate member that extends substantially the full
`
`distance between the top and bottom edge of the controller. Claims 9–11
`
`each depend from independent claim 1, and add a “thickness” range for the
`
`elongate member (e.g., claim 9 specifies the elongate member has a
`
`thickness between about 1 and 10 mm).
`
`Petitioner contends that the ’525 patent does not depict the thickness
`
`of the elongate member as required by 35 U.S.C. § 112 and 37 C.F.R.
`
`§ 1.83(a). Pet. 12–13. Mr. Rempel, opines that a person of ordinary skill in
`
`the art reading the ’525 patent could not distinguish thickness from width.
`
`Ex. 1008 ¶ 12. Based on this, Petitioner asserts that the claim term
`
`“thickness” is vague and ambiguous. Pet. 12–13. Petitioner’s patentability
`
`analysis assumes that “thickness” corresponds to any dimension of the
`
`elongate member except for length. Id. at 13.
`
`Patent Owner submits the claim term “thickness” is a common term in
`
`the English language and needs no express interpretation. Prelim. Resp. 10–
`
`11 (citing two non-precedential Board cases).
`
`For the reasons that follow, we disagree with Petitioner’s contention
`
`that thickness as claimed corresponds to any dimension of the elongate
`
`member other than length.
`
`The ’525 patent describes that the elongate members (e.g., paddles 11)
`
`are inherently resilient and flexible to permit displacement by the user to
`
`activate control function. Ex. 1001, 1:59–61; see also 2:8–11 (describing
`
`IRONBURG EX2016
`
`
`
`that preferably displacement of the elongate member activates the switch
`
`mechanism). The ’525 patent describes that preferably, paddles 11 are less
`
`than 10 mm thick, but may be less than 5 mm thick, and more preferably are
`
`3 mm thick or less. Id. at 3:28–32; see also 2:1–3 (describing preferred
`
`thickness ranges); 3:28–30 (describing that paddles 11 are formed from a
`
`thin flexible material such as plastics). Consequently, the ’525 patent
`
`describes that the elongate members are resilient and flexible to permit
`
`displacement of the elongate member, and advantageously the members are
`
`thin (less than 10 mm and more preferably 3 mm or less).
`
`A person of ordinary skill in the art would understand that a user’s
`
`finger displaces the elongate members to activate the controls in the
`
`direction in which the thickness of the elongate member (perpendicular to
`
`the surface of the elongate member) would be measured.
`
`The broadest reasonable interpretation of “thickness” as used in
`
`claims 9–11 is the dimension of the elongate member perpendicular to the
`
`surface of the elongate member (i.e., also the direction of displacement when
`
`the user activates the control function).
`
`3.
`
`Extension of the Elongate Members (all claims)
`
`Independent claims 1 and 20 recite that each elongate member on the
`
`back of the controller “extends substantially the full distance between the top
`
`edge and the bottom edge” of the controller. Claims 2–19 include this
`
`limitation by virtue of dependence from claim 1.
`
`The use of the term “substantially” in claims 2, 17, and 20 does not
`
`shed additional light on the meaning of the term. The ’525 patent is the
`
`parent of the ’770 patent, and consequently we seek to construe claim terms
`
`IRONBURG EX2016
`
`
`
`consistently across the patents. See NTP Inc., v. Research in Motion, Ltd.,
`
`418 F.3d 1282, 1293 (Fed. Cir. 2005) (When construing claims in patents
`
`that derive from the same parent application and share common terms, “we
`
`must interpret the claims consistently across all asserted patents.”). Claim 1
`
`of the ’770 patent requires that the elongate member extends at least half of
`
`a first distance between the top and bottom edge of the outer case along the
`
`longitudinal axis of the elongate member. Dependent claim 2 adds that the
`
`elongate member extends along “substantially” all of the first distance.
`
`Claim 2 further limits claim 1, and supports the interpretation that
`
`“substantially” all the first distance is more than at least half that distance.
`
`The Specification echoes the claim language, describing that elongate
`
`members in the form of paddles 11 “substantially extend in a direction from
`
`the top edge to the bottom edge of controller 10.” Ex. 1001, 3:51–53.
`
`Paddles 11 are depicted extending largely, but not wholly the entire distance
`
`from the top to the bottom edge of the controller. Fig. 2.
`
`“Substantially” is often used to mean, “largely but not wholly what is
`
`specified.” See, e.g., York Products, Inc., v. Central Tractor Farm & Family
`
`Center, 99 F.3d 1568, 1572–73 (Fed. Cir. 1996); Amhil Enterprises Ltd. v.
`
`Wawa, Inc., 81 F.3d, 1554, 1562, (Fed. Cir. 1996)). We do not apply this
`
`interpretation as a per se rule. We are mindful that the claim term
`
`“substantially” can render a claim indefinite. See generally Ex parte
`
`Lazzara, 2007 WL 7751836, Appeal No. 2007-0192 (PTAB May 30, 2007)
`
`(informative), rehearing denied, 2007 WL 5063473 (Nov. 13, 2007)
`
`(providing an overview of use of the claim term “substantially”). Here, the
`
`Specification does not provide a special meaning for the term, nor have the
`
`IRONBURG EX2016
`
`
`
`parties identified any relevant portion of the prosecution history. The use of
`
`the term to modify “the full distance” does not render the phrase so unclear
`
`that there is no means to ascertain the scope. Interpreting “substantially” to
`
`mean, “largely but not wholly what is specified” is consistent with the
`
`Specification as discussed above.
`
`We preliminarily construe the claims to require that the elongate
`
`members extend largely but not necessarily the entire distance between the
`
`top and the bottom edges.
`
`4.
`
`Inherently Resilient and Flexible (claims 1–19)
`
`Claim 1 recites that the elongate member is “inherently resilient and
`
`flexible.” Claims 2–19 include this limitation by virtue of dependence from
`
`claim 1. Claim 20 does not recite this limitation.
`
`Petitioner contends that “flexible” means that the elongated member
`
`may be moved to a biased position by a user’s finger and contends that
`
`“inherently resilient” is expressly defined in the ’525 patent as returning to
`
`an unbiased position when not under load. Pet. 14. Based on this, Petitioner
`
`contends that “inherently resilient and flexible” as claimed means that the
`
`elongate member “can be moved to a biased position by a user’s finger, and
`
`returns to an unbiased position when not under load.” Pet. 14.
`
`Patent Owner contends that this claim term needs no express
`
`interpretation. Prelim. Resp. 12. Patent Owner contends that Petitioner
`
`proffers no reasonable basis to depart from the plain and ordinary meanings
`
`of “inherently resilient” and “flexible,” but Patent Owner does not specify
`
`the plain and ordinary meaning of either term.
`
`IRONBURG EX2016
`
`
`
`Petitioner is correct that the ’525 patent expressly defines that
`
`elongate members (paddles 11) are “inherently resilient, which means that
`
`they return to an unbiased position when not under load.” Ex. 1001, 3:34–
`
`35; Pet. 14.
`
`Regarding “flexible,” as explained above, the ’525 patent describes
`
`that the elongate members (paddles 11) are inherently resilient and flexible
`
`to permit displacement by the user to activate control function. Therefore,
`
`the ’525 patent describes that the elongate members are flexible in that they
`
`permit displacement. An ordinary meaning of “flexible” is “capable of
`
`being bent or flexed.” Ex. 3001, 1 (adj., def. 1.a.). This meaning is
`
`consistent both with the context of the claim and with the specification.
`
`An elongate member as claimed is inherently resilient and flexible in
`
`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.
`
`5.
`
`Recess (claims 7, 8)
`
`Claim 7 depends from claim 1 and recites, “wherein each elongate
`
`member is mounted within a recess located in the case of the controller.”
`
`Because elongate members are “located on the back of the controller” (claim
`
`1), the recess that those elongate members are mounted within is also located
`
`on the back of the controller. Claim 8 depends from claim 7 and adds that a
`
`user’s finger may be received in the recess.
`
`Petitioner “assumes that any region between a first and second handle
`
`that is recessed towards the front of the video game controller can qualify as
`
`a ‘recess’” as claimed. Pet. 15 (emphasis added).
`
`IRONBURG EX2016
`
`
`
`Patent Owner contends that the term “recess” carries its ordinary
`
`meaning and needs no express interpretation. Prelim. Resp. 13–14. Patent
`
`Owner does not specify that plain and ordinary meaning.
`
`We disagree with Petitioner’s assertion that a recess as claimed must
`
`be recessed towards the front of the controller. Neither the claim language,
`
`nor the ordinary meaning of the term supports such an interpretation. In the
`
`’770 patent, claim 7 depends from claim 6 and requires that the recess
`
`portion is recessed towards the front, implying that the recessed portion of
`
`claim 6 includes no such limitation. Neither the Specification of the ’525
`
`patent nor that of the ’770 patent provides a lexicographical definition of a
`
`“recess” or a “recessed portion,”
`
`The claims require that the recess be located on the back of the
`
`controller, but the claims are not limited to a specific contour of the surface
`
`of the back of the controller. Consequently, the claims are broad enough to
`
`cover a configuration in which the recess is on the back, but because of the
`
`shape of that back surface the recess is not towards the front of the
`
`controller.
`
`We do not construe a “recess” as claimed to be limited to a recess
`
`towards the front of the controller.
`
`6.
`
`Elongate Member as a Paddle Lever (claim 16)
`
`Claim 16 depends from claim 1, and recites, “wherein at least one of
`
`the back controls is a paddle lever.”
`
`Petitioner contends that “one of ordinary skill in the art would have
`
`generally considered prior art buttons, triggers, and other control members to
`
`IRONBURG EX2016
`
`
`
`qualify as a ‘paddle lever’ in the context of the ’525 patent when it was
`
`filed.” Pet. 16.
`
`Patent Owner contends that the ordinary meaning of “paddle lever”
`
`should be used, and that one of ordinary skill in the art would know that
`
`ordinary meaning. Prelim. Resp. 15–16. Patent Owner, thus, contends that
`
`“no further elaboration, expansion or restriction” is required. Id.
`
`Claim 1 requires a first and second back control that each include an
`
`elongate member, and claim 16 depends from claim 1 and limits at least one
`
`of the back controls to take the form of a paddle lever. Given, this, to the
`
`extent that Petitioner argues that an “elongate member” as recited in claim 1
`
`may take various forms, such as a button or trigger, we agree. However, we
`
`do not agree that any button, trigger, or control member qualifies as a
`
`“paddle lever” as recited in claim 16.
`
`
`
`A.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`
`IV. PATENTABILITY
`
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`IRONBURG EX2016
`
`
`
`Claim(s) Challenged
`1, 6, 13, 14, 16, 17, 19, and 20
`1–11, 13, 16, 17, and 20
`14, 15, and 19
`2, 4, 5, 7, 8, 12, 14–16, and 19
`18
`
`References(s)
`Basis
`§ 102(b) Tosaki2
`§ 103(a) Enright3 and Tosaki
`§ 103(a) Enright, Tosaki, and Ono4
`§ 103(a) Tosaki and Jimakos5
`§ 103(a) Enright, Tosaki, and Oelsch6
`
`Pet. 3.
`
`
`
`Petitioner includes the Declaration of Dr. David Rempel, M.D.
`
`(Ex. 1008).7
`
`
`
`B. ANTICIPATION BY TOSAKI
`
`Petitioner contends that claims 1, 6, 13, 14, 16, 17, 19, and 20 are
`
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Tosaki (Ex. 1002).
`
`Pet. 18–29.
`
`2 U.S. Patent 5,989,123, published Nov. 23, 1999 (Ex. 1002).
`
`3 U.S. Pub. 2010/0073283 A1, published Mar. 25, 2010 (Ex. 1003).
`
`4 U.S. Pub. 2001/0025778 A1, published Oct. 4, 2001 (Ex. 1004).
`
`5 “Rapid Fire Mod for Wireless Xbox 360 Controller, Step by Step Tutorial
`with Pictures,” posts 341-346 by Jimakos Sn, published 09 July, 2008, at
`http://forums.xbox-scene.com/index.php?/topic/643928-rapid-fire-mod-
`forwireless-xbox-360-controller/page-23 and at
`http://forums.xboxscene.com/index.php?/topic/643928-rapid-fire-mod-for-
`wireless-xbox-360-controller/page-24 (Ex. 1005).
`6 U.S. Patent 4,032,728, published June 28, 1977 (Ex. 1006).
`
`7 The cover page of this Exhibit is not numbered and the following page
`begins as page 1.
`
`IRONBURG EX2016
`
`
`
`1.
`
`Claim 1
`
`Petitioner contends that Tosaki’s hand held controller includes an
`
`outer case comprised of a front (outer surface of front casing 120a) opposite
`
`a back (outer surface of back casing 120b). Pet. 19 (citing Ex. 1002, Figs. 6,
`
`7, 23, 24). Petitioner contends that Tosaki’s controller includes a top edge
`
`opposite a bottom edge as claimed. Pet. 19–20 (providing an annotated
`
`version of Tosaki’s Figure 23). A version of Tosaki’s Figure 23 bearing
`
`Petitioner’s annotations follows:
`
`
`
`
`
`Annotated Figure 23 is a diagram of a steering wheel with arrows and labels
`
`identifying “top edge segments” and “bottom edge segments” as
`
`corresponding a top edge and a bottom edge as claimed. Pet. 19–20;
`
`Ex. 1002, Fig. 23.
`
`Patent Owner contends that Tosaki does not include a front, back, top
`
`edge, and a bottom edge as claimed. Prelim. Resp. 20. Patent Owner adds
`
`IRONBURG EX2016
`
`
`
`that the “segments” identified by Petitioner are near the center of the wheel
`
`and are not at the top or bottom edge as claimed. Id. As explained above,
`
`directional references in the ’525 patent merely serve to distinguish features
`
`from one another in a relative sense, and do not limit respective features to a
`
`static orientation. See Ex. 1001, 4:26–31. Consequently, Patent Owner’s
`
`argument is unpersuasive.
`
`Petitioner contends that Tosaki discloses a front control (push button
`
`switch 15) located on the outer case of the controller that is shaped to be
`
`held in the hand of a user such that the user’s thumb is positioned to operate
`
`the front control. Pet. 20 (Ex. 1002, 3:25–34; 9:47–53). Petitioner contends
`
`that Tosaki discloses first and second back controls (shift levers 125, 126)
`
`each located on the back of the controller (i.e., the side opposite the front
`
`side bearing thumb-operated “front” controls). Pet. 21 (Ex. 1002, 13:11–15,
`
`62–65; 12:61–53; Figs. 2, 3, 23, and 24).
`
`Patent Owner contends that Tosaki’s shift levers 125 and 126 are
`
`“actually on or adjacent to the front surface as can be seen in Fig. 23 used by
`
`Petitioner.” Prelim. Resp. 20. Tosaki explicitly describes and depicts shift
`
`levers 125 and 126 as “located at the reverse” of the steering wheel (i.e., the
`
`area corresponding to the back of the controller). Ex. 1002, 13:62–64; see
`
`also Ex. 1002, 10:64–67 (describing casing 120b as the reverse half); Figs.
`
`6, 7. While a portion of shift levers 125 and 126 is adjacent the front surface
`
`of the controller as Patent Owner alleges, nothing in claim 1 prohibits such a
`
`configuration.
`
`Petitioner contends that each back control (shift levers 125, 126)
`
`includes an elongate member that extends substantially the full distance
`
`IRONBURG EX2016
`
`
`
`between the top and the bottom edge of the controller. Pet 21–22 (Ex. 1002,
`
`13:24; Figs. 2, 3, 23). In support, Petitioner compares the length of Tosaki’s
`
`elongate members to the distance between the “top edge segments” and
`
`“bottom edge segments.” Id. (providing an annotated version of Figure 23).
`
`Patent Owner contends that Petitioner “makes no effort” to show
`
`controls that are located and extend as claimed. Prelim. Resp. 21. To the
`
`contrary, Petitioner provided an annotated version of Figure 23 illustrating
`
`how Tosaki’s elongated members (shift levers 125, 126) extend substantially
`
`the full distance between the top and the bottom edge of the controller. See
`
`Pet. 22.
`
`Petitioner contends that Tosaki’s elongate members (shift levers 125,
`
`126) are inherently resilient and flexible. Pet. 23.
`
`Patent Owner argues that Tosaki is nonanalogous art and teaches away
`
`from the challenged subject matter.8 Prelim. Resp. 17–20. Such contentions
`
`are not applicable to a ground of unpatentability based on anticipation. See
`
`In re Self, 671 F.2d 1344, 1350 (CCPA 1982); Seachange Int’l, Inc. v. C-
`
`COR, Inc., 413 F.3d 1361, 11380 (Fed. Cir. 2005).
`
`
`
`On the record before us, Petitioner has demonstrated a reasonable
`
`likelihood of prevailing in the contention that claim 1 is unpatentable as
`
`anticipated by Tosaki.
`
`8 Patent Owner’s contentions based on a recessed portion are not applicable
`to claim 1. See Prelim. Resp. 18.
`
`IRONBURG EX2016
`
`
`
`2.
`
`Claims 6, 13, 14, 16, 17, 19, and 20
`
`Patent Owner does not present further arguments regarding these
`
`claims. We have reviewed Petitioner’s contentions and determine that
`
`Petitioner has demonstrated a reasonable likelihood of prevailing in the
`
`contention that these claims are unpatentable as anticipated by Tosaki. See
`
`Pet. 23–29.
`
`
`
`C. OBVIOUSNESS OVER ENRIGHT AND TOSAKI
`
`Petitioner contends that claims 1–11, 13, 16, 17, and 20 are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki.
`
`Pet. 29–41.
`
`1.
`
`Claim 1
`
`Petitioner contends that Enright discloses a hand held controller for a
`
`game console (user device 2) comprising an outer case (housing 24) having
`
`a front opposite a back.9 Pet. 32 (Ex. 1003 ¶ 27; Figs. 4, 5). Petitioner
`
`provides the annotated version of Enright’s Figure 5, shown below:
`
`9 Parenthetical nomenclature is Enright’s.
`
`IRONBURG EX2016
`
`
`
`
`
`Pet. 32–33. The annotated version of Enright’s Figure 5 illustrates the
`
`underside of user device 2 in an inverted position. Id.; Ex. 1003 ¶ 23.
`
`
`
`Petitioner contends that Enright discloses a front control on one side
`
`of the controller (e.g., D-pad 28, thumbstick 30, buttons 25). Pet. 33; Ex.
`
`1003, Figs. 4, 6.
`
`
`
`Petitioner contends that Enright’s controller is shaped to be held in the
`
`hand of a user such that the user’s thumb is positioned to operate the front
`
`control. Pet. 33; Ex. 1003 ¶ 32; Figs. 4, 6.
`
`
`
`Petitioner contends that Enright discloses first and second back
`
`controls (mode switches 32, 34), each located on the back of the controller
`
`(i.e., the side opposite the one bearing the front controls), and including an
`
`elongate member. Pet. 33–34 (Ex. 1003 ¶ 32, Fig. 5).
`
`Petitioner contends that each of Enright’s first and second back
`
`controls (mode switches 32, 34) include an inherently resilient and flexible
`
`elongate member that substantially extends in a direction from the top to the
`
`bottom edge of the controller. Pet. 34–35; Ex. 1008 ¶¶ 20, 22; Ex. 1003
`
`IRONBURG EX2016
`
`
`
`¶ 35; Fig. 5. Petitioner contends the Enright’s elongate members extend a
`
`portion of the full distance between the top edge and the bottom edge, but
`
`relies on Tosaki for first and second elongate members (shift levers 125,
`
`126) that extend substantially the full distance between the top and bottom
`
`edge. Pet. 31 (referring to Pet. 22 illustrating how Tosaki’s elongate
`
`members extend as claimed).
`
`Petitioner contends that Enright and Tosaki each disclose hand-held
`
`video game controllers having front controls operated by a user’s thumbs
`
`and back controls on the opposite side that are operated by fingers other than
`
`the thumb. Pet. 29–30. Petitioner contends that Enright’s elongat
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
