`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`VALVE CORPORATION
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`___________________
`
`Case IPR2017-00136
`Patent 8,641,525
`___________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`C.
`
`D.
`
`C.
`
`INTRODUCTION .......................................................................................... 1
`THE BOARD SHOULD DENY INSTITUTION OF THE PETITION
`UNDER 35 U.S.C. §325(D) ........................................................................... 6
`A. No “Good Cause” For Petitioner’s Delay ............................................ 6
`B.
`Petitioner Advances Substantially The Same Prior Art And
`Arguments That It Previously Presented ............................................ 10
`Petitioner Impermissibly Uses The Patent Owner’s Preliminary
`Response And The Board’s Decision In The 948 IPR As A
`Roadmap For Its Second Petition ....................................................... 13
`Petitioner Does Not Explain Why Lengthening The 948 IPR Is
`Warranted ........................................................................................... 15
`III. CLAIM CONSTRUCTION ......................................................................... 17
`A.
`Technology Overview And State Of The Art .................................... 17
`B. All Intrinsic And Extrinsic Evidence Demonstrates The
`Construction Of A “Hand Held Controller For A Game
`Console” Must Be “A Controller For A Video Game Console
`That Is Held In And Operated By Both Hands Of A User” ............... 20
`“Elongate Members Converge Towards The Front End Of The
`Controller With Respect To One Another” Means “Elongate
`Members Converge Towards One Another And Towards The
`Front Of The Controller” .................................................................... 25
`D. Other Terms ........................................................................................ 28
`IV. LEVEL OF ORDINARY SKILL ................................................................. 28
`A.
`Petitioner Conceded A Lower Level Of Ordinary Skill .................... 30
`B.
`Petitioner Failed To Show That UK Examiner Qualifies As A
`POSITA Under Dr. Rempel’s Proposed Minimum
`Qualifications ..................................................................................... 31
`V. WÖRN DOES NOT RENDER OBVIOUS ANY OF CLAIMS 1, 2, 4-
`7, 12, 16, 17 AND 20 (GROUND 1) ............................................................ 32
`A. Wörn’s “Control And Programming Unit” Is Non-Analogous
`Art ....................................................................................................... 32
`-i-
`
`
`
`I.
`II.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`B.
`
`C.
`
`D.
`
`B. Wörn Does Not Disclose A Hand Held Controller For A Game
`Console (Claims 1 And 20) ................................................................ 37
`VI. WÖRN AND ENRIGHT DO NOT DISCLOSE “INHERENTLY
`RESILIENT AND FLEXIBLE” BACK CONTROLS (GROUNDS 1
`AND 2, CLAIM 1) ....................................................................................... 38
`VII. THE PROFFERED COMBINATION OF WÖRN WITH ENRIGHT,
`DATE, LEE, OR OELSCH DO NOT RENDER OBVIOUS ANY OF
`CLAIMS 1-20 (GROUNDS 2-5) ................................................................. 42
`A.
`Petitioner Fails To Show A POSITA Would Even Have Been
`Aware Of The Problem The ‘525 Patent Addressed (Grounds
`2-5) ..................................................................................................... 43
`Petitioner Fails To Show That The References Are “Analogous
`Art” For Purposes Of Its Obviousness Challenge (Grounds 2-5) ...... 45
`Petitioner Cherry-Picks Teachings From Enright And Wörn
`Without Regard To How Or Why Such Features Would
`Actually Be Combined (Ground 2) .................................................... 46
`Petitioner’s Obviousness Argument To Modify Enright In View
`Of Wörn Is Only Driven By Impermissible Hindsight
`(Ground 2) .......................................................................................... 50
`Enright Does Not Disclose Elongate Members Converge
`Towards One Another And Towards The Front Of The
`Controller (Ground 2, Claim 13) ........................................................ 53
`Combination Of Wörn With Date, Lee Or Oelsch Does Not
`Render Obvious Any Of The Challenged Claims (Grounds 3-5) ...... 54
`1.
`Petitioner Has Failed To Demonstrate How And Why A
`POSITA Would Combine Wörn With Date, Lee Or
`Oelsch ....................................................................................... 54
`Both Date And Lee Fail To Disclose A Switch
`Mechanism Disposed Between An Elongate Member
`Located At The Back Of The Controller And The
`Outside Surface Of The Back Of The Controller
`(Grounds 3 And 4, Claim 15) .................................................. 56
`
`E.
`
`F.
`
`2.
`
`
`
`
`
`-ii-
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`3.
`
`Petitioner Fails To Provide Any Evidence Supporting Its
`Characterization Of What Was Conventional Or Well
`Known In The Prior Art (Grounds 3 And 4, Claims 14,
`15, And 19) .............................................................................. 59
`VIII. PETITIONER IMPROPERLY CONFLATES WÖRN’S
`“SWITCHING KEYS” AND DATE’S “BUTTONS” WITH THE
`CLAIMED “PADDLE LEVERS” IN DEFIANCE OF THE
`BOARD’S CLAIM CONSTRUCTION IN THE 948 IPR
`(GROUNDS 1 & 3, CLAIM 16) .................................................................. 61
`IX. CONCLUSION ............................................................................................. 63
`
`
`
`
`
`-iii-
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`
`Page
`
`
`
`CASES
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 46, 49
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115, Paper 94 (P.T.A.B. Apr. 20, 2015) ................................... 43, 55
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ...................................................................... 39, 40
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 at 13 (Oct. 14, 2014) .................................................. 15
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 38
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .......................................................................... 20
`Endo Pharmaceuticals v. Depomed,
`IPR2014-00652, Paper 12 at 10 (Sep. 29, 2014) ................................................ 38
`Grain Processing Corp. v. Am. MaizeProds. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................ 58
`Gubelmann v. Gang,
`408 F.2d 758 (C.C.P.A. 1969) ............................................................................ 40
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 36
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 58
`In re Irani,
`427 F.2d 806 (C.C.P.A. 1970) ............................................................................ 51
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 55
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ............................................................................ 40
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) .......................................................................... 36
`-iv-
`
`
`
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ............................................................................ 38
`In re Warner,
`379 F.2d 1011 (C.C.P.A. 1967) .................................................................... 40, 41
`In re Wertheim,
`541 F.2d 257 (C.C.P.A. 1976) ............................................................................ 20
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol
`Ltd.,
`IPR2014-00309, Paper 83, slip op. at 34 (P.T.A.B. Mar. 23, 2014) .................. 29
`Keurig Green Mountain, Inc. v. Touch Coffee & Beverages, LLC,
`IPR2016-01390, Paper 18 at 11 (January 4, 2017) ....................................... 40, 60
`KTEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) ........................................................ 32, 33, 34, 45
`Leo Pharms. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 43, 44
`Meitzner v. Mindick,
`549 F.2d 775 (C.C.P.A. 1977) ............................................................................ 60
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026, Paper 17 at 19 (Dec. 21, 2012) ................................................ 38
`Mintz v. Dietz and Watson,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 51
`Nike Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .......................................................................... 55
`NRT Tech. Corp. et al. v. Everi Payments Inc.,
`CBM2016-00080, Paper 12 at 12 (November 10, 2016) ................................... 10
`Pacing Techs. LLC. v. Garmin Intern. Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) .................................................................... 21, 22
`Par Pharmaceutical, Inc. v. Horizon Therapeutics, LLC,
`IPR2015-01117, Paper 53, slip op. at 36 (P.T.A.B. Nov. 3, 2016) .................... 60
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 43
`
`
`
`
`
`-v-
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2014-00518, Paper 47, slip op. at 17 (Sep. 17, 2015) .................................. 30
`Shopkick v. Novitaz,
`IPR2015-00279, Paper 7 at 30 (May 29, 2015) .................................................. 49
`Standard Innovations Corp. v. Lelo, Inc.,
`IPR2014-00907, Paper 10 at 8 (December 1, 2014.) .............................. 16, 17, 18
`Stryker Corp v. Karl Storz Endoscopy-America, Inc.,
`IPR2015-00677, Paper 15 at 36 (P.T.A.B. Sept. 2, 2015) ............................ 51, 52
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`IPR 2015-00951, Paper 8, slip. Op. at 15 (September 17, 2015)
` ................................................................................................................. 54, 55, 56
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 42
`Valve Corp. v. Ironburg Inventions, Ltd.,
` IPR2016-00948, Paper 10 at 30-31 (September 27, 2016) ................................. 1
`Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 28
`Volkswagen v. Velocity Patent,
`IPR2015-00275, 2015 WL 3543109 (P.T.A.B. June 1, 2015) ........................... 49
`STATUTES
`35 U.S.C. § 103(a) ................................................................................................... 54
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 325(d) ............................................................................................passim
`Leahy-Smith American Invents Act. ....................................................................... 15
`OTHER AUTHORITIES
`27 C.F.R. § 42.100(c) ......................................................................................... 16, 18
`37 C.F.R. § 42.104(b)(4)–(5) ................................................................................... 14
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`
`-vi-
`
`
`
`

`

`
`
`
`
`Exhibit No.
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`
`2019
`
`2020
`2021
`2022
`2023
`
`
`
`
`
`
`
`IPR2017-00136 for U.S. Patent 8,641,525
`
`EXHIBIT LIST
`
`Description
`Declaration of Robert Becker
`Declaration of Dr. Glen Stevick
`C/V of Dr. Glen Stevick
`Excerpts from MERRIAM-WEBSTER’S COLLEGIATE
`DICTIONARY (10th ed. 1998)
`Excerpts from WEBSTER’S NEW AMERICAN
`DICTIONARY (1995)
`Patent 8,641,525 Prosecution History
`U.S. Patent 7,859,514 (“Park”)
`LinkedIn Page of Simon Burgess
`LinkedIn Page of Duncan Ironmonger
`Scuf Gaming Webpage
`Scuf Gaming Press Release
`Declaration of Nicoleta Cosereanu
`Declaration of Ehab M. Samuel
`Patent 9,089,770 Prosecution History
`First Petition filed by Petitioner in the 948 IPR
`PTAB’s Institution Decision in the 948 IPR
`Select Pages from KRC2 Controller Workbook
`Webpage from www.GebrauchtRoboter.com on Kuka’s
`KRC2 Controller
`Webpage from www.eurobots.net on Kuka’s KRC2
`Controller
`Webpage from www.ebay.com on Kuka’s KRC2 Controller
`Declaration of Danielle Mihalkanin
`Patent Search Result Based on Petitioner’s EX1012, App. A
`Motion for Leave to Amend Complaint in District Court
`
`-vii-
`
`
`
`

`

`
`I.
`
`Introduction
`
`IPR2017-00136 for U.S. Patent 8,641,525
`
`Patent Owner Ironburg Inventions, Ltd. (“Ironburg”) respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107, in response to the petition for Inter Partes Review of U.S. Pat. No.
`
`8,841,525 (“the ‘525 Patent”) filed by Valve Corporation (“Petitioner”). Ironburg
`
`requests that the Board to not institute inter partes review for several reasons.
`
`First, this is not Petitioner’s first attempt at challenging claims 1-20 of the
`
`‘525 Patent. Previously, on April 22, 2016, in IPR2016-00948 (“948 IPR”),
`
`Petitioner alleged five grounds of unpatentability. The Board instituted on three of
`
`these grounds and found that the previous petition (“First Petition”) failed to
`
`establish a reasonable likelihood of prevailing with respect to claims 12 and 15.
`
`Valve Corp. v. Ironburg Inventions, Ltd., IPR2016-00948, Paper 10, 30-31
`
`(September 27, 2016) (See EX2016.)
`
`Petitioner filed the instant petition (“Second Petition”), after it had received
`
`Ironburg’s Preliminary Response and the Board’s Institution Decision in the 948
`
`IPR. Petitioner’s Second Petition is nothing more than a “second bite at the apple”
`
`and an effort to remedy its prior deficient challenge against the ‘525 Patent.
`
`Petitioner has no “good cause” for its belated filing. Its excuses are debunked by
`
`its own exhibits that confirm that Petitioner knew of the Wörn reference at least as
`
`early as July 9, 2016, long before Ironburg’s Preliminary Response and the
`
`
`
`- 1 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`
`Board’s Institution Decision dates in the 948 IPR. At bottom, Petitioner has no
`
`persuasive reason as to why it waited until October 25, 2016 to file its Second
`
`Petition.
`
`Consistent with its precedent and policy, the Board should exercise its
`
`discretion to deny institution pursuant to 35 U.S.C. §325(d). Petitioner has had its
`
`chance to challenge the ‘525 patent claims at issue here, and failed in its attempt
`
`with respect to claims 12 and 15. Now, without justification, and with Ironburg’s
`
`Preliminary Response and the Board’s Institution Decision from the 948 IPR in
`
`hand, Petitioner seeks another opportunity to attack the same claims. In particular,
`
`Petitioner now advances one additional challenge to claim 12 and four additional
`
`challenges to claim 15–notably, two based on the Date and Lee references and two
`
`fallback attorney arguments. As demonstrated below, it is clear Petitioner used
`
`both the Board’s Institution Decision and Ironburg’s Preliminary Response as a
`
`roadmap to remedy its failed challenges. Such serial attacks waste the Board’s
`
`limited resources, impose undue burdens on Ironburg, and frustrate the final
`
`resolution of the dispute between the parties.
`
`Second, the Board should also decline to institute inter partes review
`
`because Petitioner failed to meet its burden demonstrating a reasonable likelihood
`
`of prevailing with respect to at least one claim of the ‘525 Patent under any of the
`
`alleged new obviousness grounds.
`
`
`
`- 2 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`
`The ‘525 Patent is directed to a hand-held controller for a video game
`
`console. Throughout the specification and prosecution history, the patentee made
`
`clear and unmistakable statements that the “the present invention” is a hand-held
`
`controller for a video game console that is intended to be held in and operated by a
`
`user in both hands.
`
`Meanwhile, the Wörn reference, which is the main reference that Petitioner
`
`relies on for all five grounds, is not directed to hand held controllers for video
`
`game consoles, but rather to a “control and programming unit” for industrial
`
`robots. Wörn is not in the same field of endeavor as the ‘525 Patent and is not
`
`reasonably pertinent to the problem of the ‘525 patent. Given these differences,
`
`Wörn would not have logically commended itself to the attention of a person of
`
`ordinary skill in the art (“POSITA”), particularly given the low level of ordinary
`
`skill in the art, as suggested by Petitioner’s expert. Thus, Wörn is non-analogous
`
`art and does not qualify as prior art for obviousness analysis.
`
`Third, Wörn also fails to disclose several claim limitations. The challenged
`
`claims of the ‘525 Patent have several limitations, including (1) a “hand held
`
`controller for a game console” in independent claims 1 and 20, and (2) back
`
`controls “inherently resilient and flexible” in independent claim 1. Wörn fails to
`
`disclose either of these limitations. Wörn’s “control and programming unit” is not
`
`
`
`- 3 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`a hand-held controller for a video game console, nor does it have back controls that
`
`are inherently resilient and flexible.
`
`Fourth, Wörn, in combination with Enright, Date, Lee and Oelsch also does
`
`not render obvious the challenged claims. In addition to the deficiencies of Wörn
`
`noted above, Wörn is also non-analogous art to Enright, Date, Lee and Oelsch
`
`references, and therefore, there is no reason to combine these references. Notably,
`
`Petitioner offers no proof that the alleged combination would work, nor do
`
`Petitioner explain how or why a POSITA would have combined these references to
`
`arrive at the claimed invention.
`
`Petitioner’s obviousness argument to modify Enright is only driven by
`
`hindsight. In purely conclusory fashion, Petitioner misrepresents Enright to
`
`suggest that it would be obvious to make the first mode switches longer “for easy
`
`operation” and “if ergonomically desired.” However, Enright merely made these
`
`statements in connection with the location (not the length) of the mode switches.
`
`More importantly, as of the priority date of the ‘525 Patent (June 17, 2011), a
`
`person skilled in the art would not find it obvious to have elongate members on the
`
`back of the controller as claimed. This is evidenced by the fact that not until
`
`recently has Microsoft® (which is a market leader in game consoles) launched its
`
`Xbox Elite Wireless Controller with elongate members on the back and has since
`
`licensed the ‘525 Patent.
`
`
`
`- 4 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`
`Petitioner’s piecemeal reconstruction of Wörn with Date or Lee is
`
`impermissible hindsight and fails to account for the manner by which the elements
`
`of the challenged claim 15 is arranged. Petitioner ignores that the elongate
`
`members are at the back of the controller, per claim 1, and therefore, its dependent
`
`claim 15 requires that the switch mechanism disposed between elongate members
`
`(at the back of the controller) and the outside surface of the back of the controller.
`
`As for Petitioner’s fallback attorney arguments that the claim elements are well
`
`known and conventional, they are not entitled to any weight and, in any case, fails
`
`to provide any “articulated reasoning” on how or why a POSITA would combine
`
`these elements in the same manner as claimed.
`
`As for Enright, it does not disclose elongate members converging towards
`
`the “front end” of the controller per Claim 13. Rather, Enright’s switch modes
`
`appear to only converge towards the top edge. In this regard, Petitioner improperly
`
`seeks a construction that would eliminate the “front” claim limitation from the
`
`phrase, and conflate it with the “top end” of the controller.
`
`Finally, the Institution Decision in the 948 IPR rejected Petitioner’s position
`
`that any button, trigger or control member qualifies as a paddle lever. In defiance
`
`of the Board’s decision, Petitioner advances the same rejected argument to allege
`
`that Wörn’s switching keys and Date’s buttons are the claimed “paddle lever” of
`
`claim 16. Petitioner’s position is legally deficient to meet this limitation.
`
`
`
`- 5 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`
`For these reasons, and the additional reasons set forth in the more detailed
`
`discussion below, the Board should deny institution of the Second Petition.
`
`II. The Board Should Deny Institution Of The Petition Under 35 U.S.C.
`§325(d)
`A. No “Good Cause” For Petitioner’s Delay
`The Board should deny institution of the Second Petition because Petitioner
`
`has failed to provide any persuasive evidence demonstrating “good cause” for a
`
`second chance or a do-over with its three new references. Here, none of
`
`Petitioner’s excuses justify the delay in filing the Second Petition. Its first story
`
`that it allegedly discovered the Wörn reference “[o]nly after the Patent Owner
`
`subsequently amended its District Court complaint” (EX1012, ¶15) is
`
`demonstrably inaccurate, but even if it was accurate, is insufficient to establish
`
`good cause.
`
`Petitioner’s own exhibit debunks this story. Specifically, Appendix B to
`
`EX1012, which Petitioner’s counsel represents as a “true and correct copy of some
`
`of search strings and strategies used by one of Valve’s professional prior art search
`
`firms for the ‘229 patent” (id., ¶15), is dated July 9, 2016. (Id., Appendix B at
`
`011.) Petitioner’s counsel represents that it was this search that “led to the
`
`discovery of the Wörn reference”. (Id., ¶15.) Thus, Petitioner knew about the
`
`Wörn reference at least as early as July 9, 2016, which is prior to the August 15,
`
`2016 filing date of the amended complaint in the District Court case. (EX2013,
`
`
`
`- 6 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`
`¶17). It is also prior to Ironburg’s Preliminary Response of July 28, 2016 and the
`
`Board’s Institution Decision of September 27, 2016. But even if Petitioner had
`
`discovered the reference after the August 15, 2016 date, Petitioner has not
`
`established good cause for why it waited until October 25, 2016 to file its Second
`
`Petition.
`
`In response to Ironburg’s Opposition to Petitioner’s Motion for Joinder,
`
`Petitioner profusely denies that it waited for the Board’s Institution Decision and
`
`now attempts to support its argument with a second story that the “undisputed
`
`evidence, however, shows that Valve did not discover the Wörn reference until it
`
`began preparing invalidity contentions for the newly-asserted ‘229 Patent.” (Paper
`
`8 at 3 (citing the Declaration of Reynaldo Barcelo, EX1012 at ¶15 for support).)
`
`This too is also inaccurate and insufficient to establish good cause.
`
`First, nothing in the referenced ¶15 states that “Valve did not discover the
`
`Wörn reference until it began preparing invalidity contentions for the newly-
`
`asserted ‘229 Patent.” That alleged fact is unsupported, and to suggest that it is
`
`“undisputed,” is wishful at best. Second, as noted above, this alleged fact is not
`
`accurate because Appendix B proves that Petitioner knew about the Wörn
`
`reference at least as early as July 9, 2016—long before the filing of the amended
`
`complaint or any subsequent date for invalidity contentions. Regardless, even if it
`
`was accurate, which it is not, the invalidity contentions were due September 19,
`
`
`
`- 7 -
`
`

`

`IPR2017-00136 for U.S. Patent 8,641,525
`
`
`2016. (Paper 8 at 3.) Petitioner offers no good cause for why it waited until after
`
`the Board’s Institution Decision to file its Second Petition.
`
`As for the Date and Lee references, Petitioner advances yet a third story that
`
`“Valve submitted undisputed evidence that it searched for and found the Date and
`
`Lee references only after discovering the Wörn reference, to complement it in
`
`mapping to certain dependent claims”. (Paper 8 at 3-4 (citing EX1012,
`
`¶18)(emphasis in original).). Notably, nothing in the referenced ¶18 supports
`
`Petitioner’s contention that Valve searched for and found the Date and Lee
`
`references after discovering the Wörn reference. Rather, the declaration merely
`
`states that “it became apparent for the first time that additional prior art references
`
`(i.e., … Date et al., and … Lee, as well as .. Oelsch and … Enright, the latter two
`
`of which were already cited in IPR2016-00948 and IPR2016-00949) should be
`
`combined with the Wörn reference”. (EX1012, ¶18.) Date and Lee may have been
`
`known to Petitioner at the same time Oelsch and Enright were made known to
`
`Petitioner. Petitioner offers no evidence that Date and Lee were searched after
`
`discovering the Wörn reference.
`
`Indeed, even the attached string searches (Appendices A & B to EX1012) is
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`insufficient corroborating evidence, leaving the Board and Ironburg to guess what
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`prior art may have actually been uncovered in these two searches. Petitioner
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`elected to conceal the results of these search strings, rather than provide adequate
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`IPR2017-00136 for U.S. Patent 8,641,525
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`support for its stories of when Wörn, Date and Lee were discovered. This is
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`particularly suspect given that these three references do come up in a prior art
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`search conducted by third party searcher based on the identical search strings in
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`Appendix A, which Petitioner’s counsel represented as some of the search strings
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`used to uncover prior art for its First Petition. (EX2021, ¶¶4-5; EX2022; EX1012,
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`¶15.) Thus, Petitioner’s allegation that Wörn, Date and Lee were recently
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`discovered is unsupported, and to suggest that this is “undisputed,” is without
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`merit.
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`Simply put, there is no persuasive reason as to why Petitioner waited until
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`October 25, 2016 to file its Second Petition. It was on notice of the ‘229 Patent at
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`least as early as June 13, 2016. (EX2001, Appendix A.) Ironburg filed a motion
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`for leave to amend the complaint on June 20, 2016. (EX2013, ¶16; EX2023, 11-
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`13.) Shortly thereafter, Petitioner conducted its search and identified the Wörn
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`reference on July 9, 2016, yet it chose to wait until after Ironburg’s July 28, 2016
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`Preliminary Response and the Board’s September 27, 2016 Institution Decision of
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`the 948 IPR to file the Second Petition on October 25, 2016.
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`At bottom, Petitioner failed to proceed expeditiously in filing its Second
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`Petition. None of Petitioner’s excuses are sufficient to establish good cause. Nor
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`does any good cause exist. Accordingly, the Board should exercise its discretion
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`under § 315(c) to deny joinder and dismiss the Second Petition.
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`IPR2017-00136 for U.S. Patent 8,641,525
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`B.
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`Petitioner Advances Substantially The Same Prior Art And
`Arguments That It Previously Presented
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`The Second Petition is undeniably (and admittedly) duplicative. (Petitioner’s
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`Motion for Joinder, Paper 3 at 7 (“Indeed, not only are the same patent and parties
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`involved in both proceedings, but virtually the same claims are at issue” and
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`“although the principal prior art reference is different …, there is nonetheless some
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`overlap since at least the Enright reference … is included in the obviousness
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`combinations presented in the Petition filed today and in already-instituted
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`IPR2016-00949”) and Petitioner’s Reply Brief, Paper 8 at 1 (“the section of both
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`petitions that describes the UK examiner’s opinion as one of ordinary skill in the
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`art is essentially the same.”)(emphasis in original).) The Petition also relies on the
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`previously-asserted Oelsch reference and advances the same claim construction
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`arguments, including those that the Board flatly rejected in the 948 IPR. (Compare
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`Second Petition at 18-23 & 49-51 to EX2015 at 10-17 & 51-52.)
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`Notwithstanding the duplicate claims, prior art and theories noted above, the
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`addition of five “new” grounds of unpatenability based on three “new” references
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`in the Second Petition does not deprive the Board from exercising its discretion
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`under §325(d). See NRT Tech. Corp. et al. v. Everi Payments Inc., CBM2016-
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`00080, Paper 12 at 12 (November 10, 2016). As the Board recently explained:
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`The statute provides we must consider ‘the same or substantially the
`same prior art or arguments previously were presented to the Office.’
`There is no requirement of identicalness of either prior art or
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`IPR2017-00136 for U.S. Patent 8,641,525
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`arguments, and therefore, a scintilla of difference or an immaterial
`difference does not create necessarily ‘different’ arguments. Id.
`(emphasis in original).
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`Here, the proposed grounds proffered in the Second Petition involve
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`evidence and arguments previously considered in the 948 IPR proceeding and are
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`substantially the same as those previously presented. For example:
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`1. Petitioner relies on the Wörn reference to show it has a front, a back, a top
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`edge and a bottom edge (Second Petition at 6-7 & 24-25), but the same
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`argument could have been made for the Enright and Jimakos references
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`(EX2015 at 32-33 and 48);
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`2. Petitioner relies on the Wörn reference to show elongated switching strips on
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`the back of the control and programming unit (Second Petition at 26-27), but
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`the same argument could have been made for the Enright reference
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`(EX1004, Fig. 5), and although Wörn’s elongated switching strips appear
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`longer than Enright’s, Jimakos shows longer controls (EX2015 at 48); and
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`3. Petitioner relies on the Date and Lee references to show switch mechanisms
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`(Second Petition at 41-49), but the same argument could have been made for
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`the Ono reference per Petitioner when it challenged claim 15 in the prior
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`proceeding (EX2015 at 43-44).
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`Notably, Petitioner’s reasoning for why the Second Petition is not redundant
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`is flawed. It glances over the differences between the Wörn and Tosaki references,
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`IPR2017-00136 for U.S. Patent 8,641,525
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`but fails to identify any differences with the Enright, Ono and Jimakos references.
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`The analysis under §325(d) is not limited to merely comparing primary references,
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`but to “prior art or arguments previously were presented to the Office.” 35 U.S.C.
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`§ 325(d). This must include all prior art that was subject to the 948 IPR, such as
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`the Enright, Jimakos, Oelsch and Ono references, which Petitioner completely fails
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`to address. Petitioner also fails to present any differences between the Date / Lee
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`references and the Ono reference. Prior art presented to the Office, per §325(d),
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`must invariably include prior art that the Office considered in the related
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`prosecution history, which Petitioner also fails to address.
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`Even the differences that Petitioner points out between Wörn and Tosaki—
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`to suggest that Petitioner is advancing different theories and arguments—are all
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`present in Enright and Jimakos. For example, Petitioner states that Wörn “does not
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`include a steering wheel” (Second Petition at 6-7), but the same argument could
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`have been made for Enright and Jimakos. (EX2015 at 32-33 and 48.) Petitioner
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`notes that Tosaki’s deficiencies (i.e., a steering wheel that is not a “hand held” and
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`does not have a front, a back, a top edge and a bottom edge) are not applicable to
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`the Wörn reference. (Second Petition, 6-7.) But the same argument could