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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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`_______________________
`
`VALVE CORPORATION
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`_______________________
`
`Case IPR2017-00136
`Patent 8,641,525
`_______________________
`
`
`
`DECLARATION OF DR. GLEN STEVICK
`
`IN SUPPORT OF THE PATENT OWNER RESPONSE
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`IRONBURG EX2032, Page 1
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`
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
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`III.
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`IV.
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`
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`
`
`
`
`INTRODUCTION ............................................................................................................. 1
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`QUALIFICATION ............................................................................................................ 1
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`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
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`C. TECHNOLOGY OVERVIEW ................................................................................ 10
`
`V.
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`CLAIM CONSTRUCTIONS FOR THE ‘525 PATENT ................................................ 11
`
`
`
`
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`A. “HAND HELD” ........................................................................................................ 11
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`B. “CONTROLLER FOR A GAME CONSOLE” ........................................................ 14
`
`VI.
`
`THE WÖRN REFERENCE (EX1003) ........................................................................... 15
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`VII. REPRESENTATIONS .................................................................................................... 16
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`
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`
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`-1-
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`IRONBURG EX2032, Page 2
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`IPR2017-00136
`Patent No. 8,641,525
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`
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`I, Dr. Glen Stevick, declare and state as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Ironburg Inventions Ltd. (“Ironburg” or
`
`“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. 8,641,525 (“the ‘525 patent”). I have personal
`
`knowledge of the facts and opinions stated in this Declaration, and am
`
`competent to testify thereto.
`
`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
`
`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
`
`engineering and related engineering disciplines. My expertise includes years
`
`of experience in failure analysis and design of structures, consumer
`
`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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`1
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`IRONBURG EX2032, Page 3
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`IPR2017-00136
`Patent No. 8,641,525
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`dynamics, electronic control systems, material behavior, heat transfer and
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`structure/fluid interaction.
`
`4.
`
`I received a Bachelor’s of Science degree in Mechanical Engineering
`
`from Michigan Technological University in 1980 and a Master’s of Science
`
`degree in Mechanical Engineering from the University of California,
`
`Berkeley in 1981.
`
`5.
`
`I worked for Chevron Corporation during and after my time at
`
`Michigan Technological University and U.C. Berkeley while working
`
`toward my Master’s degree.
`
`6.
`
`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.
`
`7.
`
`I completed my Ph.D. in Mechanical Engineering from the University
`
`of California, Berkeley in 1993 majoring in material behavior and design,
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`and minoring in structural analysis dynamics and controls (electronic
`
`controls).
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`2
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`IRONBURG EX2032, Page 4
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`Patent No. 8,641,525
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`8.
`
`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
`
`and engineering mechanics specialist.
`
`9.
`
`I am a registered Mechanical Engineer in California, Texas, Louisiana
`
`and Nevada and a member of the American Society of Mechanical
`
`Engineers.
`
`10. My experience with Chevron related to many mechanical and
`
`electrical engineering methods and technologies used to control downstream
`
`process equipment, upstream oil and gas equipment, surface processing
`
`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.
`
`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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`3
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`IRONBURG EX2032, Page 5
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`IPR2017-00136
`Patent No. 8,641,525
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`12.
`
`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,
`
`“Mechanical Engineering Design,” and have conducted various lectures on
`
`mechanical engineering topics.
`
`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
`
`equipment and consumer products, including mechanical and electrical
`
`control systems and controllers.
`
`15.
`
`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
`
`Dynamic Space-Time Imaging System,” and U.S. Patent No. 8,395,376,
`
`entitled “Method and Apparatus for Magnetic Response Imaging System.”
`
`16.
`
`I am currently a member of American Society of Testing and
`
`Materials (ASTM) Committee E05 on Fire Standards, Committee F15 on
`
`Consumer Products and Committee E08 on Fatigue and Fracture.
`
`17.
`
`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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`4
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`IRONBURG EX2032, Page 6
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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.
`
`INFORMATION CONSIDERED
`
`18.
`
`I have reviewed and am familiar with the ‘525 patent specification, its
`
`claims, and its file history, as well as its related ‘770 patent specification and
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`file history.
`
`19.
`
`I have reviewed and am familiar with the Second Petition for Inter
`
`Partes Review of the ‘525 patent filed by Valve on October 25, 2016 (the
`
`“Second Petition”), as well as the October 24, 2016 Declaration of Dr. David
`
`Rempel filed in support thereof (the “Rempel Declaration”).
`
`20.
`
`I have reviewed and am familiar with the references cited in the
`
`Petition. I refer to the following exhibits cited in the Inter Partes Review as
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`set forth in the table below:
`
`
`
`
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`5
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`IRONBURG EX2032, Page 7
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`IPR2017-00136
`Patent No. 8,641,525
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`Exhibit No. Reference
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
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`1009
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`2006
`
`2004
`
`2005
`
`2014
`
`U.S. Patent No. 8,641,525 (“the ‘525 Patent”)
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`U.S. Patent No. 9,089,770 (“the ‘770 Patent”)
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`U.S. Patent No. 6,362,813 (“Wörn”)
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`U.S. Patent Publication No. 2010/0073283 (“Enright”)
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`U.S. Patent No. 6,153,843 (“Date”)
`
`U.S. Patent No. 6,364,771 (“Lee”)
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`U.S. Patent no. 4,032,728 (“Oelsch”)
`
`Rempel Declaration
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`Prosecution History of the ‘525 Patent
`
`Excerpts from MERRIAM-WEBSTER’S COLLEGIATE
`DICTIONARY (10th ed. 1998).
`
`Excerpts from WEBSTER’S NEW AMERICAN
`DICTIONARY (1995).
`
`Prosecution History of the ‘770 Patent
`
`2015
`
`First Petition filed by Petitioner in the 948 IPR
`
`2016
`
`PTAB’s Institution Decision in the 948 IPR
`
`2017
`
`Select Pages from KRC2 Controller Workbook
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`2018
`
`Webpage from www.GebrauchtRoboter.com on Kuka’s KRC2
`Controller
`
`2019
`
`Webpage from www.eurobots.net on Kuka’s KRC2 Controller
`
`2020
`
`Webpage from www.ebay.com on Kuka’s KRC2 Controller
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`
`
`6
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`IRONBURG EX2032, Page 8
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`21.
`
`I confirm that to the best of my knowledge that the above-noted
`
`exhibits cited in my declaration–including Exhibits 2004, 2005 and 2017-
`
`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.
`
`
`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`
`22. While considering the ‘525 Patent and stating my opinions, I am
`
`relying on legal principles that have been explained to me by counsel.
`
`A. Claim Construction Law
`
`23.
`
`I have been instructed by counsel on the law regarding claim
`
`construction and patent claims, and understand that a patent may include two
`
`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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`24.
`
`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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`7
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`IRONBURG EX2032, Page 9
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`25.
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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.
`
`26.
`
`I understand that if there are specific statements in the specification
`
`that define the invention, those statements are strong evidence of a definition
`
`for a term.
`
`27.
`
`In this declaration, I have used the Broadest Reasonable Interpretation
`
`(“BRI”) standard when interpreting the claim terms.
`
`B. Person of Ordinary Skill in the Art (“POSITA”)
`
`28.
`
`I understand that a person having ordinary skill in the art is a
`
`hypothetical person who is used to analyze the prior art without the benefit
`
`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
`
`insights or by patient and often expensive systematic research.
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`29.
`
`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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`8
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`IRONBURG EX2032, Page 10
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`more than a year of experience or other training in video game controller
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`assembly or tooling.
`
`30. 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
`
`mechanical engineering, and my related experience.
`
`31.
`
`I meet these criteria and consider myself a person with at least
`
`ordinary skill in the art pertaining to the patent. I would have been such a
`
`person at the time of invention of the patent. I have supervised those with
`
`ordinary skill in the art and I am therefore familiar with their qualifications.
`
`32.
`
`I also understand that the Rempel Declaration (¶ 11 at p. 2) asserts
`
`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
`
`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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`9
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`IRONBURG EX2032, Page 11
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`33. My statements and opinions set forth herein are true and correct
`
`regardless of which of these two descriptions of a person of ordinary skill in
`
`the art is ultimately adopted.
`
`C. Technology Overview
`
`34. To understand how a POSITA would have viewed the claims and the
`
`specification, the problem addressed by the ‘525 patent must be put in
`
`context with the overall technology. At the time of the priority date of the
`
`‘525 Patent, there was a need for an improved hand-held video game
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`controller that removed the need for the gamer to move his or her thumb
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`over to operate additional controls, which takes time and can cause a loss of
`
`control. EX1001, 1:33-45.
`
`35. The ‘525 Patent is directed to a hand-held video game controller
`
`intended to be held by a user in both hands. EX1001, Abstract. It comprises
`
`an outer case with two handles, a front control, 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 two back controls with elongated members along the
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`longitudinal axes of the handles, such that the user’s other fingers are
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`position to operate the back controls. Id., 1:49-58.
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`
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`10
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`IRONBURG EX2032, Page 12
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`
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`V. CLAIM CONSTRUCTIONS FOR THE ‘525 PATENT
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`A. “Hand Held”
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`IPR2017-00136
`Patent No. 8,641,525
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`36.
`
`Independent claim 20 of the ‘525 Patent recites the term “hand held”
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`in the preamble.
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`37.
`
`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
`
`for limitations in the claim body. I also understand that the preamble can be
`
`limiting if it provides essential structure to the claim.
`
`38.
`
`It is my opinion that the preamble breathes life and meaning into the
`
`claim, provides essential structure to the claim, and serves as an antecedent
`
`basis for the term “the controller” in independent claim 20.
`
`39. The phrase “hand held controller for a game console” in the preamble
`
`breathes life, meaning and vitality in the claim in as much as it (a) informs
`
`the understanding or places into the context the limitation that “the controller
`
`is shaped to be held in the hand of the user,” (b) provides essential structure
`
`that limits the size and adaptions required by the remaining limitations in the
`
`claim, and (c) informs the understanding of what the inventors actually
`
`invented and intended to encompass by the claim.
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`11
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`IRONBURG EX2032, Page 13
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`40. For example, the preamble provides essential structure to the
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`following underlined limitations in at least claims 1, 6 and 20:
`
`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 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.
`
`6. The controller of claim 1, wherein each of the back controls is
`positioned to be operated by a middle finger of a user.
`
`20. 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 front of the
`controller and the top edge is opposite the bottom edge;
`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.
`
`
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`41. Given that the preamble is limiting, I provide the following
`
`construction.
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`IRONBURG EX2032, Page 14
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`42.
`
`It is my opinion that a person of ordinary skill in the art would
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`understand the phrase “hand held” to mean “designed to be held in and
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`operated by a user’s hand or hands in normal use and without the need for
`
`external support.”
`
`43. The definition of “hand held,” as defined in MERRIAM-
`
`WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1998) is “held in the
`
`hand; esp to be operated while being held in the hand.” EX2004, p. 526.
`
`44. The notion that the hand held controller is held in and operate by the
`
`user’s hands in normal use and without the need for external support is
`
`further supported in the claims, written description and the drawings.
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`45. Figures 2 and 3 of the ‘525 are reproduced below.
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`46. Notably, the express language of claim 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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`13
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`IRONBURG EX2032, Page 15
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`47. The specification repeatedly refers to the “hand held” controller as
`
`“the present invention” and that the controller is shaped to be held in and
`
`operated by both hands of the user. For example, the specification states:
`
`• “Conventional controllers for most game consoles are intended to be held
`and operated by the user using both hands”. EX1001, 1:8-9.
`
`
`• “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.
`
`48. Having studied the ‘525 Patent, the file history, and based on my
`
`experience, I believe that a POSITA would understand that the term “hand
`
`held” is “designed to be held in and operated by a user’s hand or hands in
`
`normal use and without the need for external support.”
`
`B. “Controller for a Game Console”
`
`49.
`
`Independent claim 20 of the ‘525 Patent also recites the phrase
`
`“controller for a game console” in the preamble.
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`14
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`IRONBURG EX2032, Page 16
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`50.
`
`It is my opinion that a person of ordinary skill in the art would
`
`understand the phrase “controller for a game console” to mean “an apparatus
`
`or device that communicates with a game console and controls video output
`
`associated with a video game.”
`
`51. A person of ordinary skill in the art would understand that a controller
`
`for a game console, such as that described in the ‘525 patent, is a device
`
`used with gaming systems to provide input to a video game. The controller
`
`controls an object or character in the game, which is depicted on a screen,
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`via controlling video output associated with the game.
`
`VI. THE WÖRN REFERENCE (EX1003)
`
`52.
`
` Wörn describes a large programming device that enables a user to
`
`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.
`
`53. Wörn does not disclose an apparatus or device that communicates
`
`with a game console and controls video output associated with a video game.
`
`54. Notably, Petitioner’s expert did not provide any support on this claim
`
`limitation. There is no support for a person of ordinary skill to understand
`
`the “control and programming unit” of Wörn to mean “an apparatus or
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`15
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`IRONBURG EX2032, Page 17
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`device that communicates with a game console and controls video output
`
`associated with a video game.”
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`VII. REPRESENTATIONS
`
`55. The statements set forth in this Declaration do not reflect the limits of
`
`my opinions, and the fact that any assertions contained within the Petition or
`
`any supporting documents have not been addressed herein should not be
`
`interpreted as an admission that they are accurate or uncontested in any way.
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`I may consider additional documents as they become available or other
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`documents that are necessary to form my opinions. I reserve the right to
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`revise, supplement, or amend my opinions based on new information and on
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`my continuing analysis.
`
`56.
`
`I declare under penalty of the laws of the United States that all
`
`statements made herein of my own knowledge are true and correct, and that
`
`all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
`
`statements and the likes so made are punishable by fine or imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
`
`57.
`
`In signing this declaration, I recognize that the declaration will be
`
`filed as evidence in a contested case before the Patent Trial and Appeal
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`IRONBURG EX2032, Page 18
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`Board of the United States Patent and Trademark Office. I also recognize
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`that I may be subject to cross-examination in the case and that cross-
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`examination will take place within the United States. If cross-examination is
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`required of me, I will appear for cross-examination within the United States
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`during the time allotted for cross-examination
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`Executed this 6th day of July, 2017, at Berkeley, California.
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`_________________________
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` Glen Stevick, Ph.D., P.E.
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`IRONBURG EX2032, Page 19
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