`
`
`
`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 RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`CLAIM CONSTRUCTION ........................................................................... 2
`
`A.
`
`Preamble Of Claim 20 Is Limiting ....................................................... 2
`
`1.
`
`2.
`
`3.
`
`Preamble Is Limiting Because It Provides Antecedent
`Basis To “The Controller” In The Body Of Claim 20 ............... 4
`
`Preamble Is Limiting Because It Recites Essential
`Structure And Breathes Life, Meaning And Vitality Into
`Claim 20 ..................................................................................... 7
`
`Preamble Is Limiting Because The Specification Focuses
`On Addressing A Prior Art Problem Of A Particular
`Hand Held Video Game Controller Structure............................ 9
`
`4.
`
`Petitioner Agrees That Preamble Is Limiting .......................... 13
`
`B. Meaning of “Hand Held Controller For a Game Console” ................ 13
`
`1.
`
`2.
`
`Prior Decisions Construing “Hand-Held”................................ 13
`
`Dr. Stevick’s Testimony In The 948 And 949 IPR
`Proceedings .............................................................................. 15
`
`3.
`
`Construction Of “Controller For A Game Console” ............... 17
`
`III. WÖRN DOES NOT ANTICIPATE CLAIM 20 BECAUSE IT DOES
`NOT DISCLOSE THE CLAIMED “HAND HELD CONTROLLER
`FOR A GAME CONSOLE” ......................................................................... 19
`
`IV. CONCLUSION ............................................................................................. 21
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`-i-
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`TABLE OF AUTHORITIES
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`Page
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`CASES
`
`Aevoe Corp. v. AE Tech Co., Ltd.,
`Case No. 2:12-cv-00053-GMN-RJJ (D. Nev. May 14, 2013) ............................ 15
`
`Apple Inc. v. Memory Integrity, LLC,
`IPR2015-00159 (PTAB May 11, 2015) ............................................................. 18
`
`Asus Computer Int’l v. Exotablet Ltd.,
`Case No. C 14-1743 PJH (N.D.Cal. Aug. 12, 2014) .......................................... 14
`
`Bell Communications Research, Inc. v. Vitalink Communications
`Corp.,
`55 F.3d 615, 34 USPQ2d 1816 (Fed. Cir. 1995) .................................................. 3
`
`Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) .......................................................................... 3, 4
`
`Chevron N. Am., Inc. v. Milwaukee Elec. Tool. Corp.,
`IPR2015-00595 (PTAB July 31, 2015), IPR2015-00596 (PTAB
`July 31, 2015), IPR2015-00597 (PTAB July 31, 2015) ..................................... 14
`
`Dataquill Ltd. v. Huawei Techs. Co. Ltd.,
`Case No. 2:13-cv-633-JRG-RSP (E.D.Tex. Jan 27, 2015) ................................ 15
`
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) ........................................................................ 5, 6
`
`General Electric Co. v. Nintendo Co.,
`179 F.3d 1350, 50 USPQ2d 1910 (Fed. Cir. 1999) .............................. 4, 9, 12, 20
`
`Lindsay Corp. v. Valmont Indus., Inc.,
`IPR2015-01039 (PTAB Sept. 14, 2016) ............................................................. 14
`
`McKesson Information Solutions Inc. v. Bridge Medical Inc.,
`Case No. CIV S-02-2669 FCD KJM (E.D. Cal. June 7, 2005) .................... 14, 15
`
`Pacing Techs. LLC v. Garmin Intern. Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) ........................................................................ 5, 6
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) ............................................................................ 4
`
`
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`-ii-
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`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
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`Responsive Innovs. LLC. v. Holtzbrink Publishers LLC,
`Case No. 4:08CV1184 (N.D.Ohio April 9, 2013) .............................................. 14
`
`Samsung Elects. Co. Ltd. v. IXI IP, LLC,
`IPR2015-01442 (PTAB Dec. 30, 2015) ............................................... 7, 8, 12, 14
`
`Schumer v. Lab Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002) ........................................................................ 5, 6
`
`VSR Indus., Inc. v. Cole Kepro Int’l, LLC,
`IPR2015-00182 (PTAB April 28, 2016) ............................................................ 18
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00029 (PTAB March 12, 2013) .......................................................... 18
`
`
`
`
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`-iii-
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`IPR2017-00136 for U.S. Patent 8,641,525
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`UPDATED EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`Declaration of Robert Becker
`
`Declaration of Dr. Glen Stevick in support of Patent Owner
`Preliminary Response
`
`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
`
`
`
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`-iv-
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`2024
`
`2025
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`2026
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`2027
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`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`IPR2017-00136 for U.S. Patent 8,641,525
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`Excerpts from Deposition Transcript of Dr. Stevick in the 948
`/ 949 IPR (Vol. I)
`
`Excerpts from Deposition Transcript of Dr. Stevick in the 948
`/ 949 IPR (Vol. II)
`
`Court Order in Responsive Innovs. LLC. v. Holtzbrink
`Publishers LLC, Case No. 4:08CV1184 (N.D.Ohio April 9,
`2013)
`
`Court Order in Asus Computer Int’l v. Exotablet Ltd., Case
`No. C 14-1743 PJH (N.D.Cal. Aug. 12, 2014)
`
`Court Order in McKesson Information Solutions Inc. v. Bridge
`Medical Inc., Case No. CIV S-02-2669 FCD KJM (E.D. Cal.
`June 7, 2005)
`
`Court Order in Aevoe Corp. v. AE Tech Co., Ltd., Case No.
`2:12-cv-00053-GMN-RJJ (D. Nev. May 14, 2013)
`
`Court Order in Dataquill Ltd. v. Huawei Techs. Co. Ltd., Case
`No. 2:13-cv-633-JRG-RSP (E.D.Tex. Jan 27, 2015)
`
`Excerpts from Record of Oral Hearing in the 948 / 949 IPR
`
`Declaration of Dr. Glen Stevick in support of Patent Owner
`Response
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`-v-
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`I.
`
`Introduction
`
`IPR2017-00136 for U.S. Patent 8,641,525
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`The Board instituted inter partes review of claim 20 of U.S. Patent
`
`8,841,525 (“the ‘525 Patent”) based solely on alleged anticipation by the Wörn
`
`reference.
`
`Claim 20, as set forth in the preamble, is directed to “A hand held controller
`
`for a game console.” Both the Patent Owner and the Petitioner agree that the
`
`preamble is limiting. During oral argument in co-pending IPR2016-00948 (“948
`
`IPR”) proceeding on the ‘525 Patent, Petitioner agreed that the preamble is
`
`limiting.
`
`Controlling precedent also compels a conclusion that the preamble of claim
`
`20 is limiting because, among other things, it provides antecedent basis, essential
`
`structure, and breathes life and meaning into the claim. The term “hand held”
`
`recites a structural limitation that physically restricts the controller (such that it is
`
`physically held and supported by the user’s hands during operation without the
`
`need for external support). The limitations in claim 20 that follow the preamble
`
`rely upon and/or derive essential structure from the preamble in that they are
`
`housed and/or defined within the hand-held controller, which thereby physically
`
`constrains those limitations in the claim.
`
`Prior Board and court decisions have construed the term “hand held” as
`
`“designed to be held in and operated by a user’s hand or hands in normal use and
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`IPR2017-00136 for U.S. Patent 8,641,525
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`without the need for external support.” Patent Owner’s expert, Dr. Stevick, has
`
`also explained, in his deposition in the related 948 IPR and IPR2016-00949 (“949
`
`IPR”), that a POSITA would understand that the claimed hand-held controller 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 (i.e. not designed to be supported by the
`
`thighs as disclosed in Tosaki).
`
`Additionally, prior Board and Federal Circuit decisions make clear that the
`
`phrase “controller for a game console” does not merely state a purpose or intended
`
`use. Rather, these words give life and meaning and provide positive structural
`
`limitations to the claimed invention, namely, that the claimed “controller for a
`
`game console” is “an apparatus or device that communicates with a game console
`
`and controls video output associated with a video game.”
`
`Since the Wörn reference does not disclose an apparatus or device that
`
`communicates with a game console and controls video output associated with a
`
`video game, it is respectfully submitted that Wörn does not anticipate claim 20 of
`
`the ‘525 patent.
`
`II. Claim Construction
`
`A.
`
`Preamble Of Claim 20 Is Limiting
`
`The preamble of claim 20 recites “A hand held controller for a game
`
`console.” In instituting inter partes review, the Board concluded that the preamble
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`IPR2017-00136 for U.S. Patent 8,641,525
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`is not limiting. Paper 12 at 8-11. Patent Owner respectfully disagrees and
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`provides the following legal authority in support of Patent Owner’s position on this
`
`issue.
`
`“In general, a preamble limits the invention if it recites essential structure or
`
`steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”
`
`Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
`
`Cir. 2002). While there is no “litmus test” that defines when a preamble limits the
`
`claim scope, the Federal Circuit has observed that some “guideposts” have
`
`emerged from various cases discussing the preamble’s effect on claim scope. Id.
`
`One such guidepost is when a preamble serves as antecedent basis.
`
`Additionally, dependence on a particular disputed preamble phrase for
`antecedent basis may limit claim scope because it indicates a reliance
`on both the preamble and claim body to define the claimed invention.
`Bell Communications Research, Inc. v. Vitalink Communications
`Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995)
`(“[W]hen the claim drafter chooses to use both the preamble and the
`body to define the subject matter of the claimed invention, the
`invention so defined, and not some other, is the one the patent
`protects.”). Id. (emphasis added)
`
`Another separate and independent guidepost is when the preamble is
`
`essential to understand limitations or terms in the claim body:
`
`Likewise, when the preamble is essential to understand limitations or
`terms in the claim body, the preamble limits claim scope. Id.
`
`Yet, another independent guidepost is when the specification focuses on
`
`addressing a prior art problem of a particular structure:
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`- 3 -
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`IPR2017-00136 for U.S. Patent 8,641,525
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`Further, when reciting additional structure or steps underscored as
`important by the specification, the preamble may operate as a claim
`limitation. Corning Glass, 868 F.2d at 1257 (limiting claim scope to
`“optical waveguides” rather than all optical fibers in light of
`specification); General Electric Co. v. Nintendo Co., 179 F.3d 1350,
`1361–62, 50 USPQ2d 1910, 1918–19 (Fed. Cir. 1999) (limiting claim
`scope to a “raster scanned display device” rather than all display
`systems in view of specification’s focus on the prior art problem of
`displaying binary data on a raster scan display device) … Id.
`(emphasis added).
`
`Here, as set forth in detail below all three guideposts are clearly present.
`
`Moreover, both the Patent Owner and Petitioner agree that the preamble is
`
`limiting. (EX2031, 65:11-17).
`
`1.
`
`Preamble Is Limiting Because It Provides Antecedent Basis
`To “The Controller” In The Body Of Claim 20
`
`Pursuant to Federal Circuit precedent in Catalina Marketing, antecedent
`
`basis provides a separate and independent basis to conclude that a preamble term is
`
`limiting “because it indicates a reliance on both the preamble and claim body to
`
`define the claimed invention.” 289 F.3d at 808. Likewise, in Pitney Bowes, Inc. v.
`
`Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), the Federal Circuit
`
`recognized that antecedent basis provides a separate and independent basis to
`
`construe the claim preamble with the balance of the claim. Id. (“If the claim
`
`preamble, when read in the context of the entire claim, recites limitations of the
`
`claim, or, if the claim preamble is “necessary to give life, meaning, and vitality” to
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`- 4 -
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`the claim, then the claim preamble should be construed as if in the balance of the
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`IPR2017-00136 for U.S. Patent 8,641,525
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`claim.”) (emphasis added).
`
`In Pacing Techs. LLC v. Garmin Intern. Inc., 778 F.3d 1021, 1024 (Fed. Cir.
`
`2015), the Federal Circuit concluded that the terms “user” and “repetitive motion
`
`pacing system” in the preamble are limiting because they “provide antecedent basis
`
`for and are necessary to understand positive limitations in the body of the claims.”
`
`Id. (“when limitations in the body of the claim rely upon and derive antecedent
`
`basis from the preamble, then the preamble may act as a necessary component of
`
`the claimed invention.”) (quoting Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d
`
`1332, 1339 (Fed. Cir. 2003)).
`
`Although Patent Owner previously identified Pacing Techs. and Eaton in its
`
`Preliminary Response, the Board distinguished both cases. Specifically, the
`
`Institution Decision distinguished Eaton “because here the body of the claim
`
`recites a structurally complete device while in Eaton the steps recited in the body
`
`of the claim referred to structures only identified in the preamble.” Paper 12 at 9.
`
`Similarly, the Institution Decision distinguished Pacing Techs. on the premise that
`
`“in Pacing Technologies two terms in the preamble were necessary to understand
`
`positive limitations in the body of the claim, while here, the preamble term
`
`‘controller’ is not necessary to understand any limitation in the body of the claim.”
`
`Paper 12 at 9-10. In doing so, the Institution Decision relied on Schumer v. Lab
`
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`IPR2017-00136 for U.S. Patent 8,641,525
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`Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002) for the proposition that
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`“if the body of the claim ‘sets out the complete invention,’ the preamble is not
`
`ordinarily treated as limiting the scope of the claim.” Id. Patent Owner
`
`respectfully notes that the Board’s opinion is inaccurate for three reasons.
`
`First, the Schumer case is inapplicable here because all the limitations at
`
`issue in that case were in the preamble and none provided any antecedent basis to
`
`limitations in the body of the claim. 308 F.3d at 1310. In contrast, both Pacing
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`Techs. and Eaton are applicable here as both involve a preamble providing
`
`antecedent basis to express limitations in the body of the claim. For example, in
`
`Pacing Techs., the terms “user” and “repetitive motion pacing system” in the
`
`preamble “provide antecedent basis for and are necessary to understand positive
`
`limitations in the body of the claims”. 778 F.3d at 1024. Meanwhile, in Eaton, the
`
`“vehicle engine” limitation in the preamble provided antecedent basis to “the
`
`engine” in the body of the claim, which is similar to the case here where the “hand
`
`held controller” providing antecedent basis to “the controller” in the body of the
`
`claim. 323 F.3d at 1336.
`
`Second, the Board’s opinion that “the preamble term ‘controller’ is not
`
`necessary to understand any limitation in the body of the claim” effectively reads
`
`out the positive limitation of “the controller” in the body of the claim. Here, the
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`patentee relied on both the preamble and claim body to define the claimed
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`IPR2017-00136 for U.S. Patent 8,641,525
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`invention. The term “hand held controller” in the preamble provides antecedent
`
`basis to the “controller” in the body of the claim, and informs the understanding or
`
`places into context the limitation that “the controller is shaped to be held in the
`
`hand of the user.” (EX1001, 6:18-20). Thus, the “hand held controller” is
`
`necessary to understand the positive limitation of “the controller” in the body of
`
`the claim.
`
`Third, the Board’s opinion that “here the body of the claim recites a
`
`structurally complete device” is respectfully inaccurate. As further explained
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`below, the term “hand held” is an important part of describing or setting out the
`
`complete invention because it adds a structural limitation that is not recited in the
`
`claim. See infra II.A.2.
`
`Thus, because the “hand held controller” in the preamble provides
`
`antecedent basis for and is necessary to understand the positive limitation of “the
`
`controller” in the body of the claim, the preamble is necessarily limiting.
`
`2.
`
`Preamble Is Limiting Because It Recites Essential Structure
`And Breathes Life, Meaning And Vitality Into Claim 20
`
`In Samsung Elects. Co. Ltd. v. IXI IP, LLC, IPR2015-01442, Paper 8 at 9
`
`(PTAB Dec. 30, 2015), the Board explained that the term “hand-held device” in
`
`the preamble recites a structural limitation of the claim, in that the “hand-held”
`
`aspect of the device “is a dimensional, physical restriction on the size of the
`
`device.” Id. (emphasis added) (concluding that “hand held device” in the preamble
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`IPR2017-00136 for U.S. Patent 8,641,525
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`is limiting and provides structural limitation to the claim). Although the preamble
`
`did not provide antecedent basis in the Samsung case, the Board explained that
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`“[t]he limitations in all of the claims rely upon or derive essential structure from
`
`the preamble, in that they are housed within a hand-held device, which limits the
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`size and adaptations required of the remaining limitations in the claims.”
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`Id.(emphasis added).
`
`Here, in addition to the preamble providing antecedent basis to “the
`
`controller” in the body of the claim, the term “hand held controller” also recites a
`
`structural limitation of the claim, in that the “hand-held” aspect of the controller “is
`
`a dimensional, physical restriction on the size of the device.” Id. Like Samsung,
`
`“[t]he limitations in all of the claims rely upon or derive essential structure from
`
`the preamble, in that they are housed within a hand-held [controller], which limits
`
`the size and adaptations required of the remaining limitations in the claims.” Id.
`
`Further, 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” and (b) provides essential
`
`structure that limits the size and adaptions required by the remaining limitations in
`
`the claim. Additionally, as explained below, the preamble breathes life, meaning
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`- 8 -
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`IPR2017-00136 for U.S. Patent 8,641,525
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`and vitality in the claim by informing the understanding of what the inventors
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`actually invented and intended to encompass by the claim. See infra II.A.3.
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`Thus, because the “hand held controller” in the preamble recites essential
`
`structure and breathes life, meaning and vitality into the claim, the preamble is
`
`necessarily limiting.
`
`3.
`
`Preamble Is Limiting Because The Specification Focuses On
`Addressing A Prior Art Problem Of A Particular Hand
`Held Video Game Controller Structure
`
`In General Elec., the Federal Circuit emphasized that a determination of
`
`whether the preamble “breathes life and meaning” into the claim requires “review
`
`of the entirety of the patent to gain an understanding of what the inventors actually
`
`invented and intended to encompass by the claim.” 179 F.3d at 1361-62. In
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`reviewing the patent-at-issue, the General Elec. court noted that “the specification
`
`makes clear that the inventors were working on the particular problem of
`
`displaying binary data on a raster scan display device and not general
`
`improvements to all display systems.” Id. “In light of the specification, to read the
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`claim indiscriminately to cover all types of display systems would be divorced
`
`from reality.” Id. As such, the Federal Circuit concluded that the preamble “A
`
`system for displaying a pattern on a raster” does not merely state a “purpose or
`
`intended use” for the claimed structure; rather, “those words do give ‘life and
`
`meaning’ and provide further positive limitations to the invention claimed.” Id.
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`- 9 -
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`Similarly, a review of the entirety of the ‘525 Patent makes clear that the
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`IPR2017-00136 for U.S. Patent 8,641,525
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`inventors were working on a particular problem for video game hand held
`
`controllers that are fully operable when held in the user’s hands. (EX1001, 1:33-
`
`45). The inventors sought to overcome the problem of loss of control and time
`
`delay due to a video game player moving his or her thumb over to operate
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`additional controls on a conventional video game hand-held controller. (Id.) The
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`disclosed improvement over conventional video game hand held controllers was
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`the inclusion of “one or more additional controls located on the back of the
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`controller in a position to be operated by the user’s other fingers.” (Id., 1:56-58.)
`
`Indeed, when the ‘525 patent is reviewed in its entirety as is required, it is
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`clear that the ‘525 patent is directed to hand held video game controllers. For
`
`example:
`
` Title: “Controller for Video Game Console.” (Id.)
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` Background: “The present invention relates to video game consoles, in
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`particular to hand held controllers for video game consoles. Conventional
`
`controllers for most game consoles are intended to be held and operated by
`
`the user using both hands.” (Id., 1:6-9).
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` Summary of the Invention: “The present invention provides a hand held
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`controller for a video game console having a hard outer case and a plurality
`
`of controls located on the front and top edge of the controller. The controller
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`IPR2017-00136 for U.S. Patent 8,641,525
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`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
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`user’s index fingers are positioned to operate controls on the top edge of the
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`controller. The controller further includes one or more additional controls
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`located on the back of the controller in a position to be operated by the
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`user’s other fingers.” (Id., 1:49-58). “The controller of the present invention
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`may be very similar to controllers according to the prior art. In particular,
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`the outer case of the controller … may be the same as a controller according
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`to the prior art, as described above and as illustrated in the figures.” (Id.,
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`2:15-19).
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` Abstract: “An improved controller (10) for a game console that is intended
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`to be held by a user in both hands … and has two additional controls (11)
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`located on the back in positions to be operated by the middle fingers of a
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`user.”
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` Brief Description of the Drawings: “FIG. 3 is a schematic illustration of the
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`back of a game controller according to the present invention as held and
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`operated by a user.” (Id., 2:65-67).
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` Detailed Description of the Invention: “The game controller 10 according to
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`the present invention is illustrated in FIGs. 2 and 3.” (Id., 3:13-14).
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` Drawings: There is only one embodiment illustrated and described in the
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`IPR2017-00136 for U.S. Patent 8,641,525
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`patent and that controller is a hand held video game controller. FIGs. 2-3.
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`Moreover, even the prior art controller illustrated in FIG. 1 is described as a
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`hand held video game controller. (Id., 1:5-45).
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`Like the preamble “A system for displaying a pattern on a raster” in General
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`Elec., the preamble “A hand held controller for a game console” in claim 20 of the
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`‘525 patent does not merely state a purpose or intended use; rather, those words
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`give life and meaning, and provide positive limitations to the claimed invention.
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`Specifically, the “hand held” limitation provides a dimensional, physical size and
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`operability restriction, while the “controller for a game console” limitation
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`provides a structural restriction that the controller communicates with a game
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`console and control video output associated with a video game. See infra II.B.3.
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`As the Federal Circuit instructs, to read the claim otherwise would indiscriminately
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`cover all types of controllers and that would be divorced from reality.
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`Consistent with the General Elec. mandate, the Board in Samsung also relied
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`on the specification to conclude that the term “hand-held device” in the preamble is
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`limiting. See IPR2015-01442 at 8-9. Notably, the Board found that the term
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`“hand-held device” appears in the “Summary of the Invention,” “Detailed
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`Description,” “Abstract” and the claims. Id. Similarly, the phrase “hand held
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`controller” appears prominently in these same sections of the ‘525 patent as well as
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`in the description of the drawings, as set forth above.
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`Thus, when the ‘525 patent is reviewed in its entirety, it is clear that the
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`IPR2017-00136 for U.S. Patent 8,641,525
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`focus of the invention is on addressing a particular prior art problem existing in
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`hand held video game controllers. The limitation “hand held controller for a game
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`console” recited in the preamble of claim 20 expressly tracks this focus, and thus
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`as set forth in General Elec. and Samsung, breathes life and meaning to the claim
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`and is therefore limiting.
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`4.
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`Petitioner Agrees That Preamble Is Limiting
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`Petitioner agrees that the preamble is limiting. During oral argument in co-
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`pending IPR2016-00948 proceeding in connection with the ‘525 Patent, Petitioner
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`agreed that the preamble is limiting:
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`Our argument isn't that the word, Hand-held, appears in the preamble,
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`but it's because it's in the preamble, it's not limiting. That is not our
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`argument. It's almost a tempest in a teapot. We're kind of scratching
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`our heads as to they're worried about that. We're fine with the
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`preamble being limiting.
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`(EX2031, 65:11-17)(emphasis added).
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`Thus, the outstanding issue here, as it was in the ‘948 IPR, is the
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`construction of “hand held” and “controller of a game console” in the preamble.
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`IPR2017-00136 for U.S. Patent 8,641,525
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`B. Meaning of “Hand Held Controller For a Game Console”
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`1.
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`Prior Decisions Construing “Hand-Held”
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`Prior PTAB and district court decisions construing “hand held” are
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`instructive on the meaning of the term “hand held.”
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` Lindsay Corp. v. Valmont Indus., Inc., IPR2015-01039, Paper 37 at 6-8
`(PTAB Sept. 14, 2016). The parties proposed similar construction for “hand
`held display” and handheld RUI” to mean a device that can be used or
`operated while being held in a user’s hand, but disagree as to whether the
`terms include a laptop computer. In view of the specification and the prior
`art problem that the patent-at-issue sought to address, the Board agreed with
`patent owner that the term “do not include a laptop computer.” Id.
`(emphasis in original).
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` Samsung Elecs. Co. Ltd. v. IXI IP, LLC, IPR2015-01442, Paper 8 at 7-10
`(PTAB Dec. 30, 2015). The Board construed “hand-held” in the preamble to
`mean “a device that is designed to be held and operated in a person’s
`hand.” Id. (emphasis added). The Board’s opinion that it is “designed to be
`held” further confirms that “hand held” is a structural limitation.
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` Chevron N. Am., Inc. v. Milwaukee Elec. Tool. Corp., IPR2015-00595,
`Paper 24 at 7 (PTAB July 31, 2015), IPR2015-00596, Paper 24 at 6-7
`(PTAB July 31, 2015), and IPR2015-00597, Paper 24 at 6-7 (PTAB July 31,
`2015). In all three IPR proceedings involving related patents, the Board
`construed “hand held power tool” in the preamble to mean “a power tool
`that can be held in and supported by the operator’s hand or hands.” Id.
`(emphasis added).
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` Responsive Innovs. LLC. v. Holtzbrink Publishers LLC, Case No.
`4:08CV1184, EX2026 at 7-9 (N.D.Ohio April 9, 2013). The court construed
`construes “a plurality of handheld devices” to mean “two or more devices
`that are usable or operable while held in the hand without the need for
`external support.” Id. (emphasis added). In doing so, the court explained
`that “Handheld devices are those that can be used when held only in the
`hand; in other words, usable or operable without the need for external
`support. To suggest otherwise, as Defendants do, indicates a desktop or
`similar device, not a handheld device.”
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`IPR2017-00136 for U.S. Patent 8,641,525
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` Asus Computer Int’l v. Exotablet Ltd., Case No. C 14-1743 PJH, EX2027 at
`5-6 (N.D.Cal. Aug. 12, 2014). The court construed “hand held” as
`“holdable and useable in one’s hand.” Id. (emphasis added).
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` McKesson Information Solutions Inc. v. Bridge Medical Inc., Case No. CIV
`S-02-2669 FCD KJM, EX2028 at A-2 (E.D. Cal. June 7, 2005). The court
`construed “portable handheld patient terminal” to mean “A microprocessor
`controlled portable patient terminal that is used or operated while held in
`the hand or hands.” Id. (emphasis added).
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` Aevoe Corp. v. AE Tech Co., Ltd., Case No. 2:12-cv-00053-GMN-RJJ,
`EX2029 at 6 (D. Nev. May 14, 2013). The parties agreed to a construction
`for “hand held electronic device” in the preamble to mean “an electronic
`device designed to be operated while being held in the hand.” Id.
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` Dataquill Ltd. v. Huawei Techs. Co. Ltd., Case No. 2:13-cv-633-JRG-RSP,
`EX2030 at 11 (E.D.Tex. Jan 27, 2015). The court construed “hand
`holdable” and “hand held” to mean “can be held by one hand in normal
`use.”
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`While there is some variance in the construction from one decision to
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`another, the common thread among them is that “hand held” means designed to be
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`held in and operated by a user’s hand or hands in normal use and without the need
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`for external support.
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`In an effort to resolve any ambiguity in its previously proposed construction,
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`Patent Owner submits that the term “hand held” should mean “designed to be held
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`in and operated by a user’s hand or hands in normal use and without the need for
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`external support.”
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`IPR2017-00136 for U.S. Patent 8,641,525
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`2.
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`Dr. Stevick’s Testimony In The 948 And 949 IPR
`Proceedings
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`During his deposition in the related 948 and 949 IPR proceedings, Dr.
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`Stevick explained the meaning of a hand held controller to a POSITA.
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`Specifically, Dr. Stevick emphasized that a hand held controller requires support
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`by the hands:
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`Q. Can the steering wheel of the Tosaki game controller be held by a
`user’s hands?
`THE WITNESS: That implied support. The support comes from the
`base and the thighs. So, it’s – it’s different than a handheld controller,
`which you actually are supporting it in that case.
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`(EX2024, 130:11-19 (objections omitted).)
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`Dr. Stevick further explained that the support by the hands must be during
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`normal operation:
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`Q. So, your opinions on Tosaki rely on your belief that a user can
`grasp it but not hold it?
`THE WITNESS: Certainly you can lift it up, but during normal
`operation, you’re not supporting it.
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`(Id., 131:3-10 (objections omitted).)
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`Moreover, Dr. Stevick explained that according to a POSITA, merely
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`touching or grasping does not mean the controller is h