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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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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
`
`and
`
`Case IPR2017-00137
`Patent 9,089,770
`____________
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`EXPERT DECLARATION OF DAVID REMPEL, M.D., IN SUPPORT OF
`PETITIONER’S REPLIES TO THE PATENT OWNER RESPONSES
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I, David Rempel, M.D., hereby declare as follows:
`
`
`EXHIBIT LABEL:
`Valve Corporation’s Exhibit No. 1013
`Valve Corporation (Petitioner) vs.
`Ironburg Inventions Ltd (Patent Owner)
`IPR2017-00136 of U.S. Patent 9,352,229
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`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
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`1.
`I have been retained by Valve Corporation to provide my opinions as
`an expert witness regarding certain questions regarding the Patent Owner Reponses
`filed in the subject IPR proceedings.
`2.
`In forming the opinions stated in this declaration, I reviewed the expert
`declarations by Dr. Glen Stevick and the Patent Owner Reponses filed in cases
`IPR2017-00136 and IPR2017-00137, U.S. Patent 8,641,525 (hereinafter the “’525
`patent”), U.S. Patent 9,089,770 (hereinafter the “’770 patent”), U.S. Patent
`6,362,813 to Wörn et al. (hereinafter “Wörn”), U.S. Patent 6,153,843 to Date, et al.
`(hereinafter “Date”), U.S. Patent 6,364,771 to Lee (hereinafter “Lee”), U.S. Patent
`Application Publication 2010/0073283 to Enright (hereinafter “Enright”), and U.S.
`Patent 4,032,728 to Oelsch (hereinafter “Oelsch”).
`3.
`Information about my education, experience, publications, and awards
`are provided in my previous declarations filed as Exhibits 1009 and 1011 in the
`subject IPR proceedings, and in my CV filed as Exhibit 1010 in the subject IPR
`proceedings.
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`OPINIONS
`4.
`The specification and claims of the ’525 patent, and of the ’770 patent,
`are focused on the superficial ergonomic characteristics of a disclosed controller,
`which affect finger and thumb positioning relative to buttons and levers. Such
`ergonomic characteristics are potentially applicable to all controllers that are shaped
`to be held in the hand of a user, not just controllers that are used to control video
`games. For example, such ergonomic characteristics are potentially applicable to
`hand-held controllers that are used to control a robot, like the controller disclosed by
`Wörn, or any of the video game controllers that have been commonly repurposed by
`hobbyists to control so-called “battle bot” hobby robots since before 2011, etc.
`5.
`None of the structural limitations in the body of claim 20 of the ’525
`patent, or in the body of claim 1 of the ’770 patent, is exclusive to only controllers
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`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
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`that are used to control video games, but rather each also provides utility to
`controllers that are used outside of the statement of intended use in the preamble.
`Accordingly, one of ordinary skill in the art would consider the statements of
`intended use in the preambles of those claims to be exemplary rather than exclusive
`and limiting.
`6.
`In 2011, hand-held controllers, such as those described and claimed in
`the ’525 patent and in the ’770 patent, provided inputs to a downstream
`microprocessor, so that it would make no substantial difference to the hand-held
`controller whether the downstream microprocessor interpreted such controller inputs
`to operate a game (making that microprocessor a “game console”), or instead
`interpreted the controller inputs for a non-gaming purpose such as operating a real
`robot.
`7.
`It was well known in 2011 that programming a downstream
`microprocessor could flexibly enable the same hand-held controller to operate many
`different games, and even to control systems that are not games. For example, it was
`common in 2011 for programmers to leverage the same inputs from the same hand-
`held controller for both a primary purpose (e.g. to control a video game), and also
`for secondary and alternative purposes such as allowing a user to navigate menus for
`selecting system settings.
`8.
`From an ergonomic viewpoint, and considering the placement and
`length of buttons and levers relative to fingers and thumbs – which is the focus of
`both the ’525 patent the ’770 patent – it makes no difference whether the hand-held
`controller ultimately controls a downstream microprocessor that operates a real
`robot or a virtual robot in a game.
`9.
`One of ordinary skill in the art in 2011 would know that the hand-held
`robot controller disclosed by Wörn would necessarily have an analog or digital
`electronic output, and such output would inherently have utility to also control a
`simulated robot as part of a video game running on a game console. Hence, one of
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`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
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`ordinary skill in the art would understand that the hand-held controller disclosed by
`Wörn inherently has utility as a video game controller and provides an output that is
`capable of use for a game console.
`10.
`It was well known in 2011 that a personal computer could be
`conventionally programmed to function as a game console to run a video game.
`11. One of ordinary skill in the art would consider the rounded corners of
`the Wörn controller to be convex portions of the bottom edge of that controller, as
`those terms are used in claim 3 of the ’770 patent. For example, each is convex
`because it is not straight or concave, is part of the bottom edge, and helps to define
`an outer portion of the Wörn controller that is held by the user (i.e., a handle). One
`of ordinary skill in the art would consider the outermost portions of the Wörn
`controller, including the grip strips and the outer edges of the housing, to serve as
`and be handles. See, for example, Worn at 4:63-5:3, and at 2:48-54.
`12. One of ordinary skill in the art in 2011 would consider it obvious,
`without reference to the ’525 or ’770 patents, to choose to use a conventional screw
`fastener to mount a control (e.g. an elongate member as disclosed by Burgess) to the
`back of a hand-held controller. The results of using a conventional screw for
`mounting in this way would be predictable to anyone of ordinary skill in the
`mechanical arts, including in the hand-held controller art.
`13. Wörn is expressly concerned with ergonomic characteristics of a hand-
`held controller, hand fatigue, and allowing the switching keys 21 to be operated
`without moving the thumbs. See, Worn at 2:48-3:13. Hence, one of ordinary skill in
`the art would look to references and devices like and including that disclosed by
`Wörn, when solving ergonomic problems with hand-held controllers – whether for
`the control of robots or for the control of video games – including the ergonomic
`problems addressed by the ’525 patent and ’770 patent.
`14. One of ordinary skill in the art, would understand the phrase “hand-
`held” in the context of the ’525 and ‘770 patents, according to its ordinary meaning
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`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
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`as used commonly in the English language. One of ordinary skill in the art would
`not assign a special narrow meaning to the phrase that differs from its ordinary
`broad meaning. I disagree with Dr. Stevick’s opinion that the phrase should be
`construed to mean: “designed to be held in and operated by a user’s hand or hands in
`normal use and without the need for external support.” On the contrary, one of
`ordinary skill would not assume that the phrase excludes hand-held controllers that
`use or rely upon some “external support,” nor is there necessarily any “normal use”
`requirement to the phrase “hand-held.”
`15.
`I carefully considered the arguments, support, and associated
`annotations to Fig. 3 of the ’525 patent shown in paragraphs 57-60 on pages 15-16
`of the Declaration of Dr. Glen Stevick in Support of the Patent Owner Preliminary
`Response (Ironburg’s Exhibit 2002) in IPR2017-00136, and I disagree with its
`conclusion for the reasons stated in ¶¶ 15-16 herein. The only type of convergence
`that is actually shown in any figure of the ’525 patent is convergence towards the
`top edge of the controller (i.e., towards the top edge of the page).
`16. The lack of antecedent basis for “the front end” in claim 13 of the ’525
`patent, suggests that the phrase “the front end” in claim 13 was a typographical
`error. Convergence of the elongate members 11 towards the “front” (into the page)
`cannot possibly be shown from the viewing angle that the patentee chose for Figs. 2
`and 3 of the ’525 patent, and indeed is not shown anywhere in the ’525 patent
`drawings. Hence, it is unlikely that the phrase “the front end” in claim 13 of the
`’525 patent was actually meant to refer to the front of the controller.
`17. The convergence of the elongate members 11 that is actually shown in
`Figs. 2 and 3 of the ’525 patent, and the associated description at 3:51-56, suggests
`to one of ordinary skill in the art that the meaning of “the top edge” was intended by
`the claim phrase “the front end” in claim 13.
`18. One of ordinary skill in the art would understand that, in the context of
`the ’525 patent, an inherently resilient and flexible elongate member need not be
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`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
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`monolithic but rather may be an assembly of subcomponents. One of ordinary skill
`in the art would also understand that such a flexible non-monolithic elongate
`member may include a non-flexible portion (e.g. a button) and a flexible portion
`(e.g. a spring), as was common in the art before June 2011 and since.
`19.
`In June 2011, it was already notoriously old and well known common
`knowledge in the art to make a control button resilient and flexible, for example to
`enable users to repeatedly displace controller buttons whenever desired, and for
`them to return to an unbiased position upon the removal of the displacing load. A
`teaching of elastic deformation implies resiliency and flexibility, because for a
`deformation to be considered “elastic,” it must return to an undeformed position
`when no longer under load. For example, one of ordinary skill in the art would
`understand that the switching keys 21 of Wörn and the mode switches 32, 34 of
`Enright necessarily include an elastic subcomponent such as a spring, that is
`inherently resilient and flexible.
`20. Paragraph [0035] of Enright explains that “the user may quickly
`depress the mode switch 32, 34 […] and then return to normal by releasing the mode
`switch when desired.” One of ordinary skill in the art would interpret the foregoing
`disclosure of Enright to teach resiliency of the mode switches 32, 34, because they
`return to an unbiased position when not under load.
`21. Paragraph [0035] of Enright would also suggest to a person of ordinary
`skill in June 2011 that the mode switches 32, 34 are or include some flexible
`element such as a spring, to provide the ubiquitous function that is described therein
`(i.e., depressing to a biased position, and releasing to return). For example, a
`person of ordinary skill in the art would have recognized that such functionality
`could be obtained by simply making the elongate member flexible. A person of
`ordinary skill in the art in June 2011 would have been aware of various well-known
`and conventional ways to fabricate the mode switches 32, 34 to be or include a
`flexible element – such as fabricating them from any flexible material.
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`EXPERT DECLARATION OF DAVID REMPEL M.D., REGARDING THE PATENT OWNER RESPONSES
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`22. A person of ordinary skill in the hand-held controller art would readily
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`: understand that Oelsch’s teaching to make an integral switch (3.3., by forming an
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`: elongate “tongue 10" integrally in the planar sheet of the center zone 7 of a switch
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`i element 6, see, eng. Oelsch at Fig. 2), would simplify the manufacture of Wom‘s
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`- switching keys 21.
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`It was common knowledge in June 201 1 that making a part
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`integral with another (e.g., making the elongate switch on the back of a controller,
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`integral with that back) can reduce the total number of parts in the device and
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`olomqomemmw
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`thereby simplify the manufacture.
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`N
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`23.
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`In view of Oelsch’s teaching to make an integral switch (e.g., by
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`forming an elongate “tongue 10” integrally in the planar sheet of the center zone 7
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`. of a switch element 6), it would have been obvious to a person of ordinary skill in
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`the art in June 2011 to make the switching keys 21 — which Worn already discloses
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`to be located on the back of an outer case of a video game controller —integral with
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`14 |
`1 that back, even if such person had never seen the teachings of the ‘525 patent.
`15 I
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`VERIFICATION
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`24. My compensation for work on this declaration is not contingent on any
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`25.
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`Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that
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`the foregoing is true and correct.
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`Executed on: August 22, 2017 Mr:
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`MD
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`David Rempel, M .D.
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`EXPERT DECLARATION OF DAVID REMPEL M.D.. REGARDING T] [E PATENT OWNER RESPONSES
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