UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION
`
`Petitioner,
`
`V.
`
`IRONBURG INVENTIONS LTD,
`
`Patent Owner.
`
`IPR2017-00136 (Patent 8,641,525 82)
`
`IPR2017—00137 (Patent 9,089,770 B2)
`
`DECLARATION OF BRUCE RUBINGER
`
`IRONBURG EX2034, Page 1
`
`IRONBURG EX2034, Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION
`
`Petitioner,
`
`V.
`
`IRONBURG INVENTIONS LTD,
`
`Patent Owner.
`
`IPR2017-00136 (Patent 8,641,525 82)
`
`IPR2017—00137 (Patent 9,089,770 B2)
`
`DECLARATION OF BRUCE RUBINGER
`
`IRONBURG EX2034, Page 1
`
`IRONBURG EX2034, Page 1
`
`
`
`1, Bruce Rubinger, declare and state as follows:
`
`lPR2017-00136 for US. Patent 8,641,525
`
`IPR2017—00137 for US. Patent 9,089,770
`
`1.
`
`I have been retained by Ironburg Inventions Ltd. (“Patent Owner”) to
`
`consider where a skilled searcher conducting a diligent prior art search (for U.S
`
`Patent 8,641,525 (“the 525 Patent”) and U.S Patent 9,089,770 (“the 770 Patent”))
`
`reasonably could have been expected to discover US. Patent No. 6,3 62,8 13 by
`
`worn.
`
`2.
`
`l have personal knowledge of the facts and opinions stated in this
`
`Declaration, and am competent to testify thereto.
`
`3.
`
`I am the Managing Director and founder of Global Prior Art (GPA), founded
`
`in 1982, and created GPA's comprehensive worldwide search process, which is
`
`known for its broad international coverage and manual review of critical sources.
`
`GPA is composed of over 40 full-time searchers in the fields of mechanical
`
`engineering, software and e-commerce, electronics and semiconductors,
`
`telecommunications and networking, biotechnology, chemistry and materials,
`
`medical devices and pharmaceuticals. Our range of services covers a broad
`
`spectrum from prior art searching in support of litigation and IP due diligence to IP
`
`Landscape analysis for competitive intelligence and developing market entrance
`
`strategies. We also specialize in developing cost effective and comprehensive
`
`IRONBURG EX2034, Page 2
`
`IRONBURG EX2034, Page 2
`
`
`
`IPR2017—00136 for U.S. Patent 8,641,525
`
`IPR2017-00137 for U.S. Patent 9,089,770
`
`product clearance or Freedom-to-Operate searches to ensure that our clients are
`
`proactively aware of all potential infringement threats.
`
`4.
`
`My background is a blend of technology and the science of decision-making.
`
`I hold a B.S.E.E., M.S.E.E., and PhD. in systems science from the Polytechnic
`
`Institute of Brooklyn. My dissertation was entitled “System Identification via Non-
`
`Linear Filtering,” which addressed non-linear filtering and its application to
`
`prediction and estimation. I began my career with Hughes Aircraft where I was
`
`involved in digital signal processing. I was awarded a NASA fellowship and am a
`
`member of Eta Kappa Nu and the honorary research society Sigma Xi. Since 2009,
`
`I have been recognized in IAM 300 — The World’s Leading IP Strategists.
`
`5.
`
`I am being compensated at my standard rate of $150/hour. My
`
`compensation is not contingent upon the substance of my declaration, any
`
`statements or opinions made, or the outcome of this matter.
`
`6.
`
`I have reviewed the references and classifications identified in the ‘525 and
`
`the ‘770 patent. In my opinion, a skilled searcher would have reasonably relied
`
`upon the classes and sub—classes of the prior art that the examiner cited during the
`
`examination. This is true because the examiners are experts in their assigned
`
`technical areas and experts in identifying relevant prior art. Based on my review of
`
`IRONBURG EX2034, Page 3
`
`IRONBURG EX2034, Page 3
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`
`
`IPR2017-00136 for US. Patent 8,641,525
`
`IPR2017—00137 for US. Patent 9,089,770
`
`the ‘525 patent, the examiner identified references in the following classes and
`
`sub—classes summarized in the table below:
`
`USP Class
`
`# References Cited Most Cited Sub-Class
`
`
`
`Other Sub-Classes
`
`
`
`(# instances)
`
`463
`40
`37 (22)
`31, 36, 38, 39, 49,56
`
`
`345
`6
`
`
`169(3)
`
`156,157
`
`
`
`20, 22
`
`127, 152
`
`
`
`
`
`341
`
`702
`
`2
`
`2
`
`400
`273
`
`1
`l_ 1
`
`472
`148
`
`N/A
`N/A
`
`‘
`l
`
`7.
`
`As can be seen, there only are six different classes that appear in the list,
`
`with the two primary classes/sub—classes being 463/37 and class 345/169. A skilled
`
`searcher conducting a reasonable prior art search would have, at a minimum,
`
`searched within these classes/sub—classes and identified the Wtirn reference within
`
`the second primary class/sub—class (345/169).
`
`8.
`
`worn is in one ofthe primary classes/sub-classes (345/169). Given that the
`
`examiner cited numerous references in the 345/ 169 class/sub-class, a skilled
`
`searcher would have conducted a search in this particular class/sub—class by hand
`
`and with keyword searches.
`
`IRONBURG EX2034, Page 4
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`IRONBURG EX2034, Page 4
`
`
`
`lPR2017—00136 for US. Patent 8,641,525
`
`1PR2017—00137 for US. Patent 9,089,770
`
`9.
`
`I have reviewed the declaration of Reynaldo C. Barcello (Ex.1012) and the
`
`accompanying appendices.
`
`10.
`
`The class/sub-class 345/169 contains roughly 2,700 patent documents
`
`disclosed before the prior art date ofthe ‘525 patent (June 17, 2011). In my
`
`opinion, a skilled searcher would have searched this class/sub-class by hand and by
`
`using keyword combinations similar to those found in Appendices A and B of the
`
`Barcello declaration (EX. 1012). For example, the following string, when
`
`performed using Derwent Innovation, a database typically used by me and other
`
`skilled searchers, produces only 49 results and includes the worn reference:
`
`“(re1note* OR controlle1'*) AND (middle finger) AND ((button* OR push* OR
`
`depres* OR switch*) SAME (back* OR under* OR behind OR rear* OR
`
`posterior*)).” These search terms are used, for example, in Landon IP’s search
`
`strings 21 and 54.
`
`1 1.
`
`Based on my review of the patent, and my statements above, it is my opinion
`
`that a skilled searcher would have identified the classes/sub—classes of the prior art
`
`cited by the examiner and would have reasonably been expected to discover US.
`
`Patent No. 6,362,813 by worn either by hand or by using keyword search strings.
`
`12.
`
`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
`
`IRONBURG EX2034, Page 5
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`IRONBURG EX2034, Page 5
`
`
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`1PR2017-00136 for US. Patent 8,641,525
`
`1PR2017-00137 for US. Patent 9,089,770
`
`made on information and belief are believed to be true; and 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 both, under Section 1001
`
`of Title 18 ofthe United States Code.
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`13.
`
`In signing this declaration, I recognize that the declaration will be filed as
`
`evidence in a contested case before the Patent Trial and Appeal Board of the
`
`United States Patent and Trademark Office.
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`Executed this 13th day of October, 2017, at Boston, MA.
`
`
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`IRONBURG EX2034, Page 6
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`IRONBURG EX2034, Page 6
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`
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