`
`
`
`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 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`___________________
`
`
`PATENT OWNER MOTION TO TERMINATE
`
`
`
`
`
`
`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.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`PETITIONER IS ESTOPPED FROM MAINTAINING THE 136 IPR
`AND THE 137 IPR PROCEEDINGS ............................................................ 2
`
`A.
`
`B.
`
`The Instant 136 and 137 IPRs Involve Identical Parties, Patents
`And Claims To Those Subject To The Final Written Decisions ......... 3
`
`Petitioner Could Reasonably Have Raised The Grounds Relied
`on in the Instant IPRs ........................................................................... 3
`
`1.
`
`2.
`
`3.
`
`A Skilled Searcher Conducting A Diligent Search
`Reasonably Could Have Been Expected to Discover
`Wörn Because It Is A US Patent Readily Available At
`The USPTO ................................................................................ 4
`
`Valve’s Discovery Of Wörn Also Confirms That A
`Skilled Searcher Conducting A Diligent Search
`Reasonably Could Have Been Expected to Discover
`Wörn ........................................................................................... 4
`
`A Skilled Searcher Conducting Typical Searches Would
`Have Discovered Wörn .............................................................. 5
`
`C.
`
`There Is No Legitimate Reason Why Petitioner Could Not
`Reasonably Have Raised Wörn In Its Earlier Petitions ....................... 6
`
`III. THE BOARD SHOULD TERMINATE THE PROCEEDINGS .................. 7
`
`IV. CONCLUSION ............................................................................................... 9
`
`
`
`
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`-i-
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`
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`
`
`CASES
`
`Dell Inc. v. Elecs. and Telecomms. Research Inst.,
`IPR2015-00549, Paper 10 (P.T.A.B. Mar. 26, 2015) ........................................... 2
`
`IBM Corp. v. Intellectual Ventures II LLC,
`IPR2014-01465, Paper 32 (P.T.A.B. Nov. 6, 2015) ................................. 3, 5, 7, 8
`
`Praxair Distribution, Inc. v. Ino Therapeutics LLC,
`IPR2016-00781, Paper 10 (P.T.A.B. Aug. 25, 2016) ....................................... 2, 4
`
`Valve Corp. v. Ironburg Inventions Ltd.,
`IPR2016-00948, Paper 44 (P.T.A.B. Sept. 22, 2017).......................................... 1
`
`Valve Corp. v. Ironburg Inventions Ltd.,
`IPR2016-00949, Paper 45 (P.T.A.B. Sept. 22, 2017)........................................... 1
`
`
`
`STATUTES
`
`35 U.S.C. § 315(d) ..................................................................................................... 8
`
`35 U.S.C. § 315(e)(1) ................................................................................. 1, 2, 3, 5, 7
`
`35 U.S.C. § 316(b) ..................................................................................................... 8
`
`35 U.S.C. § 318(a) ................................................................................................. 2, 3
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.1(b) .................................................................................................... 8
`
`37 C.F.R. § 42.72 ....................................................................................................... 7
`
`37 C.F.R. § 42.73(d) .............................................................................................. 1, 2
`
`
`
`
`
`
`
`-ii-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
`
`I.
`
`
`
`INTRODUCTION
`
`Pursuant to the Board’s Order dated October 5, 2017 (Paper 24), Patent
`
`Owner Ironburg Inventions Ltd. hereby respectfully requests the Board to
`
`terminate the instant proceedings, IPR2017-00136 (“the 136 IPR”) and IPR2017-
`
`00137 (“the 137 IPR”), as Petitioner Valve Corporation is now estopped from
`
`maintaining these proceedings under 35 U.S.C. § 315(e)(1) and 37 C.F.R. §
`
`42.73(d). Estoppel attached to Petitioner as a matter of law on September 22,
`
`2017, when the Board issued final written decisions in co-pending proceedings
`
`before the Board involving the same parties and the same claims of the same
`
`patents at issue in the 136 and 137 IPRs. Those proceedings are Valve Corp. v.
`
`Ironburg Inventions Ltd., IPR2016-00948 (Paper 44, “the 948 IPR”) and IPR2016-
`
`00949 (Paper 45, “the 949 IPR”).
`
`
`
`As set forth in more detail below, estoppel applies as a matter of law as
`
`Petitioner reasonably could have raised the grounds in the instant 136 and 137
`
`IPRs (i.e., invalidity in view of U.S. Patent No. 6,362,813 by Wörn) in the earlier
`
`948 and 949 IPR proceedings. Now that the 948 and 949 proceedings have
`
`resulted in final written decisions, the 136 IPR and the 137 IPR proceedings cannot
`
`be maintained and termination is mandated by statute. An order terminating these
`
`proceedings is therefore respectfully requested.
`
`
`
`
`
`-1-
`
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`
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
`
`II.
`
`PETITIONER IS ESTOPPED FROM MAINTAINING THE 136 IPR
`AND THE 137 IPR PROCEEDINGS
`
`
`
`As emphasized in Praxair Distribution, Inc. v. Ino Therapeutics LLC,
`
`IPR2016-00781, Paper 10 at 7-10 (P.T.A.B. Aug. 25, 2016), “[o]nce a Petitioner
`
`has obtained a final written decision, that Petitioner may not request or maintain
`
`subsequent proceedings on a ground that it ‘reasonably could have raised’ during
`
`the prior proceeding.” Id. (citing Dell Inc. v. Elecs. and Telecomms. Research
`
`Inst., IPR2015-00549, Paper 10 at 4–6 (P.T.A.B. Mar. 26, 2015)).
`
`
`
`Specifically, section 315(e)(1) of the Patent Statute provides:
`
`(e) Estoppel. — (1) Proceedings before the office.—The petitioner in
`
`an inter partes review of a claim in a patent under this chapter that
`
`results in a final written decision under section 318(a), or the real
`
`party in interest or privy of the petitioner, may not request or maintain
`
`a proceeding before the Office with respect to that claim on any
`
`ground that the petitioner raised or reasonably could have raised
`
`during that inter partes review.
`
`35 U.S.C. § 315(e)(1); see 37 C.F.R. § 42.73(d). Here, as explained below, the
`
`instant IPRs involve identical parties, patents and claims to those subject to the
`
`final written decisions, and petitioner reasonably could have raised the Wörn
`
`reference in the earlier IPRs. Thus, Petitioner is statutorily estopped from
`
`maintaining the instant proceedings under § 315(e).
`
`
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`-2-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
`
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`
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`A. The Instant 136 and 137 IPRs Involve Identical Parties, Patents
`And Claims To Those Subject To The Final Written Decisions
`
`As in the instant 136 and 137 IPRs, Petitioner challenged claim 20 of the
`
`‘525 patent and claims 1-4, 12, 15-18 and 20 of the ‘770 Patent, in the earlier 948
`
`(948 IPR, Paper 44 at 50) and 949 IPRs (949 IPR, Paper 45 at 55), respectively.
`
`On September 22, 2017, the earlier 948 and 949 proceedings resulted in a final
`
`written decisions pursuant to 35 U.S.C. § 318(a).
`
`B.
`
`Petitioner Could Reasonably Have Raised The Grounds Relied on
`in the Instant IPRs.
`
`
`
`Per § 315(e)(1), Petitioner is precluded from maintaining, in the instant 136
`
`and 137 IPRs, “any ground that [Petitioner] . . . reasonably could have raised” in
`
`the earlier proceedings. 35 U.S.C. § 315(e)(1). “The legislative history of the
`
`America Invents Act (‘AIA’) broadly describes what ‘could have been raised’ to
`
`include ‘prior art which a skilled searcher conducting a diligent search
`
`reasonably could have been expected to discover.’” IBM Corp. v. Intellectual
`
`Ventures II LLC, IPR2014-01465, Paper 32 at 5 (P.T.A.B. Nov. 6, 2015) (quoting
`
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)) (emphasis
`
`added). Here, Petitioner could reasonably have raised the Wörn reference in the
`
`earlier IPRs because, as explained below, a skilled searcher conducting a diligent
`
`search reasonably could have been expected to discover the Wörn reference.
`
`
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`
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`-3-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
`
`
`
`
`1.
`
`A Skilled Searcher Conducting A Diligent Search
`Reasonably Could Have Been Expected to Discover Wörn
`Because It Is A US Patent Readily Available At The USPTO
`
`Because Wörn is a U.S. Patent, it is and has been readily accessible at the
`
`USPTO and online. Given that U.S. patents are the main, most accessible and most
`
`desirable form of prior art, a skilled searcher conducting a diligent search
`
`reasonably could have been expected to discover Wörn. Indeed, absent
`
`extenuating circumstances not present here (including database failures, etc.), it is
`
`hard to envision any scenario where a skilled searcher conducting a diligent search
`
`reasonably could not have been expected to discover a pertinent U.S. Patent like
`
`Wörn. See, generally, Praxair, IPR2016-00781, Paper 10 at 10 (concluding that a
`
`skilled searcher conducting a diligent search would have been expected to discover
`
`even textbooks that are catalogued in libraries or searchable on Google Books
`
`using keywords).
`
`2.
`
`Valve’s Discovery Of Wörn Also Confirms That A Skilled
`Searcher Conducting A Diligent Search Reasonably Could
`Have Been Expected to Discover Wörn
`
`
`
`Although Petitioner may argue that only a “scorched earth” search would
`
`uncover all pertinent patents, and that a diligent search would not necessarily
`
`uncover all pertinent US patents, it cannot be said that a diligent search would not
`
`have uncovered Wörn. The opposite is true. Petitioner admits that Wörn was
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`actually discovered by skilled searchers during keyword searches designed to
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`
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`-4-
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`
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`uncover art for Petitioner to use against Patent Owner’s related patents. The fact
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
`that it was actually discovered by Petitioner’s searchers proves that a skilled
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`searcher conducting a diligent search could have been expected to discover it.
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`
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`The mere fact that the Petitioner discovered the reference later is immaterial
`
`and does not negate the estoppel effect under § 315(e). See IBM, IPR2014-01465,
`
`Paper 32 at 6 (concluding that petitioner is estopped from maintaining the IPR
`
`proceeding). As the Honorable Judge Petravick explained, “the legislative history
`
`does not limit ‘what reasonably could have been raised’ to art which Petitioner,
`
`itself, was aware, but describes what reasonably could have been raised as more
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`broadly including ‘prior art which a skilled searcher conducting a diligent search
`
`reasonably could have been expected to discover.” Id. Thus, it is immaterial that
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`Petitioner was unaware of the Wörn reference at the time of filing the 948 IPR and
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`the 949 IPR petitions; rather, what matters is whether a skilled searcher could have
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`been expected to discover the reference. In this instance, Petitioner’s discovery of
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`the reference compels the inescapable conclusion that a skilled searcher could have
`
`been expected to discover the reference.
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`3.
`
`A Skilled Searcher Conducting Typical Searches Would
`Have Discovered Wörn
`
`
`
`As explained in the supporting declaration of search expert Bruce Rubinger,
`
`a skilled searcher would have performed searches in the particular classes and
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`
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`-5-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
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`subclasses pertaining to the prior art references cited by the USPTO patent
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`examiner, and thus, would have discovered Wörn. (EX2034, ¶6.) This is true
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`because USPTO examiners are experts in their assigned technology areas and
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`experts in identifying relevant prior art. (Id.) Notably, the cited references by the
`
`Examiner fall into two primary classes/subclasses – 463/37 and 345/169. (Id., ¶ 7.)
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`The Wörn reference is in primary class/subclass (345/169), which contains in the
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`entire classification about 2700 patents granted before the priority date of June 17,
`
`2011. (Id., ¶¶ 8 & 10.) By searching within the 345/169 classification manually or
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`by using search terms “controller,” “switch,” etc., all of which appear prominently
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`in the ‘525 and the ’770 patents, for example, a searcher would have readily
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`identified Wörn among only 49 patents. (Id., ¶ 10). Thus, as Dr. Rubinger
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`concluded, a skilled searcher conducting a diligent search reasonably could have
`
`been expected to discover Wörn (as Petitioner did). (Id., ¶ 11).
`
`C. There Is No Legitimate Reason Why Petitioner Could Not
`Reasonably Have Raised Wörn In Its Earlier Petitions
`
`
`
`There is simply no colorable argument that Petitioner reasonably could not
`
`have raised the Wörn reference in its earlier petitions. Petitioner’s argument that it
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`discovered Wörn while searching for the term “groove” is immaterial. Further,
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`“groove” doesn’t even appear in the ‘525 and ‘770 patents, while scores of other
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`-6-
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`terms appear in the patents and Wörn (e.g., back, front, controller, finger, thumb,
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
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`etc.).
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`
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`Meanwhile, Petitioner’s previous attempt (in support of joinder) to shift the
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`blame on Patent Owner for its failure to discover the Wörn reference in its initial
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`patent search is legally irrelevant here. First, the Board already rejected
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`Petitioner’s argument that Patent Owner is responsible for the “belated discovery
`
`of Wörn” and concluded that “Petitioner inappropriately seeks to attribute the
`
`reason for delay to Patent Owner.” (136 IPR, Paper 12 at 16; 137 IPR, Paper 19).
`
`Second, as the Board explained in IBM, the issue is not whether Petitioner knew
`
`about a reference, but whether Petitioner reasonably could have discovered the
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`reference and raised the newly asserted grounds at the time of the earlier petition.
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`IPR2014-01465, Paper 32 at 6. The evidence presented above overwhelmingly
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`confirms that Petitioner “could reasonably have raised” the Wörn reference in its
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`earlier petitions for the 948 IPR and the 949 IPR.
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`III. THE BOARD SHOULD TERMINATE THE PROCEEDINGS
`
`
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`As an estopped petitioner, Petitioner Valve Corporation may not “maintain
`
`[this] proceeding.” 35 U.S.C. § 315(e)(1). At a minimum, this means that
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`Petitioner cannot participate further in the 136 IPR and the 137 IPR, including
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`submitting any demonstratives, objecting to Patent Owner’s demonstratives,
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`opposing Patent Owner’s Motion to Exclude, and arguing at the oral hearing.
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`-7-
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`The text of the estoppel statute and precedent further counsels the Board to
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`
`terminate the 136 and 137 IPR proceedings. Such a result comports with
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`Congress’ intent to limit serial attacks on patents, properly manages the Board’s
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`limited resources, and is consistent with equity. See IBM, IPR2014-01465, Paper
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`32 at 5 (quoting 157 Cong. Rec. S1375 (statement of Sen. Kyl) (“This [estoppel]
`
`effectively bars such a party . . . from later using inter partes review . . . against the
`
`same patent, since the only issues that can be raised in an inter partes review . . .
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`are those that could have been raised in [an] earlier post-grant or inter partes
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`review.”); see id. at S951 (statement of Sen. Grassley) (“It also would include a
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`strengthened estoppel standard to prevent petitioners from raising in a subsequent
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`challenge the same patent issues that were raised or reasonably could have been
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`raised in a prior challenge.”))
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`
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`The Board undoubtedly has the authority to terminate these proceedings. See
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`35 U.S.C. § 315(d) (providing for “termination of any such matter or proceeding”).
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`The Board rules provide that “[t]he Board may terminate a trial without rendering a
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`final written decision, where appropriate. . . .” 37 C.F.R. § 42.72. Further, the
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`rules are construed to “secure the just, speedy, and inexpensive resolution of every
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`proceeding.” 37 C.F.R. § 42.1(b); see 35 U.S.C. § 316(b).
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`
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`As the Board explained in IBM, “the best means of securing the just, speedy,
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`and inexpensive resolution of this proceeding is to terminate this proceeding.”
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`-8-
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`IPR2014-01465, Paper 32 at 9. Like IBM, oral hearing has not yet been held and a
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
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`decision on the merits has not yet been reached. Id. at 10. Thus, consistent with
`
`precedent, the Board should likewise terminate the 136 and 137 IPR proceedings.
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`IV. CONCLUSION
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`For the reasons set forth above, Patent Owner respectfully request that the
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`Board terminate the 136 and 137 IPR proceedings.
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`Date: October 13, 2017
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
`Ehab Samuel, Reg. No. 57,905
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
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`The undersigned hereby certifies that the foregoing PATENT OWNER MOTION
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`TO TERMINATE and the accompanying Exhibits were served in their entirety
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`electronically via PTAB E2E to Petitioner’s counsel of record at the following
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`address:
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
`Ehab Samuel, Reg. No. 57,905
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
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`Attorneys for Patent Owner
`IRONBURG INVENTIONS LTD.
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`Date: October 13, 2017
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