BARCELÓ, HARRISON & WALKER, LLP
`Joshua C. Harrison, USPTO Reg.# 45,686
`Reynaldo C. Barceló, USPTO Reg.# 42,290
`E-mail: josh@bhiplaw.com
`2901 West Coast Hwy, Suite 200
`Newport Beach, California 92663
`Telephone: (949) 340-9736
`Facsimile:
` (949) 258-5752
`
`Attorneys for Petitioner, Valve Corporation
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`EXPERT DECLARATION OF
`DAVID REMPEL, M.D., IN
`SUPPORT OF VALVE
`CORPORATION’S SECOND
`PETITION FOR INTER-PARTES
`REVIEW OF U.S. PATENT
`8,641,525.
`IPR Petition Filing Date: 2016-10-25
`
`Trial Number: To Be Assigned
`
`Panel: To Be Assigned
`
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`
`
` Patent filing date: 2011-06-17
`
`Patent issue date: 2014-02-04
`
`Title: CONTROLLER FOR VIDEO
` GAME CONSOLE
`
`Purported Inventors: Simon Burgess
` Duncan Ironmonger
`
`Purported assignee:
`IRONBURG INVENTIONS LTD.
`a United Kingdom Limited Company
`
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`
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`I, David Rempel, M.D., hereby declare as follows:
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`EXPERT DECLARATION IN SUPPORT OF SECOND PETITION FOR INTER PARTES REVIEW OF U.S. 8,641,525
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`PETITIONER VALVE CORPORATION, EX. 1009 p. 001
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`1.
`I have been retained by Valve Corporation to provide my opinions as
`an expert witness regarding certain questions regarding U.S. Patent 8,641,525
`(hereinafter the “ ‘525 patent”), U.S. Patent 6,362,813 to Wörn et al. (hereinafter
`“Wörn”), U.S. Patent Application Publication 2010/0073283 to Enright (hereinafter
`“Enright”), U.S. Patent 6,153,843 to Date et al. (hereinafter “Date”), U.S. Patent
`6,364,771 to Lee (hereinafter “Lee”), and U.S. Patent 4,032,728 to Oelsch
`(hereinafter “Oelsch”).
`
`EDUCATION AND EXPERIENCE
`2.
`I am a Professor in the Department of Bioengineering at the University
`of California, Berkeley. I am also a Professor of Medicine Emeritus in the
`Department of Medicine at the University of California, San Francisco, where I have
`worked for more than 26 years. I have held a California Medical License since
`1982.
`3.
`In my current capacity, I am affiliated with the Ergonomics Program, in
`the Division of Occupational and Environmental Medicine.
`4.
`I am a Fellow of the Human Factors and Ergonomics Society, and a
`Certified Professional Ergonomist by Board of Certification in Professional
`Ergonomics (1994).
`5.
`I am a named inventor on U.S. Patent 6,509,891, entitled “Ergonomic
`Mouse Device,” filed on 22 February, 2000.
`6.
`In 2006 I was awarded the IEA/Liberty Mutual Prize in Occupational
`Safety and Ergonomics.
`7.
`In 2007, I was awarded the HFES/User-Centered Product Design
`Award.
`8.
`I am a member of the Editorial Board of the IIE Transactions on
`Occupational Ergonomics and Human Factors, and recently was a member of the
`Editorial Boards of the Human Factors journal and the Applied Ergonomics journal.
`
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`I have also served as a reviewer of professional authorship submitted to the
`International Journal of Industrial Ergonomics, and the Journal of Hand Surgery
`(Am).
`9.
`I am an author or co-author of more than 150 peer-reviewed
`publications in my field, 18 books, chapters, or guidelines, and numerous
`government reports and conference presentations. Many of these were pertenent to
`the ergonomic evaluation and design of hand held devices.
`10. Additional information on my education, experience, publications, and
`awards are found in my CV, attached as Exhibit 1 to this Declaration.
`
`OPINIONS
`11.
`In my opinion, the level of ordinary skill in the art pertaining to the
`‘525 patent is that of a designer of commercial video game controllers. No
`collegiate education was required to fully understand the particular subject matter of
`the ‘525 patent at the time of its filing, or today. However, one of ordinary skill in
`the video game controller design art when the ‘525 patent was filed would have
`typically had a bachelor’s degree in an industrial design or engineering field, and
`approximately two years of relevant experience.
`12. The disclosure of the ‘525 patent does not adequately distinguish
`“thickness” from width, and therefore one of ordinary skill in the art would have
`considered the claim term “thickness” to have been vague and ambiguous at the
`time that the ‘525 patent was filed.
`13. The term “inherently resilient” is expressly defined at col. 3, lines 34-
`35 of the ’525 patent to mean that the elongate members “return to an unbiased
`position when not under load.” One of ordinary skill in the art would understand
`that the “load” in this context must be supplied by the user’s finger(s).
`14. The ‘525 patent does not describe any difference between a “paddle
`lever” versus a “button,” a “trigger,” or any other control member, and so one of
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`ordinary skill in the art would have generally considered prior art buttons, triggers,
`and other control members to qualify as a “paddle lever” in the context of the ‘525
`patent when it was filed.
`15. One of ordinary skill in the art would have considered the controller
`disclosed by Wörn to have been hand held, when the ‘525 patent was filed, before,
`and since. For example, Wörn, col. 5, lines 34-37 states: “The operator can hold the
`programming device (10) in at least three [different] intended manners with the
`above described grip areas (15, 16, 17, 18). On the one hand, he can grasp the lateral
`grip strips (16, 17) with both hands.”
`16. Each of the switching keys 21 of Wörn is an elongate member that is
`shown in Fig. 6 of Wörn to be disposed on the back (i.e. underside) of the controller.
`Note that the switching keys 21 are shown in phantom lines. Fig. 6 of Wörn shows
`that each of the switching keys 21 extends substantially the full distance between a
`top edge and a bottom edge of the Wörn controller 10, and easily more than half of
`that full distance.
`
`top edge
`
`bottom edge
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`17. Wörn col. 2, line 65 – col. 3, line 2, states: “One or more switching
`keys, which are designed as, e.g., permission and/or start/stop keys, are located on
`the underside of the housing in the vicinity of the grip strips in a position favorable
`for gripping.” Wörn col. 5, lines 63-65 states: “Switching keys (21), which are
`preferably arranged in the area of the recessed grip (31), are located at one or more
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`grip strips (15, 16, 17) on the underside of the housing.” One of ordinary skill in the
`art in June 2011 would understand that the term “underside of the housing,” as used
`by Wörn in the foregoing contexts, to correspond to the “back” of the controller, as
`claimed in the ‘525 patent.
`18. One of ordinary skill in the art when the ‘525 patent was filed would
`have considered it to be an obvious variation to lengthen the switching keys 21 of
`Wörn. For example, one of ordinary skill in the art then would have been motivated
`to extend the switching keys 21 of Wörn longer, to so that a user may better
`accommodate locating and depressing the switching keys 21 of Wörn with one or
`more fingers.
`19.
`It is necessary and inherent that control buttons such as Wörn’s
`switching keys 21 are resilient and flexible, because otherwise a user would not be
`able to repeatedly displace the buttons to accomplish the control function intended
`for such buttons. 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.
`
`20. Fig. 6 of the Wörn patent shows that the switching keys 21, which
`correspond to the first and second back controls claimed in the ‘525 patent, are
`positioned to be operated by a middle finger of a user. One of ordinary skill in the
`art in June 2011 would interpret Fig. 6 of Wörn to indicate that the user’s thumbs
`could be positioned on the front (facing the viewer of Fig. 6 of Wörn), and the user’s
`middle fingers could wrap around the back to operate the back controls 21. For
`example, Wörn col. 2, lines 63-65, states: “The function keys are arranged on the
`top side of the housing in an ergonomically especially favorable manner and can be
`reached with the thumb.”
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`21. One of ordinary skill in the art when the ‘525 patent was filed would
`have considered it to be an obvious variation to lengthen the mode switches 32, 34
`of Enright. For example, one of ordinary skill in the art would have been motivated
`to make the mode switches 32, 34 longer “for easy operation of the invention” or “if
`ergonomically desired,” per Enright paragraph [0032].
`22. One of ordinary skill in the art in June 2011 would have been motivated
`to combine Enright and Wörn, at least because (1) both references disclose hand-
`held electronics controllers having front controls operated by a user’s thumbs and
`rear controls operated by fingers other than the thumb, (2) the Wörn reference
`advantageously suggests an alternative rear control geometry for Enright, and (3)
`lengthening the rear controls of Enright (according to Wörn) would have been
`expected to be readily practical and successful in this predictable art.
`23. One of ordinary skill in the art would understand that the elongate
`members of Enright (the buttons of mode switches 32, 34) are inherently resilient
`and flexible, at least because Enright paragraph [0035] states “the user may quickly
`depress the mode switch 32, 34 when he or she desires to emulate a button press of
`X, Y, A or B without having to move his thumb off of the thumbstick, and then
`return to normal by releasing the mode switch when desired.”
`24. The controller shown in Fig. 5 of Enright has control triggers located
`on the top edge of the controller, and the controller is shaped such that the user's
`index fingers may be positioned to operate those top edge control triggers.
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`trigger
`controls
`(on top
`edge)
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`top edge
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`25. Enright paragraph [0035] states that “the user may quickly depress the
`mode switch 32, 34 [back controls shown in Fig. 5] when he or she desires to
`emulate a button press of X, Y, A or B [which are front controls labeled as 25 in
`Figs. 4 and 6]…” One of ordinary skill in the art would consider the term
`“emulate,” as used in Enright paragraph [0035], to include a meaning within the
`scope of the term “replicate,” as used in claim 3 of the ‘525 patent.
`26. Enright paragraph [0032] states that the controller device may be
`configured such that either of the mode switches 32, 34 [back controls] will “change
`the mode of” the thumbstick 26 [front control]. In this context, to “change the mode
`of” implies an additional function as claimed in claim 2 of the ‘525 patent.
`27. Fig. 5 of Enright shows that a central region of the housing of the
`controller is recessed between (and relative to) the left and right handles, and that
`the elongated members of the back controls (i.e. mode switches 32, 34) are mounted
`within such recessed region between the left and right handles. Each of the elongate
`members of Enright (buttons of mode switches 32, 34) has an outermost surface
`which is disposed in close proximity to the outermost surface of the controller
`housing 24 such that a user's finger may be received in said respective recess. This
`is disclosed by Enright because each of the mode switches 32, 34 is meant to be
`pressed by the fingers of the user.
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`28. One of ordinary skill in the art would have been motivated to make
`each of the elongate members of Enright (buttons of mode switches 32, 34) have
`appropriate dimensions for quick depression and easy operation by fingers other
`than the thumb, which is the very same context, purpose, and motivation for the
`elongate members of the back controls of the ‘525 patent. Hence, whichever
`interpretation of “thickness” is assumed (see paragraph 12 herein), based on Enright,
`routine experimentation would have led one of ordinary skill to choose an elongate
`member “thickness” within the ranges claimed in claims 9-11 of the ‘525 patent.
`29. Each of the back controls disclosed by Wörn (e.g. the switching keys
`21) and by Enright (e.g. the mode switches 32 and 34), suggests a “paddle lever” in
`the context of claim 16 of the ’525 patent, at least because the specification of the
`’525 patent does not adequately structurally distinguish a “paddle lever” from any
`other type of button or trigger.
`30. One of ordinary skill in the art in June 2011 would have been motivated
`to combine Wörn and Date, at least because (1) both of the references are expressly
`directed to hand-held controllers. See, e.g., Date at col. 1, lines 64-66, and Wörn at
`col. 1, lines 3-9. One of ordinary skill in the art in June 2011 would further have
`been motivated to combine Wörn and Date, at least because (2) Date discloses (see
`Figs. 17A and 17B) a switch structure 251 that may advantageously improve
`operability of the switching keys 21 of Wörn to activate a switch mechanism within
`the housing 11 of Wörn. One of ordinary skill in the art in June 2011 would further
`have been motivated to combine Wörn and Date, at least because (3) using the
`switch structure of Date with the switching keys 21 of Wörn would be expected to
`be readily practical and successful in this predictable art.
`31. One of ordinary skill in the video controller arts would have naturally
`expected that the first and second back controls (e.g. Wörn switching keys 21, and
`Enright mode “switches” 32, 34) would have been in conventional registry with
`switch mechanisms, so as to activate them by displacement.
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`32. One of ordinary skill in the art in June 2011 would have been motivated
`to combine Wörn and Lee, at least because (i) both of these references are expressly
`directed to hand-held controllers. See, e.g., Lee’s abstract, and Wörn at col. 1, lines
`3-9. One of ordinary skill in the art in June 2011 further would have been motivated
`to combine Wörn and Lee, because (ii) Lee discloses an elongate switch structure
`40, 48, 60-63 that may advantageously improve operability of the switching keys 21
`of Wörn through the outer housing 11 of Wörn to activate switches on an internal
`printed circuit board (e.g. PCB 56 of Lee). One of ordinary skill in the art in June
`2011 further would have been motivated to combine Wörn and Lee, because (iii)
`using the switch structure of Lee with the switching keys 21 of Wörn would be
`expected to be readily practical and successful in this predictable art.
`33. One of ordinary skill in the art would have been motivated to combine
`Wörn and Oelsch, at least because (i) Oelsch is expressly directed to switches “for
`electrical and electronic devices,” for example “for data input to keyboards of
`electronic computers or electrical typewriters.” See, e.g. Oelsch at col. 1, lines 5-19.
`Likewise, Wörn is directed to a programming device that includes a “keyboard,
`which may contain an alphanumeric keypad or typewriter keyboard and optionally
`additional control keys, such as cursor keys or the like.” See, e.g., Wörn at col. 1,
`lines 6-9, and at col. 5, lines 47-49. One of ordinary skill in the art would further
`have been motivated to combine Wörn and Oelsch at least because (ii) both of these
`references disclose electronics input device switch configurations, (iii) Oelsch
`discloses a switch structure at Figs. 2-4 that may simplify the manufacture of the
`switching keys 21 of Wörn, and (iv) using the switch structure of Oelsch with the
`switching keys 21 of Wörn would be expected to be readily practical and successful
`in this predictable art.
`34. One of ordinary skill in the video controller arts would have known that
`the back controls (e.g. Wörn switching keys 21) could be conventionally formed as
`an integral part of the outer case, when the ‘525 patent was filed.
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`35. One of ordinary skill in the hand-held controller art in June 2011 would
`interpret the “rear housing edge” 34 of Fig. 3 of Wörn, where the switches 29, 30
`are located, to corresponds to the “top edge” claimed in the ‘525 patent, because
`Wörn col. 6, lines 48-53, describes such switches as extending “to the rear” and
`being arranged “at the right-hand.”
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`36. Fig. 17A of Date shows a paddle member 251 that is elongate. Fig.
`17B of Date shows that the switch mechanism (including a plunger, which may be
`supported by a structure that is not shown, and a push button 51e) is disposed
`between an elongate paddle member 251 and an outer surface of the back 12 of the
`controller 210. See, Date at col. 16, lines 10-54. See also, annotations to Fig. 17B of
`Date shown below:
`
`elongate
`paddle
`member
`
`
`
`outer surface of the
`back (bottom case)
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`switch
`mechanism
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`37. Fig. 2 of Lee shows that the switch mechanism (comprising switches
`60-63, joystick shaft 40, and joystick plate 48) is disposed between the elongate
`miniature toy surfboard member 42 and an outer surface of the back of the housing
`11 of the controller 10. The joystick switch control shaft 40 of the switch
`mechanism extends through the outer case, with a distal end in contact with an
`innermost surface of the elongate miniature toy surfboard member 42. See
`annotations to Fig. 2 of Lee shown below:
`
`
`distal end of joy stick
`control shaft 40
`extends to contact the
`innermost surface of
`the elongate
`
`surfboard member
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`
`
`switches
`60-63
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`outside surface
`of the back
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`joystick control
`shaft 40 extends
`through the
`outer case
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`within the
`outer case
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`VERIFICATION
`38. My compensation for work on this declaration is not contingent on any
`outcome in this case.
`39. Pursuant to 28 U.S.C. §1746, I declare under penalty of perjury that the
`foregoing is true and correct.
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