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
`
`DECLARATION OF PROFESSOR
`CHRISTOPHER A. COTROPIA
`
`PETITIONER VALVE CORPORATION, EX. 1020, p. 001
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATION OF PROFESSOR
`CHRISTOPHER A. COTROPIA
`
`PETITIONER VALVE CORPORATION, EX. 1020, p. 001
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
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`I, Christopher Anthony Cotropia, hereby declare as follows:
`
`I am a Professor of Law at the University of Richmond School
`1.
`of Law in Richmond, Virginia. I am also the Director of the School’s
`Intellectual Property Institute. I have taught and researched in the area
`intellectual property law, including patent law, for the past fourteen years.
`In this academic capacity, I teach and assist students to search for prior art,
`and stay abreast of the most effective techniques and best practices in
`searching for prior art.
`
`I am also a founding and named partner of Bey & Cotropia
`2.
`PLLC, a law firm that specializes in patent law, specifically United States
`Patent and Trademark Office (“USPTO”) patent practice. I frequently
`conduct prior art searching for clients in connection with this patent practice.
`
`I am registered to practice as a patent attorney before the
`3.
`USPTO (Reg. No. 47,501), and I am admitted in good standing to practice as
`an attorney in the Commonwealth of Virginia (Va. Bar No. 81,726), the District
`of Columbia (D.C. Bar No. 476,946), and the State of California (Cal. Bar. No.
`210,498).
`
`I have been awarded a Bachelor of Science degree in Electrical
`4.
`Engineering and a Bachelor of Science degree in Computer Engineering,
`both with honors and distinction, from Northwestern University (1996) and
`
`
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`a Juris Doctorate degree (with honors) from the University of Texas School
`of Law (1999). I also studied international and comparative intellectual
`property law at Queen Mary & Westfield College’s Centre for Commercial
`Law in London, England (1998).
`
`At Northwestern, I was selected to be a member of the Tau Beta
`5.
`Pi engineering honor society and the Eta Kappa Nu electrical engineering
`honor society. I also received the Coon Hardy Scholarship for Debating
`Excellence in 1992.
`
`At the University of Texas, I received the Robert S. Strauss
`6.
`Endowed Presidential Scholarship in Law and was an articles editor of the
`Texas Intellectual Property Law Journal. I was also selected for membership
`in the Order of the Coif.
`7.
`From 1999 to 2001, I served as a law clerk to the Honorable
`Alvin A. Schall on the United States Court of Appeals for the Federal
`Circuit. This clerkship experience included patent litigation appeals,
`which required clerks to review the prosecution histories of patents,
`examiner search strategies, and the application of prior art to patents
`asserted by litigants.
`8.
`I worked at Fish & Richardson P.C. in Washington, DC from
`2001 to 2003 as a patent attorney. While at Fish & Richardson, in addition
`to other patent attorney tasks, I performed, supervised, and/or commissioned
`
`
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`prior art searches in the electrical and computer science arts.
`
`I began teaching in 2003 as an Associate Professor Law at
`9.
`Tulane University School of Law in New Orleans, Louisiana. I taught and
`researched in the areas of patent law, intellectual property law, copyright
`law, computer law, and property law. While at Tulane, I received the C.J.
`Morrow Research Professor award for excellence in my research and writing
`in patent law. In this academic capacity, I taught and assisted students to
`search for prior art, and stayed abreast of the most effective techniques and
`best practices in searching for prior art.
`
`I left Tulane to join the University of Richmond School of Law
`10.
`in 2006 as an Associate Professor of Law. At Richmond, I teach and research
`in the areas of intellectual property law, patent law and policy, intellectual
`property law and policy, copyright law, computer law, and property law. I
`was promoted to full Professor and received tenure in 2009. I received the
`Austin Owen Research Fellowship in recognition of my excellence in patent
`law scholarship. In this academic capacity, I taught and assisted students to
`search for prior art, and stayed abreast of the most effective techniques and
`best practices in searching for prior art.
`
`11. Since beginning my academic career in 2003, I have authored
`and co-authored over thirty (30) law review articles and book chapters
`
`
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`concerning various areas of patent law. I have also given over seventy (70)
`presentations on patent
`law at various academic and professional
`conferences.
`
`12. Of particular relevance to my opinions herein, I have authored
`and co-authored numerous articles and book chapters regarding patent
`citation analysis, patent examiner practices, prior art search duties, and
`empirical methods of examining patent validity. A sample of these articles
`include: Empirical Analysis of Patent Validity, forthcoming book chapter in
`RESEARCH HANDBOOKS ON THE ECONOMICS OF INTELLECTUAL PROPERTY
`LAW (forthcoming 2017); Patent Applications and the Performance of the
`U.S. Patent and Trademark Office, 23 FED. CIR. BAR J. 179 (2013); Do
`Applicant Patent Citations Matter?, 42 RESEARCH POL’Y 844 (2013);
`Modernizing Patent Law's Inequitable Conduct Doctrine, 24 BERKELEY
`TECH. L. J. 723 (2009); and Nonobviousness and the Federal Circuit: An
`Empirical Analysis of Recent Case Law, 82 NOTRE DAME L. REV. 911
`(2007). A major portion of my research focuses on the patenting examining
`process and prior art and empirically evaluating the effectiveness of this
`process.
`
`I have also been asked numerous times to speak to both
`13.
`academic and attorney audiences on patent citation analysis, patent examiner
`
`
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`practices, prior art search duties, and empirical methods of examining patent
`validity.
`
`I have testified on patent law issues before the United States
`14.
`Senate Committee on the Judiciary, United States International Trade
`Commission, and Federal Trade Commission.
`
`I started my own patent law firm in 2013 with Dawn-Marie Bey,
`15.
`a patent attorney and former patent examiner, named Bey & Cotropia PLLC.
`A major portion of the patent practice at Bey & Cotropia PLLC is prior art
`searching and representing clients in USPTO patent prosecution and ex parte
`and inter parte proceedings.
`
`In March of 2014, I assisted Valve Corporation to search for
`16.
`prior art that would be pertinent to the validity of U.S. Patent No. 8,641,525
`(“the ’525 patent”) and U.S. Patent No. 9,089,770 (“the ’770 patent”),
`collectively the “Subject Patents.” Among other searching activities, I was
`involved in working with a professional, experienced, and respected prior art
`search company Landon IP Patent Search (hereinafter “Landon IP”) that
`conducted reasonably diligent searches for prior art that would be pertinent to
`the Subject Patents. The details of those searches are accurately described in
`the Williams Declaration and its appendices (Exhibit 1019), which I have
`reviewed. I provided prior art search services until mid-April 2014.
`
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`17. Additional details regarding my background and experience
`are available on-line at http://www.cotropia.com;
`https://law.richmond.edu/faculty/ccotropi/; and
`http://www.beycotropia.com..
`
`I am being compensated at my standard rate of $450/hour. My
`18.
`compensation is not contingent upon the substance of my declaration, any
`statements or opinions made, or the outcome of this matter.
`19.
`I have been asked by Valve to provide my expert opinion, based
`on my academic research, professional experience, and the facts of this
`matter, as to (a) what constitutes “a diligent search” conducted by “a skilled
`searcher”; (b) whether “a skilled searcher conducting a diligent search
`reasonably could have been expected to discover” U.S. Patent 6,362,813 to
`Wörn et al. (hereinafter ,“Wörn”) when searching for prior art pertinent to
`the validity of the Subject Patents; (c) whether the Landon IP search
`described in Exhibit 1019 and commissioned by Valve constituted a diligent
`search conducted by a skilled searcher; and (d) my opinion on the statements
`of Bruce Rubinger, contained in the Declaration of Bruce Rubinger, which I
`have reviewed (Exhibit 2034, hereinafter “Rubinger Decl.”) and the
`deposition of Bruce Rubinger, taken on October 26, 2017 (Exhibit 1018,
`hereinafter “Rubinger Depo”).
`
`
`
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`20. Regarding the first issue I was asked to opine upon, a “diligent
`search” conducted by “a skilled searcher” begins with selecting one or more
`patent classifications and sub-classifications to search. In most cases, the
`skilled searcher begins with a patent classification to narrow any further
`searching to art that is relevant to the patent being searched. This is one of the
`purposes behind patent classification—to facilitate prior art searching.
`Although Dr. Rubinger based such selection (see, Rubinger Decl. at 6) only
`upon which USPC subclasses included the most references cited by the patent
`examiner, most skilled searchers would also consider the relative applicability
`of the descriptive titles of the classes and subclasses, and on that basis USPC
`345/169 would not be searched.
`21. Once one or more patent classifications or sub-classifications are
`selected for search, the skilled searcher, performing a diligent search, limits
`any future searches by an applicable date restriction, typically by the priority
`date of the subject patent(s).
`22. The skilled searcher, performing a diligent search, then generates
`a list of keywords based on the target patent and relevant synonyms. The
`search is then limited by various combinations of these keywords.
`23. The skilled searcher, performing a diligent search, then looks at
`the number of results from these keyword searches to determine whether the
`number of results is low enough to manageably be searched by hand. That is,
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`the skilled searcher determines whether the search at this stage returns a
`number of patents that can reasonably be looked at individually to discover
`prior art for the target patent(s).
`24.
` If prior art is discovered, then the skilled searcher, performing a
`diligent search, may use forward or backward citation of the prior art to
`discover additional prior art.
`25.
` The skilled searcher, performing a diligent search, may
`supplement the above with targeted searches based on specific prior art,
`inventors, companies, or products she has been made aware of by performing
`forward and backward citation searches, as well as inventor and assignee
`searches, based on this prior art.
`26. The skilled searcher, performing a diligent search, then evaluates
`whether prior art has been discovered and whether it is reasonable to repeat
`the process on additional patent classifications or sub-classifications,
`proceeding again through the foregoing steps.
`27. The skilled searcher, performing a diligent search, will often
`additionally perform patent searching in certain foreign jurisdictions,
`depending on the subject technology. The skilled searcher, performing a
`diligent search, will often also perform non-patent literature searches,
`depending on the subject technology. What constitutes a diligent search by a
`
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`skilled searcher for foreign patent and non-patent literature searches is beyond
`the scope of what I have been asked to opine on in this declaration.
`28. For a diligent search, all of the above is constrained by a
`reasonable budget for the search and, accordingly, a reasonable amount of time
`allotted for the search.
`29. The above expert opinion on how a skilled searcher performs a
`diligent search for patent prior art, is based on my research and scholarship in
`this area as well as my professional experience.
`30. My opinion is supported by the Manual Patent Examining
`Procedure (MPEP), specifically 904.02, entitled “How to Search.” MPEP
`904.02 recites “(A) identifying the field of search” as the first step and explains
`that “[t]he field of search should be prioritized, starting with the area(s) where
`the invention would most likely be found in the prior art.” The MPEP 904.02
`continues, noting that “[s]ome combination of text search with other search
`criteria (e.g., classification, chemical structure, or molecular sequence) would
`be a normal expectation in most technologies.”
`31. Examiner search methodology is a good example of what can
`constitute a diligent search performed by a skilled searcher in the field of the
`Subject Patents.
`32. My opinions are also consistent with the search methodology
`followed by the examiner of the Subject Patents. In addition to doing targeted
`
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`searches based on specific patents, the examiner initially narrowed his search
`using a patent classification (and in some cases a subclass) and then used
`particular keywords within that class (and, in some cases, subclass). For
`example, the examiner’s search strategy dated June 28, 2012 during
`prosecution of the ’525 Patent, as shown in searches L4 through L17 and S1
`through S3 and S23 through S29, begins with limiting the search to U.S. Patent
`Classification (USPC) 463 and, in some instances, subclass 37 and then adds
`certain keywords. See, Exhibit 2006 at 51-56;103-107;169;180-181;205-206.
`This accords with the methodology that I described above.
`33. Regarding the second matter that I was asked to opine upon, it is
`my expert opinion that “a skilled searcher conducting a diligent search” could
`not have reasonably been expected to discover Wörn when searching for prior
`art pertinent to the validity of the Subject Patents. This opinion is based on
`applying the prior art search methodology of a skilled searcher performing a
`diligent search, as outlined above.
`34. A skilled searcher conducting a diligent search for prior art
`pertinent to the validity of the Subject Patents would have focused her search
`on USPC 463, and specifically subclass 37. The reason the skilled searcher,
`conducting a diligent search, would have focused on that class and subclass is
`because the Subject Patents (a) are first classified in USPC 463/37; (b) the
`classification describes the technology covered by the claims of the Subject
`
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`Patents —“Class 463 AMUSEMENT DEVICES: GAMES . . . 37 Subclass
`Hand manipulated”; and (c) the largest number of cited prior art references
`listed on the face of each of the Subject Patents falls within this class and
`subclass (22 of 64 cited prior art references).
`35. Within the 463/37 class, a diligent search by a skilled searcher
`would be limited to before the relevant priority date for the Subject Patents –
`June 17, 2011. When performing this search in the Thomson Reuters Westlaw
`United States Patent & Applications database (hereinafter, “Westlaw”), the
`search returns roughly 1,700 U.S. Patents.
`36. Performing the next stages of the search is uniquely challenging
`because the key point of novelty of the Subject Patents appears to be a
`comparison of the length of a back control relative to a greater dimension of a
`housing. Such a feature is likely to be located only in the drawings of pertinent
`prior art references, not in their written text. Hence, in this case keyword
`searching would be unreliable and of limited effectiveness, and the pertinence
`of a prior art reference like Worn could only be discovered by hand searching.
`However, hand searching takes much more time as compared to keyword
`searching. A diligent search, by a skilled searcher, must under these
`circumstances balance an effective search—which under these facts requires
`more hand searching—with a practical search—which cannot spend the time
`necessary to hand search a large number of patents. These constraints therefore
`
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`necessarily limit the number of patents that a diligent search can examine and,
`in the end, reliably or repeatably discover.
`37. Recognizing these limitations, the skilled searcher, doing a
`diligent search, would craft some keyword searches to perform on the
`population of 463/37 classified patents before the relevant date.
`38. A diligent searcher, after examining the prior art discovered from
`the keyword searches within the 463/37 class, would perform narrower
`keyword searches within the full main class 463 before the relevant date.
`39.
` However, neither of these searches, regardless of the keywords
`chosen, could possibly discover Wörn, because Wörn is classified outside of
`the entire 463 USPC patent classification. I confirmed this by searching within
`Westlaw.
`40. The reason the diligent searcher, after performing a skilled search
`on the sub-class 463/37, would turn next to the full 463 class is because (a) the
`targeted patents are classified in 463; (b) class 463’s description properly
`describes the targeted patents; and (c) 40 of the 64 patents cited on the face of
`the targeted patents fall within the 463 class—an overwhelming majority of
`cited patents.
`41. The search, limited to those patents before the critical date,
`returns roughly 56,000 U.S. Patents in USPC 463 when performed on
`Westlaw. Given the large number, the diligent searcher would use narrow
`
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`keyword searches to see if any prior art can be discovered that was not found
`in the earlier, narrower class/subclass search of 463/37.
`42. Even with this larger search, the diligent searcher, performing a
`skilled search, would not reasonably discover Wörn, because Wörn is not even
`within the initial universe of approximately 56,000 patents returned under the
`main 463 USPC class.
`43. The only class-based search a diligent searcher, performing a
`skilled search, would perform outside the main 463 USPC (and its
`international search class, Int. Cl., analog A63F [“CARD, BOARD, OR
`ROULETTE GAMES; INDOOR GAMES USING SMALL MOVING
`PLAYING BODIES; VIDEO GAMES; GAMES NOT OTHERWISE
`PROVIDED FOR”]) would be in design class D14. The reason such a search
`beyond these classes would not be done is because of the (a) high relevance of
`searching in the main 463 class as detailed above; (b) the large number of
`patents the main 463 class search returns that need to be further keyword
`searched and, when a relevant, manageable, subset is found, examined by
`hand; and (c) the lesser relevance of the other available classes and subclasses.
`A search in USPC D14, limited to design patents before the critical date,
`returns roughly 45,000 design patents. And design patents must be searched
`by hand because the content of their disclosure is mostly drawings. Combining
`
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`the search
`
`the results in USPC 463 and D14, before the critical date, returns roughly
`101,000 patents that would need to be searched, many by hand.
`44. My opinion
`is confirmed when
`looking at
`methodology actually used by examiner of the Subject Patents.
`45. Specifically, the only class-based searches done by the examiner
`of the Subject Patents were in USPC 463/37 and 463 (and the equivalent Intl.
`Cl. A63F) and USPC D14 (a design patent class). This is evidenced by the
`search information and examiner’s search strategies provided during
`prosecution of the Subject Patents. See, Exhibit 2006 at 51-56;103-
`107;169;180-181;205-206. See also, Exhibit 2014 at 19-20 and 68-70.
`46. The examiner of the ’525 and ’770 Patents, using this
`methodology, did find and cite three patents classified in the USPC 345/169
`(U.S. Patents No. 6,288,709; 6,512,511; and 6,760,013—all issued to Willner
`et al.) because all three of these patents are continuations or continuations-in-
`part of another patent to Willner et. al., U.S. Patent No. 5,874,906, that is
`classified in, amongst other classes, USPC 463/37. Thus, although the
`examiner found patents in USPC 345/169 (actually a single patent family in
`that USPC), that was only because they were related to a patent that was
`classified in a USPC the examiner searched—463/37—the very class the ’525
`and ’770 Patents were classified within.
`
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`Importantly, Wörn is not classified in USPC 463/37, nor is it
`47.
`related to a patent classified in USPC 463/37.
`48. The examiner of the Subject Patents, following proper and
`diligent searching techniques, therefore did not find Wörn nor did the
`examiner search USPC 345/169. Indeed, the examiner of the Subject Patents
`came to the same prior art search conclusion that I do in this declaration, and
`that a skilled searcher performing a diligent search would. Applying the
`standard best practices and methodology, a skilled searcher would not have
`reasonably been expected to discover Wörn, and the examiner did not discover
`Wörn.
`49. A final confirmation of this conclusion is evidenced by the fact
`that I performed searches for prior art pertinent to the Subject Patents in March
`and April of 2014. I followed, and oversaw the search firm, Landon IP, as
`they followed the methodology articulated in this declaration, yet we did not
`discover Wörn.
`50.
`I was also asked to opine upon the skill and diligence of the prior
`art searches that Landon IP performed for Valve in March and April of 2014.
`51. The Landon IP searches were performed by a skilled searcher
`because Landon IP was then an experienced and highly regarded prior art
`search firm that had written a highly regarded and recognized book on prior
`art searching. The book is entitled Patent Searching: Tools and Techniques,
`
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`authored by David Hunt, CEO and owner of Landon IP, and published with
`John Wiley & Sons in 2007. The specific searchers who performed the Valve
`search were experienced and skilled searchers, including Jamila Williams,
`who was Technical Lead on the search. Jamila Williams was also a patent
`examiner at the USPTO from 2001 to 2010, further qualifying her as a skilled
`searcher.
`52. The Landon IP search for prior art pertinent to the Subject Patents
`was a diligent search because it followed the same search methodology that I
`detail above and that had been followed by the examiner of the Subject Patents.
`The Landon IP search utilized patent classifications and keyword searching to
`narrow down the relevant prior art, prior to hand searching. The Landon IP
`search properly initially focused on USPC 463/38 and 463/37 and performed
`a series of keyword searches within those class/subclasses.
`53. The Landon IP search even went beyond the USPC classes
`searched by the ’525 Patent examiner, to include searches in more USPC
`subclasses of classes 273 and 345, design patent classifications, and even
`Cooperative Patent Classification (CPC) classes.
`54. The Landon IP search also searched for foreign patents, including
`Japanese patents, and searched for non-patent prior art.
`
`
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`In my expert opinion, the Landon IP search done for Valve for
`55.
`prior art pertinent to the validity of the Subject Patents constituted a diligent
`search by a skilled searcher.
`56.
`I am also of the opinion that, given the similarity of the ’525
`Patent’s and ’770 Patent’s specifications, claims, their familial relationship,
`and common priority date, that a skilled and reasonably diligent search focused
`on either would also constitute a skilled and reasonably diligent search for
`other, and that the Landon IP search constituted a diligent search by a skilled
`searcher for both of the Subject Patents.
`57. The final topic that I was asked to opine upon is the statements of
`Bruce Rubinger, both in his Declaration and in his Deposition.
`58.
`I am of the opinion that the conclusion reached by Rubinger that
`a skilled searcher conducting a diligent prior art search reasonably could have
`been expected to discover Wörn is incorrect.
`59. This conclusion is incorrect because of the reasons already set
`forth above, which articulate why a skilled searcher performing a diligent
`search could not have reasonably been expected to discover Wörn.
`60. My initial expert analysis of Rubinger’s statements is that the
`conclusions therein are based on improper hindsight analysis. Rubinger’s
`analysis appears to begin with prior knowledge of the reference that his search
`methodology must find—Wörn—and then constructs a methodology that
`
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`would find that reference. Such an analysis is improper because the relevant
`legal inquiry is forward looking and cannot be predicated on hindsight. The
`proper legal analysis focuses on how a skilled searcher would perform a
`diligent search under the given circumstances, not how a searcher could find
`Wörn using some of the facts present in the ’525 and ’770 Patents.
`61. For example, the Rubinger Declaration, in paragraphs 9 through
`11, improperly concludes that the skilled searcher would choose a search
`class—USPC 345/169—that appears in only 3 of 64 cited patents, with all
`three citations being related to, and representing a, single family. And the
`Rubinger Declaration improperly concludes that the skilled searcher would
`choose this USPC over other USPC’s that (a) include the main classification
`of the Subject Patents, such as USPC 463/37; 463/36; 463/38; and 463/47, (b)
`better describe the technology claimed in the Subject Patents, and (c) are
`greater represented in the patents cited on the face of the Subject Patents. A
`skilled searcher would have ample reason to look at USPC subclass 463/37
`and the 463 main class. A skilled searcher would not have a reason to start
`looking at USPC 345, and particularly focus on USPC 345/169. If the skilled
`searcher was to look at the next, most represented main class, the searcher
`would look in design class D14, not USPC 345.
`62. Dr. Rubinger incorrectly assumes that the three cited references
`in USPC 345/169 were obtained because the examiner searched that subclass;
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1020, p. 019
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`but the examiner did not. Rather the USPC 345/169 references were obtained
`incidentally via a citation search on a pertinent reference obtained when the
`examiner searched USPC 463. Dr. Rubinger’s opinion that a skilled searcher
`would search USPC 345/169 is not even supported by the rationale that he,
`himself, used for support. Rubinger is factually incorrect when he concludes
`that the examiner searched in class 345/169. See Rubinger Deposition, pg. 45,
`ll. 6-22. See also, Exhibit 2006 at 51-56;103-107;169;180-181;205-206. See
`also, Exhibit 2014 at 19-20 and 68-70. Moreover, the Field of Classification
`Search shown on the face of the ‘525 and ‘770 Patents does not include main
`class 345, let alone 345/169.
`63. The Rubinger Declaration also improperly, in paragraph 10,
`concludes that when curiously choosing USPC, 345/169, the skilled searcher
`would pick a very particular search—“(remote* OR controller*) AND (middle
`finger) AND ((button* OR push* Or depress* OR switch*) SAME (back* OR
`under* OR behind OR rear* OR posterior*)). The Rubinger Declaration or
`Deposition provides no specific reason why this keyword search, over limitless
`alternatives, would be used when searching subclass USPC, 345/169. Notably,
`this keyword combination was not used by the examiner when searching for
`prior art pertinent to the ’525 and ’770 Patents. See, Exhibit 2006 at 51-
`56;103-107;169;180-181;205-206. See also, Exhibit 2014 at 19-20 and 68-70.
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1020, p. 020
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Dr. Rubinger’s keyword combination appears to have been constructed using
`hindsight, specifically to find Wörn.
`64. Furthermore, the Rubinger Declaration is incorrect that a skilled
`searcher would search the approximately 2,700 patents of USPC, 345/169 by
`hand, as declared in paragraph 10. Instead, a skilled searcher performing a
`diligent search would first perform a keyword searches on other USPC classes
`and subclasses, and then attempt to hand search a fraction of those, as
`described earlier in this declaration. No practical search in this case would
`include hand searching thousands of patents from a relatively unimportant
`subclass like USPC 345/169.
`65. Even assuming that the Rubinger methodology is correct that a
`diligent search would perform searches within the most represented classes in
`the art listed on the ‘525 and ‘770 Patent, such a search methodology would
`first include USPC 463/37 (22 cited patents), 463/38 (11 cited patents), and
`D14/401 (10 cited patents) – all class/subclasses that have more cited prior art
`than the three cited patents falling within USPC 345/169. And USPC 463/36
`would also be included because it includes three examiner-cited references and
`is a USPC within the same main class as the Subject Patents. Furthermore,
`USPC subclass 345/156, has more unrelated patents cited (2) than the single
`patent family cited for 345/159, so it too would be included before USPC
`subclass 345/169 This analysis is also detailed in the table below:
`
`
`
`PETITIONER VALVE CORPORATION, EX. 1020, p. 021
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Most-cited
`USPC
`Subclasses
`
`463/37
`
`D14/401
`
`463/38
`
`463/36
`
`345/156
`
`345/169
`
`
`
`USPC Subclass Name
`
`Amusement devices: Games / Hand
`manipulated
`Recording, communication, or information
`retrieval equipment / Provision for two hands
`Amusement devices: Games / Pivotally-
`translatable handle
`Amusement devices: Games / Player-
`actuated control structure
`Computer graphics processing and selective
`visual display systems / Display Peripheral
`Interface Input Device
`Computer graphics processing and selective
`visual display systems / Portable
`
`# of examiner-
`cited
`references
`(unrelated)
`22 (17)
`
`10 (10)
`
`11 (8)
`
`3 (3)
`
`2 (2)
`
`3 (1)
`
`66. These class/subclasses (USPC 463/37, 463/38, 463/36, D14/401,
`and 345/156) that, according to Rubinger’s methodology, would need to be
`searched before USPC 345/169, include approximately 11,000 patents prior to
`the critical date, found via a Westlaw search (with USPC 463/37 containing ~
`1,700 patents; 463/38 containing ~500 patents; 463/36 containing ~ 1,500
`patents; D14/401 containing ~250 patents; and 345/156 containing ~8,300
`patents before the critical date). Notably, the total of roughly 11,000 patents
`does not double count patents classified in more than one of the listed USPCs.
`Accordingly, following Rubinger’s methodology of searching the most
`represented classes in the cited prior art, the skilled searcher would have to
`hand search 11,000 patents in addition to hand searching the 2,700 patents
`pr
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