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`Paper No. 33
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`VALVE CORPORATION,
`Petitioner,
`v.
`
` IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`Case IPR2017-00136
`Patent 8,641,525
`____________
`
`
`OPPOSITION TO THE MOTION TO TERMINATE
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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
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
`Exhibit List ……………………………………………………...….iv
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`INTRODUCTION .............................................................................. 1
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`
`
`THE PERTINENT LEGAL QUESTION IN THIS
`CASE. ................................................................................................. 1
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`A.
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`B.
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`C.
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`“Reasonably could have raised.” .............................................. 1
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`If the actual searches performed in this case are
`found to be reasonably diligent, that is legally
`dispositive. ................................................................................ 3
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`Ironburg may not use hindsight to meet its
`burden of proof. ........................................................................ 3
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`III. THE PRE-PETITION PRIOR ART SEARCHES IN
`THIS CASE WERE SKILLED AND REASONABLY
`DILLIGENT, THOUGH THEY DID NOT IDENTIFY
`WÖRN. ............................................................................................... 4
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`A. Undisputed: Landon IP is a skilled and qualified
`search firm. ............................................................................... 4
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`B.
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`C.
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`D.
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`Landon IP’s search methods reflect best practice. ................... 4
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`The scope of Landon IP’s searches was
`appropriate. ............................................................................... 5
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`Failure to identify the Wörn reference does not
`negate the reasonable diligence of the prior art
`searches in this case. ................................................................. 6
`
`1.
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`2.
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`The ’525 and ’770 patent examiner did not
`search the USPC 345/169 subclass or
`identify Wörn. ................................................................ 6
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`The pertinence of Wörn could only be
`discovered by manual review of the
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`drawings of an impractically large number
`of patents. ....................................................................... 7
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`IV.
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`IRONBURG’S CRITICISMS OF THE PRE-
`PETITION PRIOR ART SEARCHES ARE SELF-
`CONTRADICTED AND RELY UPON HINDSIGHT. .................. 11
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`A. Dr. Rubinger used hindsight to find Wörn,
`applying a cherry-picked search string to a single
`USPC subclass that was not even searched by the
`examiner. ................................................................................ 11
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`B.
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`Ironburg’s experts contradict each other. ............................... 13
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`V.
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`CONCLUSION ................................................................................ 14
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
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`1009
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`1010
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`1011
`1012
`1013
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`1014
`1015
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`1016
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`1017
`(not filed)
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`1018
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`1019
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`1020
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`EXHIBIT LIST
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`
`Description
`U.S. Patent 8,641,525 to Burgess et al.
`U.S. Patent 9,089,770 to Burgess et al.
`U.S. Patent 6,362,813 to Wörn et al.
`U.S. Patent App. Pub. 2010/0073283 to Enright
`U.S. Patent 6,153,843 to Date, et al.
`U.S. Patent 6,364,771 to Lee
`U.S. Patent 4,032,728 to Oelsch
`UK Search and Examination Report for Patent App. No.
`GB1011078.1, 16 May 2011, at 2.
`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.
`Curriculum Vitae of David Rempel, M.D. (also denominated as
`Ex. 1 to Ex. 1009).
`- not used -
`Declaration of Reynaldo C. Barceló.
`Expert Declaration of David Rempel, M.D., in Support of
`Petitioner’s Replies to the Patent Owner Responses in IPR2017-
`00136 and IPR2017-00137. (“Rempel Reply Decl.”)
`Prosecution history of U.S. Patent 8,641,525.
`Certified transcript of the deposition of Glen Stevick in IPR2017-
`00137 held 06 September 2017. (“Stevick Depo.”)
`Excerpt of book entitled “Patent Searching: Tools and
`Techniques,” by David Hunt, et al., ISBN: 978-0-471-78379-4,
`John Wiley & Sons, 2007.
`Paper by Dr. Bruce Rubinger entitled “Locating Prior Art Gold:
`The Five Keys to Successfully Uncovering Strong Prior Art,”
`published in Intellecutal Property Today, July 2011.
`Certified transcript of the deposition of Dr. Bruce Rubinger in
`IPR2017-00136 and IPR2017-00137. (“Rubinger Depo.”)
`Declaration of Jamila Williams in IPR2017-00136 and IPR2017-
`00137 (“Williams Decl.”)
`Declaration of Professor Christopher Cotropia in IPR2017-00136
`and IPR2017-00137 (“Cotropia Decl.”)
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`I.
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`INTRODUCTION
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`In its Motion to Terminate filed 13 October 2017, the Patent Owner
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`(“Ironburg”) and its expert use hindsight to artificially trivialize the task of finding
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`the Wörn prior art reference, suggesting that a competent prior art search prior to
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`filing the petitions in IPR2016-00948 and IPR2016-00949 should have discovered
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`it. However, pertinent historical facts demonstrate the opposite. The prior art
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`searches commissioned by Petitioner – like the Patent Examiner’s own searches –
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`were skilled and reasonably diligent yet did not discover Wörn.
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`II.
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`THE PERTINENT LEGAL QUESTION IN THIS CASE.
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`A.
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`“Reasonably could have raised.”
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`The Board recently considered the law applicable here, in Johns Manville
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`Corp. v. Knauf Insulation Inc., IPR2016-00130, Paper 35 at 9-10, as follows:
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`The plain language of section 315(e)(1) states that the estoppel applies to
`grounds a petitioner “reasonably could have raised.” […] The word
`“reasonably” is not a mandatory word such as, “must,” or “shall.” The
`word “reasonably” is a qualifier that refers to the discretion applied by a
`qualified searcher in conducting an adequate search. This is consistent
`with the legislative history of section 315 […] the prior art estopped is
`that which “a skilled searcher conducting a diligent search reasonably
`could have been expected to discover.” Id. Congress easily could have
`broadened the estoppel provision to extend to “any ground that the
`petitioner raised or [] could have raised during that inter partes review,”
`but it did not.
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`Ironburg simplistically asserts that such a legal inquiry may be satisfied merely
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`because “Wörn is a US Patent.” See, Motion to Terminate (Paper 26) at 4.
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`However, the Board has held that “even for printed publications, a petitioner is free
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`to explain why a reasonably diligent search could not have uncovered the newly
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`applied prior art.” See, IPR2016-01357, Paper 15, at 20.
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` Ultimately, the Board in Johns Manville held that “the skilled searchers
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`employed by Johns Manville conducted a reasonably diligent search.” IPR2016-
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`00130, Paper 35, at 12. Even though that reasonably diligent search failed to
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`discover the documents in question, still estoppel was not found, and the motion to
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`terminate was denied in the Final Written Decision of that case. See, Id. at 12-15.
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`Ironburg relies on IBM Corp. v. Intellectual Ventures II LLC, IPR2014-
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`01465, Paper 32. See, e.g., Motion to Terminate (Paper 26) at 8-9. But in the IBM
`case, the Petitioner did not even dispute the Patent Owner’s contention that a
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`skilled searcher conducting a diligent search reasonably could have been expected
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`to discover the later-asserted prior art. Instead, the Petitioner in IBM argued that
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`the later-asserted prior art could not have been reasonably raised “because
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`Petitioner could not have anticipated that Patent Owner would make certain
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`arguments in the Preliminary Response filed in the earlier proceeding.” See, IBM,
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`IPR2014-01465 (Paper 32) at 3-4. Therefore, IBM is inapposite.
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`Ironburg argues that the intent of estoppel is to “limit serial attacks on
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`patents” (see Paper 26 at 8), but here Petitioner moved to join and consolidate the
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`Wörn challenges with the earlier IPR proceedings. Ironburg opposed such joinder
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`and consolidation, and the Board denied Petitioner’s motion. Hence, the Wörn
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`challenges are analogous to the other grounds that were denied institution in
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`IPR2016-00948 and IPR2016-00949, for which estoppel does not apply under 35
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`U.S.C. § 315(e). See, Shaw Industries Group, Inc. v. Automated Creel Systems,
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`Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016).
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`B.
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`If the actual searches performed in this case are found to be
`reasonably diligent, that is legally dispositive.
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`Here, if the Board finds that either the searches commissioned by Petitioner,
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`or the Patent Examiner’s searches, had been skilled and reasonably diligent, then
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`the Board need not speculate about whether such searches would have found Wörn.
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`After all, those skilled and reasonably diligent searches, focused on the ’525 and
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`’770 patents, historically did not discover Wörn. Rather, Wörn was discovered
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`incidentally by a later search focused on a different patent, using a search term that
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`does not apply to the ’525 and ’770 patents. See, Paper 1 at 8-9. See also, Rubinger
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`Depo. (Ex. 1018) at 73:16-20.
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`C.
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`Ironburg may not use hindsight to meet its burden of proof.
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`If Ironburg cannot prove that each of the several prior art searches
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`commissioned by Petitioner, and those conducted by the Patent Examiner, were not
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`reasonably diligent searches by skilled searchers, then the Board must rule in favor
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`of the non-moving party, Valve. Using hindsight as a guide to find the prior art
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`reference has been considered unpersuasive by the Board. See, Johns Manville
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`Corp. v. Knauf Insulation Inc., IPR2016-00130, Paper 35 at 15.
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`III. THE PRE-PETITION PRIOR ART SEARCHES IN THIS CASE
`WERE SKILLED AND REASONABLY DILLIGENT, THOUGH
`THEY DID NOT IDENTIFY WÖRN.
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`A. Undisputed: Landon IP is a skilled and qualified search firm.
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`The search firm used by Petitioner, Landon IP, is a skilled, qualified, and
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`experienced prior art searching firm. See, Ex. 1016 at 11-12; see also, Cotropia
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`Decl. (Ex. 1020) at ¶ 16; Williams Decl. (Ex. 1019) at ¶ 6. Ironburg does not
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`allege otherwise in its motion, so the ample qualification and skill of Landon IP is
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`undisputed by the parties. Even after Ironburg’s expert, Dr. Rubinger, reviewed
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`Landon IP’s search methods in this case, he denied having any reason to believe
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`that the searchers at Landon IP are not skilled. See Rubinger Depo. (Ex. 1018) at
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`12:4-7 and 29:8-16. On the contrary, Dr. Rubinger conceded that he has
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`admiration for Landon IP. Id. at 8:13. In this case, Landon IP dedicated a team of
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`four trained and experienced professionals to conduct the subject searches for the
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`Petitioner. See, Williams Decl. (Ex. 1019) at ¶ 5.
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`B.
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`Landon IP’s search methods reflect best practice.
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`The leadership of Landon IP authored a book published as: “Patent
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`Searching: Tools and Techniques,” David Hunt, et al., ISBN: 978-0-471-78379-4,
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`John Wiley & Sons, 2007. See, Ex. 1016. The Board has previously relied upon
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`Landon IP’s prior art searching method, as described in that book, as being an
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`exemplary and guiding standard against which to judge another prior art searching
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`method. See, IPR2014-01465, Paper 32, at 6. In this case, the subject searches by
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`Landon IP were conducted according to the methods described in its own
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`authoritative book on prior art searching. See, Williams Decl. (Ex. 1019) at ¶ 7.
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`C.
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`The scope of Landon IP’s searches was appropriate.
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`Petitioner commissioned all of the searches that Landon IP recommended for
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`this case. Id. at ¶ 4. Consequently, Landon IP conducted initial citation searching,
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`followed by approximately eleven searches of the most pertinent classification &
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`sub-classifications, and approximately 45 searches by the most pertinent search
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`terms and combinations thereof. Id. at ¶¶ 8-9. Landon IP also performed several
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`manual searches, and several searches by assignee. Id. Once prior art references
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`of particular interest were identified, Landon IP conducted forward and backwards
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`citation searches on those prior art references. Id. The Landon IP prior art searches
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`were skilled and reasonably diligent. See Cotropia Decl. (Ex. 1020) at ¶ 50-55.
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`Ironburg’s expert admits that he arrived at similar search terms (as the ones
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`used by Landon IP), which captured the essence of the subject ’525 and ’770
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`patents in a “really quite common” way. See, Rubinger Depo. (Ex. 1018) at. 64:9-
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`65:7. Such commonality further confirms the reasonable diligence of Landon IP’s
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`searching method and scope, although Dr. Rubinger concedes that there is more
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`than one way to conduct a reasonably diligent prior art search. Id. at. 16:15-17:1;
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`21:20-22:13; and 62:20-63:6.
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`Moreover, the cost and scope of the search that Ironburg’s expert would
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`have recommended for this case parallels that of Landon IP’s actual search. For
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`example, Dr. Rubinger opined that if he were asked to accomplish the subject
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`searches reasonably diligently, he would spend 5 days / $4,500 searching US
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`patents, and follow that up with a search of Japanese patents at additional expense.
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`Id. at 76:10 - 77:6. That accords well with the US and Japanese searching that was
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`conducted by Landon IP (see, Williams Decl. (Ex. 1019) at ¶¶ 4-5), further
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`confirming the reasonable diligence of Landon IP’s searching method and scope.
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`D.
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`Failure to identify the Wörn reference does not negate the
`reasonable diligence of the prior art searches in this case.
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`1.
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`The ’525 and ’770 patent examiner did not search the USPC
`345/169 subclass or identify Wörn.
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`Ironburg’s expert, Dr. Rubinger, referred to patent examiners as skilled
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`searchers, and opined that they are “experts in their assigned technical areas and
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`experts in identifying relevant prior art.” Rubinger Decl. (Ex. 2034) at ¶ 6.
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`Petitioner’s expert agrees. See, Cotropia Decl. (Ex. 1020) at ¶ 31 and ¶ 68.
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`Indeed, patentability searches performed by patent examiners have
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`appropriate scope in the context of IPR proceedings. Specifically, 35 U.S.C.
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`§ 311(b) frames the scope of inter-partes review in terms of whether a claim is
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`“unpatentable,” and limits the applicable scope of prior art more narrowly than in
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`district court invalidity proceedings. Likewise, 37 C.F.R. § 42.104(b)(4) requires
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`the IPR petitioner to identify how each challenged claim is “unpatentable,” and 37
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`C.F.R. § 42.104(b)(2) limits the applicable scope of prior art more narrowly than in
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`district court invalidity proceedings. Ironburg’s expert, Dr. Rubinger also
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`understands that “patentability” is what is challenged in IPR proceeding, and that it
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`is “not surprising” for a patentability search to fail to pick up or locate a particular
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`prior art reference. See Rubinger Depo (Ex. 1018) at 33:10-34:2.
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`Hence the patentability searches conducted by the examiner of the ’525 and
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`’770 patents were of proper scope, and were undisputedly performed by a skilled
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`searcher, and in a reasonably diligent manner. However, the ’525 and ’770 patent
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`examiner did not identify Wörn, and contrary to the assumption that Dr. Rubinger
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`relied upon (id. at 54:16-55:4), the patent examiner did not search the USPC
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`345/169 subclass. See, Ex. 2006 at 51-56;103-107;169;180-181;205-206. See also,
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`Ex. 2014 at 19-20 and 68-70. See also, Cotropia Decl. (Ex. 1020) at ¶¶ 46 and 62.
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`On the contrary, the three related examiner-cited references in the USPC 345/169
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`subclass were obtained incidentally via a search on a pertinent reference obtained
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`when the examiner searched the primary class: USPC 463. See id. Therefore, Dr.
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`Rubinger’s rationale to focus on the USPC 345/169 subclass is flawed, and the
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`failure to identify Wörn does not negate the reasonable diligence of the Landon IP
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`search or the patent examiner’s search.
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`2.
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`The pertinence of Wörn could only be discovered by
`manual review of the drawings of an impractically large
`number of patents.
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`The key distinguishing feature of the ’525 and ’770 patents – the relative
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`length of a back control compared with a housing dimension – is shown only in the
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`drawings of Wörn, and not mentioned anywhere in its searchable text. Hence only
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`a human searcher’s manual review of the drawings of every prior art reference in a
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`chosen population, one reference at a time, could possibly recognize Wörn’s
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`pertinence to the ’525 and ’770 patents. The parties agree that manual searching
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`requires a human to apply her own experience and judgement regarding the
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`pertinence of each reference based on a review of all of its drawings (see Rubinger
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`Depo. (Ex. 1018) at 19:6-19 and 81:7-16).
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`Dr. Rubinger estimated that “looking at the figures of 140 patents” (i.e. 20%
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`of a population of 700 patents) would take “a day and a half to two days of effort.”
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`Id. at 90:4-11. Similarly, Dr. Rubinger estimated that manual review of a like
`percentage of the approximately 2,700 patents of USPC subclass 345/169 – just
`that one subclass – would take “four to five days of effort.” Id. at 90:4-11.
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`However, no skilled and reasonably diligent searcher would limit herself to
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`searching only USPC subclass 345/169. See Cotropia Decl. (Ex. 1020) at ¶ 61, and
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`¶¶ 65-66. Dr. Rubinger artificially elevated the importance of USPC subclass
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`345/169 by inexplicably ignoring the USPC D14 class, lumping all sub-classes of
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`USPC 463 into a single row of his table (see Rubinger Decl. (Ex. 2034) at ¶ 6), and
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`ignoring that the three examiner-cited references in 345/169 are redundant (in a
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`single related patent family).
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`Although Dr. Rubinger based his table only upon examiner citations, most
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`skilled searchers would also consider the relative applicability of the descriptive
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`titles of the classes and subclasses, and on that basis USPC 345/169 would not be
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`searched. See Cotropia Decl. (Ex. 1020) at ¶¶ 20 and 62. For example, the Field of
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`Classification Search on the face of the ’525 and ’770 patents does not include
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`even the main class USPC 345, let alone the subclass USPC 345/169. See Id.
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`Faithfully following Dr. Rubinger’s own methodology, however, produces
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`the following corrected table, which properly portrays USPC subclass 345/169 as
`the sixth most-cited USPC subclass (without double-counting related references).
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`See Id. at ¶ 65. The below corrected table, like Dr. Rubinger’s original table (see,
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`Rubinger Decl. (Ex. 2034) at ¶ 6), is based only on the ’525 patent yet guides a
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`search process that would be common to both the ’525 and ’770 patents. See
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`Rubinger Depo. (Ex. 1018) at 52:20-53:9 and 54:1-15. See also, Cotropia Decl.
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`(Ex. 1020) at ¶ 56.
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`USPC Subclass Name
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`Most-cited
`USPC
`Subclasses
`463/37 Amusement devices: Games / Hand manipulated
`D14/401 Recording, communication, or information
`retrieval equipment / Provision for two hands
`463/38 Amusement devices: Games / Pivotally-
`translatable handle
`463/36 Amusement devices: Games / Player-actuated
`control structure
`345/156 Computer graphics processing and selective
`visual display systems / Display Peripheral
`Interface Input Device
`345/169 Computer graphics processing and selective
`visual display systems / Portable
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`# of examiner-
`cited references
`(not related)
`22 (17)
`10 (10)
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`11 (8)
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`3 (3)
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`2 (2)
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`3 (1)
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`Consistent with this corrected table, Dr. Rubinger admits that roughly 2,000
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`additional prior art references should be manually searched in USPC subclass
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`463/37. Id. at 73:21-74:12. Also consistent with this corrected table, Dr.
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`Rubinger admits that the prior art references in USPC subclass 463/38 should also
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`be searched. Id. at 55:8-56:16.
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`Hence, following Dr. Rubinger’s own searching method (see, Rubinger
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`Decl. (Ex. 2034) at ¶ 6-7), which prioritizes subclasses for search solely based
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`upon how many examiner-cited references fall within each subclass, a searcher
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`would manually search USPC subclasses 463/37, D14/401, 463/38, 463/36, and
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`345/156, before searching 345/169. See Cotropia Decl. (Ex. 1020) at ¶ 61-66. The
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`foregoing USPC subclasses together include approximately 13,700 patent
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`references that pre-date the earliest priority date of the ’525 patent. See id.
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`The actions of the USPTO examiner of the ’525 and ’770 patents confirm
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`that a reasonably diligent searcher would search in USPC class 463 and in USPC
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`class D14 before looking to USPC 345. See Id. Indeed, the patent examiner
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`searched the entire USPC 463 and USPC D14 classes, which together include more
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`than 100,000 prior art references, yet elected not to search USPC 345/169. Id. at
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`¶¶ 33-46. See also, Ex. 2006 at 51-56;103-107;169;180-181;205-206. See also,
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`Ex. 2014 at 19-20 and 68-70.
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`Therefore, there can be no doubt that reliably identifying the pertinence of
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`Wörn would require manual review of far more than only the USPC subclass
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`345/169 singled out by Dr. Rubinger. On the contrary, reliably identifying the
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`pertinence of Wörn would require manual review of the drawings of many tens of
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`thousands of U.S. patent references, including at least the aforementioned 13,700
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`U.S. patent references.
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`Comparing to Dr. Rubinger’s time estimate for 20% of 700 U.S. patent
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`references as a temporal benchmark (see Rubinger Depo. (Ex. 1018) at 90:4-11), a
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`manual review of the drawings of 100% of 13,700 U.S. patent references would
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`require 146 days to 196 days of work effort. See, Cotropia Decl. (Ex. 1020) at ¶ 67.
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`Even if only 20% of those references were reviewed – a fraction that would not
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`reliably identify Worn – still the manual review would require 29 days to 39 days
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`of work effort. Either way, the manual review would be an impractical assignment
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`that far exceeds the five days of work effort that Dr. Rubinger would have allotted
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`for a reasonably diligent search of US patent references. See Rubinger Depo. (Ex.
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`1018) at 90:4-11 at 76:10-77:6. See also, Cotropia Decl. (Ex. 1020) at ¶ 67.
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`Practically, using keyword searches to limit manual review of drawings to
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`only a fraction of the total class/subclass populations is typical of reasonably
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`diligent searches (see, e.g., id. at 73:21-74:12, and 89:21-90:11), which is why a
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`reasonably diligent search would not have reliably found Wörn. After all, Dr.
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`Rubinger confirmed that keyword searching typically misses more than half of the
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`critical prior art. Id. at 34:18-35:5.
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`Therefore, to reliably identify Wörn would have required an impractically
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`expensive and time-consuming manual review of the drawings of an unworkably
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`large number of patents in several USPC subclasses. In this light, Landon IP’s
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`failure to identify Wörn does not negate the reasonable diligence of its search.
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`IV.
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`IRONBURG’S CRITICISMS OF THE PRE-PETITION PRIOR ART
`SEARCHES ARE SELF-CONTRADICTED AND RELY UPON
`HINDSIGHT.
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`A. Dr. Rubinger used hindsight to find Wörn, applying a cherry-
`picked search string to a single USPC subclass that was not even
`searched by the examiner.
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`Dr. Rubinger surgically and dramatically reduced the impractically large
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`number of patent references that would otherwise require manual review, by
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`applying a narrowly-tailored and seemingly contrived “example” search string to a
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`single USPC subclass 345/169 – a subclass that was not even searched by the
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`examiner. See Rubinger Decl. (Ex. 2034) at ¶ 10. See also Cotropia Decl. (Ex.
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`1020) at ¶ 63. The remaining manageable number of patent references fortuitously
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`included the Wörn reference.
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` Dr. Rubinger conceived his “example” search string, among limitless
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`alternative options, by selecting a particular subset of search terms that were
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`common to two of Landon IP’s search strings, and then cobbling them together in a
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`unique new order with new parenthetical sub-groupings that were acted upon by a
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`unique sequence of logical operators (“OR,” “AND,” “SAME,” etc.). See,
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`Rubinger Decl. (Ex. 2034) at ¶ 10. Dr. Rubinger gave no specific reason in his
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`declaration for choosing that specific “example” search string, with its specific
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`selection and sub-groupings of search terms, and with its specific logical operators
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`applied to those sub-groupings – or for applying it to just one specific USPC
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`subclass that was not searched by the patent examiner. See, Cotropia Decl. (Ex.
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`1020) at ¶ 63.
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`However, Dr. Rubinger admitted that the identification of Wörn by his
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`search relied upon Petitioner’s “mapping” of the Wörn reference to the challenged
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`claims of the’525 and ‘770 patents in the IPR petition (Paper 1). See, Rubinger
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`Depo. (Ex. 1018) at 50:21-52:8. First, Dr. Rubinger opined that a prior art searcher
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`like himself would “flag” the Wörn reference for a client attorney, because “Wörn
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`looks like it’s a really relevant reference.” Id. at 50:21-51:6. Dr. Rubinger then
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`admitted that he recognized that the Wörn reference was relevant enough to flag
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`for the attention of his client attorney, based in part on “the way it was mapped”
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`against the ’525 and ’770 claims in the IPR petition (Paper 1). See, Rubinger Depo.
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`at 51:7-52:8. Hence, the success of Dr. Rubinger’s example prior art search
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`admittedly relied, in part, upon improper hindsight bias.
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`B.
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`Ironburg’s experts contradict each other.
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`The opinions of Ironburg’s previous expert, Dr. Stevick, contradict
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`Ironburg’s latest expert’s rationale that Wörn should have been identified as
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`pertinent prior art, e.g., Dr. Rubinger’s opinion that “Wörn looks like it’s a really
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`relevant reference.” See, Rubinger Depo. (Ex. 1018) at 50:21-51:6.
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`For example, Dr. Stevick opined in a declaration in this case that “[i]n view
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`of the differences between Wörn’s field of endeavor and the problem it addressed,
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`in my opinion, the programming device described by Wörn is used for an entirely
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`different purpose than the hand-held video game controller of the ’770 Patent, and
`would not have logically commended itself to the attention of a POSITA ...” Ex.
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`2002 at 17 (emphasis added). He continued: “Wörn is not directed to hand held
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`video game controllers […] Wörn also is not reasonably pertinent to the problems
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`addressed for the video game controllers in Enright and Date, […] [t]hus, in my
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`opinion, Wörn would not have logically commended itself to the attention of a
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`POSITA ...” Ex. 2002 at 21-22.
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`As recently as two months ago, Dr. Stevick emphatically reinforced those
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`opinions during deposition, testifying that “[…] Wörn is a programming device.
`And you wouldn’t look there for a video controller. They’re used completely
`differently. Different areas. Just a whole different device.” See, Ex. 1015 of
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`IPR2017-00137, at 60:7-14 (emphasis added). Dr. Stevick continued: “Well, are
`they in the same field of endeavor? And they certainly are not. They’re used
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`completely differently. Uhm, Wörn’s not even a controller.” See id., at 83:6-20
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`(emphasis added).
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`Dr. Stevick’s opinions are conspicuously unfavorable to Ironburg’s present
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`criticism of the Landon IP search results.
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`V. CONCLUSION
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`The Patent Owner, which has the burden of proof as the moving party, has
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`failed to rebut the evidence that Petitioner’s search was skilled and reasonably
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`diligent, and therefore the Motion to Terminate should be denied.
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`Dated: November 3, 2017
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`Respectfully submitted,
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`By: /Joshua C. Harrison, USPTO Reg. #45,686/
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`Joshua C. Harrison, USPTO Reg.# 45,686
`BARCELÓ, HARRISON & WALKER, LLP
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that on
`2017-11-03 a true copy of the foregoing OPPOSITION TO THE MOTION TO
`TERMINATE was served in its entirety on the Patent Owner electronically via
`PTAB E2E to:
`
`Ehab M. Samuel, Reg. No. 57,905
`MANATT, PHELPS & PHILLIPS. LLP
`11355 W. Olympic Blvd. Los Angeles, CA 90064
`Tel: (310) 312-4000 Fax: (310) 312-4224
`esamuel-PTAB@manatt.com
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
`695 Town Center Drive, 14th Floor, Costa Mesa, CA 92626
`Tel: (714) 371-2500 Fax: (714) 371-2550
`YElGamal@manatt.com
`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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`Dated: November 3, 2017
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`By: /Joshua C. Harrison, USPTO Reg. # 45,686/
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`Joshua C. Harrison, USPTO Reg. # 45,686
`BARCELÓ, HARRISON & WALKER, LLP
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`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
`(949) 340-9736
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`Attorneys for Petitioner, Valve Corporation
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`OPPOSITION TO THE MOTION TO TERMINATE IPR2017-00136
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