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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`VALVE CORPORATION
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`___________________
`
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`___________________
`
`
`
`PATENT OWNER REPLY IN SUPPORT OF
`MOTION TO TERMINATE
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`Patent Owner hereby respectfully submits this Reply in support of its
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`
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`Motion to Terminate (Paper 26) the instant 136 and 137 IPR proceedings.
`
`I.
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`
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`Petitioner Has Not Demonstrated Why A Searcher Conducting A
`Diligent Search Reasonably Could Not Have Been Expected To
`Discover Wörn
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`The Opposition (Paper 33) filed by Petitioner fails to address the sole
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`inquiry – whether a skilled searcher conducting a diligent search reasonably
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`could have been expected to discover Wörn. See IBM Corp. v. Intellectual
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`Ventures II LLC, IPR2014-01465, Paper 32 at 5 (Nov. 6, 2015) (quoting 157 Cong.
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`Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)) (emphasis added).
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`Instead, Petitioner presents arguments and declarations to support its contention
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`that its search was reasonably diligent, that it hired a skilled searcher, and despite
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`doing so, did not discover Wörn. (Paper 33, EX1019 and EX1020.) These
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`arguments and declarations are presented in support of Petitioner’s incorrect legal
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`premise that if actual searches “are found to be reasonably diligent, that this is
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`legally dispositive.” (Paper 33 at 3.)
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`
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`The inquiry is not who Petitioner hired, what their credentials are, or what
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`the searcher did or did not do for its search. Rather, the relevant inquiry, based on
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`the legislative history, is whether a hypothetical “skilled searcher” conducting a
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`diligent search reasonably could have been expected to discover Wörn.
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`
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`-1-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`Although seemingly acknowledging a burden “to explain why a reasonably
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`
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`diligent search could not have uncovered the newly applied art,” Petitioner failed
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`to do so. (Paper 33 at 2 (quoting General Plastic Indus. Co., Ltd. .v. Canon
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`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 20 (Sept. 6, 2017)(precedential)
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`(petitioner failed to explain why a reasonably diligent search could not have
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`uncovered U.S. patents)).) Like General Plastic, the record is devoid of any
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`explanation why Petitioner could not have been expected to find Wörn.
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`
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`Because Wörn is a U.S. patent, it is and has been readily accessible at the
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`USPTO and online, and a skilled searcher conducting a diligent search reasonably
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`could have been expected to discover it. Moreover, there are no issues with the
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`date of the reference or its classification that would make it unreasonable to expect
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`a skilled searcher to find it. Indeed, Petitioner did discover it.
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`
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`Patent owner respectfully submits that Wörn is exactly the type of reference
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`that Congress had in mind when it passed this section. Wörn is a U.S. Patent
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`available online and at the USPTO and is being used as a section 102 reference in
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`these IPRs. It is not an obscure reference located in some foreign library. See
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`Praxair Distribution, Inc. v. INO Therapeutics LLC, IPR2016-00781, Paper 10 at
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`10 (Aug. 25, 2016) (concluding that a skilled searcher would have been expected
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`to discover even textbooks that are catalogued in libraries or searchable on Google
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`Books using keywords). Nor is the reference in the form of a hard copy brochure
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`-2-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`stored in personal uncatalogued binders by an employee among thousands of
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`employees worldwide. See John Manville Corp. v. Knauf Insulation Inc.,
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`IPR2016-00130, Paper 35 at 6-8 (May 8, 2017)(cited in Petitioner’s opposition
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`brief). Notably, Petitioner presents no case law where the Board concluded that a
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`skilled searcher conducting a reasonably diligent search could not have been
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`expected to discover a U.S. patent.
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`
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`Petitioner’s discovery of Wörn during related searches compels the
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`conclusion that a searcher conducting a diligent search reasonably could have been
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`expected to discover Wörn. Petitioner’s silence on this issue speaks volumes. But,
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`there is more.
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`II. Dr. Rubinger’s Declaration And Testimony Is Consistent With
`Statements Made By Petitioner’s Prior Art Searcher
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`As explained by search expert Dr. Rubinger in his declaration and
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`
`
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`deposition, a skilled searcher would have performed searches in class/subclass
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`345/169, which was one of the primary class/subclass that the examiner identified
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`relevant prior art, and would have discovered Wörn. (EX2034, ¶¶6-11.) When
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`repeatedly questioned on this issue in his deposition, Dr. Rubinger explained:
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`A. We basically will look at all of the important references on the
`front and where they were -- where they came from. In some cases,
`we'll have kickoff meetings with our client, and they'll tell us his
`perspective on which of the cited references are closer.
`But knowing where the cited art is coming from is really important,
`because the examiners are really specialists in terms of that core
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`
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`-3-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`technology and do lots of searching for patentability, and so the
`classes where they look tend to be pretty important classes.
`(EX1018 at 23:6-24:16.) Not surprisingly, Petitioner’s own searcher agrees with
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`Dr. Rubinger, emphasizing that the “classification code allows examiners and
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`searchers to quickly narrow a search of the prior art to the particular subject
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`matter of interest” (EX2035 at 23 (emphasis added)) and that searchers should rely
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`on patent examiners to find subclasses because of their technology area expertise:
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`
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`(EX1019, Appendix 1 at 45 (emphasis added).) Yet, despite this agreement,
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`Petitioner is now attempting to run away from reasonable reliance on Examiners
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`by contending that Dr. Rubinger’s reliance on the Examiner’s classification was
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`premised on hindsight. (Paper 33 at 11.) Not only is such argument defies logic,
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`but also runs afoul of its searcher’s own search methods noted above.
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`
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`Although the Williams Declaration indicates that the subject searches were
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`conducted in general accordance with the methods outlined in the book (EX1019,
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`¶7), nowhere did the declarant state that it sought the help of the patent examiner in
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`-4-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`finding subclasses, as suggested in its allegedly “authoritative book.” (EX1019,
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`Appendix 1 at 45.) Thus, the declarant did not follow its own best practices.
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`
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`Further, conspicuously absent from the Williams Declaration was any
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`statement that Wörn was not discovered in its prior art search. Nor did the
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`Williams Declaration state that Dr. Rubinger’s search method was unreasonable.
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`Equally important, the Williams Declaration (i) did not explain why the declarant
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`did not search class/subclass 345/169, (ii) did not explain why the declarant could
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`not have found Wörn, (iii) did not explain whether Wörn was encompassed by the
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`initial search results but not selected for the exemplary list, and (iv) did not provide
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`the search results. See Praxair, IPR2016-00781, Paper 10 at 9-10 (concluding that
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`similar “scant evidence” is insufficient to persuade the Board that “Petitioner has
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`demonstrated that a skilled searcher conducting a diligent search would not have
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`expected to discover Greenough and Jaypee.”) Thus, Petitioner has not
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`“demonstrated that a skilled searcher conducting a diligent search would not have
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`expected to discover” Wörn. Id.
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`III. Petitioner’s Challenges To Dr. Rubinger Lack Merit
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`
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`First, Petitioner attempts to conflate an “invalidity search” with a
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`“patentability search” in order to pretend that the search would not have located
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`Wörn. (Paper 33 at 6-7). Dr. Rubinger clearly explained that a searcher
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`conducting an “invalidity search” for purposes of challenging the patent would
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`-5-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`have found Wörn, and distinguished such search from a “patentability search”
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`(EX1018, 6:15-7:1, 27:17-28:7, 29:22-30:5, 32:18-34:2) that is performed “prior to
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`the filing of a patent application.” See EX2035 at 34-37 (explaining the difference
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`between the searches in Chapter 2 of Landon IP’s book, conveniently excluded
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`from Petitioner’s EX1019, Appendix 1).
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`
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`Second, Petitioner mischaracterizes Dr. Rubinger’s testimony to present a
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`convoluted computation of days required to manually review references in all
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`classes/subclasses. (Paper 33 at 7-11; EX2020, ¶¶65-67.) Dr. Rubinger explained
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`if a searcher looked at 345/169 and searched using basic keywords “remote or
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`controller and finger, you end up with a subset of only 700 patents, which basically
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`one could go through and look at all of the figures in a day and a half to two days.”
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`(EX1018, 18:13-20) The reference to the 140 documents is merely to note that out
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`of the 700 patents, there may be about 20% that may be relevant. (Id. at 90:4-11.)
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`That does not mean that it takes 1.5 to 2 days to review 140 patents nor does it
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`mean that Dr. Rubinger supported the manual review of all classes and subclasses.
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`Thus, Petitioner’s computations, and the Cotropia Declaration, are flawed and
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`otherwise immaterial since the declarant is not expert in patent searching.
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`
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`Third, Petitioner disputes Dr. Rubinger’s tabulation, contending that
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`“subclass 345/169 as the sixth most-cited USPC subclass.” (Paper 33 at 8
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`(emphasis in original).) Dr. Rubinger explained that there tends to be an overlap of
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`-6-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`prior art in the subclasses of the same class (i.e. subclasses of class 463), and
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`therefore, a skilled searcher should cover class 345/169 to cover different art.
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`(EX1018, 59: 11-17, 62:9-17.) Regardless, Petitioner failed to explain why a
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`skilled searcher conducting a diligent search would not reasonably have searched
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`the sixth most cited subclass.
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`
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`Petitioner also improperly suggests that Patent Owner’s experts contradict
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`each other. (Paper 33 at 13.) This is legally erroneous. The mere fact that a
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`reference may be relevant and “for that reason should be flagged” for “the
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`attorneys to decide,” as Dr. Rubinger testified (EX1018, 50:21-51:6), does not
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`mean that the reference necessarily anticipates or renders the claims obvious.
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`At bottom, a skilled searcher conducting a diligent search reasonably could
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`have been expected to discover Wörn because the searcher would have searched
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`class/subclass 345/169 and should have located that reference. (EX1018, at 27:22-
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`28:7; 29:22-30:5; 32:18-33:9; 45:1-6.) This is true for both the ‘525 Patent and the
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`‘770 Patent. (Id., 52:20-54:15.) As such, estoppel applies as a matter of law and
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`Petitioner can no longer maintain the 136 and 137 IPR proceedings.
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`Date: November 6, 2017
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
`Ehab Samuel, Reg. No. 57,905
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
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`-7-
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`IPR2017-00136 for U.S. Patent 8,641,525
`IPR2017-00137 for U.S. Patent 9,089,770
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing PATENT OWNER REPLY
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`IN SUPPORT OF MOTION TO TERMINATE and the accompanying Exhibits
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`were served in their entirety electronically via PTAB E2E to Petitioner’s counsel
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`of record at the following address:
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`
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
`Ehab Samuel, Reg. No. 57,905
`Yasser El-Gamal, Reg. No. 45,339
`MANATT, PHELPS & PHILLIPS, LLP
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`Attorneys for Patent Owner
`IRONBURG INVENTIONS LTD.
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`Date: November 6, 2017
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`319442778.1
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