Paper No. 8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VALVE CORPORATION,
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`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
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`Patent Owner.
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`Case IPR2017-00136
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`Patent 8,641,525
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`PETITIONER’S REPLY TO PATENT OWNER’S
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`OPPOSITION TO JOINDER AND/OR CONSOLIDATION
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VALVE CORPORATION,
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`Petitioner,
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`v.
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`IRONBURG INVENTIONS LTD.,
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`Patent Owner.
`____________
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`Case IPR2017-00136
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`Patent 8,641,525
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`PETITIONER’S REPLY TO PATENT OWNER’S
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`OPPOSITION TO JOINDER AND/OR CONSOLIDATION
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`I.
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`VALVE DOES NOT SEEK A “SECOND BITE AT THE APPLE,”
`NOR USE THE PTAB’S PRIOR DECISION AS A “ROADMAP.”
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`Valve’s petition in IPR2017-00136 does not correct any alleged deficiencies
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`in its first petition (IPR2016-00948), and therefore does not seek a “second bite at
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`the apple,” nor a “do over” as alleged by Patent Owner. For example, the section
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`of both petitions that describes the UK examiner’s opinion as one of ordinary skill
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`in the art is essentially the same. Valve even expressly invited the Board to ignore
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`that section of the second petition, as redundant after joinder. See IPR2017-00136
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`petition, at page 14. Therefore, the Patent Owner’s allegation that it was bolstered
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`in response to some alleged “deficiency,” using the first decision as a “roadmap,”
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`is absurd.
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`Contrasting the Tosaki reference, the Patent Owner laments that some of its
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`earlier distinguishing arguments do not apply to the newly discovered Wörn
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`reference. (Opp. at 5) Of course, different prior art references are not identical.
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`However, that does not mean the institution decision in IPR2016-00948 was used
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`as a “roadmap.” Rather, the difficulty to distinguish Wörn from the ‘525 claims is
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`just a bad fact that arose for the Patent Owner.
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`Valve’s motivation was discovery, not deficiency. That is clear for two
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`reasons. First, Valve was required to assert its newly-discovered prior art in a
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`timely second IPR petition, or else lose the opportunity in view of the estoppel
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`provisions of 35 U.S.C. § 315(e). Second, if Valve’s first petition had been
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`deficient for the reasons alleged by Patent Owner, then Petitioner’s ground that
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`Tosaki is anticipatory would not have been instituted in IPR2016-00948. But it
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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`was. Valve’s success, so far, on that issue cannot be considered as a “deficiency”
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`that Valve needed to correct with a second petition.
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`Therefore, this is not a case of any “roadmap,” or “second bite at the apple.”
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`Rather, this case is about a newly discovered prior art reference (Wörn) that the
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`Patent Owner now challenges procedurally, because it cannot be persuasively
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`distinguished substantively.
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`II. VALVE’S SECOND PETITION IS TIMELY, AND THE RECENT
`DISCOVERY OF THE WÖRN REFERENCE WAS AMPLY
`SUPPORTED BY UNDISPUTED EVIDENCE.
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`A.
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`FALSE: “belated filing of the Second Petition”
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`The Patent Owner accuses Valve of attempting to “shift the blame for its
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`belated filing of the Second Petition.” (Opp. at 9). Valve, however, timely filed
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`the petition in IPR2017-00136 well within the period expressly set forth by 35
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`U.S.C. § 315(b), and so it is not “belated” in any way.
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`B.
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`FALSE: “Valve has not submitted any evidence …”
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`The Patent Owner’s allegation that “Valve has not submitted any evidence in
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`support of its assertion that Wörn was discovered after Ironburg amended the
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`complaint in the District Court litigation” (Opp. at 10) is demonstrably wrong.
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`Paragraph 15 of the Barceló Declaration, submitted by Valve as Exhibit 1012 to
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`the IPR2017-00136 petition, includes the very evidence that the Patent Owner
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`represents to the board was never submitted – and the evidence is undisputed.
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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`C.
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`Patent Owner’s “recess” distraction.
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`With the benefit of hindsight, the Patent Owner suggests that Valve should
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`have found Wörn earlier, because claim 7 of the ‘525 Patent recites a “recess,”
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`which the Patent Owner alleges is synonymous with “groove.” (Opp. at 10).
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`However, that is a meritless distraction. Although a groove may be a specific type
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`of recess, the words are not synonyms. By analogy, though a porcupine is a
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`specific type of mammal, searching for “mammal” is no substitute for searching
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`for “porcupine.” Moreover, Valve chose the “groove” search term as a synonym
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`for the claim term “channel” in the ‘229 Patent (see Exh. 1012 to IPR2017-00136,
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`Barceló Decl., at ¶ 14), a word that nowhere appears in the ‘525 Patent claims.
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`D.
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`FALSE: Valve “chose to wait”
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`The Patent Owner speculates that “Valve was on notice of the ‘229 Patent at
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`least as early as July 28, 2016 […] but chose to wait so it can use the Board’s
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`decision as a roadmap.” The undisputed evidence, however, shows that Valve did
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`not discover the Wörn reference until it began preparing invalidity contentions for
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`the newly-asserted ‘229 Patent (see Exh. 1012 to IPR2017-00136, Barceló Decl., at
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`¶ 15), which were not due until September 19, 2016.
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`E.
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`FALSE: Valve “possessed … but chose to withhold”
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`The Patent Owner speculates that Valve provides a “silent admission that
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`Valve possessed [the Date and Lee] references at the time of filing its First
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`Petition, but chose to withhold them for a ‘second bite at the apple.’” (Opp. at 11).
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`On the contrary, Valve submitted undisputed evidence that it searched for and
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`found the Date and Lee references only after discovering the Wörn reference, to
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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`complement it in mapping to certain dependent claims (see Exh. 1012 to IPR2017-
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`00136, Barceló Decl., at ¶ 18) – a complementary purpose that is logically
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`subsequent to the discovery of Wörn.
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`III. THERE ARE PRACTICAL OPTIONS TO MERGE THE IPR2016-
`00948 AND IPR2017-0136 SCHEDULES.
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`Presently while opposing merger, the Patent Owner has an incentive to
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`portray any required schedule modifications as impractical and prejudicial.
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`However, if Valve’s motion for joinder is successful, then the case schedules can
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`be readily and practically merged without prejudice to either party, at least because
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`37 CFR § 42.100(c) expressly permits the pendency of an IPR proceeding to be
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`“extended” or “adjusted by the Board in the case of joinder.”
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`Appendix A hereto provides an example of a post-joinder merged schedule
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`that would not unduly prejudice either party. Extending due dates #4 through #7 of
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`IPR2016-00948 by approximately 12 weeks accommodates insertion of the three
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`primary response, opposition, and reply deadlines for IPR2017-00136 (those
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`outlined in a middle box). The joined proceedings would conclude with a PTAB
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`decision in late November 2017, prior to the scheduled trial in the District Court.
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`Due dates #4 through #7 then become common to both IPR2016-00948 and
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`IPR2017-00136, and therefore represent opportunities to simplify briefing and
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`subsequent tasks. The PTAB has viewed such opportunities for simplification as
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`favoring joinder, for example in Sony Corp. of Am. v. Network-1 Sec. Solutions,
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`Inc., IPR2013-00386, Paper 16 at 4 (July 29, 2013). The schedule in Appendix A
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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`also exposes as false and premature the Patent Owner’s allegation that “Valve has
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`not been able to” propose a practically merged schedule. (Opp. at 12).
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`IV. JOINDER WOULD NOT PREJUDICE THE PATENT OWNER
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`The Patent Owner erroneously conflates and confuses the concept of
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`“prejudice,” with the typical additional work that inevitably will be required to
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`respond to the second petition (IPR2017-00136) whether or not joinder is granted
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`or the concurrent proceedings instead continue separately. After all, this is not a
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`case where the second petition requires joinder to be maintained as timely.
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`Moreover, the exemplary merged schedule of Appendix A shows that if
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`joinder is granted by the Board, then opportunities will later arise to actually
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`reduce redundancies in the concurrent proceedings. So, ironically, by arguing now
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`against joinder, Ironburg also argues against an opportunity to reduce redundant
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`work and related costs.
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`Dated: December 21, 2016
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`Respectfully submitted,
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`By: /Joshua C. Harrison, USPTO Reg. #45,686/
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`BARCELÓ, HARRISON & WALKER, LLP
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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`APPENDIX A: EXAMPLE POST-JOINDER MERGED SCHEDULE FOR
`IPR2016-00948 AND IPR2017-00136.
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`Due Date Identification
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`Dates
`currently
`scheduled.
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`Altered dates for merged
`proceedings.
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`16JAN2017 No change – due and
`unaffected by joinder.
`04FEB2017 No change – due and
`unaffected by joinder.
`28MAR2017 No change – due and
`unaffected by joinder.
`21APR2017 No change – due and
`unaffected by joinder.
`04MAY2017 No change.
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`IPR2016-00948 due date 1.
`(Patent Owner’s response)
`IPR2016-00136
`(Patent Owner’s prelim response)
`IPR2016-00948 due date 2.
`(Petitioner reply & opposition)
`IPR2016-00948 due date 3.
`(Patent Owner’s reply to opposition)
`IPR2016-00136
`(PTAB institution decision due)
`IPR2017-00136
` (Patent Owner’s response)
`IPR2017-00136
`(Petitioner reply & opposition)
`IPR2017-00136
`(Patent Owner’s reply to opposition)
`Merged due date 4.
`(Motions to exclude evidence, etc.)
`Merged due date 5.
`(Oppositions to motions.)
`Merged due date 6.
`(Replies to oppositions.)
`Merged due date 7.
`(Oral argument, if requested.)
`PTAB Decision:
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`N/A
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`N/A
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`N/A
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`23JUN2017
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`07JUL2017
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`21JUL2017
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`05MAY2017 31JUL2017
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`18MAY2017 14AUG2017
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`25MAY2017 21AUG2017
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`05JUN2017 31AUG2017
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`30NOV2017
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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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
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`21 December 2016 a true copy of the foregoing PETITIONER’S REPLY TO
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`PATENT OWNER’S OPPOSITION TO JOINDER AND/OR
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`CONSOLIDATION, was served in its entirety on the Patent Owner via electronic
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`mail and electronically via PTAB E2E to:
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`Ehab Samuel
`Reg. No. 57,905
`Email: esamuel@manatt.com
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`Danielle Mihalkanin
`Reg. No. 69,506
`Email: dmihalkanin@manatt.com
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`Manatt, Phelps & Phillips, LLP
`11355 W. Olympic Blvd.
`Los Angeles, CA 90064
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`Attorneys for Ironmonger Inventions Ltd., a UK Limited Company
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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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`Dated: 21 December 2016
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`REPLY TO OPPOSITION TO JOINDER AND/OR CONSOLIDATION RE: U.S. PATENT NO. 8,641,525
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