UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________
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`COLLECTIVE MINDS GAMING CO. LTD.
`
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`
`Patent Owner.
`
`_______________________
`
`Case IPR2018-00354
`
`Patent 8,641,525
`_______________________
`
`DECLARATION OF DR. GLEN STEVICK
`
`IN SUPPORT OF THE PATENT OWNER RESPONSE
`
`IRONBURG EX2021, Page 1
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`
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`COLLECTIVE MINDS GAMING CO. LTD.
`
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`
`Patent Owner.
`
`_______________________
`
`Case IPR2018-00354
`
`Patent 8,641,525
`_______________________
`
`DECLARATION OF DR. GLEN STEVICK
`
`IN SUPPORT OF THE PATENT OWNER RESPONSE
`
`IRONBURG EX2021, Page 1
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`
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`TABLE OF CONTENTS
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`Page
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`V.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. QUALIFICATIONS ........................................................................................ 1
`III.
`INFORMATION CONSIDERED ................................................................... 4
`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION ............... 4
`A.
`Claim Construction Law ....................................................................... 5
`B.
`Person of Ordinary Skill in the Art (“POSITA”) .................................. 6
`C.
`Technology Overview ........................................................................... 7
`CLAIM CONSTRUCTION FOR “INHERENTLY RESILIENT AND
`FLEXIBLE” ..................................................................................................... 8
`VI. THE KOTKIN REFERENCES (EX1003 AND EX1004) ............................ 14
`A. Housing Bottom 320 ........................................................................... 14
`B.
`Line 219 ............................................................................................... 17
`C. Kotkin Provisional – Figures A-O ...................................................... 21
`VII. WILLNER (EX1005), KOJI (EX1006) AND RAYMOND (EX1007)
`REFERENCES .............................................................................................. 22
`A.
`Raymond Is Not In The Same Field Of Endeavor .............................. 22
`B.
`Raymond Is Not Pertinent To The Problems Faced By The Inventors
`Of The ‘525 Patent .............................................................................. 24
`C. No Motivation To Combine Raymond With Koji .............................. 27
`D. No Motivation to Combine Koji With Willner ................................... 32
`VIII. REPRESENTATIONS .................................................................................. 36
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`
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`-i-
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`IRONBURG EX2021, Page 2
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`IPR2018-00354
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`I, Dr. Glen Stevick, declare and state as follows:
`
`I.
`
`INTRODUCTION
`1.
`
`I have been retained by Ironburg Inventions Ltd. (“Ironburg” or
`
`“Petitioner”) to consider the merits of Collective Minds Gaming Co. Ltd.
`
`(“Collective Minds” or “Petitioner”) unpatentability assertions set forth in the
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`above-captioned Petition with regard to United States Patent No. 8,641,525 (“the
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`‘525 patent”). I have personal knowledge of the facts and opinions stated in this
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`Declaration, and am competent to testify thereto.
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`2. My company, Berkeley Engineering and Research, Inc. (BEAR) is
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`being compensated at my standard consulting rate of $450.00 per hour. My
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`compensation is not contingent upon the substance of my declaration, any
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`statements or opinions made, or the outcome of this matter.
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`II. QUALIFICATIONS
`3.
`I understand that a true and accurate copy of my current curriculum
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`vitae has been identified and was filed by Ironburg as Exhibit 2002. Several of the
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`details concerning my educational background, work experience, academic
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`appointments, honors, awards, and publications are further discussed below.
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`4.
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`I have over 35 years of experience in the general field of mechanical
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`engineering, mechanical-electrical engineering and related engineering disciplines.
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`My expertise includes years of experience in failure analysis and design of
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`structures, material behavior, consumer products, industrial equipment and medical
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`devices, including specifically mechanical-electrical systems, aortic, hip and knee
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`implants, turbines and reciprocating engines, automotive and aircraft components;
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`structural dynamics, electronic control systems, material behavior, heat transfer
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`and structure/fluid interaction.
`
`5.
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`I received a Bachelors of Science degree in Mechanical Engineering
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`from Michigan Technological University in 1980 and a Masters of Science degree
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`in Mechanical Engineering from the University of California, Berkeley in 1981.
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`6.
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`I worked for Chevron Corporation during and after my time at
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`Michigan Technological University and U.C. Berkeley while working toward my
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`Master’s degree. From 1981 to 1989, I worked as an engineering mechanics
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`specialist assisting field engineers with difficult failure and re-designs ranging
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`from refinery equipment controls to cracks in an offshore platform in the North
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`Sea.
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`7.
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`In 1989, I returned to the University of California, Berkeley and
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`started Berkeley Engineering And Research, Inc. (“BEAR”). BEAR provides
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`mechanical and electrical engineering services ranging from project analysis and
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`consultation to accident investigations and expert testimony.
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`8.
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`I completed my Ph.D. in Mechanical Engineering from the University
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`of California, Berkeley in 1993 majoring in material behavior and design, and
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`minoring in structural analysis and dynamics and controls (electronic controls). In
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`my work at BEAR, I have designed, and analyzed the failures of, controllers for
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`use at BEAR, in products we have sold and/or consulted on, and in general use on
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`a wide variety of equipment.
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`9.
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`I am a registered Mechanical Engineer in California, Texas, Louisiana
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`and Nevada and a member of the American Society of Mechanical Engineers.
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`10.
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`In addition, I have taught mechanical engineering at U.C. Berkeley,
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`serving as an instructor for the department’s senior design course, “Mechanical
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`Engineering Design,” and have conducted various lectures on mechanical
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`engineering topics.
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`11. Currently, I serve as a mechanical engineering consultant at BEAR,
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`specializing in failure analysis and design of dynamic structures, industrial
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`equipment and consumer products, including mechanical and electrical systems.
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`12.
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`I am an author of numerous engineering publications and reports
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`listed in my Curriculum Vitae attached as Exhibit 2002, as well as the co-inventor
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`of U.S. Patent No. 6,119,461, entitled “Thermal-Electric Container,” U.S. Patent
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`Nos. 7,620,209 and 7,961,912, entitled “Method and Apparatus for Dynamic
`
`3
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`Space-Time Imaging System,” and U.S. Patent No. 8,395,376, entitled “Method
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`and Apparatus for Magnetic Response Imaging System,” and U.S. Patent No.
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`9,279,739, entitled “Method and Apparatus for Detecting and Monitoring Oil
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`Spills and Leaks.”
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`13.
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`I am currently a member of American Society of Testing and
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`Materials (ASTM) Committee E05 on Fire Standards, Committee F15 on
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`Consumer Products and Committee E08 on Fatigue and Fracture.
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`III.
`
`INFORMATION CONSIDERED
`14.
`
`I have reviewed and am familiar with the ‘525 patent specification, its
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`claims, and its file history.
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`15.
`
`I have reviewed and am familiar with the Petition for Inter Partes
`
`Review of the ‘525 patent filed by Collective Minds on January 3, 2018 (the
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`“Petition”), as well as the Declaration of Mark Benden filed in support thereof (the
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`“Benden Declaration”).
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`16.
`
`I have reviewed and am familiar with the exhibits cited in the Petition,
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`Patent Owner’s Preliminary Response, Petitioner’s Reply to Patent Owner’s
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`Preliminary Response, and Patent Owner’s Response.
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`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`17. While considering the ‘525 Patent and stating my opinions, I am
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`relying on legal principles that have been explained to me by counsel.
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`A. Claim Construction Law
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`18.
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`I have been instructed by counsel on the law regarding claim
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`construction and patent claims, and understand that a patent may include two types
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`of claims - independent claims and dependent claims. An independent claim
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`stands alone and includes only the features it recites. A dependent claim can
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`depend from an independent claim or another dependent claim. I understand that a
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`dependent claim includes all the features that it recites in addition to all of the
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`features recited in the claim from which it depends.
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`19.
`
`I understand that in this inter partes review the claims must be given
`
`their broadest reasonable interpretation, but that interpretation must be consistent
`
`with the specification and prosecution history. Specifically, the interpretation must
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`correspond with what and how the inventors described their invention in the
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`specification.
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`20.
`
`I understand that claim terms are given their plain and ordinary
`
`meaning as would be understood by a person of ordinary skill in the art, unless the
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`inventor provides a special meaning for a term.
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`21.
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`I understand that if there are specific statements in the specification
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`that define the invention, those statements are strong evidence of a definition for a
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`term.
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`22.
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`In this declaration, I have used the Broadest Reasonable Interpretation
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`(“BRI”) standard when interpreting the claim terms.
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`B.
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`23.
`
`Person of Ordinary Skill in the Art (“POSITA”)
`
`I understand that a POSITA is a hypothetical person who is used to
`
`analyze the prior art without the benefit of hindsight. I further understand that a
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`POSITA is presumed to be one who thinks along the lines of conventional wisdom
`
`in the art and is not one who undertakes to innovate, whether by extraordinary
`
`insights or by patient and often expensive systematic research.
`
`24.
`
`I have been asked to offer my opinion regarding the level of ordinary
`
`skill in the art with respect to the ‘525 Patent. Based on my review of the patent
`
`and the relevant art, my opinion is that the level of ordinary skill in the art relating
`
`to the ’525 Patent is low, specifically that of a person with a year of experience or
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`other training in video game controller assembly or tooling.
`
`25. My opinions regarding the level of ordinary skill in the art are based
`
`on my review of the ‘525 Patent, my education, my experience in the field of
`
`mechanical engineering, and my related experience.
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`26.
`
`I meet these criteria and consider myself a person with at least
`
`ordinary skill in the art pertaining to the patent. I would have been such a person
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`at the time of invention of the patent. I have supervised those with ordinary skill in
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`the art and I am therefore familiar with their qualifications.
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`27.
`
`I also understand that the Benden Declaration (¶ 8) asserts that a
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`person of ordinary skill in the art of the ‘525 Patent is “(i) a Bachelor’s degree (or
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`higher degree) in an academic area emphasizing mechanical engineering or similar
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`discipline and (ii) at least 2 years of industry experience in product design or the
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`equivalent.”
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`28. My statements and opinions set forth herein are true and correct
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`regardless of which of these two descriptions of a person of ordinary skill in the art
`
`is ultimately adopted.
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`C. Technology Overview
`
`29. To understand how a POSITA would have viewed the claims and the
`
`specification, the problem addressed by the ‘525 patent must be put in context with
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`the overall technology. At the time of the priority date of the ‘525 Patent, there was
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`a need for an improved hand-held video game controller that mitigated the need for
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`the gamer to move his or her thumb from one control to operate additional
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`controls, which takes time and can cause a loss of control. EX1001, 1:33-45.
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`30. The ‘525 Patent is directed to a hand-held video game controller
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`intended to be held by a user in both hands. EX1001, Abstract. It comprises an
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`outer case with two handles, a front control, is shaped to be held in the hand of a
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`user such that the user’s thumb is positioned to operate the front control, and two
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`back controls with elongated members along the longitudinal axes of the handles,
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`such that the user’s other fingers are position to operate the back controls. Id.,
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`1:49-58.
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`V. CLAIM CONSTRUCTION FOR “INHERENTLY RESILIENT AND
`FLEXIBLE”
`31.
`
`Independent claim 1 recites “inherently resilient and flexible”
`
`elongate members. EX1001, Claim 1. In this Section, I will address Petitioner’s
`
`arguments on this claim phrase and, while I agree with the Board’s prior
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`construction, I will propose clarification to this construction to avoid eviscerating
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`the “inherently” limitation from the claim.
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`32. The Board has previously construed this claim phrase in several
`
`proceedings. In Valve Corp. v. Ironburg Inventions, Ltd., IPR2016-00948, Paper
`
`54 at 5 (January 26, 2018), the Board emphasized that the claimed flexibility is a
`
`characteristic of the elongate member itself:
`
`Significantly, whatever the claim term “flexible” means, it is a
`characteristic of the elongate member, and an elongate member as
`claimed is a distinct element from a switch mechanism. We interpret
`that the term “inherently” modifies both “resilient” and “flexible,” but
`even if it does not, for the reasons that follow, “flexible” is a
`characteristic of the elongate member itself.
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`33. The Board also noted that Claim 1 is directed to “back controls” and
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`“those controls include an elongate member that is inherently resilient and
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`flexible,” while claim 14 recites “that at least one of the controls is in registry with
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`a switch mechanism and does not recite that either the first or second back control
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`includes a switch mechanism.” Id. at 5-6. Moreover, the Board explained that “a
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`switch mechanism is not a subcomponent of the elongate member; rather, a switch
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`mechanism and an elongate member are distinct elements.” Id. at 6. Hence, “the
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`claims suggest that an elongate member as claimed is distinct from a switch
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`mechanism and must be inherently resilient and flexible.” Id.
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`34. The Board also explained on page 7 that these are characteristics of
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`the elongate member and not other components in an assembly that may include an
`
`elongate member:
`
`The Specification only describes the elongate members as
`inherently resilient and flexible and does not attribute those
`characteristics to other components such as the switch
`mechanism. The Specification does not describe a control or an
`elongate member as including a switch mechanism.
`
`35. Similarly, in Valve Corp. v. Ironburg Inventions, Ltd., IPR2017-
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`00136, Paper 12 at 8 (May 4, 2017), the Board concluded that the “elongate
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`member as claimed is ‘inherently resilient’ in that it returns to an unbiased position
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`when not under load (e.g., the load from a user’s finger), and is ‘flexible’ in that it
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`may be bent or flexed by that load.”
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`36.
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`In Valve Corp. v. Ironburg Inventions, Ltd., IPR2017-01928, Paper 11
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`at pg. 8 (February 8, 2018), the Board noted that the Patent Owner Response
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`explained that “the repeated and consistent descriptions of the elongate members in
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`the Specification, Prelim. Resp. 9–12 (citing Ex. 1001, 9:36–38, 9:41–43, Figures
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`19, 20), dictate that inherently, the elongate member itself returns to an unbiased
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`position when not under load (e.g., the load from a user’s finger), and is flexible in
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`that it is formed from a material that may be bent or flexed by that load.”
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`37.
`
`I note that, on pages 9-10, the Board agreed with Patent Owner’s
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`elaboration that “inherently” is specific to the “elongate member itself” and
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`explained that:
`
`Based on these portions of the Specification and the plain language of
`the claim, we determine that “an elongated member which is
`inherently resilient and flexible” as used in the claims of the ’229
`patent refers to inherent characteristics of the elongate member
`itself. The separate recitation of a “switch mechanism” in dependent
`claims 19 and 20 and the illustration and description of switch
`mechanism 348 further supports our conclusion. … Accordingly, we
`determine that “resilient” and “flexible” both describe inherent
`properties of the material from which the elongate member is
`formed, and not other components in an assembly that may include
`an elongate member.
`38. Despite the Board’s clear analysis, noted above, Petitioner argues on
`
`pages 7-8 of its Reply to the Patent Owner’s Preliminary Response (“Reply to
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`POPR”) that “inherently resilient and flexible” must include “designs where the
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`mode of attachment enables an otherwise resilient and flexible member to exhibit
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`these characteristics when mounted to a controller.” Petitioner also argues that it is
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`“the mode of attachment—affixed to a screw over an elevated surface—that
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`enables the paddle to exhibit both flexibility and resiliency.” Id. at 7-8. I disagree
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`with Petitioner’s statements for at least two reasons.
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`39. First, in my opinion, Petitioner’s arguments are unreasonable because
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`they improperly attempt to substitute the claimed “inherently” with the term
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`“exhibiting” in the claim – thereby, effectively eliminating the limitation.
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`40. Second, in my opinion, Petitioner’s arguments on “exhibiting” both
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`flexibility and resiliency is immaterial. As the Board previously explained,
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`inherency refers to the properties of the material itself from which the elongate
`
`member is formed. These inherent properties of the elongate members do not
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`change or alter merely because it is mounted and operated on a controller. Rather,
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`as explained further below, they are permanent and inseparable structural attributes
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`of the elongate members irrespective of how they are mounted or operated.
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`41.
`
`I note that Petitioner also argues on page 10 of the Reply to the POPR
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`that “the ‘525 Patent’s paddle would be nothing but a loose piece of plastic if it
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`were not tightly screwed to the controller [and that the] screw provides the tension
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`that allows the paddle to flex under pressure.” I disagree with Petitioner’s
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`argument for at least two reasons.
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`42. First, in my opinion, it is unreasonable because it improperly reads out
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`the “inherently” limitation from the claim. Second, in my opinion, it is factually
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`incorrect because the loose piece of plastic still retains its inherent material
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`properties, that are permanent and inseparable attributes, regardless of whether it is
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`screwed or unscrewed from the controller.
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`43.
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`It appears that Petitioner is confused between “inherent”
`
`characteristics of the material itself with “stress-induced” characteristics. As
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`explained on pages 67-68 of the textbook, titled Metal and Ceramic Biomaterials -
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`Volume II Strength and Surface, by Ducheyne, P. and Hastings, G., which I
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`understand will be filed as Exhibit 2020, “stress-induced” is a mechanical
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`characteristic that depends on the application of external stresses to the material.
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`“It cannot be considered an inherent characteristic of the material itself.” EX2020
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`at page 68. While the statement was made in the context of stress induced
`
`martensite, the same holds true for any stress-induced material.
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`44. The term “inherently” refers to the characteristic of the material from
`
`which the elongate member itself is formed. Although this was explained in the
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`Board’s decisions, noted above, it was not expressly included in the construction.
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`To avoid application of the Board’s construction out-of-context, I propose the
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`following clarification to the prior construction of “inherently resilient and
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`flexible” to avoid eliminating the “inherently” limitation from the claim.
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`45. As an initial matter, the meaning of “inherent”, as defined on page
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`728 of The Concise Oxford Dictionary, which I understand is filed as Exhibit
`
`2018, means “existing in something as a permanent or essential attribute.”
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`Meanwhile, on page 724 of Webster’s New World Dictionary, which I understand
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`is filed as Exhibit 2019, it defines “inherent” as “existing in someone or something
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`as a natural and inseparable quality, characteristic, or right.”
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`46. Considering these definitions in view of the claimed “elongate
`
`member,” in my opinion, a POSITA would understand that the claim term
`
`“inherently” refers to the “permanent and inseparable attribute, characteristic or
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`quality of the material from which the elongate member itself is formed.”
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`47.
`
`In this regard, when this understanding is considered in the context of
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`the claimed “inherently resilient and flexible”, my proposed clarification of the
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`Board’s construction is that “elongate member itself has permanent and
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`inseparable attributes, characteristics or qualities of being resilient in that it is
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`formed from a material that returns to an unbiased position when not under
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`load, and flexible in that it is formed from a material that may be bent or flexed
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`by that load.”
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`VI. THE KOTKIN REFERENCES (EX1003 AND EX1004)
`48.
`I understand that Petitioner contends that the limitation for “inherently
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`resilient and flexible” elongate members is met by each of Kotkin’s disclosures of
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`(i) the housing bottom 320 in Exhibit 1003, (ii) the line 219 in Exhibit 1003, and
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`(iii) the nondescript features in Fig. J of Kotkin’s provisional application in Exhibit
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`1004. (Petition at 25-27.) I disagree with Petitioner’s contention and I address
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`below the basis of my conclusion.
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`A. Housing Bottom 320
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`49. For housing bottom 320, I understand that Petitioner suggests that
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`Kotkin’s statement of “applying a slight pressure to one of the left or right sides of
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`the housing bottom 320, relative to the top housing 310 (i.e., thus ‘squeezing’ the
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`housing), will actuate a trigger button,” is evidence that it is capable of being
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`flexed by a load. Petition at 25 (quoting EX1003 at ¶¶ 0043-0044).
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`50. Based on my review of the Kotkin reference (EX1003), this statement
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`merely suggests that the housing bottom 320 can be displaced from a biased
`
`position under a load to unbiased position when not under load. In my opinion, a
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`person skilled in the art would understand, in the full context of the Kotkin
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`disclosure, that the suggested effect of “squeezing” the housing is due to biasing by
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`springs 334a, 334b.
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`51. This is true because Kotkin explains the alleged “squeezing” in the
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`context of biasing springs in EX1003 at ¶ [0046]: “Thus, each screw 336a, 336b
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`adjusts the amount of spring force on the corresponding trigger 318a, 318b, and the
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`springs 334a, 334b pull back on a corresponding trigger lever 318a, 318b to assist
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`in the trigger pull when the users grip “squeezes” a respective side of the housing
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`bottom 320.”
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`52. These biasing springs 334a, 334b are annotated in red in Figs. 6C and
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`6D below:
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`53.
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`In connection with the ‘525 Patent, I understand that the Board
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`concluded that biasing by a spring does not establish that the elongate members are
`
`flexible as claimed. IPR2016-00948, Paper 54 at 5, 8. I agree with the Board’s
`
`conclusion.
`
`54. Likewise, in my opinion, the biasing by springs 334a, 334b “to assist
`
`in the trigger pull when the users grip ‘squeezes’ a respective side of the housing
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`bottom 320” does not establish that the elongate member is inherently flexible.
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`55. As stated above in paragraph 50, applying a load on the housing
`
`bottom 320 merely causes displacement of the housing bottom 320 due to biasing
`
`by the springs, while releasing the load would allow the housing bottom to return
`
`back to its initial position. This displacement of the housing bottom 320 is
`
`immaterial to the claimed “inherently resilient” limitation which requires that the
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`housing bottom 320 itself has a permanent and inseparable attribute, characteristic
`
`or quality of being resilient in that it is formed from a material that returns to an
`
`unbiased position when not under load. Neither Petitioner nor Dr. Benden has
`
`shown that the housing bottom 320 itself is formed from a material that returns to
`
`an unbiased position when not under load.
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`56. Thus, in my opinion, Petitioner and Dr. Benden have not shown that
`
`the housing bottom 320 is itself “inherently” flexible and resilient, as required in
`
`independent claim 1.
`
`B.
`
`Line 219
`
`57. For the line 219, I understand Petitioner (and the Benden Declaration)
`
`contend that it is resilient because it is “under tension,” and thus, “would return to
`
`an unloaded position when a user’s finger is removed.” Petition at 26. Further, on
`
`page 10 of the Reply to the POPR, Petitioner argues that:
`
`… while tension is applied to line 219, it is the material makeup of line 219
`that allows it to return to its original state after being deformed under tensile
`pressure. Were line 219 formed of Play-Doh, for example, it would not
`return to its original position when the tensile load was released. The very
`fact that line 219 can retain its shape under load and return to its original
`shape after user pressure is released demonstrates its inherently resilient
`characteristic.
`
`58. Petitioner also advanced the position that resiliency is not exhibited
`
`“in isolation,” but “when actually attached to a controller.” Reply to POPR at 10.
`
`Petitioner’s arguments are incorrect for at least five (5) reasons.
`
`59. First, Petitioner’s arguments ignore the Board’s instruction that
`
`resiliency is an inherent characteristic of the elongate member. IPR2016-00948,
`
`Paper 54 at 5. In this regard, Petitioner’s position improperly attempts to eliminate
`
`17
`
`IRONBURG EX2021, Page 19
`
`
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`IPR2018-00354
`Patent No. 8,641,525
`
`the “inherently” limitation of the independent claim, which is a “structural
`
`characteristic of the material from which the elongate member itself is formed.”
`
`60. Second, Petitioner’s arguments are scientifically and factually
`
`erroneous. Inherent properties of the elongate members do not change or alter
`
`merely because they are mounted and operated on a controller. As explained
`
`above, they are permanent and inseparable structural attributes of the elongate
`
`members irrespective of how they are mounted or operated. The fact that cable
`
`line 219 “retains its shape under load and return to its original shape after user
`
`pressure is released,” is not evidence of inherently resilient characteristic, as
`
`Petitioner speculates on page 10 of the Reply to POPR. Rather, based on basic
`
`mechanical engineering principles, it merely demonstrates that line 219, which is
`
`“stress-induced,” exhibits elastic deformation that allows it to return back to its
`
`original shape until it is pulled past its elastic limit, in which case, it would
`
`experience plastic deformation. While these basic mechanical engineering
`
`principles are well-known to a POSITA, it is also discussed in the context of metal
`
`alloys in the textbook, titled Metal and Ceramic Biomaterials - Volume II Strength
`
`and Surface, for example, Exhibit 2020 on pg. 72 discussing deformation limit,
`
`pgs. 73-74 discussing elastic deformation, and pgs. 70, 72 and 82 discussing plastic
`
`deformation. As stated above, Petitioner’s argument appears to confuse between
`
`18
`
`IRONBURG EX2021, Page 20
`
`
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`IPR2018-00354
`Patent No. 8,641,525
`
`“inherent” characteristics of the material itself with externally “stress-induced”
`
`characteristics similar to a switch with a separate spring element that (i) stores
`
`elastic energy and (ii) restores the switch lever to its original position with that
`
`stored energy.
`
`61. Third, Petitioner has the burden to demonstrate that Kotkin discloses
`
`an elongate member itself has a permanent and inseparable attribute,
`
`characteristic or quality of being resilient in that it is formed from a material that
`
`returns to an unbiased position when not under load. Neither Petitioner nor the
`
`Benden Declaration meet tits burden. Kotkin teaches a “flexible cable or line 219”
`
`(EX1003, ¶ [0033]), but does not disclose, teach or suggest that such cable or line
`
`is itself formed from a material, with permanent and inseparable attribute,
`
`characteristic or quality, that enables it to move to a biased position under load and
`
`then returns to an unbiased position when not under load. In fact, if it was
`
`inherently resilient, then there would no reason to place the line 219 under tension
`
`via a separate spring element. Otherwise, without the tension, it would merely be a
`
`loose string or cable line with an indeterminate position. Notably, Petitioner does
`
`not dispute that without the tension applied to line 219, it would merely be a loose
`
`string or cable line with an indeterminate position. Reply to POPR at page 10.
`
`19
`
`IRONBURG EX2021, Page 21
`
`
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`IPR2018-00354
`Patent No. 8,641,525
`
`Nor can Petitioner dispute that such loose string or cable line would not return by
`
`itself to an unbiased position when a load is removed.
`
`62. Fourth, the Board’s construction mandates that the elongate member
`
`moves from a biased position under load to an unbiased position when not under
`
`load. IPR2016-00948, Paper 54 at 5; Institution Decision at 18. Here, line 219 is
`
`under tension, which means that it is already biased by a certain load. The
`
`application of a user’s finger on the line 219 adds more load to the line 219. Thus,
`
`the line 219 moves from one biased position to another biased (not unbiased)
`
`position. Notably, Petitioner does not dispute this fact in its Reply to POPR at page
`
`10. Thus, Petitioner has not shown that the line 219 is in an “unbiased position
`
`when not under load.”
`
`63. Fifth, Petitioner’s argument fails because the line 219 returns back to
`
`its original position not due to its alleged inherent resiliency, but instead due to
`
`switch mechanism of trigger 119B. Specifically, Kotkin teaches that cable line
`
`219 is connected between lever 218 and self-adhering sheet 220 (which is attached
`
`to trigger or button 119B). (EX1003, [0033]). Kotkin also teaches that
`
`“[a]pplying pressure to the line 219, even lightly, with the palm of the user’s hand
`
`will pull the trigger 119B.” (Id.) In light of this disclosure, in my opinion, a
`
`POSITA would readily understand that line 219 “would return to an unloaded
`
`20
`
`IRONBURG EX2021, Page 22
`
`
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`IPR2018-00354
`Patent No. 8,641,525
`
`position when a user’s finger is removed”, not due to the alleged inherent
`
`resiliency of line 219 itself, as Petitioner contends (Petition at 26), but because the
`
`switch mechanism of trigger 119B would pull back the line 219 to its original
`
`position. As the Board previously explained, biasing by a spring fails to establish
`
`that the elongate members are flexible as claimed. IPR2016-00948, Paper 54 at 5,
`
`8. Similarly, in my opinion, the biasing by a switch mechanism for trigger 119B
`
`also does not establish that the elongate member itself is inherently resilient.
`
`C. Kotkin Provisional – Figures A-O
`64.
`I understand that Petitioner and the Benden Declaration are relying on
`
`the Kotkin provisional application (EX1004) to suggest that certain features
`
`depicted in Figures A-O, particularly in reference to Figure J, are back controls
`
`with elongate members that are inherently resilient and flexible.
`
`65. The Kotkin provisional application does not describe or label the
`
`features or components shown on the back of the controller in any of these figures,
`
`including Fig. J, as back controls or elongate members that are inherently resilient
`
`and flexible.
`
`66. Nor does the Kotkin provisional application provide any labels or text
`
`to identify, di
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