IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PETITION FOR INTER PARTES
`REVIEW PURSUANT TO 37
`C.F.R. §42.100 ET SEQ.
`
`In re U.S. Patent No. 8,641,525
`
`Currently in Litigation Styled:
`Ironburg Inventions Ltd. v.
`Collective Minds Gaming Co. Ltd.
`Case No: 1:16-cv-04110-TWT
`
`Issued: February 4, 2014
`
`Application Filed: June 17, 2011
`
`Inventors: Simon Burgess, et al.
`
`Title: Controller for Video Game Console
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATION OF MARK BENDEN, PhD, CPE
`
`I. Introduction
`
`I, Mark Benden, Ph.D., CPE, declare:
`
`1.
`
`I am making this declaration at the request of Collective Minds Gaming Co. Ltd.
`
`in the matter of the Inter Partes Review of U.S. Patent No. 8,641,525 (“the ’525 Patent”) to
`
`Burgess, et al.
`
`2.
`
`I am being compensated for my work in this matter. My compensation in no way
`
`depends upon the outcome of this proceeding.
`
`1
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`3.
`
`(1)
`
`(2)
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`In the preparation of this declaration, I have studied:
`
`The ’525 Patent, Exhibit 1001;
`
`The prosecution history of the ’525 Patent, Exhibit 1002;
`
`(3) U.S. Patent Publication No. 2010/0298053 to David Kotkin (“Kotkin”), Exhibit
`1003;
`
`(4) U.S. Provisional Patent Application No. 61/179,551 to David Kotkin (“’551
`Provisional”), Exhibit 1004;
`
`(5) U.S. Patent No. 6,760,013 to Michael A. Willner, et al. (“Willner”), Exhibit
`1005;
`
`(6)
`
`Japanese Patent Publication JPH1020951 to Tsuchiya Koji (“Koji”), Exhibit
`1006;
`
`(7) U.S. Patent No. 5.773,769 to Christopher W. Raymond (“Raymond”), Exhibit
`1007.
`
`4.
`
`(1)
`
`(2)
`
`(3)
`
`In forming the opinions expressed below, I have considered:
`
`The documents listed above,
`
`The relevant legal standards, including the standard for obviousness provided in
`KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007),
`
`The following background materials: Dark Watcher, History of the Game
`available
`at
`Controller,
`Video
`Game
`Console
`Library
`https://web.archive.org/web/20080920145239/
`http://www.videogameconsolelibrary.com/art-controller.htm Exhibit 1013,
`
`(4) My knowledge and experience based upon my work in this area, as described
`below.
`
`
`II. Qualifications and Professional Experience
`
`5. My complete qualifications and professional experience are described in my
`
`curriculum vitae, a copy of which can be found attached hereto as Exhibit 1009. I am an expert
`
`in the field of mechanical design, bioengineering, ergonomics, and product design, among other
`
`
`
`2
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`fields. I have a B.S. in Bioengineering, an M.S. in Industrial Engineering, and a Ph.D. in
`
`Interdisciplinary Engineering, and I am a Certified Professional Ergonomist. I have been
`
`working in the fields of ergonomics, mechanical engineering and industrial design for twenty-
`
`five (25) years and I am currently the Department Head, Associate Professor and Director of the
`
`Ergonomics Center at Texas A&M Health Science Center, School of Public Health,
`
`Environmental & Occupational Health Department. I have taught courses in human product
`
`safety, ergonomics and industrial design and human factors, among others; I have advised
`
`graduate students and Ph.D. candidates conducting research in human centered design and
`
`accommodation; and have been an author of peer-reviewed journal articles and presented my
`
`research at numerous conferences. As a professional in industry, I designed hand tools for
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`surgeons and ergonomic controls for seating and computer accessories. I have received awards
`
`for my work in ergonomics and industrial design, including several ADEX awards for Design
`
`Excellence including designs specifically dealing with human control manipulation with the
`
`hands. I am an inventor or co-inventor of 20 U.S. patents and several pending patent
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`applications, in the fields of mechanical design for human use, ergonomics and industrial
`
`design.
`
`6.
`
`In summary, I have extensive familiarity with design for hand controls.
`
`III. Level of Ordinary Skill in the Art
`7.
`
`I am familiar with the knowledge and capabilities of persons of ordinary skill in
`
`product design around June 2011, the earliest claimed prior date for the ’525 Patent. I base this
`
`on my experience in design and ergonomics, including the specific experience listed above in
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`Section II and the further experience detailed in my CV, which is attached as Exhibit 1009 to
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`this declaration. One of ordinary skill in the art would have been familiar with ergonomic
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`aspects of handheld device design, which would include ergonomic aspects of video game
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`controller configurations. This person of ordinary skill in the art would also have been familiar
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`with cost and durability considerations and would have understood how those considerations
`
`impact product design and manufacturing.
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`8.
`
`In my opinion, the level of ordinary skill in the art that one would need in order
`
`to have the capability of understanding the scientific and engineering principles applicable to
`
`the ’525 Patent is (i) a Bachelor’s degree (or higher degree) in an academic area emphasizing
`
`mechanical engineering or similar discipline and (ii) at least 2 years of industry experience in
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`product design or the equivalent. Additional industry experience or technical training may offset
`
`less formal education, while advanced degrees or additional formal education may offset lesser
`
`levels of industry experience.
`
`IV. Relevant Legal Standards
`9. Obviousness
`
`a.
`
`I have been asked to provide my opinions regarding whether the claims 1-
`
`11 and 13-20 of the ’525 Patent would have been obvious to a person having ordinary skill in the
`
`art at the time of the alleged invention, in light of the prior art.
`
`b.
`
`I have been informed and understand that a patent claim is not patentable
`
`under 35 U.S.C. § 103 if the differences between the patent claim and the prior art are such that
`
`the claimed subject matter as a whole would have been obvious at the time the claimed invention
`
`was made to a person having ordinary skill in the art to which the subject matter pertains.
`
`Obviousness, as I have been informed, is based on the scope and content of the prior art, the
`
`differences between the prior art and the claim, the level of ordinary skill in the art, and, to the
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`extent that they exist and have an appropriate nexus to the claimed invention (as opposed to prior
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`art features), secondary indicia of non-obviousness.
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`c.
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`I have been informed that whether there are any relevant differences
`
`between the prior art and the claimed invention is to be analyzed from the view of a person of
`
`ordinary skill in the art at the time of the invention. As such, my opinions below as to a person of
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`ordinary skill in the art are as of the time of the invention, even if not expressly stated as such;
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`for example, even if stated in the present tense.
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`d.
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`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I have been informed that I must consider the impact, if any, of such
`
`differences on the obviousness or non-obviousness of the invention as a whole, not merely some
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`portion of it. The person of ordinary skill faced with a problem is able to apply his or her
`
`experience and ability to solve the problem and also look to any available prior art to help solve
`
`the problem.
`
`e.
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`An invention is obvious if a person of ordinary skill in the art, facing the
`
`wide range of needs created by developments in the field, would have seen an obvious benefit to
`
`the solutions tried by the applicant. When there is a design need or market pressure to solve a
`
`problem and there are a finite number of identified, predictable solutions, it would be obvious to
`
`a person of ordinary skill to try the known options. If a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique would have been obvious.
`
`f.
`
`I have been informed that a precise teaching in the prior art directed to the
`
`subject matter of the claimed invention is not needed. I have been informed that one may take
`
`into account the inferences and creative steps that a person of ordinary skill in the art would have
`
`employed in reviewing the prior art at the time of the invention. For example, if the claimed
`
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`invention combined elements known in the prior art and the combination yielded results that
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`were predictable to a person of ordinary skill in the art at the time of the invention, then this
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`evidence would make it more likely that the claim was obvious. On the other hand, if the
`
`combination of known elements yielded unexpected or unpredictable results, or if the prior art
`
`teaches away from combining the known elements, then this evidence would make it more likely
`
`that the claim that successfully combined those elements was not obvious.
`
`g.
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`I have been informed that hindsight must not be used when comparing the
`
`prior art to the invention for obviousness.
`
`h.
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`Obviousness may also be shown by demonstrating that it would have been
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`obvious to modify what is taught in a single piece of prior art to create the subject matter of the
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`patent claim. Obviousness may be shown by showing that it would have been obvious to
`
`combine the teachings of more than one item of prior art. In determining whether a piece of prior
`
`art could have been combined with other prior art or combined with or modified in view of other
`
`information within the knowledge of one of ordinary skill in the art, the following are examples
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`of approaches and rationales that may be considered:
`
`•
`
`•
`
`•
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`•
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`Combining prior art elements according to known methods to yield predictable
`results;
`Simple substitution of one known element for another to obtain predictable
`results;
`Use of a known technique to improve similar devices (methods, or products) in
`the same way;
`Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
`
`
`
`
`
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`•
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`•
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`•
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`Applying a technique or approach that would have been "obvious to try"
`(choosing from a finite number of identified, predictable solutions, with a
`reasonable expectation of success);
`Known work in one field of endeavor may prompt variations of it for use in either
`the same field or a different one based on design incentives or other market forces
`if the variations would have been predictable to one of ordinary skill in the art; or
`Some teaching, suggestion, or motivation in the prior art that would have led one
`of ordinary skill to modify the prior art reference or to combine prior art reference
`teachings to arrive at the claimed invention.
`
`i.
`
`I have been informed that even if a prima facie case of obviousness is
`
`established,
`
`the
`
`final determination of obviousness must also consider "secondary
`
`considerations"
`
`if presented. In most
`
`instances,
`
`the patentee raises
`
`these secondary
`
`considerations of non-obviousness. In that context, the patentee argues an invention would not
`
`have been obvious in view of these considerations, which include: (a) commercial success of a
`
`product due to the merits of the claimed invention; (b) a long-felt, but unsatisfied need for the
`
`invention; (c) failure of others to find the solution provided by the claimed invention; (d)
`
`deliberate copying of the invention by others; (e) unexpected results achieved by the invention;
`
`(f) praise of the invention by others skilled in the art; (g) lack of independent simultaneous
`
`invention within a comparatively short space of time; (h) teaching away from the invention in the
`
`prior art.
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`j.
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`I have been informed and further understand that secondary considerations
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`evidence is only relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be to prior art features. The establishment
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`of a nexus is a question of fact.
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`10. Claim Construction
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`a.
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`I have been informed that the first step in an invalidity analysis involves
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`construing the claims, as necessary, to determine their scope. And, second, the construed claim
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`language is then compared to the disclosure of the prior art. In proceedings before the USPTO, I
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`have been informed that the claims of an unexpired patent are to be given their broadest
`
`reasonable interpretation in view of the specification from the perspective of one skilled in the
`
`art. I have been informed that the ’525 Patent has not expired. In comparing the claims of the
`
`’525 Patent to the known prior art, I have carefully considered the ’525 Patent and the ’525
`
`Patent prosecution history based upon my experience and knowledge in the relevant field. For
`
`purposes of this proceeding I have applied the broadest reasonable interpretation of the claim
`
`terms of the ’525 Patent that is generally consistent with the terms’ ordinary and customary
`
`meaning, as one skilled in the relevant field would have understood them. Because I have been
`
`informed that the claim construction standard in this proceeding differs from that used in U.S.
`
`district court litigation, nothing herein should be taken as an indication that I consider these
`
`constructions to control in a district court setting.
`
`V. Overview of the ’525 Patent
`11. This overview is not meant to describe my full understanding of the ’525 Patent,
`
`but is only used to generally describe the relevant functionalities of the ’525 Patent.
`
`12. The ’525 Patent generally describes the control configuration of a standard prior
`
`art video game controller, which includes controls on the front face, actuated by a user’s
`
`thumbs, and controls on the top edge, actuated by a user’s index fingers. See Ex. 1001 at FIG. 1.
`
`In addition to the standard controls on the top and front of the controller, the ’525 Patent
`
`proposes two additional paddle controls on the back of the controller, operable by the user’s
`
`index, middle, ring, or little fingers. Id. at FIG. 3; id. at 3:45-47. These back-mounted controls
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`are designed to be “resilient” and “flexible” and are mounted within a recess in the controller.
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`Id. at 1:62-63. Regarding resiliency of the paddles, the ’525 Patent notes that “they return to an
`
`unbiased position when not under load.” Id. at 3:33-34. Regarding flexibility, the ’525 Patent
`
`teaches that using a plastic material that allows for the paddles to be thin and flexible. Id. at
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`3:28-30. To enable this flexible and resilient configuration, a mechanical fixing, such as a screw
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`or a bolt, attaches the paddles to the controller body at one end. Id. at 4:4-9. Alternatively, the
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`paddles could be “integrally formed with the controller body.” Id. at 4:15-16.
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`13. Put simply, the ’525 Patent describes a standard video game controller base,
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`which includes front controls operable by a user’s thumbs, top controls operable by a user’s
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`index fingers, and back controls operable by a user’s index, middle, ring, or little fingers that are
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`fixed on one end, flexible, and resilient.
`
`VI. State of the Relevant Art in 2011
`14. One of the first widely used video game controllers was released in 1983 when
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`Nintendo introduced its game console the NES and accompanying controller.1 The NES
`
`controller featured button controls (circle/square buttons and a directional-pad) on the front face
`
`of the controller, which were designed to be operated by a user’s thumbs.2
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`15. Additional buttons were added to subsequent video game controllers in
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`accordance with the natural position of a user’s hands (and fingers) when operating the
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`controller. First, in 1990, the Nintendo introduced the SNES and accompanying controllers,
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`which popularized “shoulder buttons.”3 Shoulder buttons were located on the top of the
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`controller surface and were operated by a user’s index fingers, taking advantage of the position
`
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`1 See Ex. 1013, Dark Watcher at 2.
`2 See id.
`3 See id.
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`where the user’s fingers were naturally placed when operating the controller. In 1996, Nintendo
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`introduced its next generation of video game consoles, the Nintendo64 and accompanying
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`controller, which featured a back-mounted button, placed where a user’s middle finger rests
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`when holding a controller.4
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`16. Ergonomic considerations led to a change in the overall shape of video game
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`controllers, which transitions from the original square NES controller to the oval SNES
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`controller and eventually included pronounced handles like the Sega Dreamcast controller.5 The
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`handles were further modified to create a more ergonomic feel for the user by including recesses
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`that allowed the user to comfortably wrap their hands around each handle, like the Sony
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`PlayStation controller.6 One constant through these design changes was that the controls were
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`generally located on the controllers in positions where a user’s fingers would naturally be
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`placed and could comfortably engage said controls.
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`VII. Opinions Concerning Kotkin and the Knowledge of a Person of
`Ordinary Skill in the Art
`17.
`
`I have been asked to consider whether claims 1-3, 5-11, 13, 14, 17-18, and 20 are
`
`obvious over Kotkin in view of the knowledge of a person of skill in the art. It is my opinion
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`that they are indeed obvious and that the combination of Kotkin and the knowledge of a person
`
`of skill in the art teaches all elements of claims 1-3, 5-11, 13, 14, 17-18, and 20 as set forth in
`
`the Petition.
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`18. The Kotkin controller accessory is within the same field of endeavor and
`
`reasonably pertinent to problems with which the ’525 Patent was concerned. The Kotkin
`
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`4 See id.
`5 See id. at 3.
`6 See id.
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`controller, like the ’525 Patent, modifies an existing prior art controller to contain additional
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`elongate back controls, which allow a user to utilize fingers other than the thumbs to engage a
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`control. See Ex. 1003, Kotkin at [0008] and [0031]. One of the embodiments of Kotkin teaches
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`a “skin” or shell that is placed around either part or all of the existing controller body, with
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`attached actuators that are arranged to be operated in various ways by the user. Id. at [0029]-
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`[0030]. In addition to the attached actuators, Kotkin teaches two separate embodiments for
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`elongated controls designed to be engaged by the user at the back of the controller. In a first
`
`embodiment, the bottom half of the housing acts like a pressure plate, wherein the user squeezes
`
`the bottom of the housing to actuate a trigger function of the existing controller. Id. at [0044].
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`This embodiment is illustrated below in the annotated FIG. 5 from Kotkin:
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`Paddle-style controls 318a and 318b (highlighted above) are mounted on a pivot and designed
`
`to engage front-mounted trigger controls on the video game controller. Id. at [0043]. The
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`arrangement sandwiches these paddle-style controls between the yellow-highlighted portions of
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`housing bottom 320 and yellow-highlighted housing covers 330a and 330b such that, “when the
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`housing is closed with a controller therein, applying a slight pressure to one of the left or right
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`sides of the housing bottom 320 [green highlighting above], relative to the top housing 310 (i.e.,
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`thus ‘squeezing’ the housing), will actuate a trigger button (such as L1, L2 or R1, R2) on the
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`end face of the controller with the appropriate trigger lever 318 a, 318 b.” Id. at [0043-0044].
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`Further, springs 334a and 334b (highlighted above) allow a user to adjust the amount of force
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`necessary to engage the paddle-style controls. Id. at [0045-0046]. In a second embodiment,
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`Kotkin provides a “flexible cable or line” that runs from a trigger control, under the controller,
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`to a point on the controller body, anchored by tape or a self-adhering sheet. Id. at [0033]. The
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`following FIG. 3 illustrates this arrangement:
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`
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`Similar teachings are found in the provisional patent filing to which Kotkin claims priority. For
`
`example, the following FIG. J from the ’551 Provisional illustrates elongate members that
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`extend (on both sides) from the handle ends to trigger controls and are designed to be depressed
`
`by a user to actuate the trigger controls:
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`19. Although the second embodiment cables/lines are illustrated on only a single
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`side of the Kotkin controller, one of skill in the art would have recognized that it would have
`
`been obvious to implement these back controls on both sides, consistent with the first
`
`embodiment, which includes two separate back controls. Kotkin expressly notes that the sides of
`
`the housing bottom 320, which form the back controls in the first embodiment, are intended to
`
`operate in the same way to accomplish the same goal as the second embodiment back control
`
`cable/line. See Ex. 1003, Kotkin at [0043]. Modifying the second embodiment of the Kotkin
`
`controller to include two cable/line back controls—one on each side—would be straightforward,
`
`would not require undue experimentation, and would produce predictable results. These back
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`control embodiments disclosed by Kotkin are simply alternate design choices and one of
`
`ordinary skill would have appreciated that implementing the cable/line embodiment on both
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`sides of the controller would have been natural and an application of nothing more than ordinary
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`skill and common sense.
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`20. Further evidencing that one of skill in the art would have found it obvious to
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`implement two back controls, rather than just one, in the second embodiment of Kotkin as
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`separate, stand-alone flexible cables or lines, the ’551 Provisional illustrates this precise
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`configuration. For example, FIGs A-L illustrate an embodiment that employs separate elongate
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`controls on both sides of the back of an Xbox controller. FIGs C and F, reproduced below,
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`provide clear views of these separate elongate controls:
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`21. A person of ordinary skill in the art would recognize that the back controls in the
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`above-described embodiments are inherently resilient and flexible. Actuation of the squeezable
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`housing triggers disclosed in Kotkin at [0044] would require the housing to return to an
`
`unbiased position when the user stopped applying pressure to the housing bottom. Such
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`functionality would be necessary to preserve the original function of the trigger controls on the
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`top of the controller. If the housing did not return to its original position when the load was
`
`removed, the triggers could only be actuated by the user a single time and would have to be
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`manually reset, thereby negating the improved ergonomic and efficient design of the controller.
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`Similarly, the cables and lines disclosed by Kotkin are expressly described as flexible and
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`would be understood by a PHOSITA to be resilient such that they return to a “normal” position
`
`when unloaded. Id. at [0033]. Such lines would necessarily return to an unbiased position when
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`the user removed pressure from them (i.e., resilient) in order to remain functional. If they were
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`not, the controls would be single-use, which a person of skill in the art would easily recognize
`
`as impractical. Finally, for the same reasons, the elongate members illustrated in FIG. J of the
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`’551 Provisional would be depressed by the user to actuate the illustrated trigger controls and
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`would then return to their unbiased position.
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`22. A person of ordinary skill in the art would further recognize that the elongate
`
`paddle levers disclosed by Kotkin are in a position to be operated by a user’s middle finger. In
`
`the first embodiment, the bottom portion of the housing rests in between the two handles of the
`
`existing controller, allowing the user’s middle fingers to contact the bottom of the housing when
`
`the controller is gripped naturally. See id. at FIGs. 6B, 7. Likewise, the ’551 Provisional teaches
`
`thin, elongate cables or lines that extend from the triggers on the top of the existing controller to
`
`the distal end of each handle. See Ex. 1004, ’551 Provisional at FIGs. A-L. These “lines” are
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`arranged such that they follow the trajectory of the handle of the existing controller, and allow
`
`the user to actuate a control function using a middle finger.
`
`23. Claim 7 of the ’525 Patent requires the elongate members are “mounted within a
`
`recess located in the case of the controller.” As illustrated in Kotkin at FIGs. 6B, 6C, and 7
`
`below, the first embodiment back controls are placed within the recessed portion of the
`
`controller.
`
`
`
`Namely, a recess is formed between the handles of the controller and the housing bottom 320 is
`
`positioned within this recess. FIG. 7 best illustrates the recess between the handles of controller
`
`120. A person of skill in the art would recognize that the depicted designs result in a combined
`
`product such that, when the housing is mounted around controller 120, the bottom edge of said
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`housing 320 would reside within the recessed area between the handles. Although Kotkin does
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`not describe precisely how deep within the recessed area the housing bottom 320 should reside,
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`one of skill in the art would have recognized that mounting the housing 320 sufficiently close to
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`the outermost surface of the bottom side of the controller would provide important ergonomic
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`benefits. Namely, the recessed area on the underside of a modern controller as described by
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`Kotkin serves both to define the handles of the controller and to provide an area within which
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`the user’s fingers (in particular, the middle fingers) may rest. Arranging the housing 320
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`sufficiently close to the bottom side of the controller within the recessed area would preserve
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`this ergonomic benefit of the recessed area. Such a configuration is nothing more than a
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`common sense design choice that would result in a more ergonomic, more streamlined, and less
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`bulky controller.
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`24. Claims 9-11 of the ’525 Patent recite specific thicknesses for the claimed
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`elongate members. Although Kotkin does not expressly discuss the thickness of the flexible
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`housing 320, which comprises the elongate members, one of skill in the art would recognize
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`from the depictions of this housing and its comparative thickness to the dimensions of the
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`depicted video game controller and from the descriptions of its flexibility that the material
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`would have most likely been in the range of between 1mm and 3mm. This thickness is
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`consistent with the design goals of the product described by Kotkin, Namely, a person of skill in
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`the art would recognize that the housing material would need to be thin enough to remain
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`flexible, but thick enough to be sturdy and durable. Given the dimensions of the standard video
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`game controller on which Kotkin is based and the typical materials used for such products, a
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`thickness between 1mm and 3mm would be a common-sense choice for such housing. This
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`same thickness would similarly be an obvious choice for the second embodiment of Kotkin.
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`Namely, the thickness of the flexible cables or lines would very likely be in the 1mm to 3mm
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`range. The same durability and flexibility considerations would direct a person having skill in
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`the art to build the additional back controls with a thickness of 1-3mm. Finally, a person of skill
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`in the art would recognize that the third embodiment depicted in the ’551 Provisional depicts
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`elongate members that appear to be in the 1mm to 3mm range. As with the above analyses, I
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`base this conclusion on the relative thickness compared to the standard video game controller
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`depicted in figures such as the following:
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`25. Accordingly, it is my opinion that it would have been obvious to a person having
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`ordinary skill in the art to modify the teachings of Kotkin with common sense and ordinary skill
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`to incorporate additional back controls of 1-3mm thickness into the recessed portions of the
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`existing video game controllers, and further incorporating such designs into the manufactured
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`controller body and eliminate the need for a second housing.
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`VIII. Opinions Concerning Willner, Koji, and Raymond
`26.
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`I have been asked to consider whether claims 1-11, 13-17, and 19-20 are obvious
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`over Willner in view of Koji in further view of Raymond. It is my opinion that they are indeed
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`obvious and that the combination of Willner, Koji, and Raymond teaches all elements of claims
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`1-11, 13-17, and 19-20 as set forth in the claim chart for this combination in the Petition.
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`27. For a number of reasons, it would have been obvious to one of skill in the art to
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`modify the system described by Willner with the removable channel-mounting accessory taught
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`by Koji. Willner and Koji are in the same technological field and substantially overlap in
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`relevant subject matter with the ’525 Patent. Both references teach a modified arrangement of
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`standard video game controllers. Compare Ex. 1005, Willner at 2:33-35 (“Additionally, the
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`hand held gaming and data entry system includes a second set of switch pushbutton controls
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`disposed on the hand grip portion of the housing for operation by the user’s fingers…”); FIG 2.
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`with Ex. 1006, Koji at [0028]. (“In accordance with the present invention, as described above,
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`pseudo-analog functionality enabling delicate operation can be imparted to a conventional
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`controller.”). Further, the controller of Willner already contains the configuration contemplated
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`by Koji. Namely, Koji is directed to mounting its paddle accessories over rows of multiple
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`switch buttons such that the user can engage one of said switch buttons by pressing the paddle
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`lightly and multiple switch buttons by pressing the paddle firmly. See Ex. 1006, Koji at FIG. 3.
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`Willner teaches this precise configuration with rows of multiple button switches aligned on
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`either side of the controller under-side. A person of ordinary skill in the art would have
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`recognized that by applying the express teachings of Koji, the paddles of Koji could easily be
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`mounted on the under-side of a controller like Willner’s, using the tightening screw disclosed in
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`Koji, to create a video game controller capable of engaging multiple button switches on the
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`under-side via a single press of the paddle control. Koji describes the benefit of enabling a user
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`to press multiple buttons at once—allowing a user to create a quasi-analog input by enabling the
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`user to vary the intended force by depressing the paddle by different amounts. Id. at [0005],
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`[0024]. A person of ordinary skill in the art would have recognized that by applying the express
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`teachings of Koji, the paddles of Koji could easily be mounted on the under-side of a controller
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`like Willner’s, using the tightening screw disclosed in Koji, to create a video game controller
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`capable of producing quasi-analog inputs in addition to the pre-existing digital inputs of the
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`remaining controls taught by Willner. The following annotated figure from Willner uses yellow
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`elongated boxes indicate where the paddle controls (reference number “6”) from Koji would be
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`mounted on both sides of the Willner controller. Additionally, the green boxes indicate where
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`the Koji mounting portion (reference number “4”) would be attached to the Willner controller
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`using fastening screw (reference number “7”).
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`Alternatively, the Koji paddle design could be incorporated into the Willner controller as a
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`permanent design ele