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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Collective Minds Gaming Co. Ltd.
`Petitioner
`
`v.
`
`Ironburg Inventions Ltd.
`Patent Owner
`
`____________
`
`Case No. TBD
`
`Patent 8,641,525
`____________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT 8,641,525
`
`
`
`
`
`

`

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`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................................... 1
`I.
`’525 PATENT PROSECUTION AND PRIORITY DATE ......................................................... 2
`II.
`A. SUMMARY OF THE PROSECUTION HISTORY OF THE ’525 PATENT ....................................................... 2
`B. THE EARLIEST POSSIBLE PRIORITY DATE FOR THE CHALLENGED CLAIMS ........................................ 5
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104 ............... 5
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) .................................................................... 5
`B.
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED .......... 5
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ................................................. 6
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................................................................... 7
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF THE
`’525 PATENT ARE UNPATENTABLE .................................................................................. 9
`A. GROUND 1: CLAIMS 1-3, 5, 6, 9-11, 14, 17-18, AND 20 OF THE ’525 PATENT ARE OBVIOUS
`UNDER KOTKIN IN VIEW OF THE KNOWLEDGE OF A PERSON OF ORDINARY SKILL IN THE ART ............................... 9
`B. GROUND 2: CLAIMS 1, 2, 4-11, 13-17, AND 19-20 OF THE ’525 PATENT ARE OBVIOUS UNDER
`WILLNER IN VIEW OF KOJI AND IN FURTHER VIEW OF RAYMOND ............................................................................... 44
`V. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .................................................. 78
`A. REAL PARTY-IN-INTEREST ........................................................................................................................ 78
`B. RELATED MATTERS ..................................................................................................................................... 78
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3-4) ................................................... 79
`D. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ................................................................................... 79
`THE UNDERSIGNED SUBMITTED PAYMENT BY DEPOSIT ACCOUNT WITH THE FILING OF THIS PETITION
`AUTHORIZING THE OFFICE TO CHARGE FEES REQUIRED UNDER 37 C.F.R.§ 42.103(A) AND 42.15(A). ............ 79
`VI. CONCLUSION ............................................................................................................................... 79
`
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`

`

`Petition for Inter Partes Review of U.S. Patent 8,641,525
`
`I.
`
`INTRODUCTION
`
`Petitioner Collective Minds Gaming Co. Ltd. (“Petitioner”) respectfully
`
`requests an Inter Partes Review (“IPR”) of claims 1-11 and 13-20 (collectively,
`
`the “Challenged Claims”) of U.S. Patent 8,641,525 (“the ’525 Patent”), titled
`
`“Controller For Video Game Console.” The ’525 Patent is broadly directed to
`
`modern video game controllers such as the following illustration, which is
`
`applicant admitted prior art:
`
`
`
`Ex. 1001, ’525 Patent at FIG. 1. The ’525 Patent’s alleged point of novelty is
`
`simply adding multiple elongate controls on the underside capable of being
`
`operated by a user’s middle fingers. Id. at 1:6-58. The following figures illustrate
`
`these back controls:
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` 1
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`As demonstrated by Petitioner below, the alleged point of novelty, i.e., adding back
`
`
`
`
`
`controls operable by a user’s middle fingers, was present in the prior art.
`
`II.
`
`’525 PATENT PROSECUTION AND PRIORITY DATE
`
`A.
`
`Summary of the Prosecution History of the ’525 Patent
`
`The ’525 Patent resulted from U.S. Patent Application No. 13/162,727 (“the
`
`’727 Application”), filed on June 17, 2011. Ex. 1001, ’525 Patent at (21-22).
`
`Claims 1-7, 11, 13-14, and 17-20 were initially rejected as anticipated by U.S.
`
`Patent No. 6,394,906 to Ogata (“Ogata”). Ex. 1002, ’525 Patent File History, at
`
`Office Action dated 06/28/2012 at 40. Further, claims 8-10, 12, and 15-16 were
`
`rejected as obvious over Ogata. Id. at 43. Applicant filed a Response on October
`
`29, 2012, amending claims 1-2, 4, and 6-20, cancelling claims 3 and 5, and adding
`
`new claims 21-22. Id., at Office Action Response dated 10/29/2012 at 62.
`
`Applicant’s amendments to independent claim 1 replaced the “one or more back
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`
`
` 2
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`controls” with “a back control . . . is an elongate member that extends between the
`
`top edge and the bottom edge and is inherently resilient and flexible.” Id. at 58.
`
`Claim 22 was then rejected as anticipated by U.S. Patent No. 7,859,514 to
`
`Park (“Park”). Id., at Office Action dated 02/04/2013 at 82. Claims 1-2, 4, and 6-
`
`21 were also rejected as obvious over Park, in view of U.S. Patent Publication No.
`
`2004/0224765 to Martinez et al. (“Martinez”). Id. at 84. The Applicant and the
`
`Examiner then held a telephone interview on April 25, 2013 to discuss the
`
`Applicant’s proposed amendments in response to the Final Office Action. Id., at
`
`Applicant-Initiated Interview Summary at 116. The Examiner also notified the
`
`Applicant that he had located an additional reference disclosing the invention
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`disclosed by the claims. Id.
`
`Applicant filed a Response on May 6, 2013, amending claims 1, 4, 6-20, and
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`22. Id., at Office Action Response dated 05/06/2013, at 110. Applicant’s
`
`amendment to Claim 1 replaced the “back control . . . is an elongate member”
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`limitation with “a first back control and a second back control, each back control
`
`being located on the back of the controller and each back control including an
`
`elongate member that extends substantially the full distance between the top edge
`
`and the bottom edge and is inherently resilient and flexible.” Id. at 106. The Patent
`
`Office then issued an Advisory Action stating that the proposed amendments
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` 3
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`would not be entered because they raised new issues that would require further
`
`searching. Id., at Advisory Action dated 05/15/2013 at 118.
`
`On August 5, 2013, the Applicant filed a Request for Continued
`
`Examination and a Response to the Final Office Action and Advisory Action. Id. at
`
`Office Action Response dated 08/05/2013 at 121. As part of the response,
`
`Applicant resubmitted his claim amendments from the prior Advisory Action. Id.
`
`On August 9, 2013, the Examiner issued a non-final Office Action, rejecting
`
`claims 1-2, 4, 6-7, 11-12, and 15-22 as anticipated by “Review: Scuf Xbox 360
`
`Controller” by Dave Burns (“Burns”). Id. at Office Action dated 08/09/2013. The
`
`Examiner also rejected claims 8-10 as being obvious over Burns, claims 13-14 as
`
`being obvious in view of Burns in view of 5,551,693 to Goto (“Goto”). Id. at 158-
`
`159.
`
`In response to the non-final Office Action, the inventor, Simon Burgess,
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`submitted a declaration stating that he was the inventor of the subject matter
`
`disclosed in the Burns reference. Id., at Office Action Response dated 10/14/2013
`
`at 179-180. The Applicant further argued in response that without Burns, the
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`rejection is overcome. Id. at 175-176.
`
`A Notice of Allowance followed on November 18, 2013 (id. at 184) and the
`
`’525 Patent issued on February 4, 2014 (Ex. 1001, ’525 Patent at (45)).
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
`
`B.
`
`The Earliest Possible Priority Date for the Challenged Claims
`
`For the purposes of this IPR, it is assumed that the Challenged Claims are
`
`entitled to a June 17, 2011 priority—the filing date for the ’727 Application.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’525 Patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of
`
`the ’525 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
`
`’525 Patent; (2) Petitioner has not filed a civil action challenging the validity of
`
`any claim of the ’525 Patent; and (3) this Petition is not filed one year or more after
`
`Petitioner was served with a complaint alleging infringement of the ’525 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claim charts, Claims 1-11 and 13-20
`
`of the ’525 patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1).
`
`i.
`
`The Grounds for Challenge
`
`Based on the prior art references identified below, IPR of the Challenged
`
`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
`
`Ground
`
`Proposed Statutory Rejections for the ’387 Patent Reference
`Exhibit
`No.
`1003,
`
`Claims 1-3, 5-11, 13, 14, 17-18, and 20 are obvious under
`U.S. Patent Publication No. 2010/0298053 to Kotkin
`(“Kotkin”) in view of the knowledge of a person of skill in
`the art.
`Claims 1-11, 13-17, and 19-20 are obvious under U.S.
`Patent No. 6,760,013 to Michael A. Willner, et al.
`(“Willner”)
`in view of Japanese Patent Publication
`JPH1020951 to Tsuchiya Koji (“Koji”), in further view of
`U.S. Patent No. 5.773,769 to Christopher W. Raymond
`(“Raymond’).
`Section IV identifies where each element of the Challenged Claims is found
`
`1
`
`2
`
`1004
`
`1005,
`
`1006,
`
`1007
`
`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided above and the
`
`relevance of the evidence to the challenges raised are provided in Section IV. 37
`
`C.F.R. § 42.104(b)(5). Exhibits EX1001 – EX1013 are also attached.
`
`C.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`A person of ordinary skill in the art of the ’525 Patent at the time of the
`
`claimed invention would have the equivalent of a bachelor’s degree in mechanical
`
`engineering or a similar discipline, with at least 2 years of experience with 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. Ex. 1008, Benden Decl.
`
`at ¶8.
`
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`
`In this proceeding, claim terms of an unexpired patent should be given their
`
`“broadest reasonable construction in light of the specification.” 37 C.F.R. §
`
`42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016).
`
`With the single exception discussed below, Petitioner proposes as the broadest
`
`reasonable construction, for purposes of IPR only, that the claim terms of the ’525
`
`Patent be given their ordinary and customary meaning that the term would have to
`
`one of ordinary skill in the art.
`
`i.
`
`Converging paddles
`
`Claim 13 recites “the elongate members converge towards the front end of
`
`the controller with respect to one another.” The ’525 Patent provides little detail
`
`regarding the meaning of this phrase. Beyond repeating the claim language, only
`
`the figures and the following excerpt describe any paddle convergence:
`
`In one embodiment the paddles are orientated parallel with each other.
`In an alternative embodiment the paddles are orientated such that
`they converge towards the top edge with respect to each other.
`
`Ex. 1001, ’525 Patent at 3:53-56 (emphasis added). This concept is illustrated
`
`most clearly in the following FIG 2:
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`
`
`As illustrated in FIG. 2 and as described in the excerpt above, the paddles
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`converge toward each other as the paddles near the “top edge” of the controller.
`
`Curiously, Claim 13 states that the paddles converge with respect to each other
`
`toward the “front end” of the controller. Although this language, on its face,
`
`appears somewhat inconsistent with the intrinsic record, Petitioner proposes that
`
`Claim 13 should be construed under the Broadest Reasonable Interpretation
`
`(“BRI”) standard to at least capture the sole express embodiment in the ’525
`
`Patent. Namely, it should capture paddles that converge toward one another as they
`
`approach the top edge of the controller as depicted above in FIG. 2.
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
`
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’525 PATENT ARE
`UNPATENTABLE
`
`A. Ground 1: Claims 1-3, 5-11, 13, 14, 17-18, and 20 of the ’525 Patent
`are Obvious Under Kotkin in View of the Knowledge of a Person of
`Ordinary Skill in the Art
`
`i.
`
`Kotkin
`
`U.S. Patent Publication No. 2010/0298053 to David Kotkin (“Kotkin”) was
`
`published on November 25, 2010 and claims priority to U.S. Provisional Patent
`
`Application No. 61/179,551 (“the ’551 Provisional”), which was filed on May 19,
`
`2009 and was incorporated by reference in its entirety in Kotkin. Ex. 1003, Kotkin
`
`at (10), (60), [0001]. Because it published as an application under 35 U.S.C. §
`
`122(b), Kotkin is prior art to the ’525 Patent under pre-AIA 35 U.S.C. § 102(e)(1).
`
`Additionally, to the extent Patent Owner attempts a swear behind, Kotkin is
`
`entitled to a priority date of May 19, 2009. As detailed in Ex. 1012, because the
`
`’551 Provisional provides 35 U.S.C. § 112, ¶ 1 support for the claims of Kotkin,
`
`Kotkin is entitled to the ’551 Provisional filing date of May 19, 2009. Dynamic
`
`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (“[T]he
`
`specification of the provisional must ‘contain a written description of the invention
`
`and the manner and process of making and using it, in such full, clear, concise, and
`
`exact terms,’ 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice
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`the invention claimed in the non-provisional application.”) (quoting New Railhead
`
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)); see also
`
`IPR2014-01093, Paper 69, Final Written Decision at 16 (concluding Dynamic
`
`Drinkware applies equally to issued patents, qualifying as prior art under
`
`102(e)(2), and to published patent applications, qualifying as prior art under
`
`102(e)(1)). Further, as detailed below, the relevant teachings in Kotkin that render
`
`obvious the Challenged Claims were present in the ’551 Provisional. In re
`
`Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to
`
`a patent if another’s patent discloses the same invention, which was carried
`
`forward from an earlier U.S. provisional application or U.S. non-provisional
`
`application.”). Kotkin was not considered during prosecution.
`
`Kotkin and the ’551 Provisional teach the addition of elongate members to
`
`the back of a standard video game controller and are within the same field of
`
`endeavor and are reasonably pertinent to the problem associated with the ’525
`
`Patent. See Ex. 1008, Benden Decl. at ¶18. Specifically, Kotkin discloses the use of
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`a “skin,” which encloses a standard video game controller, adding additional
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`controls on both the front face and back of the controller. See Ex. 1003, Kotkin at
`
`[0029]-[0030].
`
`Kotkin discloses two embodiments for the arrangement of the back controls
`
`through the use of elongate members. In the first embodiment, the back of the
`
`housing includes a flexible plate, both sides of which engage top-mounted trigger
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`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`controls when squeezed. See id. at [0043], FIG. 5. In the second embodiment,
`
`Kotkin discloses a flexible line or cable, which is attached to the top-mounted
`
`trigger and runs along the controller handles, terminating at the tips of the handles .
`
`See id. at [0033], FIG. 3. The ’551 Provisional teaches a similar arrangement to the
`
`second embodiment disclosed by Kotkin. See Ex. 1004, ’551 Provisional at FIGs.
`
`A-J. However, the ’551 Provisional teaches that there are two elongate members,
`
`rather than just one and that these elongate members form part of the housing,
`
`rather than attaching in another manner. See id.
`
`A person of skill in the art would look to all types of control configurations
`
`when designing a controller, including Kotkin. Therefore, it would have been
`
`obvious to modify Kotkin in light of the knowledge of a person of ordinary skill in
`
`the art to arrive at the claimed invention of the ’525 Patent. See id. at ¶¶17, 25.
`
`ii.
`
`Claim 1
`
`[1.pre] A hand held controller for a game console comprising:
`
`Kotkin discloses a hand held controller for a game console. See, e.g., Ex.
`
`1003, Kotkin at Abstract (teaching “[a] device for enhancing operation of a game
`
`controller”); see also id. at FIG. 2:
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`
`
`Specifically, like the ’525 Patent, Kotkin teaches adding controls to a standard
`
`video game controller. One embodiment disclosed in Kotkin, as depicted in the
`
`following figure, is a shell (300) mounted on a prior art video game controller
`
`(120) that provides additional means to actuate preexisting controls:
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`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`One such means of actuating controls, as depicted in the following FIG. 3, are
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`elongated members stretching along the length of the back of the controller and
`
`allowing a user to actuate the front-mounted triggers using a middle finger:
`
`
`
`The ’551 Provisional similarly teaches adding controls to a standard video
`
`game controller. See, e.g., Ex. 1004, ’551 Provisional at [0002], [0004], FIGs 1-
`
`
`
`14.
`
` [1.a] an outer case comprising a front, a back, a top edge, and a bottom edge,
`wherein the back of the controller is opposite the front of the controller and the
`top edge is opposite the bottom edge; and
`
`Like the ’525 Patent, Kotkin is based on standard video game controllers,
`
`which include opposing front and back faces, opposing top and bottom edges, and
`
`handles adjacent the side edges. The following annotated figures from Kotkin label
`
`each of these claimed features:
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`Top Edge
`
`1st Side Edge
`Handle
`
`Bottom Edge
`
`Back
`
`2nd Side Edge
`Handle
`
`Front
`
`
`
`
`
`The ’551 Provisional is also based on a standard video game controller and
`
`includes the same structural components noted above. See, e.g., Ex. 1004, ’551
`
`Provisional at FIGs 1-14. Further, the shell (300) described above would also be
`
`considered an outer case when installed on the controller.
`
`[1.b] a front control located on the front of the controller;
`
`Kotkin discloses a front control located on the front of the controller. See,
`
`e.g., Ex. 1003, Kotkin at [0028] (teaching “on the controllers 100, 120, it is
`
`intended that the user’s right thumb actuate, among other things, each of the four
`
`buttons 116, 126 (typically labeled ‘X’, ‘Y’, ‘A’, and ‘B’) and the right-side thumb
`
`stick 112, 122.”); see also id. at FIG. 2:
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`
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`The ’551 Provisional also discloses a front control located on the front of the
`
`controller. Ex. 1004, ’551 Provisional at FIGs. 1-9, 12-14, A-E, I, L, M, and O.
`
`[1.c] wherein the controller is shaped to be held in the hand of a user such that
`the user’s thumb is positioned to operate the front control; and
`
`Kotkin discloses wherein the controller is shaped to be held in the hand of a
`
`user such that the user’s thumb is positioned to operate the front control. See, e.g.,
`
`Ex. 1003, Kotkin at [0028] (teaching “the video game controllers 100, 120 are
`
`conventionally held by the user by grasping the grips 110, 130 in the palm of the
`
`users hands such that the user’s thumbs can access different actuators on the face
`
`of the controllers 100, 120.”).
`
`The ’551 Provisional also discloses that the controller is shaped to be held in
`
`the hand of a user such that the user’s thumb is positioned to operate the front
`
`control. Ex. 1004, ’551 Provisional at FIGs. 1-9, 12-14, A-E, I, L, M, and O.
`
`[1.d] a first back control and a second back control, each back control being
`located on the back of the controller and each back control including an
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`elongate member that extends substantially the full distance between the top edge
`and the bottom edge and is inherently resilient and flexible.
`
`The ’525 Patent defines a “back control” as a control that is engaged by the
`
`user at the back of the controller, i.e., a control engaged with fingers that naturally
`
`rest at the back of the controller when the controller is held. See, e.g., Ex. 1001,
`
`’525 Patent at Abstract (“An improved controller for a game console that . . . has
`
`two additional controls located on the back in positions to be operated by the
`
`middle fingers of a user.”); 1:49-58 (“The present invention provides a hand
`
`held controller for a video game console . . . shaped to be held in both hands of
`
`the user such that the user's thumbs are positioned to operate controls located on
`
`the front of the controller[,] the user's index fingers are positioned to operate
`
`controls located on the top edge of the controller[, and] one or more additional
`
`controls [are] located on the back of the controller in a position to be operated
`
`by the user's other fingers.”); 2:21-25 (“The controller of the present invention
`
`is particularly advantageous over controllers according to the prior art as it
`
`comprises one or more additional controls located on the back of the
`
`controller in a position to be operated by middle fingers of a user.”) (all
`
`emphases added).
`
`Kotkin teaches two elongate members comprising back controls, i.e.,
`
`controls that are engaged by a user at the back of the controller. For example, as
`
`illustrated in FIG. 3 depicting a Sony Playstation 3 controller, “flexible cable or
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`line 219” extends from trigger 119B, “under . . . the controller,” to lever 218. Id. at
`
`[0033]. Kotkin explains that providing such a control on the back of the controller
`
`“permits the trigger 117a to be actuated without using a thumb, or even an index
`
`finger.” Id. Similarly, the ’551 Provisional teaches this same flexible line
`
`connected to front triggers of either the Playstation 3 controller or Xbox 360
`
`controller. See, e.g., Ex. 1004, ’551 Provisional at [0010], [0029], [0031], FIGs 1-
`
`2, 8-11.
`
`As illustrated in FIGs. 5-7, Kotkin also teaches an alternative arrangement
`
`for multiple elongate back controls designed around a Microsoft XBox 360
`
`controller. Id. at [0038]. As illustrated below, with highlighting emphasizing the
`
`key components, FIG. 5 provides the most detailed view of this alternative
`
`arrangement:
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`Petition for Inter Partes Review of U.S. Patent 8,641,525
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`
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`Id. at FIG. 5. Kotkin explains that 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 arrangement sandwiches
`
`these paddle-style controls between the yellow-highlighted portions of housing
`
`bottom 320 and yellow-highlighted housing covers 330a and 330b such that,
`
`“when the housing is closed with a controller therein, applying a slight pressure to
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`one of the left or right sides of the housing bottom 320 [green highlighting above],
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`relative to the top housing 310 (i.e., thus ‘squeezing’ the housing), will actuate a
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`trigger button (such as L1, L2 or R1, R2) on the end face of the controller with the
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`appropriate trigger lever 318 a, 318 b.” Id. at [0043-0044]. Further, springs 334a
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`and 334b (highlighted above) allow a user to adjust the amount of force necessary
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`to engage the paddle-style controls. Id. at [0045-0046].
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`To the extent Patent Owner contends that the sides of the housing bottom
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`320 do not constitute two separate elongate back controls as claimed, it would have
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`been obvious to implement cable/line 119 from the second embodiment on both
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`sides of the controller, resulting in two separate, stand-alone flexible cables or
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`lines. Ex. 1008, Benden Decl. at ¶¶19-20; see also id. at ¶¶14-16. In fact, Kotkin
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`expressly states that the sides of the housing bottom 320 are intended to operate in
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`the same way to accomplish the same goal as back control 219. Ex. 1003, Kotkin at
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`[0043] (“In the instant embodiment, the housing bottom 320 additionally acts as a
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`pressure plate for operating left and right side triggers on the controller, much in
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`the same way as is described in connection with the line 219 of FIG. 3.”). Given
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`that Kotkin expressly describes these two alternate means of allowing a user to
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`actuate elongate back controls (namely, as either (1) flexible cable or line 219 or
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`(2) as the sides of housing bottom 320), the modification proposed would be
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`straightforward, not requiring undue experimentation, and would produce
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`predictable results. Upon reading the disclosure of Kotkin, a person of ordinary
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`skill in the art would have recognized that these two back control means are simply
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`alternate design choices and that the single disclosed flexible cable or line 219
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`could be implemented on both sides of the controller to actuate both trigger
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`controls consistent with the second (Xbox) embodiment described above. See Ex.
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`1008, Benden Decl. at ¶19. One of ordinary skill would further have appreciated
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`that this combination of embodiments would have been natural and an application
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`of nothing more than ordinary skill and common sense Id.
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`Further evidencing that one of skill in the art would have found it obvious to
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`implement two back controls as separate, stand-alone flexible cables or lines, the
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`’551 Provisional illustrates this precise configuration. Although not expressly
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`discussed in the specification portion of the provisional filing, FIGs A-L illustrate
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`an embodiment that employs separate elongate controls on the back of an Xbox
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`controller. Id. at ¶20 (concluding that FIGs. A-L of the ‘551 Provisional illustrate
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`separate elongate members that actuate front-mounted trigger controls). FIGs C
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`and F, reproduced below, provide clear views of these separate elongate controls:
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`Ex. 1004, ’551 Provisional at FIGs. C and F.
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`Moreover, in each of the above examples, the elongate member extends
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`substantially the full distance between the top edge and the bottom edge of the
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`controller. FIG. 6D shows that the sides of the housing bottom 320 extend nearly
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`the full distance from the top edge to the tips of the handles:
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`Further, FIG. 6B shows that the sides of the housing bottom 320 extend
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`more than the full distance between the controller’s top edge and the bottom edge
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`(between the handles):
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`Similarly, FIG. 3 shows that back line 219 extends the full length from the
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`top edge to the bottom tips of the handles:
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`The ’551 Provisional discloses this same arrangement. See, e.g., Ex. 1004, ’551
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`Provisional at [0010], [0029], [0031], FIGs 1-2, 8-11.
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`Lastly, the ’551 Provisional (shown below in FIGs. F and J) also shows
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`multiple elongate members that extend nearly the full distance between the
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`controller’s top edge and tips of the handles:
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`Similarly, each of the above examples disclose elongate members that are
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`inherently resilient and flexible. The ’525 Patent defines “inherently resilient” as
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`meaning the elongate members “return to an unbiased position when not under
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`load.” Ex. 1001, ’525 Patent, at 3:33-34. And while the ’525 Patent does not
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`expressly define “flexible”, it notes that the elongate members may be formed from
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`“flexible” materials, such as a plastic material like polyethylene. Id. at 3:28-30.
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`Consistent with these definitions, the PTAB, in its Final Written Decision of
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`IPR2016-00948 regarding the ’525 Patent, defined “inherently resilient and
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`flexible” as meaning that the elongate member “may be bent or flexed by a load,
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`such as that from a user’s finger, and will then return to the unloaded position.”
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`Ex. 1002, ’525 Patent File History, IPR2016-00948, at 37 (P.T.A.B. Sept. 22,
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`2017). Applying this definition, it is clear that Kotkin discloses elongate members
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`that are inherently resilient and flexible.
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`Kotkin discloses that the housing bottom 320 is capable of being flexed by a
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`load when it is depressed by a user’s finger. Ex. 1003, Kotkin, at [0043]-[0044]
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`(“In the instant embodiment, the housing bottom 320 additionally acts as a pressure
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`plate . . . Thus, when the housing is closed with a controller therein, applying a
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`slight pressure to one of the left or right sides of the housing bottom 320, relative
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`to the top housing 310 (i.e., thus ‘squeezing’ the housing), will actuate a trigger
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`button.”). Moreover, a person having ordinary skill in the art would recognize that
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`the housing bottom would return to an unloaded position when the pressure from
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`the user’s finger is removed. Ex. 1008, Benden Decl. at ¶21. If it did not return to
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`an unbiased position, the back control would be rendered inoperable for its
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`intended purpose, as a user would only be able to actuate the control a single time.
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`Id.
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`Similarly, regarding back line 219, Kotkin discloses that back line 219 is
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`“flexible.” Ex. 1003, Kotkin, at [0033]. Kotkin also discloses that the back line 219
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`can be pulled by a user, which in turn actuates the trigger buttons. Id. The back line
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`219 is also under tension. Id. A person having ordinary skill in the art at the time of
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`the invention would thus recognize that the back line 219 would return to an
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`unloaded position when a user’s finger is removed. Ex. 1008, Benden Decl. at ¶21.
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`Finally, a person having ordinary skill in the art at the time of the invention
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`would recognize that the elongate members disclosed in the ’551 Provisional may
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`be bent or flexed by a load, such as that from a user’s finger, and will then return to
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`the unloaded position. Id. As shown in the ’551 Provisional, the elongate members
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`on the back of the controller are a single uniform piece:
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`In order to actuate the trigger button, the user would depress the elongate
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`member, which in turn would actuate the trigger button. Id. Upon release of the
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`elongate member, it would return to its unbiased position. Id.
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`iii. Claim 2
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`2. The controller of claim 1, further having a top edge control located on the top
`edge of the controller and wherein the controller is shaped such that the user’s
`index finger is positioned to operate the top edge control.
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`Kotkin teaches top edge controls including trigger and/or bumper buttons
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`that are positioned on the top edge of the control. Ex. 1003, Kotkin at [0028] (“The
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`user’s hands are additionally positioned such that the tips of the index fingers are
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`held adjacent to the trigger and/or bumper buttons 118, 119, 128a, 128b, 129a,
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`129b of the controllers 100, 120.”). Kotkin further teaches that the controller is
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`shaped such that the user’s index finger is positioned to operate the top edge
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