`
`
`
`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 IPR2018-00354
`Patent 8,641,525
`___________________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`
`I.
`II.
`
`B.
`
`C.
`
`B.
`
`C.
`
`Page
`INTRODUCTION .......................................................................................... 1
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D) ....... 7
`A.
`Petitioner Advances “Substantially The Same” Prior Art
`Already Presented During Prosecution .............................................. 10
`1.
`Kotkin Is “Substantially The Same” As Ogata, Goto,
`Soma, Komata And Takatsuka ................................................ 10
`2. Willner Previously Considered By The Examiner And
`“Substantially The Same” As Park And Enright; Koji’s
`Features Are Not New ............................................................. 13
`Petitioner Advances “Substantially The Same” Arguments
`Already Presented To The Board ....................................................... 16
`Re-Litigating The Same Or Substantially The Same Issues Is A
`Waste Of Time, Effort And Resources .............................................. 17
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 314(A) ..... 18
`A.
`Factor 1: Whether The Same Petitioner Previously Filed A
`Petition Directed To The Same Claims Of The Same Patent ............ 20
`Factor 2: Whether At The Time Of Filing Of The First Petition
`The Petitioner Knew Of The Prior Art Asserted In The Second
`Petition Or Should Have Known Of It ............................................... 23
`Factor 3: Whether The Petitioner Already Received The Patent
`Owner’s Preliminary Response To The First Petition Or
`Received The Board’s Decision On Whether To Institute
`Review In The First Petition .............................................................. 23
`Factor 4: The Length Of Time That Elapsed Between The Time
`The Petitioner Learned Of The Prior Art Asserted In The
`Second Petition And The Filing Of The Second Petition .................. 25
`Factor 5: Whether The Petitioner Provides Adequate
`Explanation For The Time Elapsed Between The Filings Of
`Multiple Petitions Directed To The Same Claims Of The Same
`Patent .................................................................................................. 25
`Factor 6: The Finite Resources Of The Board .................................. 26
`
`D.
`
`E.
`
`F.
`
`
`
`- i -
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`G.
`
`E.
`
`2.
`
`2.
`3.
`
`Factor 7: The Requirement Under 35 U.S.C. § 316(A)(11) To
`Issue A Final Determination Not Later Than 1 Year After The
`Date On Which The Director Notices Institution Of Review ............ 27
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`SHOW A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE ....................... 28
`A.
`Legal Standard For Combining References ....................................... 28
`B.
`Claim Construction ............................................................................ 29
`1.
`Directional References (All Claims) ........................................ 29
`2.
`“Inherently Resilient And Flexible” (Claims 1-19) ................. 30
`Level Of Ordinary Skill ...................................................................... 31
`C.
`D. Kotkin Does Not Render Obvious Any Of Claims 1-3, 5-11, 13,
`14, 17-18 And 20 (Ground 1) ............................................................. 34
`1.
`Kotkin Does Not Disclose “Inherently Resilient And
`Flexible” Elongate Members (Claims 1-3, 5-11, 13, 14,
`17-18) ....................................................................................... 34
`a.
`Housing Bottom 320 Is Not Inherently Flexible ............ 35
`b.
`Line 219 Is Not Inherently Resilient .............................. 36
`c.
`Kotkin’s Provisional Application Does Not
`Disclose Back Controls Or Elongate Members
`That Are Inherently Resilient And Flexible ................... 37
`Kotkin Does Not Disclose The Claimed Thickness Range
`(Claims 9-11) ........................................................................... 39
`The Proffered Combination Of Willner, Koji And Raymond Do
`Not Render Obvious Any Of Claims 1-11, 13-17, And 19-20
`(Ground 2) .......................................................................................... 40
`1.
`No Motivation To Combine Raymond With Koji And
`Willner ..................................................................................... 41
`No Motivation To Combine Koji With Willner ...................... 44
`Raymond Does Not Disclose The Claimed Thickness
`Range (Claims 9-11) ................................................................ 48
`CONCLUSION ............................................................................................. 49
`
`V.
`
`
`
`- ii -
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page
`
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115 (P.T.A.B. Apr. 20, 2015) .......................................................... 41
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 28
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 34
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777 (P.T.A.B. Aug. 22, 2017) ........................................................... 8
`Endo Pharmaceuticals v. Depomed,
`IPR2014-00652 (P.T.A.B. Sep. 29, 2014) .......................................................... 34
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357 (P.T.A.B. Sept. 6, 2017) ....................................................passim
`Grain Processing Corp. v. Am. MaizeProds. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................ 48
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183 (P.T.A.B. July 31, 2013) .......................................................... 28
`Hilti, Inc. et al. v. Milwaukee Elec. Tool Corp.,
`IPR2015-01164 (P.T.A.B. November 14, 2016) .......................................... 40, 49
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 48
`In re Kahn,
`441 F3.d 977 (Fed. Cir. 2006) ............................................................................ 28
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ............................................................................ 34
`In re Warner,
`379 F.2d 1011 (C.C.P.A. 1967) .......................................................................... 38
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol
`Ltd.,
`IPR2014-00309 (P.T.A.B. Mar. 23, 2014) ......................................................... 32
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 47
`
`
`
`- iii -
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................... 28, 41
`KTEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) .................................................................... 41, 42
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487 (P.T.A.B. Sept. 11, 2014) ....................................................... 4, 8
`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) ..................................................................... 45
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026 (P.T.A.B. Dec. 21, 2012) ......................................................... 34
`Neil Ziegmann N.P.Z., Inc. v. Stephens,
`IPR2015-01860 (P.T.A.B. Sept. 6, 2017) ........................................................... 18
`NetApp Inc. v. Crossroads Systems, Inc.,
`IPR2015-00776, Paper 13 (P.T.A.B. 2015) ........................................................ 24
`NetApp Inc. v. Realtime Data LLC,
`IPR2017-01195 (P.T.A.B. Oct. 12, 2017) .......................................................... 21
`Nichia Corporation v. Everlight Americas, Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) .......................................................................... 46
`NRT Tech. Corp. et al. v. Everi Payments Inc.,
`CBM2016-00080, Paper 12 (P.T.A.B. 2016) ............................................... 12, 16
`NVIDIA Corp. v. Samsung Elecs. Co., Ltd.,
`IPR2016-00134 (P.T.A.B. May 4, 2016)............................................................ 20
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 41
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2014-00518 (P.T.A.B. Sep. 17, 2015) .......................................................... 33
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00092 (P.T.A.B. May 24, 2013) ......................................................... 28
`Spaceco Business Solutions, Inc. v. Moscovitch,
`IPR2015-00127 (P.T.A.B. May 14, 2015) ......................................................... 45
`Starbucks Corp. v. Ameranth, Inc.,
`CBM2017-00053 (P.T.A.B. Dec. 4, 2017) ......................................................... 20
`
`
`
`- iv -
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`TCL Corp. v. Lexington Luminance LLC,
`IPR2017-01780, Paper 8 (P.T.A.B. Jan. 2, 2018) ................................................ 7
`Telebrands Corp. v. Tinnus Enterprises, LLC,
`PGR2017-00040 (P.T.A.B. Feb. 7, 2018) .......................................................... 17
`Unified Patents Inc. v. Berman,
`IPR2016-01571 (P.T.A.B. Dec. 14, 2016) ........................................................... 9
`Unified Patents, Inc. v. PersonalWeb Techs. LLC et al.,
`IPR2014-00702 (P.T.A.B. July 24, 2014) ............................................................ 9
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .................................................................... 40, 41
`Valve Corp. v. Ironburg Inventions, Ltd.,
`IPR2016-00948 (P.T.A.B. Sept. 27, 2016) ..................................................passim
`Valve Corp. v. Ironburg Inventions, Ltd.,
`IPR2017-00136 (P.T.A.B. May 4, 2017).....................................................passim
`Valve Corporation v. Ironburg Inventions, Ltd.,
`IPR2017-00858 (P.T.A.B. Sept. 1, 2017) ..................................................... 38, 39
`Valve Corporation v. Ironburg Inventions, Ltd.,
`IPR2017-01928 (P.T.A.B. Feb. 8, 2018) ............................................................ 30
`Vivid Techs., Inc. v. American Science & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 31
`Xactware Solutions, Inc. v. Eagle View Techs. Inc.,
`IPR2017-00034 (P.T.A.B. Apr. 13, 2017) .......................................................... 20
`Ziegmann v. Stephens,
`IPR2015-01860 (P.T.A.B. Sept. 6, 2017) ............................................................. 8
`STATUTES
`35 U.S.C. § 102 ........................................................................................................ 10
`35 U.S.C. § 103 ........................................................................................................ 10
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ............................................................................................passim
`35 U.S.C. § 315(e)(1) ................................................................................................. 4
`35 U.S.C. § 316(a)(11) ....................................................................................... 20, 27
`
`
`
`- v -
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`35 U.S.C. § 325(d) ............................................................................................passim
`OTHER AUTHORITIES
`37 C.F.R. § 42.1(b) .............................................................................................. 4, 26
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(a) ......................................................................................... 19, 21
`
`
`
`
`
`
`- vi -
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`EXHIBIT LIST
`
`Page
`
`EXHIBIT NO. DESCRIPTION
`2001
`Declaration of Dr. Glen Stevick
`2002
`C/V of Dr. Glen Stevick
`2003
`LinkedIn Page of Simon Burgess
`2004
`LinkedIn Page of Duncan Ironmonger
`2005
`Service of Complaint for Patent Infringement
`Intentionally left blank
`2006
`2007
`U.S. Patent No. 6,394,906 to Hiroki Ogata (“Ogata”)
`2008
`U.S. Patent. No. 5,551,693 to Teiyu Goto et al. (“Goto”)
`2009
`U.S. Patent No. 6,342,009 to Masahiro Soma (“Soma”)
`2010
`U.S. Patent No. 6,524,187 to Nobuhiro Komata (“Komata”)
`2011
`U.S. Patent No. 6,524,186 to Susumu Takatsuka
`(“Takatsuka”)
`U.S. Patent No. 7,859,514 to Young Park (“Park”)
`U.S. Publ. 20100073283 to Robert Enright (“Enright”)
`Complaint filed in Ironburg Inventions Ltd. v. Collective
`Minds Gaming Co., Ltd., Civil Action No. 1:16-cv-04110-
`TWT (N.D. Ga.)
`Excerpts from Collective Minds’ Objections and Responses to
`Plaintiff’s Second Set of Requests for Production in the matter
`of Ironburg Inventions Ltd. v. Collective Minds Gaming Co.
`Email Correspondence From Petitioner’s Counsel Asserting
`Joint Defense Privilege With Valve Corporation
`Excerpt from Collective Minds’ Invalidity Contentions in the
`matter of Ironburg Inventions Ltd. v. Collective Minds
`Gaming Co.
`
`2012
`2013
`2014
`
`2015
`
`2016
`
`2017
`
`
`
`
`
`- vii -
`
`
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`I.
`
`Introduction
`
`Patent Owner Ironburg Inventions, Ltd. (“Ironburg”) respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107 in response to the petition for Inter Partes Review of U.S. Pat. No.
`
`8,841,525 (“the ‘525 Patent”) filed by Petitioner Collective Minds Gaming Co.
`
`Ltd. (“Petitioner” or “Collective Minds”).
`
`This Petition is duplicative of earlier prosecution and multiple related IPRs
`
`initiated by Valve Corporation (“Valve”) in several related proceedings and should
`
`be denied. After the issuance of the ‘525 patent, Valve and Collective Minds were
`
`each named as defendants in related patent infringement proceedings filed by
`
`Ironburg in the Northern District of Georgia. They are defending the cases
`
`pursuant to a joint defense agreement (see discussion below). Valve filed two
`
`successive IPR petitions against Ironburg’s ‘525 patent and U.S. Patent No.
`
`9,089,770 (“the ‘770 patent”). The ‘770 patent is a continuation of the ‘525 patent.
`
`Final Written Decisions for the first set of IPRs were issued by the Board on
`
`September 22, 2017 in IPR2016-00948 (Patent 8,641,525 B2) Paper 44 and
`
`IPR2016-00949 (Patent 9,089,770 B2) Paper 45. The second set of IPRs, which
`
`were filed after the institution decisions for the first set of IPRs, were terminated
`
`on January 25, 2018 by the Board on the basis that the art presented in those
`
`follow-on petitions could have been raised in the first set of petitions. IPR2017-
`
`
`
`- 1 -
`
`

`

`00136 (Patent 8,641,525 B2) Paper 43 and IPR2017-00137 (Patent 9,089,770 B2)
`
`IPR2018-00354 for U.S. Patent 8,641,525
`
`Paper 43.
`
`The Complaint for Patent Infringement against Collective Minds was filed
`
`on November 2, 2016 (Ironburg Inventions Ltd. v. Collective Minds Gaming Co.,
`
`Ltd., Civil Action No. 1:16-cv-04110-TWT (N.D. Ga.) (complaint filed November
`
`2, 2016, a true and correct copy is attached as EX2014)), service was effective at
`
`least as of January 4, 2017 (EX2005), and the petition at issue here was filed one
`
`full year later on January 3, 2018.1 The filing of the petition was done in
`
`furtherance of the joint defense agreement with Valve, after the first two institution
`
`decisions on the ‘525 and ‘770 patents by the Board in September of 2016, after
`
`the second two institution decisions by the board on the ‘525 and ‘770 patents in
`
`May of 2017, after the Final Written Decisions by the Board in the first set of IPRs
`
`in September of 2017, after the filing of motions by Valve for rehearing and partial
`
`decisions thereon by the Board, and on the last day allowed by statute.
`
`The Board should exercise its discretion to deny institution under 35 U.S.C.
`
`§ 325(d) and 314(a). Petitioner’s attempt to challenge the ‘525 Patent is a prime
`
`example of a “gang tackling” petition that burdens the Board and Patent Owner.
`
`Further investment of scarce judicial resources is unwarranted, especially given the
`
`low probability of success implied by the past outcome maintaining patentability of
`
`1 CM filed separate petitions on 4 asserted patents – the same four patents
`asserted against Valve.
`
`
`
`- 2 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`claims 2-5, 7-12, 15 and 18 of the ‘525 Patent. Even beyond that, Patent Owner
`
`deserves repose after expending so much time, effort and attention successfully
`
`defending its duly issued patent.
`
`As previously noted, the ‘525 Patent has been challenged twice at the Board
`
`in two separate IPR proceedings. In the first proceeding, IPR2016-00948 (“948
`
`IPR”), petitioner Valve alleged five grounds of unpatentability. The Board
`
`instituted on three of these grounds and found that the previous petition (“First
`
`Petition”) failed to establish a reasonable likelihood of prevailing with respect to
`
`claims 12 and 15. Valve Corp. v. Ironburg Inventions, Ltd., IPR2016-00948, Paper
`
`10, 30-31 (P.T.A.B. Sept. 27, 2016). On September 22, 2017, the Board issued a
`
`Final Written Decision, maintaining the patentability of claims 2-5, 7-12, 15 and
`
`18 of the ‘525 Patent. See IPR2016-00948, Paper 44 at 50-51 (P.T.A.B. Sept. 22,
`
`2017). Further, on January 26, 2018, the Board denied petitioner Valve’s request
`
`for rehearing. See IPR2016-00948, Paper 54 at 10 (P.T.A.B. Jan. 26, 2018).
`
`In the second proceeding, IPR2017-00136 (“136 IPR”), petitioner Valve
`
`alleged yet another five grounds of unpatentability. The Board instituted on one of
`
`the grounds and found that the follow-on petition (“Second Petition”) failed to
`
`establish a reasonable likelihood of prevailing with respect to claims 1-19. Valve
`
`Corp. v. Ironburg Inventions, Ltd., IPR2017-00136, Paper 12 at 18 (P.T.A.B. May
`
`4, 2017). On January 25, 2018, in view of the Final Written Decision in IPR2016-
`
`
`
`- 3 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`00948, the Board terminated the proceedings under 35 U.S.C. § 315(e)(1).
`
`IPR2017-00136, Paper 43 (P.T.A.B. Jan. 25, 2018.)
`
`Despite being named as a Defendant in a patent infringement suit by Patent
`
`Owner in November 2016 – just several weeks after the first set of IPRs were
`
`instituted by the Board on this patent, Petitioner Collective Minds failed to file the
`
`instant petition (“Third Petition”) during the pendency of the prior IPR proceedings
`
`even though the prior petitioner, Valve, addresses substantially the same prior art
`
`and arguments as Petitioner now pursues. Nor did it seek to join the prior IPR
`
`proceedings. Petitioner sat on the sidelines for an entire year to reap the benefit of
`
`Valve’spotential success and wait to stage its own follow-on attack to take
`
`advantage of the Board’s responses to the arguments and evidence presented in the
`
`two prior IPR proceedings. Petitioner’s belated rehash of prior arguments based on
`
`substantially the same prior art should not be rewarded. Instituting another IPR
`
`proceeding would not “secure the just, speedy, and inexpensive resolution of every
`
`proceeding.” 37 C.F.R. § 42.1(b).
`
`The Board has put petitioners on notice that follow-on petitions will be
`
`heavily scrutinized under 35 U.S.C. §§ 314(a) and 325(d). The Board has issued
`
`informative and precedential decisions directing follow-on petitioners to explain
`
`why Board and Patent Owner resources should be expended on follow-on
`
`petitions. See, e.g., Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 at 7
`
`
`
`- 4 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`(P.T.A.B. Sept. 11, 2014) (Informative); General Plastic Indus. Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)
`
`(Precedential for § 314(a)). In the face of 314(a) and 325(d), Petitioner does not
`
`even attempt to justify its belated Third Petition on substantially the same prior art
`
`and arguments. Consistent with its precedent and policy, the Board should
`
`exercise its discretion to deny institution pursuant to 35 U.S.C. §§314(a) and
`
`325(d).
`
`Petitioner presents two challenges to claims 1-20 of the ‘525 Patent.
`
`(Petition at 6.) However, Petitioner advances the same or substantially the same
`
`prior art and arguments that were previously presented and considered, by the
`
`Board and/or the Patent Office during prosecution. Specifically, Kotkin (EX1003
`
`& EX1004), which is at the center of Ground 1 of the Petition, is cumulative to
`
`Ogata (U.S. Patent No. 6,394,906), Goto (U.S. Patent. No. 5,551,693), Soma (U.S.
`
`Patent No. 6,342,009), Komata (U.S. Patent No. 6,524,187) and Takatsuka (U.S.
`
`Patent No. 6,524,186), all of which were before the Patent Office during
`
`prosecution. Similarly, Willner (EX1005), which is at the center of Ground 2 of
`
`the Petition, was considered by the Patent Office during prosecution and is
`
`substantially the same as Park (U.S. Patent No. 7,859,514), also considered by the
`
`Patent Office, and Enright (U.S.Publ. 20100073283), which was considered by the
`
`
`
`- 5 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`Board in IPR2016-00948. Moreover, Petitioner does not raise any “new”
`
`meaningful arguments meriting a re-review of the challenged claims by the Board.
`
`The Board should also decline to institute inter partes review because
`
`Petitioner failed to meet its burden demonstrating a reasonable likelihood of
`
`prevailing with respect to at least one claim of the ‘525 Patent under any of the
`
`alleged new obviousness grounds. Ground 1 challenges claims 1-3, 5-11, 13, 14,
`
`17-18, and 20 as obvious over Kotkin (EX1003 & EX1004) in view of the
`
`knowledge of a person skill in the art. Independent claim 1 (and its dependents)
`
`recite a hand held controller for a game console with “inherently resilient and
`
`flexible” elongate members. (EX1001, Claim 1.) Moreover, dependent claims 911
`
`recite specific claimed thickness ranges. These limitations are not taught,
`
`disclosed or suggested in Kotkin.
`
`Further, Willner (EX1005), in combination with Koji (EX1006) and
`
`Raymond (EX1007) also does not render obvious the challenged claims 1-11, 13-
`
`17, and 19-20, as asserted in Ground 2. (Petition at 6.) Raymond is non-
`
`analogous art to Willner and Koji, and therefore, there is no reason to combine
`
`these references. Moreover, there is no reason to combine Willner with Koji as
`
`both references disclose different structures and solve different problems, and
`
`Willner teaches away from such proposed combination. Finally, none of the
`
`references disclose, teach or suggest the claimed thickness ranges of claims 9-11.
`
`
`
`- 6 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`For these reasons, and the additional reasons set forth in the more detailed
`
`discussion below, the Board should deny institution of the Third Petition.
`
`II. The Petition Should Be Denied Under 35 U.S.C. § 325(d)
`
`The Petition should be denied because Petitioner advances the same or
`
`substantially the same prior art and arguments that were previously presented and
`
`considered, by the Board and/or the Patent Office during prosecution. Specifically,
`
`Kotkin, which is at the center of Ground 1 of the Petition, is cumulative to Ogata
`
`(U.S. Patent No. 6,394,906), Goto (U.S. Patent. No. 5,551,693), Soma (U.S. Patent
`
`No. 6,342,009), Komata (U.S. Patent No. 6,524,187) and Takatsuka (U.S. Patent
`
`No. 6,524,186), all of which were before the Patent Office during prosecution.
`
`Similarly, Willner, which is at the center of Ground 2 of the Petition, was
`
`considered by the Patent Office during prosecution and is substantially the same as
`
`Park (U.S. Patent No. 7,859,514), also considered by the Patent Office, and Enright
`
`(U.S. Publ. 20100073283), which was considered by the Board in IPR2016-00948
`
`and IPR2017-00136.
`
`35 U.S.C. § 325(d) states that “[i]n determining whether to institute or order
`
`a proceeding . . . , the Director may take into account whether, and reject the
`
`petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” Section 325(d) is not party-,
`
`patent-, claim-, prior art reference-, nor proceeding-specific. See, e.g., TCL Corp.
`
`
`
`- 7 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`v. Lexington Luminance LLC, IPR2017-01780, Paper 8 at 8 (P.T.A.B. Jan. 2,
`
`2018). This section of the statute allows the Board to exercise its discretion and
`
`refuse to institute an inter partes review (IPR) even if the prior art cited by
`
`Petitioner is not identical to the prior art previously presented to the Office, so long
`
`as it is “substantially the same.” See Ziegmann v. Stephens, IPR2015-01860, Paper
`
`No. 13 at 8 (P.T.A.B. Sept. 6, 2017) (“We conclude that a set of prior art or
`
`arguments may be considered ‘substantially the same’ if they are ‘cumulative to or
`
`substantially overlap with issues previously considered by the Office with respect
`
`to the patent.’”).
`
`The Board issued an Informative Decision cautioning that follow-on
`
`petitioners presenting the same or substantially the same arguments must provide
`
`“persuasive reasoning as to why [the Board] should institute inter partes review
`
`over the same or substantially the same prior art or argument’s that were
`
`presented [previously].” Medtronic, IPR2014-00487, Paper 8 at 7 (Informative)
`
`(emphasis added). Petitioner, however, provides none. There are ample reasons
`
`why the Board should exercise its discretion to deny institution under § 325(d).
`
`Instituting Petitioner’s follow-on Petition would waste time, effort, and resources
`
`on re-litigating the same issues the Board and the Patent Examiner has previously
`
`considered. See Cultec, Inc. v. Stormtech LLC, IPR2017-00777, Paper 7 at 13
`
`(P.T.A.B. Aug. 22, 2017) (informative) (denying institution under Section 325(d)
`
`
`
`- 8 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`because “the same or substantially the same prior art or arguments as are presented
`
`in the Petition previously were presented to the Office”); Unified Patents Inc. v.
`
`Berman, IPR2016-01571, Paper 10 at 12 (P.T.A.B. Dec. 14, 2016) (informative)
`
`(denying institution on certain claims because “the Petition relies on the same or
`
`substantially the same prior art and arguments presented previously to the Office”
`
`and further noting that institution “would not be an efficient use of Board resources
`
`in this matter”).
`
`Equally important, the Board’s Final Written Decision in IPR2016-00948,
`
`which held that claims 1, 6, 13, 14, 16, 17, 19 and 20 are unpatentable, was
`
`recently appealed to the Federal Circuit. IPR2016-00948, Paper 55 (P.T.A.B. Mar.
`
`27, 2018). If the Federal Circuit affirms or reverses the Board’s decision, it would
`
`have been a waste of time, effort and resources to re-litigate the same issues in this
`
`proceeding. See Unified Patents, Inc. v. PersonalWeb Techs. LLC et al., IPR2014-
`
`00702, Paper 13 at *6-8 (P.T.A.B. July 24, 2014). This is true because an
`
`affirmance by the Federal Circuit could obviate the need for the Board to evaluate
`
`Petitioner’s challenges in connection with the claims found unpatentable, while a
`
`reversal by the Federal Circuit based on claim construction, for example, would
`
`require the Board to apply a different construction for the claims, and accordingly,
`
`could affect the application of the alleged prior art to the challenged claims.
`
`
`
`- 9 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`For these reasons, and the additional reasons set forth in more detail below,
`
`Patent Owner respectfully requests that the Board exercise its discretion and deny
`
`institution under §325(d).
`
`A.
`
`Petitioner Advances “Substantially The Same” Prior Art Already
`Presented During Prosecution
`1. Kotkin Is “Substantially The Same” As Ogata, Goto, Soma,
`Komata And Takatsuka
`
`On June 28, 2012 and during the prosecution of application 13/162,727 (“the
`
`‘727 application), which later issued as the ‘525 Patent, the Examiner issued an
`
`office action rejecting all pending claims under 35 U.S.C. §§ 102 & 103 in view of
`
`Ogata. (EX1002, pgs. 38-45). Moreover, on August 9, 2013, the Examiner issued
`
`an office action rejecting certain claims under 35 U.S.C. § 103 in view of Goto.
`
`(Id., pgs. 152-159). As shown below, these references that the Examiner
`
`considered are substantially the same as Kotkin:
`
`
`
`
`
`KOTKIN
`EX1003, pg. 3
`
`
`
`- 10 -
`
`
`
`KOTKIN
`EX1003, pg. 3
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`
`
`
`
`
`
`
`
`OGATA
`EX2007, pgs. 2,4
`
`
`
`
`GOTO
`EX2008, pgs. 2, 3
`
`
`
`The Examiner also considered cumulative references of Soma, Komata and
`
`Takatsuka, all of which are listed in Examiner’s Notice of References Cited. (Id.,
`
`pgs. 47 & 50). These references that the Examiner considered are also
`
`substantially the same as Kotkin:
`
`
`
`SOMA
`EX2009, pg. 2
`
`KOMATA
`EX2010, pg. 11
`
`TAKATSUKA
`EX2011, pg. 5
`
`
`
`- 11 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`
`
`These references all have substantially the same game controllers with front
`
`controls located on the front of the controller and top controls located on the top of
`
`the controller. While Kotkin includes a single cable line 219 that extends from the
`
`top control, this does not raise a meaningful new art meriting a re-review because
`
`cable line 219 is not inherently resilient. (See infra IV.D.1.). Meanwhile, Kotkin’s
`
`alternative attachment to the top control is immaterial as it is not inherently
`
`flexible. (Id.) Because the differences are not meaningful, Kotkin is substantially
`
`similar to Ogata, Goto, Soma, Komata and Takatsuka. See NRT Tech. Corp. et al.
`
`v. Everi Payments Inc., CBM2016-00080, Paper 12 at 12 (P.T.A.B. 2016)(“ There
`
`is no requirement of identicalness of either prior art or arguments, and therefore, a
`
`scintilla of difference or an immaterial difference does not create necessarily
`
`‘different’ arguments.”). Thus, the office has already considered Petitioner’s
`
`Ground 1 prior art reference as it relates to all the challenged claims and
`
`nonetheless, still issued the ‘525 Patent. There is no reason why the Board should
`
`expend its resources to go through the same exercise again in this proceeding.
`
`Further, to the extent Petitioner contends that Kotkin is not cumulative of the
`
`other art, because of line 219, for example, it has not provided any reasoning as to
`
`why the Board should institute inter partes review over the same or substantially
`
`the same prior art or argument’s that were presented previously (see e.g., Park,
`
`
`
`- 12 -
`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`discussed infra II.A.2., that was cited for a back control located on the back of the
`
`controller, and also Enright).
`
`2. Willner Previously Considered By The Examiner And
`“Substantially The Same” As Park And Enright; Koji’s
`Features Are Not New
`
`Petitioner concedes that Willner was cited during prosecution of the ‘727
`
`application, but attempts to dismiss this fact because it “was not discussed.”
`
`(Petition at 44; EX1002, pg. 47). This argument is unavailing because the
`
`Examiner considered Willner, among others, and explicitly noted that “[t] prior art
`
`made of record and not relied upon is considered pertinent to applicant’s disclosure
`
`and is included in the Notice of References Cited. (EX100