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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Collective Minds Gaming Co. Ltd.
`Petitioner
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`v.
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`Ironburg Inventions Ltd.
`Patent Owner
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`____________
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`Case IPR2018-00354
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`Patent 8,641,525
`____________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`I. INTRODUCTION ................................................................................ 1
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`A. APPLICABLE TIMELINE ........................................................................ 2
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`B. RELATIONSHIP BETWEEN COLLECTIVE MINDS AND VALVE .................. 2
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`II. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION
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`UNDER 35 U.S.C. § 314(A) ............................................................. 3
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`A. THE GENERAL PLASTIC FACTORS DO NOT SUPPORT DENYING
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`INSTITUTION ....................................................................................... 4
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`III. IRONBURG MISCHARACTERIZES THE BOARD’S ANALYSIS
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`OF “INHERENTLY RESILIENT AND FLEXIBLE” .................. 6
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`IV. CONCLUSION ................................................................................. 11
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`I.
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`INTRODUCTION
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`Patent Owner Ironburg Inventions Ltd. (“Ironburg”) would have this Board,
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`under 35 U.S.C. § 314(a) (“Section 314”), exercise its discretion to preclude
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`Petitioner Collective Minds’ unique validity challenge simply because an unrelated
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`petitioner who was targeted with a lawsuit more than a year earlier also filed IPR
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`petitions. As detailed below, Ironburg seeks to extend Section 314 and the related
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`General Plastic factors far beyond any prior exercise of the Board’s discretion—an
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`extension entirely unsupported by the circumstances of this case.
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`Ironburg separately misapplies the Board’s claim construction analysis in the
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`earlier Valve IPR relating to the term “inherently resilient and flexible.” Although
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`the Board correctly excluded Valve’s prior art, Ironburg extends the Board’s
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`analysis in a way that excludes even the ‘525 patent’s own embodiment. The
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`Board has not considered elongate members like those identified in the instant
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`Petition, and its prior analysis certainly does not exclude them.
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`The following completes the factual record otherwise not provided by
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`Ironburg’s Patent Owner Preliminary Response (“POPR”):
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` 1
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`A. Applicable Timeline
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`Ironburg filed suit against Valve on December 3, 2015.1 Valve filed separate
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`‘525 Patent IPR petitions on April 22, 20162 and October 25, 2016.3 Valve’s IPRs
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`were partially instituted on September 27, 20164 and May 4, 2017,5 respectively.
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`Ironburg filed suit against Petitioner Collective Minds on November 2,
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`2016,6 and waited until January 4, 2017 to serve Collective Minds.7 Ironburg did
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`not identify asserted claims until June 8, 2017—after both Valve IPRs had already
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`reached institution decisions.8 Following the receipt of Ironburg’s infringement
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`contentions, which identified seventy-two (72) asserted claims from five (5)
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`separate patents, 9 Collective Minds diligently investigated the validity of the
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`asserted claims, developed its own invalidity theories, and filed a unique IPR
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`petition within its own statutory window.
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`B. Relationship Between Collective Minds and Valve
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`Ironburg argues Collective Minds and Valve are parties working in
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`conjunction, even suggesting their relationship is sufficiently close to deem
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`Collective Minds responsible for Valve’s prior petitions. POPR at 20-22. In
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`1 EX1014, Valve Complaint.
`2 IPR2016-00948, Paper 1.
`3 IPR2017-00136, Paper 1.
`4 IPR2016-00948, Paper 10.
`5 IPR2017-00136, Paper 12.
`6 EX1015, Complaint.
`7 EX1016, Pleading at 2 (indicating Jan. 4 service).
`8 EX1017, Infringement Contentions.
`9 Id. at 1-2.
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` 2
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`support, Ironburg argues that Collective Minds “has entered into a Joint Defense
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`Agreement with Valve” and has withheld communications on the basis of a “joint
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`defense privilege.” Id. at 21. Collective Minds has done no such thing. In fact, as
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`expressly communicated
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`to Ironburg, Collective Minds “is not currently
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`withholding any documents,” but is instead “preserv[ing] the privilege for
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`potential future communications.” EX2016 at 1 (emphasis added). Collective
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`Minds has not communicated at all with Valve’s PTAB counsel, the parties have
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`not contributed to each other’s IPRs, and Ironburg’s suggestions to the contrary are
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`absolutely without merit or even a shred of support.
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`II. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION UNDER
`35 U.S.C. § 314(A)
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`Ironburg argues that the seven-factor test set forth in General Plastic
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`(IPR2016-01357) supports denying institution under Section 314. POPR at 18-27.
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`Typically applied to follow-on petitions from the same petitioner, Ironburg cites
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`only one case in which this analysis was applied to a different petitioner—NetApp
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`v. Realtime. POPR at 21. NetApp involved extraordinary facts, and its conclusions
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`do not apply here.
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`In NetApp, three IPRs filed by NetApp’s co-defendants were joined into a
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`single proceeding. 2016-01195, Paper 9 at 2-3, 6. NetApp did not file an IPR, but
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`instead moved to stay the district court proceeding based on the pending IPRs. Id.
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`at 7. The district court denied NetApp’s motion to stay. Id. at 8. NetApp then filed
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` 3
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`its own IPR petition one month later, relying on five of the six prior art references
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`from its co-defendants’ consolidated proceeding. Id. at 6. The Board concluded
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`that instituting NetApp’s IPR “would be a significant waste of the Board’s
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`resources,” given that the presented issues would soon be resolved in the
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`consolidated proceeding. Id. at 13. In contrast, Collective Minds’ proposed
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`grounds are wholly distinct, and none of the presented issues have been or will be
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`addressed by any other proceeding.
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`Also unlike the strategic decisions made by NetApp, Ironburg’s decisions to
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`file suit serially and delay identifying asserted claims drove the timing of
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`Collective Minds’ IPRs. Having consciously chosen to stagger its two lawsuits by
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`a year, Ironburg should not be heard to complain that Collective Minds pursued a
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`unique challenge within its own statutory IPR window.
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`A.
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`The General Plastic Factors do not Support Denying Institution
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`Factors 1-2. The first two factors ask (1) whether “the same petitioner” has
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`previously challenged the same patent and (2) whether that petitioner knew of the
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`prior art in the second petition when the first petition was filed. Id. at 9. Even the
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`Board in NetApp concluded that Factor 1 weighed in favor of considering the
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`petition because NetApp had not previously challenged the patent and that Factor 2
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`was neutral in light of Factor 1. Id. at 10. The same conclusion must be reached
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` 4
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`here. Ironburg’s suggestion that Collective Minds should be held accountable for
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`Valve’s petitions lacks any factual or legal support and should be rejected.
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`Factors 3-5. Factors 3-5 consider (3) whether, at the time of the second
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`petition, petitioner had access to the POPR and institution decision from the first
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`petition, (4) the length of time between learning of the prior art and filing the
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`second petition, and (5) whether petitioner adequately explains the time lapse.
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`Here, the timing is Ironburg’s own doing. Valve’s two IPRs were instituted
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`before Ironburg even identified asserted claims, after which Collective Minds
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`diligently researched and prepared its wholly unique IPR petition within its
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`statutory window. Under these facts, Collective Minds’ IPR should be judged on
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`its merits.
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`Factors 6-7. The last factors address the (6) finite Board resources and (7)
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`its statutory requirement to issue a final written decision within one year. Id. at 10.
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`In NetApp, the Board rejected a second year-long proceeding nearly identical to the
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`consolidated proceeding they were actively trying to conclude. No such dilemma is
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`presented by the instant case. Valve’s ‘525 Patent IPR proceedings have both
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`concluded, and Collective Minds’ IPR petition presents wholly unique prior art and
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`arguments. Thus, the Board’s finite resources are not at risk of abuse nor is the
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`statutory deadline implicated.
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` 5
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`III.
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`IRONBURG MISCHARACTERIZES THE BOARD’S ANALYSIS OF
`“INHERENTLY RESILIENT AND FLEXIBLE”
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`Regarding the requirement that elongate members are “inherently resilient
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`and flexible,” Ironburg correctly notes that the Board previously found this term to
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`require a member that “may be bent or flexed by a load, such as that from a user’s
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`finger, and will then return to its unbiased position when not under load.” POPR at
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`30. Ironburg then overreaches by erroneously suggesting that the Board also found
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`the claimed resiliency and flexibility of the member must be attributed to the
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`member in complete isolation and can not be influenced by “other components in
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`an assembly that may include an elongate member.” Id. Ironburg misapplies the
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`Board’s decision from Valve’s IPR proceeding, challenging U.S. Patent No.
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`9,352,229. See IPR2017-01928, Paper 11 at 7-10.
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`In its ’229 Patent IPR, as explained by the Board and illustrated in the
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`following image, “Valve identifie[d] lever[] 500 . . . as the elongate member[]” and
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`separately identified “spring 526 as providing the resilience and flexibility required
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`of the claimed elongate member”:
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` 6
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`IPR2017-01928, Paper 11 at 11; Uy (EX1018) at FIG. 5C. The Board concluded
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`“‘inherently resilient and flexible’ refers to properties of the material from which
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`the ‘elongate member’ is formed” and rejected the Uy lever, which was not itself
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`resilient and flexible. IPR2017-01928, Paper 11 at 11. The fact that spring 526
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`allowed lever 500 to move did not imbue the otherwise rigid lever with any degree
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`of resiliency or flexibility. Id.
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`The Board did not say, however, that the elongate member must be assessed
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`in isolation, divorced from its mounting and operation on the controller. Indeed, as
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`demonstrated by the ’525 Patent itself, the manner of attachment is critical to
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`allowing an elongate member to exhibit flex and resiliency. The ‘525 Patent’s
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`elongate members are mounted with a screw on one end such that the unsecured
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`end may be pressed by a user’s finger and return to its original state when released.
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`See ‘525 Patent (EX1001) at 4:3-8. To be sure, the paddle’s material enables it to
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`be flexed by a user’s finger and return to its original state. But it is the mode of
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`attachment—affixed with a screw over an elevated surface—that enables the
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` 7
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`paddle to exhibit both flexibility and resiliency. The same paddle, if not firmly
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`secured with a screw or if attached on a flat rather than elevated surface, would
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`exhibit no flexibility or resiliency at all. Thus, while it is true that a rigid member
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`is not made flexible by allowing it to move or pivot, it is equally true that the
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`Board’s construction of “inherently resilient and flexible” cannot exclude designs
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`where the mode of attachment enables an otherwise resilient and flexible member
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`to exhibit these characteristics when mounted to a controller.
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`Ironburg argues that the two different elongate members taught by Kotkin do
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`not satisfy the Board’s prior construction of “inherently resilient and flexible.”
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`POPR at 35-37. The two embodiments at issue are (1) housing bottom 320 and (2)
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`line 219, both of which are squeezed by the user’s fingers to actuate connected
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`switches and both of which include an element to adjust the pressure required to
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`activate the switches.10 Id. These two embodiments are illustrated in the following
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`figures:
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`10 The Kotkin provisional disclosure is pertinent only if Ironburg attempts to swear
`behind the Kotkin reference, which it has not.
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` 8
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`With regard to the first embodiment, Ironburg argues that the housing
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`bottom 320 is not “flexible” despite Kotkin expressly teaching that a user
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`“‘squeezing’ the housing), will actuate a trigger button.” As housing bottom 320
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`deforms inward under the squeezing pressure, it pulls on 330, which activates the
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`switches. Ironburg argues the Board previously excluded elongate members
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`“bias[ed] by a spring.” POPR at 36. As noted above, the Board did not exclude
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`otherwise flexible members where the amount of flexing/squeezing required to
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`engage a switch can be adjusted by a spring. Importantly, neither Ironburg nor Dr.
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`Stevick appear to argue that housing bottom 320 is inflexible. Rather, they argue
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`that the Board’s prior analysis from the Valve ‘229 Patent IPR excludes external
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` 9
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`biasing components. Because this misrepresents the Board’s analysis, these
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`arguments should be rejected.
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`Turning to the second embodiment, Ironburg does not dispute that line 219
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`is flexible, but instead argues that it is not resilient because it has external tension
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`applied to it. POPR at 36-37, EX2001 at ¶¶ 46-47 (arguing that line 219 would
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`simply be a “loose string” without tension). Ironburg again argues the Board’s
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`analysis requires a member that exhibits resiliency in isolation, rather than when
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`actually attached to a controller. This narrow view is nowhere in the claims or the
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`Board’s prior analysis, and it is inconsistent with the ’525 Patent disclosure. The
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`’525 Patent’s paddle would be nothing but a loose piece of plastic if it were not
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`tightly screwed to the controller. The screw provides the tension that allows the
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`paddle to flex under pressure. Similarly, while tension is applied to line 219, it is
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`the material makeup of line 219 that allows it to return to its original state after
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`being deformed under tensile pressure. Were line 219 formed of Play-Doh, for
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`example, it would not return to its original position when the tensile load was
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`released. The very fact that line 219 can retain its shape under load and return to its
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`original shape after user pressure is released demonstrates its inherently resilient
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`characteristic. Because line 219 exhibits both inherent flexibility and resiliency, it
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`satisfies the Board’s existing construction.
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` 10
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`IV. CONCLUSION
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`For the reasons above and in the petition, Collective Minds respectfully
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`requests the Board institute inter partes review of the Challenged Claims.
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`Respectfully submitted,
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`BY: /s/ Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
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`Paul R. Hart, Reg. No. 59,646
`5600 Greenwood Plaza Blvd
`Suite 200
`Greenwood Village, CO 80111
`P: (913) 777-5600
`F: (913) 777-5601
`paul.hart@eriseip.com
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`ATTORNEYS FOR PETITIONER
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` 11
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`NEWLY ADDED EXHIBITS
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`Ironburg v. Valve Complaint
`Ironburg v. Collective Minds Complaint
`Pleading Indicating Service Date
`Infringement Contentions
`Uy – US Patent Pub. 2015/0238855
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`EXHIBIT 1014
`EXHIBIT 1015
`EXHIBIT 1016
`EXHIBIT 1017
`EXHIBIT 1018
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`CERTIFICATION OF WORD COUNT
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`The undersigned certifies that the foregoing Reply Brief, excluding any table
`of contents, certificates of service or word count, or appendix of exhibits, contains
`1,996 words according to the word-processing program used to prepare this
`document (Microsoft Word).
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`BY: /s/ Paul R. Hart
`Paul R. Hart, Reg. No. 59,646
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`ATTORNEY FOR PETITIONER
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`Dated: April 24, 2018
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on April 24, 2018, a true and correct copy of
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`this Reply to Patent Owner’s Preliminary Response was served upon the following
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`counsel for Patent Owner, via the email correspondence address of record:
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`Robert Becker, Reg. No. 37,778 - RBecker@manatt.com
`Ehab Samuel, Reg. No. 57,905 - ESamuel@manatt.com
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`BY: Paul R. Hart
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`Paul R. Hart, Reg. No. 59,646
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`ATTORNEY FOR PETITIONER
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