Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 44
`Entered: September 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`page 33
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 44
`Entered: September 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`page 33
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Valve Corporation (“Petitioner”) filed a corrected Petition (Paper 4,
`“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
`8,641,525 B2 (Ex. 1001, “the ’525 patent”). Pet. 1. Ironburg Inventions Ltd.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to
`the Petition. We instituted an inter partes review of claims 1–11, 13, 14, and
`16–20, and did not institute review of claims 12 and 15. Paper 10 (“Dec.”).
`Subsequently, Patent Owner filed a Patent Owner Response (Paper 19,
`“PO Resp.”), and Petitioner filed a Reply (Paper 23, “Pet. Reply”).
`Oral hearing was held on June 5, 2017, and a transcript of the oral
`hearing is included in the record. Paper 36 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to under 35 U.S.C. § 318(a) as to the
`patentability of the claims on which we instituted trial.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1, 6, 13, 14, 16, 17, 19, and 20
`of the ’525 patent are unpatentable, but has not made such a showing with
`regard to claims 2–5, 7–11, and 18. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d).
`
`RELATED PROCEEDINGS
`The parties indicate that the ’525 patent is at issue in: Ironburg
`Inventions Ltd. v. Valve Corp., Case No. 1:15-cv-04219-MHC (N.D. Ga.).
`Pet. 1; Paper 6, 1.
`
`B.
`
`2
`page 34
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Petitioner also filed a petition against U.S. Patent 9,089,770 B2 (“the
`’770 patent”), the subject of inter partes review IPR2016-00949 (“the ’949
`IPR”). The ’770 patent issued from an application that was a continuation of
`application 13/162,727, now the ’525 patent. These inter partes reviews
`have proceeded on the same schedule.
`Petitioner filed a second petition against both the ’525 patent and the
`’770 patent (IPR2017-00136 and IPR2017-00137, respectively), and each
`petition was accompanied by a Motion for Joinder/Consolidation. In
`IPR2017-00136, we instituted review of claim 20 and denied the Motion for
`Joinder/Consolidation. IPR2017-00136, Paper 12. In IPR2017-00137, we
`denied institution and denied the Motion for Joinder/Consolidation.
`IPR2017-00137, Paper 10.
`
`
`A.
`
`II. PRELIMINARY MATTERS
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`Patent Owner moves to exclude (1) Exhibits 1025–1027 and the
`associated Paper (Paper 25), and (2) Exhibit 1007. Paper 28. Petitioner
`filed an opposition to the Motion (Paper 32) and Patent Owner filed a Reply
`to the Opposition (Paper 33). Patent Owner has the burden of establishing
`that evidence should be excluded. See 37 C.F.R. § 42.20(c), § 42.22. For
`the reasons that follow, we deny Patent Owner’s Motion.
`Exhibits 1025–1027 and Associated Paper
`1.
`Petitioner filed Exhibits 1025–1027 with an associated Paper (Paper
`25) on April 13, 2017, as supplemental evidence in response to Patent
`Owner’s second set of objections to Exhibit 1007. See Paper 24 (Patent
`
`3
`page 35
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`Owner’s second set of objections); Paper 25 (asserting that the subject
`information was only being used regarding the admissibility of Ex. 1007);
`Paper 32, 11–12 (acknowledging that the subject information is
`supplemental evidence only).
`These Exhibits and the associated Paper are not evidence on the
`merits of this case; they are in the record for the limited purpose of the
`admissibility of Exhibit 1007. Consequently, these Exhibits and the
`associated Paper are not the proper subject of a Motion to Exclude.
`Exhibit 1007
`2.
`Exhibit 1007 is a United Kingdom (UK) Search and Examination
`Report for the counterpart to the application that became the ’525 patent.
`Petitioner submitted Exhibit 1007 in association with the Petition, and as
`such, it is evidence submitted during a preliminary proceeding.1 See
`37 C.F.R. § 42.2 (defining preliminary proceeding).
`A timely objection is a prerequisite to a Motion to Exclude. See
`37 C.F.R. § 42.64(b)(1), (c). Patent Owner purports to have made three sets
`of objections to Exhibit 1007 in the following papers: (1) the Preliminary
`Response, (2) Paper 15, and (3) Paper 24. Paper 28, 1.
`a) Preliminary Response
`Patent Owner asserted in the Preliminary Response that Exhibit 1007
`is “hearsay and is not prior art,” and “should be excluded in its entirety.”
`Prelim. Resp. 28.
`
`1 Exhibit 1007 was served on Petitioner in association with Paper 1 (the
`original Petition) and was not served a second time with Paper 4 (the
`corrected Petition). See Paper 1, 61; Paper 4, 54. This distinction is
`immaterial to our analysis.
`
`4
`page 36
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`In our Decision to Institute, we explained that a preliminary response
`cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered
`on September 27, 2016). First, objections must be made after institution of
`trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from
`institution of trial). Second, an objection and a preliminary response may
`not be combined into a single document. See 37 C.F.R. § 42.6(a)(3)
`(prohibiting combined documents).
`b) Paper 15
`On Wednesday, October 26, 2016, the Board held a conference call at
`Patent Owner’s request. Paper 13. During that call, Patent Owner asked
`again whether the Preliminary Response had served as a timely objection to
`Exhibit 1007. See Paper 13, 2–3. We reiterated that the statements in the
`Preliminary Response were not an effective objection, and explained that
`Patent Owner was raising the issue after expiration of the time-period for an
`objection. Id. at 3. Patent Owner maintained the request to object to
`Exhibit 1007. Id. Before ending the call, we informed the parties that we
`would enter an order shortly.
`On Thursday, October 27, 2016, the next business day after the call,
`the Board entered the anticipated Order. Paper 13. In that Order, we
`permitted Patent Owner two business days (until Monday, October 31, 2016)
`to file objections to Exhibit 1007. See Paper 13, 4. Entry of that Order
`triggered an automated email to the email address of record entered by
`
`
`2 In the interest of brevity, we incorporate by reference our analysis at
`Paper 13 pages 2–4.
`
`
`5
`page 37
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`Patent Owner. See Tr. 41:12–44:5 (summarizing the situation). On Tuesday,
`November 1, 2016, after the allotted period for filing objections had expired,
`Patent Owner filed objections. See Paper 13, 4; Paper 15, 1.
`During the oral hearing, Patent Owner acknowledged filing the
`objections after the deadline. Tr. 44:15–16. Patent Owner elaborated that he
`received the email notice, but did not review the content of that notice
`because he was traveling, and because it was “buried with a whole bunch of
`other things.” Tr. 44:16–45:15. Patent Owner orally requested that we
`excuse the late filing of Paper 15 under 37 C.F.R. § 42.5(c)(3). Tr. 45:10–
`46:4.
`Patent Owner knew that the objections were late when filed on
`November 1, 2016, and took no action until the oral hearing on June 5, 2017.
`Such lengthy inaction diminishes the persuasiveness of Patent Owner’s
`request to excuse its late filing of objections. See 37 C.F.R. § 42.25(b) (“A
`party should seek relief promptly after the need for relief is identified. Delay
`in seeking relief may justify a denial of relief sought.”) Perhaps more
`importantly, a request to excuse a late action must be in the form of a
`motion. See 37 C.F.R. §§ 42.5(c)(3), 42.20. Patent Owner did not request
`authorization to file such a motion. Consequently, a proper request for relief
`is not before us.
`Patent Owner did not submit Paper 15 within the allotted time, and
`consequently that Paper is not an effective set of objections.
`c) Paper 24
`In response to evidence relied upon in Petitioner’s Reply, Patent
`Owner filed another set of objections (Paper 24) including objections to
`Exhibit 1007.
`
`6
`page 38
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Rule 42.64(b)(1) provides that during trial, objections must be filed
`within five business days of “service of evidence to which the objection is
`directed.” Petitioner served Exhibit 1007 on Patent Owner in association
`with the Petition, not in association with Petitioner’s Reply. Although
`Paper 24 was filed within five business days of filing of Petitioner’s Reply,
`is was not served within five business days of service of Exhibit 1007.
`Thus, by strict application of the rule, Paper 24 was not timely.
`We recognize that under the Federal Rules of Evidence the use of
`evidence may affect the admissibility of that evidence. For example, a
`single piece of evidence might be capable of a use that would be
`inadmissible hearsay and a use that would not be hearsay. Thus, if evidence
`were submitted in association with a petition and relied upon in a first
`manner, and then relied upon in a second, different manner in a subsequent
`paper (e.g., petitioner’s reply), the second use could create a potential
`objection to that evidence that was not present with the use in the petition.
`Such a situation might warrant permitting the submittal of the subsequent
`paper (e.g., Petitioner’s Reply) to trigger an opportunity to submit an
`objection. See 37 C.F.R. § 42.5(b) (permitting waiver of requirements of
`part 42). With this in mind, we compare the objections of Paper 15 to those
`of Paper 24.
`In Paper 24, Patent Owner asserts that Exhibit 1007: contains
`inadmissible hearsay under Federal Rule of Evidence (Fed. R. Evid.) 802;
`lacks proper authentication under Fed. R. Evid. 901; is irrelevant under Fed.
`R. Evid. 401; and, has probative value outweighed by one of the enumerated
`dangers of Fed. R. Evid. 403. Paper 24, 1–3.
`
`7
`page 39
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Regarding hearsay, both sets of objections assert that Exhibit 1007 “is
`not prior art, not from before the application was filed, not sworn testimony,
`and is therefore hearsay not subject to any hearsay exception.” Paper 15, 3;
`Paper 24, 2. Further, in Paper 15, Patent Owner asserts that the portion of
`Exhibit 1007 that is quoted by Petitioner is hearsay because it is offered to
`prove the truth of the matter asserted, namely, “what was known in the art at
`the time of the invention.” Paper 15, 2–3 (citing Pet. 10–11 (citing
`Ex. 1007, 2)). Likewise, in Paper 24, Patent Owner asserts that the same
`portion of Exhibit 1007 is hearsay because it is offered to prove the truth of
`the matter asserted, namely, “what was known in the art at the time of the
`invention.” Paper 24, 2 (citing Pet. Reply, 21 (citing Ex. 1007, 2)). Patent
`Owner’s hearsay objections in Paper 24 have no meaningful distinction from
`the objections in Paper 15.
`Regarding authentication, Patent Owner’s objections are the same.
`Compare Paper 15, 3 with Paper 24, 2–3.
`Regarding relevance, in Paper 24, Patent Owner asserts that
`Exhibit 1007 is irrelevant, misleading, and confusing because the statements
`were not made in the context of the challenged claims or applicable United
`States law. Paper 24, 3. Patent Owner elaborates that Petitioner has not
`sufficiently explained the evidence. Id. Patent Owner makes no distinction
`between reliance on Exhibit 1007 in the Petition and in the Petitioner’s
`Reply.
`
`8
`page 40
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`B.
`
`Given that Petitioner relies on Exhibit 1007 in the same manner in the
`Petition as in the Reply,3 and the lack of a meaningful distinction between
`the two sets of objections, we determine that Rule 42.64(b)(1) set the
`deadline for objecting to Exhibit 10017 as ten days after institution of trial
`and that waiver of this rule is not warranted.
`In light of this, Patent Owner did not make a timely objection, and
`consequently we deny Patent Owner’s Motion to Exclude.
`
`EXHIBIT 1028
`Petitioner filed Exhibit 1028, a duplicate of Exhibit 1027, in
`association with Petitioner’s opposition to Patent Owner’s Motion to
`Exclude. See Paper 32, 12–13. Petitioner did not seek Board authorization
`for filing a duplicate, and accordingly we expunge this Exhibit. See
`37 C.F.R. § 42.6(d) (stating that documents already of record in the
`proceeding may not be filed without express Board Authorization); see also
`37 C.F.R. § 42.7(a) (authoring the Board to expunge unauthorized papers).
`
`SCOPE OF PETITIONER’S REPLY
`During the oral hearing, Patent Owner objected to Petitioner’s
`demonstrative exhibits as containing information beyond the scope of a
`permissible reply. Based on this, we authorized Patent Owner to file a paper
`identifying such information, and we authorized Petitioner a response.
`
`3 In both the Petition and Petitioner’s Reply, Petitioner relies on
`Mr. Donohoe’s opinion as evidence of the state of the video game controller
`art as of the critical date of the ’525 patent. Compare Pet. 9–11 with Pet.
`Reply 21.
`
`C.
`
`9
`page 41
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`Paper 37, 3–4 (authorization); Paper 39 (Patent Owner); Paper 41
`(Petitioner). In the analysis that follows, we address these contentions with
`respect to information in Petitioner’s Reply that we rely upon in making this
`decision, but we do not address information that we did not rely upon.
`
`
`A.
`
`III. THE CLAIMED SUBJECT MATTER
`INTRODUCTION
`The ’525 patent relates to handheld controllers for video game
`consoles. Ex. 1001, 1:6–7.
`As background, the ’525 patent describes that conventional controllers
`were intended to be held and operated by the user using both hands, and
`describes that the plurality of controls were mounted on the front and top
`edge. Id. at 1:8–17; Fig. 1. The drawback of this design was that the user
`was required to remove his or her thumb from one control to operate another
`control, causing loss of control, such as aiming. Id. at 1:33–40. The
`’525 patent was intended to address this problem. Id. at 1:41–45.
`The controller of the ’525 patent is very similar to controllers of the
`prior art with respect to the outer case and the front and top controls. Id.
`at 2:15–20; compare Fig. 1 (prior art, id. at 2:61–62) to Figs 2, 3.
`Controller 10 of the ’525 patent includes a plurality of controls on the
`front and top edge like a conventional controller, and includes additional
`controls on the back, such as paddles 11, that are operable by fingers other
`than the thumb. Id. at 1:51–58; 3:14–17; Fig. 1 (front of conventional
`controller and controller 10), 2 (back of controller 10). Figure 2 follows:
`
`10
`page 42
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`
`Figure 2 is a schematic illustration of the back of game controller 10. Id. at
`2:63–64.
`
`B.
`
`CHALLENGED CLAIMS
`Of the challenged claims, 1 and 20 are independent. Claim 1 follows:
`1.
`A hand held controller for a game console comprising:
`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
`
`a front control located on the front of the controller;
`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
`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.4
`
`
`
`
`4 A line break was added for readability.
`
`11
`page 43
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`C.
`
`CLAIM INTERPRETATION
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation. See 37 C.F.R. § 42.100(b).
`For the purposes of this decision, and on this record, we determine
`that only the following claim terms require express interpretation. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(only those terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy).5
`Directional References
`1.
`The claims recite words indicating relative position or direction such
`as “front,” “back,” “top,” and “bottom” without expressly stating a frame of
`reference for interpreting these words. In the Institution Decision, we
`interpreted directional words in the claims to be terms that merely
`distinguish one feature from another and define positions relative to each
`other. Dec. 8–9. For example, “front” is opposite the “back,” and the “top”
`is opposite the “bottom.” This is true because the ’525 patent explicitly
`states that directional words, such as front, back, top, and bottom, merely
`serve to distinguish those features from one another and do not limit the
`respective features to a particular static orientation. Id. at 8 (citing Pet. 11–
`12; Ex. 1001, 4:28–32). The parties do not challenge this interpretation, and
`we adopt it here.
`
`
`5 Some aspects of claim construction, such as Patent Owner’s assertions
`regarding “flexible,” are addressed in the patentability analysis below.
`
`12
`page 44
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Thickness
`2.
`In the Institution Decision, we determined that the broadest reasonable
`interpretation of “thickness” as used in claims 9–11 is the dimension of the
`elongate member perpendicular to the surface of the elongate member (i.e.,
`also the direction of displacement when the user activates the control
`function). Dec. 10–11. The parties do not challenge this interpretation, and
`we adopt it here.
`Extension of Elongate Members
`3.
`Independent claims 1 and 20 recite that each elongate member on the
`back of the controller “extends substantially the full distance between the top
`edge and the bottom edge” of the outer case of the controller. Claims 2–19
`include this limitation by virtue of dependence from claim 1.
`In the Institution Decision, we determined that the claims require that
`the elongate members extend largely but not necessarily the entire distance
`between the top and the bottom edges. Dec. 11–13. The parties do not
`challenge this interpretation, and we adopt it here.
`Recess
`4.
`Claim 7 recites “[t]he controller of claim 1, wherein each elongate
`member is mounted with a recess located in the case of the controller.”
`Claim 8 recites, “[t]he controller of claim 7, wherein each elongate
`member comprises an outermost surface which is disposed in close
`proximity to the outermost surface of the controller such that a user’s fingers
`may be received in said respective recess.”
`
`13
`page 45
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`We address two aspects of the claimed “recess:” one, the direction of
`the recess, and two, whether the user’s fingers must be received in the
`recess.
`
`a) Direction of the Recessed Portion
`In the Petition, Petitioner asserted that, “any region between a first
`and second handle that is recessed towards the front of the video game
`controller can qualify as a ‘recess’” as claimed. Pet. 15 (emphasis added).
`In the Institution Decision, we determined that a “recess” as claimed is not
`limited to be recessed towards the front of the controller. Dec. 14–15. The
`parties do not contest this determination, and we adopt it here.
`b) User’s Fingers
`Patent Owner contends that a “recess” as claimed is required to
`receive a user’s finger and Petitioner argues the claims are not limited in that
`manner. PO Resp. 15–20; Pet. Reply 2–5. We disagree with Patent
`Owner’s assertion for several reasons.
`First, in the Preliminary Response, Patent Owner asserted that the
`claim term “recess” should be given its ordinary meaning. Prelim. Resp. 9,
`13; see also Pet. Reply 5 (pointing out this earlier statement). In the
`Response, Patent Owner asserts that a recess as claimed must receive the
`user’s fingers based on claim scope disavowal. PO Resp. 15–20. Patent
`Owner’s change in interpretation significantly undermines Patent Owner’s
`position.
`Second, Patent Owner’s analogy to AVX Corporation is not
`persuasive because the claim interpretation to which Patent Owner
`analogizes was changed on rehearing. See PO Resp. 16–17 (citing AVX
`
`14
`page 46
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`Corp. v. Greatbatch Ltd., Case No. IPR2015-00710, slip op. at 5–12, (PTAB
`Aug. 12, 2015) (Paper 9)); AVX, Paper 13 (PTAB Jan. 13, 2016) (rehearing).
`Third, for the reasons that follow, claim 8 undermines rather than
`supports Patent Owner’s position. Claim 1 requires that the elongate
`members are located on the back of the controller, and dependent claim 7
`adds that the elongate members are mounted in “a recess” located in the case
`of the controller. Ex. 1001, 4:40–55, 5:4–6. Claim 8 depends from claim 7
`and adds that each elongate member includes an outermost surface that is
`disposed in close proximity to the outermost surface of the controller so that
`a user’s finger may be received in the recess. The presence of the explicit
`requirement in claim 8 that the recess receives the user’s fingers suggests
`that a recess as recited in claim 7 does not include such a requirement. See
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir. 2004) (the
`presence of a dependent claim that adds a particular limitation gives rise to a
`presumption that the limitation in question is not present in the independent
`claim).6 In other words, if, as Patent Owner contends, a recess as claimed
`must receive the user’s fingers, such interpretation would render the explicit
`requirement in claim 8 superfluous. Bicon Inc. v. Straumann Co., 441 F.3d
`945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward
`giving effect to all terms in the claim.”); Stumbo v. Eastman Outdoors, Inc.,
`508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that
`render phrases in claims superfluous).
`
`
`6 We presume this principle applies to claim 8 by virtue of dependence from
`claim 7 even though claim 7 is not independent.
`
`15
`page 47
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`The ’525 patent does not include a lexicographical definition of
`“recess.” An ordinary meaning of a “recess” is “an indentation in a line or a
`surface (as an alcove in a room).” See Ex. 2005, 4357 (defining recess); see
`also PO Resp. 16 (asserting that this definition of recess is the ordinary
`meaning, but contending such meaning does not apply due to claim scope
`disavowal). The claims recite that a recess as claimed is included in the
`back of the outer case of the controller (a surface). This suggests that the
`claims require the back of the outer case of the controller to include an
`indentation. We consider this ordinary meaning in light of the
`Specification.8
`The ’525 patent describes that
`Preferably, each elongate member is mounted within a
`respective recess located in the case of the controller.
`Preferably, each elongate member comprises an outermost
`surface which is disposed in close proximity to the outermost
`surface of the controller such that the user’s finger’s may be
`received in said respective recess.
`Ex. 1001, 1:62–67. The ’525 patent describes that 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.
`Id. at 2:21–25. The ’525 patent describes that
`The paddles 11 are mounted within recesses located on the case
`of the controller 10; and are disposed in close proximity to the
`outer surface of the controller body. In this way a user may
`engage the paddles 11 with the tips of the fingers, preferably the
`
`7 This refers to the native page number of the Exhibit.
`8 The disclosures that follow are those portions of the ’525 patent cited by
`Patent Owner as evidencing disavowal.
`
`16
`page 48
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`middle fingers, without compromising the user’s grip on the
`controller 10.
`Id. at 3:39–44. Figure 3 of the ’525 patent, as annotated by Patent Owner,
`follows.
`
`
`
`Annotated Figure 3 depicts the back of a game controller as held and
`operated by a user, and includes Patent Owner’s identification of the first
`and second handle and the recess. See PO Resp. 19; Ex. 1001, 2:65–67.
`
`Patent Owner’s argument is that the ’525 patent expresses a clear
`intent to disavow controllers having a recess that does not receive a user’s
`fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner
`argues that the ’525 patent expresses a clear intent to cover only recesses
`that receive a user’s fingers. Patent Owner does not identify, nor do we
`discern, any explicit disclosure in the ’525 patent that the invention includes
`only recessed portions that receive a user’s fingers. The description that
`“preferably” each elongate member is mounted in a recess such that a user’s
`finger may be received in the recess is an exemplary disclosure of a
`
`17
`page 49
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`preferred embodiment. See Ex. 1001, 1:62–67. Likewise, the disclosures
`that the elongate members (e.g., paddles 11) are mounted within recesses so
`that a user may engage the elongate members with the tips of the fingers are
`exemplary. See id. at 2:21–25, 3:39–44, Fig. 3. Consequently, the ’525
`patent does not express a clear intent to limit the claimed invention to
`recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys.
`Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir.
`2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
`1571 (Fed.Cir. 1988) (“Although the specification may aid the court in
`interpreting the meaning of disputed claim language, particular embodiments
`and examples appearing in the specification will not generally be read into
`the claims.”).
`
`In light of the disclosures above, the ordinary meaning that a recess is
`an indentation is consistent with the Specification.
`
`The claims require that the outer case of the controller includes a
`recess (indentation), and the claims are not limited to a recess that permits
`receipt of a user’s fingers.
`Handheld Controller
`5.
`Patent Owner contends that a “handheld controller” as recited in
`independent claims 1 and 20 requires that the controller must be “held in and
`operated by both hands of a user.” PO Resp. 9. Our inquiry focuses on two
`aspects of Patent Owner’s contention: one, whether the device must be held
`in a single hand or in both, and two, whether the operability requirement
`precludes support of the controller from other than the user’s hands. We
`address these contentions in turn.
`
`18
`page 50
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`a) Single Hand or Both Hands
`In support of the argument that claims 1 and 20 each require the
`controller to be held in and operated by both hands of a user, Patent Owner
`contends that the preamble is limiting, that a controller that may be held in
`one hand has been disavowed, and that the ordinary meaning supports such
`an interpretation. PO Resp. 9–14, 23–26, Paper 38, 1–2.
`As detailed below in the analysis of the ground of unpatentability
`based on anticipation by Tosaki, Petitioner has demonstrated adequately that
`Tosaki’s controller may be held in and operated by one or both hands.
`Consequently, we need not determine if the claims are limited as Patent
`Owner asserts. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011) (Claim terms need only be construed to the extent
`necessary to resolve the controversy).
`b) Preclusion of Other Support
`We begin by clarifying Patent Owner’s contention. Patent Owner
`contends that Tosaki’s controller is not “handheld” as claimed because it is
`held between a player’s thighs. PO Resp. 23–26; Tr. 107:11–14. This
`contention implies the underlying claim interpretation that the claims
`preclude support by anything other than a player’s hands. During the oral
`argument, we asked Patent Owner if their argument was that the claims
`preclude support from other than a user’s hands. Tr. 107:15–19. Patent
`Owner replied, “No, your honor. My argument is that it must be – must be
`held by the hand and operated while being held in the hand.” Id. at 107:20–
`22; see also 112:8–9 (stating “We’re not saying no to other support other
`than the hands.”). Patent Owner elaborated that Tosaki’s device would not
`be operable for its intended purpose when supported only by a user’s hands
`
`19
`page 51
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`because without such support the steering wheel would not be able to move
`relative to the steering wheel base. Id. at 108:18–111:16. In other words,
`the steering wheel only operates properly with support other than the user’s
`hands (e.g., the base resting on a table or held between a user’s thighs).
`Although Patent Owner disagrees, Patent Owner’s argument is premised on
`the interpretation that the claims require the device to be fully operable when
`supported only by the user’s hands, which precludes support from other than
`the user’s hands.
`The preamble of claims 1 and 20 each recite, “A handheld controller
`for a game console comprising.” The body of each claim recites 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.” The language of claims 1
`and 20 requires the controller to be handheld and requires the controller to
`have a particular shape (i.e., a shape permitting the user’s thumb to be
`positioned to operate the front control).
`The language of the claims does not support Patent Owner’s
`argument. See Renishaw PLC, 158 F.3d 1243, 1248. Neither claim
`explicitly recites that the controller is (1) supported only by the user’s hands
`or (2) is operable only when supported only by the user’s hands alone.
`Further, claims 1 and 20 each use the open-ended term “comprising,” so that
`other support (e.g., a user’s thighs or a steering wheel base) is not precluded.
`See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
`(“Comprising” is a term of art used in claim language which means that the
`named elements are essential, but other elements may be added and still
`form a construct within the scope of the claim.).
`
`20
`page 52
`
`
`
`Case IPR2016-00948
`Patent 8,641,525 B2
`
`
`
`Patent Owner repeatedly emphasizes that the proffered interpretation
`is the ordinary meaning of “handheld.”9 See, e.g., Tr. 106:15–22; 112:8–16;
`116:10–12. In support, Patent Owner contends the ordinary meaning of
`“handheld” is, “held in the hand; esp to be operated while being held in the
`hand.” PO Resp. 14 (citing Ex. 2004, p. 526). This definition does not
`preclude support other than a user’s hands; rather, it means that the device
`must be held in the hand and operable when so held. With this ordinary
`meaning in mind, we turn to the claims.
`The ordinary meaning of “handheld” as being held in the hand and
`operable when so held is consistent with the Specification. See, e.g.,
`Ex. 1001, Abstract, 1:49–56, 3:14–15, Fig. 3. That ordinary meaning does
`not preclude support from other than a user’s hands.
`Patent Owner’s argument
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
