Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 11
`Entered: June 7, 2018
`
`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
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 11
`Entered: June 7, 2018
`
`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
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`Collective Minds Gaming Co. LTD. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–11 and 13–20 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 6, “Prelim. Resp.”), to which we authorized and Petitioner filed a
`Reply (Paper 10, “Pet. Reply”).
`
`Section 314(a) of Title 35 of the United States Code provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the
`Petition, the Preliminary Response, and Petitioner’s Reply, for the reasons
`explained below, Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one of the challenged claims. We institute
`an inter partes review of the ’525 patent.
`
`
`
`B.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’525 patent is or was at issue in a number
`of district court litigations. Pet. 78–29; Paper 5, 1. In particular, the
`’525 patent is at issue in: Ironburg Inventions Ltd. v. Valve Corp., Case No.
`2:17-cv-01182-TSZ (W.D. Wash.) and Ironburg Inventions Ltd. v. Collective
`Minds Gaming Co. Ltd., Case No. 1:16-cv-04110-TWT (N.D. Ga). Pet. 78–
`79; Paper 5, 1.
`
`2
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`The ’525 patent was the subject of petitions filed by Valve
`Corporation (“Valve”) in cases IPR2016-00948 (“the ’948 IPR”) and
`IPR2017-00136 (“the ’136 IPR”). Id. On September 22, 2017, we issued a
`final written decision in IPR2016-00948, finding claims 1, 6, 13, 14, 16, 17,
`19, and 20 of the ’525 patent unpatentable. Ex. 3002. On January 25, 2018,
`we issued a decision terminating IPR2017-00136, without issuing a final
`written decision. See Valve Corp. v. Ironburg Inventions LTD., IPR2017-
`00136 (PTAB Jan. 25, 2018) (Paper 43).
`
`
`
`C.
`
`THE ’525 PATENT
`The ’525 patent relates to hand held 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 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.
`
`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), Fig. 2 (back of controller 10). Figure 2
`follows:
`
`3
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`
`Figure 2 is a schematic illustration of the back of game controller 10.
`Id. at 2:63–64.
`
`D.
`
`ILLUSTRATIVE CLAIMS
`Of the challenged claims, 1 and 20 are independent. Claims 2–11 and
`13–19 depend directly or indirectly from claim 1. 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;
`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.
`Claim 20 differs from claim 1 by, among other ways, not requiring the
`elongate member to be inherently resilient and flexible. Claim 20 follows:
`
`4
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`20. 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.
`
`
`
`E.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner challenges the claims on the following grounds:
`
`Reference(s)
`
`Basis
`Claims Challenged
`§ 103(a) Kotkin1
`1–3, 5–11, 13, 14, 17,18, and 20
`§ 103(a) Willner2, Koji3, and Raymond4
`1–11, 13–17, 19 and 20
`Pet. 6. Petitioner relies upon a Declaration of Mark Benden, Ph.D., CPE
`(Ex. 1008). Patent Owner relies upon a Declaration of Dr. Glen Stevick
`(Ex. 2001).
`
`
`
`
`1 U.S. Patent Application Pub. No. 2010/0298053 A1, published Nov. 23,
`1999 (Ex. 1003).
`2 U.S. Patent Application No. 6,760,013 B2, issued Jul. 6, 2004 (Ex. 1005).
`3 Japanese Patent Application No. JP-A H10-020951, published Jan. 23,
`1998 (Ex. 1011).
`4 U.S. Patent Application No. 5,773,769, issued Jun. 30, 1998 (Ex. 1007).
`
`5
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`II. PRELIMINARY MATTERS
`A. REQUEST FOR DENIAL PURSUANT TO § 325(D)
`Section 325(d) states that “[i]n determining whether to institute . . .
`the Director may take into account whether, and reject the petition . . .
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” 35 U.S.C. § 325(d).
`Patent Owner requests that we exercise discretion and dismiss the
`Petition pursuant to § 325(d) 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.” Prelim. Resp. 7–18. First, Patent Owner contends that Kotkin
`is cumulative to Ogata5, Goto6, Some7, Komata8, and Takatsuka9, all of
`which were before the Patent Office during prosecution, because “[t]hese
`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.” Prelim. Rep. 10–13. Patent Owner acknowledges that
`Kotkin is different in that it includes flexible cable or line 219 but asserts,
`
`
`5 U.S. Patent Application No. 6,394,906 B1, issued May 28, 2002
` (Ex. 2007).
`6 U.S. Patent Application No. 5,551,693, issued Sep. 3, 1996 (Ex. 2008).
`7 U.S. Patent Application No. 6,342,009 B1, issued Jan. 29, 2002 (Ex. 2009).
`8 U.S. Patent Application No. 6,524,187 B2, issued Feb. 25, 2003
` (Ex. 2010).
`9 U.S. Patent Application No. 6,524,186 B2, issued Feb. 25, 2003
` (Ex. 2011).
`
`6
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`“this does not raise a meaningful new art meriting a re-review because cable
`line 219 is not inherently resilient.” Id. at 12.
`
`Patent Owner’s argument is unpersuasive because Kotkin
`substantively differs from Ogata, Goto, Some, Komata, and Takatsuka. As
`Patent Owner acknowledges, Kotkin describes flexible cable or line 219.
`Pet. 12; Ex. 1003 ¶ 33. Whether Kotkin’s flexible cable or line 219 meets
`the claimed inherently resilient and flexible elongate member is the crux of
`the dispute between Petitioner and Patent Owner. E.g., see Prelim. Resp. 34.
`We, thus, are not persuaded by Patent Owner that Kotkin is substantially the
`same prior art as Ogata, Goto, Some, Komata, and Takatsuka. See Becton,
`Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017–01587, 2017
`WL 6459935, *6–7 (PTAB Dec. 15, 2017) (Paper 8) (informative)
`((discussing non-exclusive factors for evaluating whether to exercise our
`discretion under § 325(d), including considering the differences between the
`asserted art and the prior art involved during examination).
`
`Second, Patent Owner contends that Willner was considered during
`prosecution and Willner is cumulative to Park10, which was expressly
`considered during prosecution, and is cumulative to Enright11, which
`expressly was considered during the ’948 IPR and the ’136 IPR. Prelim.
`Resp. 13–14.
`
`
`10 U.S. Patent Application No. 7,859,514 B1, issued Dec. 28, 2010 (Ex.
`2012).
`11 U.S. Patent Application Pub. No. 2010/0073283 A1, Mar. 25, 2010
` (Ex. 2013).
`
`7
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`Patent Owner’s argument is unpersuasive. Petitioner relies upon
`Willner to teach a specific configuration of controls on the back on a
`controller, and when combined with Koji and Raymond, to teach an
`inherently resilient and flexible elongate member. Pet. 15–27. The
`combination of Willner, Koji, and Raymond was not considered during
`prosecution or during the ’948 IPR or the ’136 IPR. See generally Ex. 1002.
`The Petition, thus, relies upon Willner in a different manner than Park and
`Enright were relied upon during examination, the ’948 IPR, and the
`’136 IPR. See Pet. 44–60; Ex. 3001, 17; Ex. 3002, 28; Ex. 3003, 11–12.
`We, thus, are not persuaded by Patent Owner that Willner is substantially the
`same as Park and Enright. See Becton at *9 (considering the extent of the
`overlap between the arguments made during examination and the manner in
`which Petitioner relies upon the prior art).
`
`Although Willner was listed on a Notice of References Cited during
`prosecution, it was not otherwise discussed during prosecution. See
`Ex. 1002, 47; Pet. 44. The Examiner did not rely upon Willner to reject the
`claims or otherwise substantively discuss Willner. See generally Ex. 1002.
`Because Willner was not substantively considered during prosecution, we
`decline to exercise discretion to deny the Petition. See Becton at *8
`(considering the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for examination).
`
`Finally, Patent Owner argues that the Board previously considered
`
`substantially the same arguments during the ’948 IPR and the ’136 IPR.
`Prelim. Resp. 16–17. Patent Owner argues that because all the arguments
`relate to whether the prior art teaches an inherently resilient and flexible
`
`8
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`elongate member, the arguments are substantially the same. Id. Patent
`Owner’s argument is unpersuasive. Because the prior art considered in the
`’948 IPR and the ’136 IPR substantially differs from the prior art presented
`by Petitioner, See Ex. 3001, 17; Ex. 3003, 11–12, we conclude that
`Petitioner does not present substantially the same arguments as those
`presented in the ’948 IPR and ’136 IPR.
`
`The Petition does not present the same or substantially the same prior
`
`art and arguments that were previously presented to the Office. We decline
`to exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter
`partes review.
`
`B.
`
`REQUEST FOR DENIAL PURSUANT TO § 314(A)
`The Director has discretion to institute an inter partes review under
`35 U.S.C. § 314(a). Patent Owner requests that we exercise discretion under
`35 U.S.C. § 314(a) to deny institution of an inter partes review, because the
`’525 patent was the subject of the ’948 IPR and the ’136 IPR. Prelim. Resp.
`18–27. Patent Owner argues that the factors of General Plastic Industrial
`Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, 2017 WL 3917706
`(PTAB Sept. 6, 2017) (Paper 19) (precedential-in-part12) “weigh against
`institution and the totality of the factors compel denial of institution.” Id. at
`20. Petitioner disagrees. Pet. Reply, 1–5.
`
`General Plastic sets forth a list of factors that may be considered in
`determining whether to exercise discretion under § 314(a).
`
`
`12 The Board designated Section II.B.4.i of General Plastic precedential on
`October 18, 2017.
`
`9
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`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;
`3. whether at the time of filing of the second petition 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;
`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;
`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;
`6. the finite resources of the Board; and
`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.
`General Plastic at *7. The factors are “a non-exhaustive list” and
`“additional factors may arise in other cases for consideration, where
`appropriate.” Id. at *7, *8.
`
`Patent Owner sued Valve for infringement of the ’525 patent on
`December 3, 2015. Ex. 1014. Valve filed a petition in the ’948 IPR on April
`22, 2016, and in the ’136 IPR on October 25, 2016. No evidence of record
`sufficiently shows that Valve and Petitioner are related. Patent Owner sued
`Petitioner on November 2, 2016, and served Petitioner with the complaint on
`January 4, 2017. Ex. 1015; Ex. 1016, 2. Valve’s petitions, thus, were filed
`prior to Petitioner being sued or served with a complaint for infringement of
`
`10
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`the ’525 patent. We weigh this fact heavily in our analysis of the factors
`below.
`
`Factor One
`1.
`Factor one asks whether the same petitioner previously filed a petition
`directed to the same claims of the same patent. Petitioner has not previously
`filed any petition challenging any claims of the ’525 patent. See Prelim.
`Resp. 20–21; Pet. Reply, 4. Petitions in the ’948 IPR and the ’136 IPR were
`filed by Valve, not Petitioner. See Prelim. Resp. 21. Factor one, thus,
`weighs in favor of institution.
`
`Patent Owner argues that the Board’s discretion under § 314(a) “is not
`limited to situations where the same party files multiple petitions.” Prelim.
`Resp. 21 (quoting NetApp Inc. v. Realtime Data LLC, IPR2017-01195, 2017
`WL 4574549, *4 (P.T.A.B. Oct. 12, 2017) (Paper 9, 10)). Patent Owner
`alleges that Petitioner entered into a joint defense agreement with Valve and,
`thus, Petitioner’s and Valve’s relationship is sufficiently close such that
`Petitioner is responsible for Valve’s previously filed petitions. See Prelim.
`Rep. 21. Petitioner denies that it and Valve have a joint defense agreement
`and states that Valve is “an unrelated petitioner.” Pet. Reply, 1–3.
`
`Patent Owner’s argument is unpersuasive. Patent Owner’s evidence is
`insufficient to show that Petitioner and Valve are related in any meaningful
`way, other that they are both accused of infringing the ’525 patent in district
`court litigations. See Prelim. Resp. 21–22; Pet. Reply, 2–3. In any event,
`Patent Owner’s citation to NetApp does not support its argument. NetApp is
`a routine decision in an unrelated inter partes review in which the petitioners
`were joint defendants in consolidated district court litigation at the time of
`
`11
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`the filing of the first petition.13 Nevertheless, the NetApp panel weighed
`factor one in favor of institution because the petitioner there had not
`previously filed a petition challenging the patent at issue. See NetApp at *4.
`
`Factor Two
`2.
`Factor two asks 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 and, thus, is directed to situations in which the same petitioner
`files two separate petitions at different times. Petitioner has not previously
`filed any petition challenging the ’525 patent. See Prelim. Resp. 20–21; Pet.
`Reply, 4. Factor two, thus, favors neither institution nor denial.
`
`Patent Owner argues, “Petitioner knew or should have known” of
`
`Willner, Kotkin, Koji, and Raymond and there is no evidence “to show there
`was any barrier to it presenting argument based on these prior art references
`during the pendency of the [’948 IPR and ’136 IPR].” Prelim. Resp. 23.
`
`Patent Owner’s argument is unpersuasive. Factor two is directed to
`Petitioner’s knowledge at the time of filing of the first petition. In the
`’948 IPR, Valve filed the petition on April 22, 2016, and in the ’136 IPR,
`Valve filed the petition on October 25, 2016. Patent Owner provides no
`evidence or argument sufficient to show that Petitioner knew or should have
`known of Willner, Kotkin, Koji, and Raymond on April 22, 2016 or October
`25, 2016. Indeed, Patent Owner sued Petitioner on November 2, 2016 and
`served Petitioner with the complaint on January 4, 2017. Valve’s petitions,
`
`
`13 See Standard Operating Procedure 2, ¶ III.E (Revision 9) (in contrast to a
`routine opinion, a precedential opinion “is binding authority in subsequent
`matters involving similar facts or issues”).
`
`12
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`thus, were filed prior to Petitioner being sued or served with a complaint for
`infringement of the ’525 patent. Patent Owner provides no evidence or
`argument sufficient to show that Petitioner knew or should have known of
`Wilner, Kotkin, Koji, or Raymond when it has not yet been sued for
`infringement of the ’525 patent.
`
`Factor Three
`3.
`Factor three asks whether at the time of filing of the second petition
`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. “The absence of any restrictions on follow-on
`petitions would allow petitioners the opportunity to strategically stage their
`prior art and arguments in multiple petitions, using our decision as a
`roadmap, until a ground is found that results in the grant of review.”
`General Plastic at *7.
`
`Patent Owner argues that this factor weighs heavily against institution
`and alleges that Petitioner relied upon the substantive papers in the ’948 IPR
`and the ’136 IPRs as a roadmap to remedy Valve’s failed challenges.
`Prelim. Resp. 23–25.
`
`Patent Owner’s argument is unpersuasive. The Petition was filed on
`January 3, 2018, which is after entry of the Final Written Decision in the
`’948 IPR on September 22, 2017, and after the filing of the Patent Owner’s
`Response in the ’136 IPR on July 25, 2018. Petitioner, thus, had the benefit
`of seeing all of Patent Owner’s substantive papers and evidence and our
`Decisions on Institution in those inter parte reviews and the Final Written
`Decision in the ’948 IPR. As Petitioner points out, however, “the timing is
`
`13
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`Ironburg’s own doing.” Pet. Reply, 5. Patent Owner sued Petitioner on
`November 2, 2016, and served Petitioner with the complaint on January 4,
`2017, after institution of the ’948 IPR and the filing of the petition in the
`’136 IPR. Petitioner asserts, “Collective Minds diligently investigated the
`validity of the asserted claims, developed its own invalidity theories, and
`filed a unique IPR petition within its own statutory window.” Pet. Reply, 2.
`Patent Owner provides no evidence sufficient to rebut Petitioner’s assertion.
`As discussed above with respect to § 325(d), the grounds here are not the
`same or substantially the same as the grounds in the ’948 IPR or the ’136
`IPR. We, thus, are not persuaded that Petitioner is strategically staging the
`timing of its petition to use our decisions or in the ’948 IPR or ’136 IPR as a
`roadmap.
`
`
`
`Factor three, thus, weighs in favor of institution.
`
`Factor Four
`4.
`Factor four considers 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.
`
`Patent Owner argues that Petitioner should have known of Willner as
`of February 4, 2014, the issue date of the ’525 patent, and should have
`known of Kotkin, Koji, and Raymond at least by July 10, 2017, the date
`Petitioner served its invalidity contentions in the related district court
`proceeding. Prelim. Resp. 25. According to Patent Owner,
`
`Petitioner waited at least 6 months after it served its invalidity
`contentions to file the current Petition. Equally important,
`Petitioner waited for an entire year to file the current Petition
`despite the fact that it was on notice of Willner as early as the
`
`14
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`date the Complaint was served on Petitioner. Notably, Petitioner
`offers no explanation for this delay.
`
`Id.
`
`Patent Owner’s argument is unpersuasive. Six months between
`learning of Willner, Kotkin, Koji, and Raymond and filing the Petition is a
`reasonable amount of time given the circumstances here. Further, Petitioner
`filed the Petition within the one-year period from which it was served with a
`complaint alleging infringement of the ’525 patent. See 35 U.S.C. § 315(b)
`(“An inter partes review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on which the petition . . .
`is served with a complaint alleging infringement of the patent.”). We, thus,
`are not persuaded that Petitioner unreasonably “delayed” filing the Petition.
`
`
`
`Factor four, thus, weighs in favor of institution.
`
`Factor Five
`5.
`Factor five asks 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. The petitions in the ’948 IPR and the
`’136 IPR were filed prior to Petitioner being sued or served with a complaint
`for infringement of the ’525 patent. This is an adequate explanation for the
`time elapsed between the filing of the Petition here and the petitions in the
`’948 IPR and the ’136 IPR. Factor five, thus, weighs in favor of institution.
`
`Patent Owner argues that “[i]t took Petitioner an entire-year to file its
`follow-on Petition” and “offers no explanation for the delay.” Prelim. Resp.
`25–26. Patent Owner contends, “[t]here is no evidence that Petitioner was
`
`15
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`unable to file its Petition during pendency of [the ’948 IPR] and [the ’136
`IPR].” Id. at 26.
`
`Patent Owner’s argument is unpersuasive. Factor five is directed to
`the time between the filing of the petitions. In the ’948 IPR, Valve filed the
`petition on April 22, 2016, and in the ’136 IPR, Valve filed the petition on
`October 25, 2016. Patent Owner filed suit against Petitioner on November
`2, 2016, and served Petitioner with the complaint on January 4, 2017. The
`Petition was filed on January 3, 2018, within the one-year time period set
`forth in § 315(b). Thus, any alleged “delay” in filing of the Petition is
`“Ironburg’s own doing.” Pet. Reply, 5.
`
`Factors Six and Seven
`6.
`Factor six considers the finite resources of the Board, and factor seven
`
`considers 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. We discern no inappropriate impact on the
`finite resources of the Board or our ability to issue a final written decision by
`the one-year statutory deadline set forth in 35 U.S.C. § 316(A)(11). Factors
`six and seven, thus, weigh in favor of institution.
`
`Patent Owner makes similar arguments for factors six and seven.
`
`Prelim. Resp. 26–27. Patent Owner argues
`
`Petitioner waited for an entire year to file its follow-on Petition
`after it was served on January [4], 2017. . . . This 12 month delay
`precluded timely and efficient consolidation with IPR2016–
`00948 and/or IPR2017-00136. Further, Petitioner could have
`moved to join IPR2016-00948 and/or IPR2017-00136, but
`instead strategically chose to increase the Board’s workload by
`filing a separate Petition with overlapping grounds.
`
`16
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`Id. at 26.
`
`Patent Owner’s argument is unpersuasive. As discussed above with
`
`regard to factor three, we are not persuaded that Petitioner unreasonably
`“delayed” filing the Petition under the circumstances here. The petitions in
`the ’948 IPR and the ’136 IPR were filed prior to Petitioner being sued or
`served with a complaint for infringement of the ’525 patent. The Petition
`was filed on January 3, 2018, within one-year of Petitioner being served the
`complaint alleging infringement of the ’525 patent, as permitted by § 315(b).
`Further, as also discussed above with respect § 325(d), the grounds here are
`not the same or substantially the same as the grounds in the ’948 IPR or the
`’136 IPR and are not “overlapping grounds.” Given the timing of the
`service of the complaint and the non-overlapping grounds, we are not
`persuaded that the Petitioner “strategically chose to increase the Board’s
`workload” by not moving to join the ’948 IPR or the ’136 IPR. Indeed, we
`denied Valve’s motion to join the ’136 IPR to the ’948 IPR because of non-
`overlapping grounds. See the Ex. 3003, 16–17.
`
`Conclusion
`7.
`Our analysis of the factors weighs heavily the facts that Petitioner did
`
`not file the petitions in the ’948 IPR and the ’136 IPR and that Patent Owner
`did not serve Petitioner with a complaint for infringement of the ’525 patent
`until after the filing of the petitions in the ’948 IPR and the ’136 IPR. We
`will not exercise discretion to deny the Petition because an unrelated
`petitioner filed petitions for inter partes review on substantially different
`grounds prior to Petitioner being sued for alleged infringement of the ’525
`patent. Upon consideration of factors one through seven of General Plastic,
`
`17
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`we decline to exercise discretion to deny the Petition under 35 U.S.C.
`§ 314(a).
`
`
`
`III. ANALYSIS
`A. CLAIM INTERPRETATION
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable interpretation in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`approach). For the purposes of this decision, and on this record, we
`determine that only the following claim element need explicit 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).
`
`Inherently Resilient and Flexible (claims 1–19)
`Claim 1 recites that the elongate member is “inherently resilient and
`flexible.” Claims 2–11 and 13–19 include this limitation by virtue of
`dependence from claim 1. Claim 20 does not recite this limitation.
`As Petitioner and Patent Owner acknowledge, we determined that
`“[a]n elongate member is inherently resilient and flexible in that it may be
`bent or flexible by a load, such as that from a user’s finger, and will then
`return to its unbiased position when not under load,” in the ’948 IPR and the
`’136 IPR. See Pet. 25; Prelim. Resp. 30–31; Pet. Reply 6; Ex. 3001, 14; see
`
`18
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`Ex. 3002, 15; Ex. 3003, 8. Neither Petitioner nor Patent Owner disputes our
`interpretation. See Pet. 25; Prelim. Resp. 30–31; Pet. Reply 6.
`
`
`IV. PATENTABILITY
`A. OBVIOUSNESS OVER KOTKIN
`Petitioner contends that claims 1–3, 5–11, 13, 14, 17–18, and 20 are
`unpatentable under 35 U.S.C. § 103(a) over Kotkin (Ex. 1003). Pet. 7–44.
`
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter
`pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The ultimate
`determination of obviousness under § 103 is a question of law based on
`underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
`(Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1996)). These underlying factual considerations consist of: (1) the “level of
`ordinary skill in the pertinent art,”14 (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) “secondary considerations” of non-obviousness such as “commercial
`success, long-felt but unsolved needs, failure of others, etc.”15 KSR, 550
`U.S. at 406 (quoting Graham, 383 U.S. at 17–18).
`
`
`14 We do not need to determine the level of ordinary skill in the art to resolve
`the issues before us. The level of skill is reflected in the prior art of record.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`15 The record contains no evidence of secondary considerations.
`
`19
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`
`Overview of Kotkin
`1.
`Kotkin is U.S. Patent Application Publication No. US 2010/029853
`A1, which published on November 25, 2010 and claims priority to
`Provisional Application No. 61/179,551 (“the ’551 application”) filed on
`May 19, 2009. Ex. 1003, (10), (43), (60). Petitioner contends that Kotkin is
`available as prior art under pre-AIA 35 U.S.C. § 102(e)(1). Pet. 9.
`
`Kotkin’s invention is skin or shell 210, which fits over an existing
`controller, such as the controller for the PLAYSTATION 3. Ex. 1003 ¶¶ 27,
`29. Skin 210 includes actuators, such as levers 212, 214, 216. Id. ¶ 30. The
`actuators allow a user to control video game functions with parts of their
`hand other than the thumb. See id. ¶¶ 5, 28, 30. This “permits the user to
`control many more features of a game than would normally be possible
`while using the fingers on one hand.” Id. ¶ 8.
`
`A version of Kotkin’s Figure 2 annotated by Petitioner is reproduced
`below:
`
`
`
`20
`
`
`
`IPR2018-00354
`Patent 8,641,525
`
`Annotated Figure 2 depicts skin 210 having levers 212, 214, and 216 and
`overlaying a PLAYSTATION 3 controller. Id. ¶¶ 29–30; Pet. 10.
`Petitioner’s annotations show a top edge opposite a bottom edge. Pet. 14.
`The controller has buttons, such as right-side thumb stick 112, “X”, “Y”, and
`“B”, on the front. Ex. 1003 ¶ 28. A user can use their index finger to actuate
`levers 212, 214, and 216 to control buttons “X”, “Y”, and “B” instead of
`using their thumb. See id. ¶ 30.
`
`
`
`Kotkin states:
`It is important to note that more or less levers than shown can be
`integrated with the skin 210 of the present invention. For
`example, for certain applications, i
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
