`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`COLLECTIVE MINDS GAMING CO. LTD.
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`___________________
`
`Case IPR2018-00354
`Patent 8,641,525
`___________________
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`
`2.
`
`3.
`
`Page
`Introduction ..................................................................................................... 1
`I.
`II. None Of The Stated Grounds For Unpatentability Render The
`Challenged Claims Obvious ........................................................................... 2
`A.
`Legal Standard For Combining References ......................................... 2
`B.
`Claim Construction - “Inherently Resilient And Flexible”
`(Claims 1-19) ........................................................................................ 3
`1.
`The Board’s Analysis In The Prior Proceedings Confirms
`That The Terms “Resilient” And “Flexible” Both
`Describe Inherent Properties Of The Material From
`Which The Elongate Member Is Formed, And Not Other
`Components In An Assembly That May Include An
`Elongate Member ....................................................................... 4
`Petitioner’s New Arguments In Its Reply To The POPR
`Violate Board Rules And The Updated Trial Practice
`Guide, And Should Not Be Considered ................................... 10
`Even If Petitioner’s New Arguments Were Considered,
`They Are Unsupported By Any Expert Testimony And
`Are Legally And Scientifically Erroneous ............................... 11
`“Inherently” Is “A Permanent And Inseparable Attribute,
`Characteristic Or Quality Of The Material From Which
`The Elongate Member Itself Is Formed” ................................. 14
`Level Of Ordinary Skill ...................................................................... 16
`C.
`D. Kotkin Does Not Render Obvious Any Of Claims 1-3, 5-11, 13,
`14, 17-18 And 20 (Ground 1) ............................................................. 19
`1.
`Kotkin Does Not Disclose “Inherently Resilient And
`Flexible” Elongate Members (Claims 1-3, 5-11, 13, 14,
`17-18) ....................................................................................... 19
`a.
`Housing Bottom 320 Is Not Inherently Resilient
`And Flexible ................................................................... 20
`Line 219 Is Not Inherently Resilient .............................. 24
`Kotkin’s Provisional Application Does Not
`Disclose Back Controls Or Elongate Members
`That Are Inherently Resilient And Flexible ................... 28
`
`4.
`
`b.
`c.
`
`
`
`- i -
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`

`

`TABLE OF CONTENTS
`(continued)
`
`2.
`
`E.
`
`Page
`Kotkin Does Not Disclose The Claimed Thickness Range
`(Claims 9-11) ........................................................................... 30
`The Proffered Combination Of Willner, Koji And Raymond
`Does Not Render Obvious Any Of Claims 1-11, 13-17, And
`19-20 (Ground 2) ................................................................................ 34
`1.
`Raymond Is Non-Analogous Art ............................................. 34
`a.
`Petitioner Never Demonstrated That Raymond Is
`From The Same Field Of Endeavor ................................ 36
`Raymond Is Not Pertinent To The Problems Faced
`By The ‘525 Inventors .................................................... 39
`Petitioner Failed To Provide Any Objective Evidence Or
`Sufficient Reason For Combining Raymond With Koji.......... 43
`No Motivation To Combine Koji With Willner ...................... 50
`3.
`Raymond Does Not Disclose The Claimed Thickness Range
`(Claims 9-11) ...................................................................................... 57
`III. Conclusion .................................................................................................... 59
`
`b.
`
`2.
`
`F.
`
`
`
`- ii -
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`

`

`TABLE OF AUTHORITIES
`
`
`Page
`
`CASES
`A.C. Dispensing Equip. Inc. v. Prince Castle LLC,
`IPR2014- 00511, Paper 16 (P.T.A.B. Sept. 10, 2014)........................................ 49
`ActiveVideo Networks v. Verizon Commc’ns,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 44, 47
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115, Paper 94 (P.T.A.B. Apr. 20, 2015) ......................................... 34
`Apple Inc. v. ContentGuard Holdings, LLC,
`IPR2015-00446, Paper 11 (P.T.A.B. July 10, 2015) ......................................... 49
`Beiden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 47, 48
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 2
`CFMT, Inc. v. Yieldup Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 19
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ........................................ 48
`Endo Pharmaceuticals v. Depomed,
`IPR2014-00652, Paper 12 (P.T.A.B. Sep. 29, 2014) .......................................... 19
`Ex Parte Jan Vetesnik,
`2009 WL 291177 (B.P.A.I. Feb. 5, 2009) .......................................................... 45
`Fidelity Nat’l Info. Servs., Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (P.T.A.B. Aug. 13, 2014) ........................................... 49
`Grain Processing Corp. v. Am. MaizeProds. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................ 56
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (P.T.A.B. July 31, 2013) ............................................ 3
`Hilti, Inc. et al. v. Milwaukee Elec. Tool Corp.,
`IPR2015-01164, Paper 87 (P.T.A.B. November 14, 2016) .......................... 31, 57
`Hockerson-Halberstadt, Inc. v. Avia Grp., Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 31, 58
`
`
`
`- iii -
`
`
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .................................................................... 37, 38
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 39
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 56
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ...................................................................... 47, 48
`In re Kahn,
`441 F3.d 977 (Fed. Cir. 2006) .............................................................................. 2
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 39
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 42, 54
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) .......................................................................... 41
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ............................................................................ 19
`In re Warner,
`379 F.2d 1011 (C.C.P.A. 1967) ........................................................ 22, 29, 44, 56
`In re Wright,
`569 F.2d 1124 (C.C.P.A. 1977) .......................................................................... 31
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .............................................................. 10, 36, 42
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol
`Ltd.,
`IPR2014-00309 (P.T.A.B. Mar. 23, 2014) ......................................................... 17
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 53
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .................................................................................. 2, 34, 44
`KTEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) .......................................................................... 35
`
`
`
`- iv -
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`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) ..................................................................... 51
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026, Paper 17 (P.T.A.B. Dec. 21, 2012) ......................................... 19
`Nichia Corporation v. Everlight Americas, Inc.,
`855 F.3d 1328 (Fed. Cir. 2017) .......................................................................... 52
`Nystrom v. TREX Co., Inc.,
`424 F.3d 1136 (Fed. Cir. 2005) .................................................................... 31, 58
`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939, Paper 8 (P.T.A.B. Dec. 17, 2014) ........................................... 49
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 34
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2014-00518, Paper 47 (P.T.A.B. Sep. 17, 2015) .......................................... 18
`Schott Gemtron Corp. v. SSW Holding Co.,
`IPR2014-00367, Paper 62 (P.T.A.B. May 26, 2015) ................................... 39, 43
`Sensonics Inc. v. Aerosonic Corp.,
`81 F.3d 1566 (Fed. Cir. 1996) ................................................................ 32, 44, 58
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00092, Paper 21 (P.T.A.B. May 24, 2013) ........................................... 2
`Spaceco Business Solutions, Inc. v. Moscovitch,
`IPR2015-00127, Paper 16 (P.T.A.B. May 14, 2015) ............................. 32, 51, 58
`SRI Int'l, Inc. v. Advanced Tech. Labs., Inc.,
`45 F.3d 443 (Fed. Cir. 1994) .............................................................................. 41
`State Contracting & Eng’g Corp. v. Condotte America, Inc.,
`346 F.3d 1057 (Fed. Cir. 2004) .......................................................................... 37
`Tinnus Enterprises, LLC v. Telebrands Corp.,
`846 F.3d 1190 (Fed. Cir. 2017) .......................................................................... 43
`Toshiba Corp. v. Optical Devices, LLC,
`IPR2014-01447, Paper 34 (P.T.A.B. March 9, 2016) ........................................ 11
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 34
`
`
`
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`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`Valve Corp. v. Ironburg Inventions, Ltd.,
`IPR2016-00948, Paper 54 (P.T.A.B. January 26, 2018) .............................passim
`Valve Corp. v. Ironburg Inventions, Ltd.,
`IPR2017-00136, Paper 12 (P.T.A.B. May 4, 2017) ............................................. 7
`Valve Corp. v. Ironburg Inventions, Ltd.,
`IPR2017-01928, Paper 11 (P.T.A.B. February 8, 2018) ...................................... 8
`Valve Corporation v. Ironburg Inventions, Ltd.,
`IPR2017-00858, Paper 7 (P.T.A.B. Sept. 1, 2017) ............................................. 29
`Vizio Inc. v. Nichia Corp.,
`IPR2017-00552, Paper 9 (P.T.A.B. July 7, 2017) .............................................. 39
`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) ................................................................ 37, 38, 41
`ZTE (USA), Inc. v. Elecs. & Telecommc’ns Research Ins.,
`IPR2015-00029, Paper 12 (P.T.A.B. Mar. 20, 2015) ......................................... 49
`STATUTES
`35 U.S.C. § 282 ........................................................................................................ 35
`35 U.S.C. § 312(a)(3) ................................................................................... 11, 36, 42
`35 U.S.C. § 316(e) ................................................................................................... 35
`OTHER AUTHORITIES
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 48
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 49
`37 C.F.R. § 42.23 ..................................................................................................... 11
`37 C.F.R. § 42.24(c) ................................................................................................. 49
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 10
`83 Fed. Reg. 39,989 (Aug. 13, 2018) .................................................... 11, 12, 13, 15
`
`
`
`
`
`
`- vi -
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`

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

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`Excerpt from The Concise Oxford Dictionary, “Inherent,”
`10th ed. 1999.
`Excerpt from Webster’s New World Dictionary, “Inherent,”
`2nd ed. 1978.
`Excerpt from Ducheyne, P. and Hastings, G., Metal and
`Ceramic Biomaterials - Volume II Strength and Surface, pp.
`64-69 (CRC Press 1984)
`Declaration of Dr. Glen Stevick in Support of Patent Owner
`Response
`Product Specification for Snap Action Switches
`
`- viii -
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`
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`
`

`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`I.
`
`Introduction
`The Board instituted the following grounds for inter partes review of claims
`
`1-20 of U.S. Pat. No. 8,841,525 (“the ‘525 Patent”) in the manner shown in the
`
`table below.
`
`Grounds Claims
`1
`1-3, 5-11, 13, 14, 17-
`18, and 20
`
`2
`
`1-11, 13-17, and 19-
`20
`
`References
`Type
`Obviousness §103 Kotkin in view of the
`knowledge of a
`POSITA
`Obviousness §103 Willner in view of
`Koji, in further view of
`Raymond
`
`First, Petitioner’s obviousness challenge under Ground 1 fails because
`
`Kotkin does not disclose an elongate member which is “inherently resilient and
`
`flexible.” The absence of any teaching or suggestion in Kotkin for elongate
`
`members that are “inherently resilient and flexible” renders Petitioner’s
`
`obviousness challenge under Ground 1 necessarily deficient. Moreover, dependent
`
`claims 9-11 recite specific claimed thickness ranges. These limitations are also not
`
`taught, disclosed or suggested in Kotkin.
`
`Second, Petitioner’s obviousness challenge under Ground 2 fails because
`
`Raymond is non-analogous art, and therefore, there is no reason to combine with
`
`Koji. Moreover, there is no reason to combine Willner with Koji as both
`
`references disclose different structures and solve different problems, and Willner
`
`
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`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`teaches away from such proposed combination. Finally, none of the references
`
`disclose, teach or suggest the claimed thickness ranges of claims 9-11.
`
`For these reasons, and the additional reasons set forth in the more detailed
`
`discussion below, Patent Owner respectfully request the Board to hold all of the
`
`‘525 Patent’s challenged claims patentable.
`
`II. None Of The Stated Grounds For Unpatentability Render The
`Challenged Claims Obvious
`A. Legal Standard For Combining References
`To show obviousness over a combination of prior art references, Petitioner
`
`must provide articulated reasoning with some rational underpinning that a POSITA
`
`would have a reason to combine the references to make the claimed invention and
`
`would have had a reasonable expectation of success in doing so. Broadcom Corp.
`
`v. Emulex Corp., 732 F.3d 1325, 1334-1335 (Fed. Cir. 2013); see also KSR Int’l
`
`Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), (quoting In re Kahn, 441 F.3d 977,
`
`988 (Fed. Cir. 2006)) (“[R]ejections on obviousness grounds cannot be sustained
`
`by mere conclusory statements; instead, there must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.”)
`
`In view of the sparse evidence submitted by Petitioner, conclusory
`
`allegations regarding obviousness are insufficient to establish unpatentability. Sony
`
`Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00092, Paper 21 at 19, 28
`
`(P.T.A.B. May 24, 2013). Petitioner bears the burden of showing “some reason
`
`
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`IPR2018-00354 for U.S. Patent 8,641,525
`
`why a person of ordinary skill in the art would have thought to combine particular
`
`available elements of knowledge, as evidenced by the prior art, to reach the
`
`claimed invention.” Heart Failure Techs., LLC v. Cardiokinetix, Inc., IPR2013-
`
`00183, Paper 12 at 9 (P.T.A.B. July 31, 2013) (finding a bare assertion that prior
`
`art related to human heart repair did not amount to “some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness”).
`
`B. Claim Construction - “Inherently Resilient And Flexible” (Claims
`1-19)
`
`There are two main issues for the Board’s resolution. First, whether the
`
`terms “resilient” and “flexible” both describe inherent properties of the material
`
`from which the elongate member is formed, and not other components in an
`
`assembly that may include an elongate member. This issue was twice addressed
`
`and resolved by the Board in prior proceedings, but Petitioner’s revisionist history
`
`contends otherwise. Second, whether the Board should clarify its prior
`
`construction of “inherently resilient and flexible” to avoid eviscerating the
`
`“inherently” limitation from the claim. Although the Board previously agreed with
`
`Patent Owner that “inherently” refers to the material properties of the elongate
`
`member itself, it was not but should be expressly included in the construction.
`
`The Board noted in its Institution Decision that it previously determined that
`
`an elongate member is “inherently resilient and flexible in that it may be bent or
`
`flex[ed] by a load, such as that from a user’s finger, and will then return to its
`
`
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`IPR2018-00354 for U.S. Patent 8,641,525
`
`unbiased position when not under load.” Institution Decision at 18 (citing to the
`
`‘948 IPR and the ‘136 IPR). To address the two issues presented for the Board to
`
`resolve, it is important to consider the Board’s prior underlying analysis of its
`
`claim construction in order to avoid wrong conclusions and erroneous application
`
`to the prior art, as Petitioner has done.
`
`1.
`
`The Board’s Analysis In The Prior Proceedings Confirms
`That The Terms “Resilient” And “Flexible” Both Describe
`Inherent Properties Of The Material From Which The
`Elongate Member Is Formed, And Not Other Components
`In An Assembly That May Include An Elongate Member
`
`First, we consider the Board’s claim construction analysis in the ‘948 IPR in
`
`connection with the ‘525 Patent. Valve Corp. v. Ironburg Inventions, Ltd.,
`
`IPR2016-00948, Paper 54 (P.T.A.B. January 26, 2018). In this proceeding, there
`
`was no dispute between the parties on the interpretation of “inherently resilient”;
`
`rather, the analysis focused primarily on the construction of “flexible.” Id. at 3-5
`
`(Section headings “B. FLEXIBLE” and “C. ‘FLEXIBLE’ IS A
`
`CHARACTERISTIC OF THE ELONGATE MEMBER.”) The Board rejected
`
`Valve’s contention that “flexible” means “can be moved to a biased position by a
`
`user’s fingers” because it is “broad enough to cover merely allowing
`
`displacement.” Id. at 4. In doing so, the Board emphasized that the claimed
`
`flexibility is a characteristic of the elongate member itself:
`
`Significantly, whatever the claim term “flexible” means, it is a
`characteristic of the elongate member, and an elongate member as
`
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`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`claimed is a distinct element from a switch mechanism. We interpret
`that the term “inherently” modifies both “resilient” and “flexible,” but
`even if it does not, for the reasons that follow, “flexible” is a
`characteristic of the elongate member itself.
`
`Id. at 5 (emphasis added). The Board also analyzed the claims and the written
`
`description for support. Notably, the Board noted that Claim 1 is directed to “back
`
`controls” and “those controls include an elongate member that is inherently
`
`resilient and flexible,” while claim 14 recites “that at least one of the controls is in
`
`registry with a switch mechanism and does not recite that either the first or second
`
`back control includes a switch mechanism.” Id. at 5-6. Accordingly, the Board
`
`explained that “a switch mechanism is not a subcomponent of the elongate
`
`member; rather, a switch mechanism and an elongate member are distinct
`
`elements.” Id. at 6. In other words, “the claims suggest that an elongate member
`
`as claimed is distinct from a switch mechanism and must be inherently resilient
`
`and flexible.” Id.
`
`
`
`The Board also confirmed its interpretation is consistent with the
`
`Specification:
`
`The ’525 patent describes that a user’s finger’s activate the controls.
`Ex. 1001, Abstract, 2:49–56. The ’525 patent describes that the
`controls are elongate members such as paddles 11. See id. at 1:59–61,
`2:5–6, 3:51 (paddles 11 are elongate in shape). The ’525 patent
`describes that paddles 11 (elongate members) are formed of a thin,
`flexible material of a specified thickness and are inherently resilient.
`See id. at 2:1–3, 3:28–39. The ’525 patent describes that elongate
`members and switch mechanisms are distinct elements. See id. at 2:8–
`14 (“a portion of each of the elongate members is in registry with a
`
`
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`- 5 -
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`

`IPR2018-00354 for U.S. Patent 8,641,525
`
`switch mechanism”); 3:35–39 (displacement of paddles 11 activates a
`switch mechanism).
`
`Id. at 6-7. Equally important, the Board also explained that these are
`
`characteristics of the elongate member and not other components in an assembly
`
`that may include an elongate member:
`
`The Specification only describes the elongate members as inherently
`resilient and flexible and does not attribute those characteristics to
`other components such as the switch mechanism. The Specification
`does not describe a control or an elongate member as including a
`switch mechanism.
`
`Id. at 7 (emphasis added). This is significant because Petitioner wrongly accused
`
`Patent Owner for “overreach[ing] by erroneously suggesting that the Board also
`
`found the claimed resiliency and flexibility of the member must be attributed to the
`
`member in complete isolation and can not be influenced by ‘other components in
`
`an assembly that may include an elongate member.’” Reply to POPR, Paper 10, 6.
`
`
`
`Such accusation is unfounded and misinformed. As shown above, the
`
`Board’s analysis of the claims and the specification above confirms that “resilient”
`
`and “flexible” both describe inherent properties of the material from which the
`
`elongate member is formed, and not other components in an assembly that may
`
`include an elongate member. Thus, the first issue presented for the Board’s
`
`resolution, was already resolved by the Board, despite Petitioner’s contention to
`
`the contrary.
`
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`IPR2018-00354 for U.S. Patent 8,641,525
`
`The Board also noted that “inherent resiliency requires that the elongate
`
`member may be moved to a biased position under load and then returns to an
`
`unbiased position when not under load.” Id. at 5. Although the Board recognized
`
`that “‘inherently’ modifies both ‘resilient’ and ‘flexible’” (Id.), its interpretation
`
`effectively eliminated the term “inherently” from the claim. Nevertheless, unlike
`
`here, that was not an issue of dispute with Valve in the ‘948 IPR, and thus, it was
`
`unnecessary to seek further clarification of this construction in that proceeding.
`
`Next, we consider the Board’s claim construction analysis in the ‘136 IPR in
`
`connection with the ‘525 Patent as well. Valve Corp. v. Ironburg Inventions, Ltd.,
`
`IPR2017-00136, Paper 12 (P.T.A.B. May 4, 2017). Again, the primary dispute
`
`here between the parties was in connection with the term “flexible,” as Valve
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`sought a broad interpretation that eliminated the meaning of that term. Id. at 7.
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`The Board agreed with Patent Owner and emphasized that Valve’s interpretation
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`“omits the requirement that the elongate member must be flexible in that it bends
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`or flees under load.” Id. at 7-8. Consequently, the Board concluded that the
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`“elongate member as claimed is ‘inherently resilient’ in that it returns to an
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`unbiased position when not under load (e.g., the load from a user’s finger), and is
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`‘flexible’ in that it may be bent or flexed by that load.” Id. at 8. Like the ‘948
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`IPR, the Board’s interpretation effectively eliminated the term “inherently” from
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`the claim. Nevertheless, unlike here, that was not an issue of dispute with Valve in
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`IPR2018-00354 for U.S. Patent 8,641,525
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`the ‘136 IPR, and thus, it was unnecessary to seek further clarification of this
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`construction in that proceeding.
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`Finally, we consider the Board’s claim construction analysis in the ‘1928
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`IPR in connection with the ‘229 Patent. Valve Corp. v. Ironburg Inventions, Ltd.,
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`IPR2017-01928, Paper 11 (PTAB Feb. 8, 2018). The primary dispute here between
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`the parties was also in connection with the term “flexible,” as Valve sought a broad
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`interpretation that eliminates its meaning. Id. at 7. In an effort to apply the claim
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`term to a prior art’s spring assembly, Valve also argued that the Specification
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`“does not disavow non-monolithic elongate members, the claimed characteristic of
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`being inherently resilient and flexible may refer to characteristics of an assembly
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`of subcomponents such as a button and a spring.” Id. (internal quotations omitted).
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`In response, Patent Owner explained that “the repeated and consistent
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`descriptions of the elongate members in the Specification, Prelim. Resp. 9–12
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`(citing Ex. 1001, 9:36–38, 9:41–43, Figures 19, 20), dictate that inherently, the
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`elongate member itself returns to an unbiased position when not under load (e.g.,
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`the load from a user’s finger), and is flexible in that it is formed from a material
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`that may be bent or flexed by that load.” Id. at 8. (emphasis added and internal
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`quotations omitted). Notably, the Board agreed with Patent Owner’s elaboration
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`that “inherently” is specific to the “elongate member itself” and explained that:
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`Based on these portions of the Specification and the plain language of
`the claim, we determine that “an elongated member which is
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`IPR2018-00354 for U.S. Patent 8,641,525
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`inherently resilient and flexible” as used in the claims of the ’229
`patent refers to inherent characteristics of the elongate member
`itself. The separate recitation of a “switch mechanism” in dependent
`claims 19 and 20 and the illustration and description of switch
`mechanism 348 further supports our conclusion. … Accordingly, we
`determine that “resilient” and “flexible” both describe inherent
`properties of the material from which the elongate member is
`formed, and not other components in an assembly that may include
`an elongate member.
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`Id. at 9-10 (emphasis added). As previously noted, this is significant because
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`Petitioner wrongly accused Patent Owner for “overreach[ing] by erroneously
`
`suggesting that the Board also found the claimed resiliency and flexibility of the
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`member must be attributed to the member in complete isolation and can not be
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`influenced by ‘other components in an assembly that may include an elongate
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`member.’” Reply to POPR, Paper 10, 6; see also Order Conduct of the Proceeding,
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`Paper 8 at 4 (Petitioner represented to the Board that Patent Owner presented an
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`allegedly inconsistent construction of “inherently resilient and flexible” as
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`justification to file a Reply to the POPR).
`
`
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`As demonstrated, Petitioner’s accusation is unfounded. The Board again
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`explained, for the second time, that “resilient” and “flexible” both describe
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`inherent properties of the material from which the elongate member is formed, and
`
`not other components in an assembly that may include an elongate member.
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`IPR2017-01928, Paper 11 at 9-10. Although this issue was twice addressed by the
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`Board, Petitioner’s revisionist history is a blatant attempt to resurrect the same
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`IPR2018-00354 for U.S. Patent 8,641,525
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`failed argument that Valve raised in order to apply the Board’s construction, in
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`isolation and out of context, to a spring assembly, as Valve previously tried and
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`failed. It was improper for Valve then, and it is equally improper for Petitioner
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`here.
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`2.
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`Petitioner’s New Arguments In Its Reply To The POPR
`Violate Board Rules And The Updated Trial Practice
`Guide, And Should Not Be Considered
`
`Petitioner failed to present any claim construction arguments in its case-in-
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`chief. Instead, it sought to back-fill with new arguments in its Reply to the POPR.
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`Paper 10 at 6-10. Petitioner’s challenge to the ‘525 Patent must be fully
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`encompassed by its Petition. See 37 C.F.R. §42.104(b)(5) (requiring the Petition
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`(as opposed to subsequent filings) to include the evidence being relied on to
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`challenge the claims at issue); see also Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359 (Fed. Cir. 2016) (“It is of utmost importance that
`
`petitioners in the IPR proceeding adhere to the requirement that the initial petition
`
`identify with particularity the evidence that supports the grounds of the challenge
`
`to each claim”) (internal quotations omitted).
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`Here, although Petitioner acknowledged that it was aware of the Board’s
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`prior decisions (Paper 8 at 4), it failed to address any of them in its Petition.
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`Petitioner cannot fill that void at this stage. Intelligent Bio-Sys., 821 F.3d at 1369
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`(“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make
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`IPR2018-00354 for U.S. Patent 8,641,525
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`their case in their petition to institute.”); see also 35 U.S.C. §312(a)(3) (requiring
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`petitions to identify “with particularity . . . the evidence that supports the grounds
`
`for the challenge to each claim”).
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`Petitioner may not, under the guise of responding to the POPR, introduce
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`new arguments or theories in its Reply. See Toshiba Corp. v. Optical Devices,
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`LLC, IPR2014-01447, Paper 34, 43-47 (P.T.A.B. March 9, 2016) (rejecting
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`petitioner’s argument that the new evidence was introduced for purposes of
`
`responding to patent owner’s arguments in the response, and emphasized that 37
`
`C.F.R. §42.23 “does not authorize or otherwise provide a means for supplementing
`
`the evidence of record”). These belated arguments and theories must not be
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`considered. 37 C.F.R. §42.23; Office Patent Trial Practice Guide Update (‘Updated
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`TPG”), 83 Fed. Reg. 39,989, at 15 (Aug. 13, 2018) (“While replies and sur-replies
`
`can help crystalize issues for decision, a reply or sur-reply that raises a new issue
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`or belatedly presents evidence may not be considered.