Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: May 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`Opinion concurring filed by Administrative Patent Judge WEATHERLY.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denial of Joinder and Consolidation
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`1
`
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: May 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`Opinion concurring filed by Administrative Patent Judge WEATHERLY.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denial of Joinder and Consolidation
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`1
`
`
`
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`Case IPR2017-00136
`Patent 8,641,525 B2
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`
`A. OVERVIEW
`
`I.
`
`INTRODUCTION
`
`Previously, Valve Corporation (“Petitioner”) filed a Petition (“the first
`
`Petition”) requesting inter partes review of claims 1–20 of U.S. Patent No.
`
`8,641,525 B2 (Ex. 1001, “the ’525 patent”). Ex. 2015, 4.1 We instituted an
`
`inter partes review (IPR2016-00948) of claims 1–11, 13, 14, and 16–20 of
`
`the ’525 patent, but did not institute review of claims 12 and 15. Ex. 2016, 1
`
`(“Dec.”).2
`
`Petitioner filed a second Petition (Paper 1, “Pet.” or “the second
`
`Petition”) requesting inter partes review of claims 1–20 of the ’525 patent.
`
`Pet. 12. In conjunction with the second Petition, Petitioner filed a Motion
`
`(Paper 3, “Mot.”) seeking Joinder or Consolidation with IPR2016-00948.
`
`Ironburg Inventions Ltd. (“Patent Owner”) filed a Preliminary
`
`Response (Paper 11, “Prelim. Resp.”) to the second Petition, and an
`
`Opposition to the Motion (Paper 9, “Opp.”). Petitioner filed a reply to
`
`Patent Owner’s Opposition (Paper 10, “Reply”).
`
`Upon consideration of the record to this point, for the reasons
`
`explained below, Petitioner has demonstrated a reasonable likelihood of
`
`prevailing with respect to one of the challenged claims. We institute an inter
`
`partes review of claim 20 of the ’525 patent. We deny Petitioner’s Motion
`
`for Joinder or Consolidation.
`
`
`
`
`1 Patent Owner filed a copy of the first Petition as Exhibit 2015.
`
`2 Patent Owner filed a copy of the Institution Decision in IPR2016-00948
`(Paper 10) as Exhibit 2016.
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`2
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`Patent 8,641,525 B2
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`B.
`
`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.)
`
`(“the related litigation”). Pet. 1; Paper 7, 1.
`
`Petitioner also filed a first and a second petition against U.S. Patent
`
`9,089,770 B2 (“the ’770 patent”) (IPR2016-00949 and IPR2017-00137).
`
`The ’770 and ’525 patents are related. Specifically, the ’770 patent
`
`issued from an application that was a continuation of application
`
`13/162,727, now the ’525 patent.
`
`
`
`II. THE CLAIMED SUBJECT MATTER
`
`A.
`
`INTRODUCTION
`
`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 the 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
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`3
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`controller and controller 10), 2 (back of controller 10). Figures 1 and 2
`
`follow:
`
`Figure 1 is a schematic illustration of the front of a conventional game
`
`controller according to the prior art, and Figure 2 is a schematic illustration
`
`of the back of game controller 10. Id. at 2:61–64.
`
`
`
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`4
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`B.
`
`ILLUSTRATIVE CLAIMS
`
`Of the challenged claims, 1 and 20 are independent. Claims 1 and 20
`
`follow:
`
`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 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.
`
`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;
`
`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.
`
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`C. APPLICABLE STANDARD
`
`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 claim terms discussed in section II.D., below, need 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).
`
`We emphasize that these determinations are preliminary. The parties
`
`may further develop argument and evidence regarding claim construction as
`
`appropriate.
`
`
`
`D.
`
`SPECIFIC CLAIM TERMS
`
`1.
`
`“inherently resilient and flexible” (claims 1–19)
`
`Claim 1 recites that the elongate member is “inherently resilient and
`
`flexible.” Claims 2–19 include this limitation by virtue of dependence from
`
`claim 1.
`
`Petitioner contends that the claim phrase “inherently resilient and
`
`flexible” means “can be moved to a biased position by a user’s finger and
`
`returns to an unbiased position when not under load.” Pet. 21. Underlying
`
`this interpretation is the contention that “flexible” means that the elongated
`
`member can be moved to a biased position by a user’s finger. Id. Patent
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`6
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`Owner contends that Petitioner’s interpretation eliminates meaning for the
`
`claim term “flexible.” Prelim. Resp. 38–39. For the reasons that follow, we
`
`agree with Patent Owner.
`
`The claims require that each elongate member has two characteristics:
`
`it must be inherently resilient, and it must be flexible. See 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.”); see
`
`also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
`
`2007) (denouncing claim constructions that render phrases in claims
`
`superfluous).
`
`One of these characteristics is defined in the ’525 patent. Specifically,
`
`“inherently resilient” means that each elongate member (e.g., paddle 11)
`
`“returns to an unbiased position when not under load.” Ex. 1001, 3:34–35;
`
`see also 3:51–53 (paddles 11 are elongate in shape).
`
`The ’525 patent does not provide a lexicographical definition for
`
`“flexible.” An ordinary meaning of “flexible” is “capable of being bent or
`
`flexed.” See Dec. 14 (citing a definition filed as Ex. 3001 of IPR2016-
`
`00948). The ordinary meaning of “flexible” as “capable of being bent or
`
`flexed” is consistent with the description in the ’525 patent that the elongate
`
`members are formed of a thin flexible material. See Ex. 1001, 2:1–3
`
`(describing that the elongate members preferably have a thickness less than
`
`10 mm and most desirably 1 to 3 mm), 3:28–32 (describing paddles 11 as
`
`formed of a thin flexible material).
`
`Petitioner’s interpretation that “inherently resilient and flexible”
`
`means “can be moved to a biased position by a user’s finger and returns to
`
`an unbiased position when not under load” (Pet. 21) omits the requirement
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`that the elongate member must be flexible in that it bends or flexes under
`
`load. Petitioner does not provide a cogent explanation or evidence (e.g., a
`
`dictionary definition, expert testimony, citation to the intrinsic record, or
`
`citation to the specification) for the assertion that an ordinary meaning of
`
`“flexible” is that the elongate member can be moved to a biased position by
`
`a user’s finger. See Pet. 21. Notably, as mentioned above, our previous
`
`interpretation of this claim limitation included a supporting dictionary
`
`definition for the ordinary meaning of flexible, and here Petitioner chose not
`
`to address it. See Dec. 14.
`
`An elongate member as claimed is “inherently resilient” in that it
`
`returns to an unbiased position when not under load (e.g., the load from a
`
`user’s finger), and is “flexible” in that it may be bent or flexed by that load.
`
`2.
`
`Preamble (claim 20)
`
`The preamble of claim 20 recites, “A hand held controller for a game
`
`console.”
`
`Patent Owner argues that the preamble of claim 20 means “a
`
`controller for a video game console that is held in and operated by both
`
`hands of a user.” Prelim. Resp. 25; see also 20–25 (supporting argument).
`
`For the reasons that follow, claim 20 is not limited to a controller that is held
`
`in and operated by both hands of a user, nor is the preamble otherwise
`
`limiting.
`
`Regarding the controller being held in and operated by both hands of a
`
`user, Patent Owner’s argument is not supported by the language of the claim.
`
`Specifically, claim 20 does not recite that the controller is held in and
`
`operated by both hands of a user; rather, claim 20 recites that the controller
`
`is shaped to be “held in the hand of a user.” Similarly, the ordinary meaning
`
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`proffered by Patent Owner does not support being held in and operated by
`
`both hands of a user; rather, it refers to being held in “the hand.” See Prelim.
`
`Resp. 25. Patent Owner does not assert, nor do we discern, that the
`
`Specification of the ’525 patent includes a lexicographical definition that
`
`would require the controller to be capable of being held in and operated by
`
`both hands of a user.
`
`Regarding the preamble otherwise being limited to a controller for a
`
`game console, the term “controller” in the preamble serves as antecedent
`
`basis for use of that term in the body of the claim, but the preamble does not
`
`recite essential structure or breathe life, meaning, and vitality into the claim.
`
`See Prelim. Resp. 20; see also Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`
`182 F.3d 1298, 1305 (Fed. Cir. 1999). The body of claim 20 describes an
`
`outer case having a front, back, top edge, bottom edge, a front control, and a
`
`first and a second back control. Consequently, the body of the claim
`
`describes a structurally complete device. See Schumer v. Lab. Computer
`
`Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002) (if the body of the claim
`
`“sets out the complete invention,” the preamble is not ordinarily treated as
`
`limiting the scope of the claim).
`
`Patent Owner’s reliance on Eaton is unpersuasive because here the
`
`body of the claim recites a structurally complete device while in Eaton the
`
`steps recited in the body of the claim referred to structures only identified in
`
`the preamble. See Prelim. Resp. 20–21; Eaton Corp. v. Rockwell Int’l Corp.,
`
`323 F.3d 1332, 1339–40 (Fed. Cir. 2003). Pacing Technologies, also relied
`
`on by Patent Owner, is distinguishable because in Pacing Technologies two
`
`terms in the preamble were necessary to understand positive limitations in
`
`the body of the claim, while here, the preamble term “controller” is not
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`necessary to understand any limitation in the body of the claim. See Prelim.
`
`Resp. 21; Pacing Techs. LLC. v. Garmin Intern. Inc., 778 F.3d 1021, 1024
`
`(Fed. Cir. 2015).
`
`Patent Owner contends that the Specification contains clear and
`
`unmistakable claim scope disavowal. Prelim. Resp. 21–24. For the reasons
`
`that follow, we disagree.
`
`The portions of the Specification relied on by Patent Owner do not
`
`manifest exclusion or restriction, and therefore, do not rise to the level of
`
`disavowal. See Prelim. Resp. 21–24; Martek Biosciences Corp. v.
`
`Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009). That is, the
`
`’525 patent does not state or imply that the invention only covers controllers
`
`that may be held in both hands nor does it state or imply that it does not
`
`cover controllers that may be held in one hand. Further, the descriptions that
`
`the device is held in both hands (e.g., “shaped to be held in both hands of a
`
`user”) is not limiting because the language of claim 20 is broader (i.e., “held
`
`in the hand of a user”). Ex. 1001, Abstract, 1:52–56, 6:19–20; Superguide
`
`Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
`
`(“Though understanding the claim language may be aided by the
`
`explanations contained in the written description, it is important not to
`
`import into a claim limitations that are not a part of the claim. For example,
`
`a particular embodiment appearing in the written description may not be
`
`read into a claim when the claim language is broader than the
`
`embodiment.”).
`
`Patent Owner’s contentions that there is no dispute are
`
`mischaracterizations. See Prelim. Resp. 24–25. Petitioner’s reference to the
`
`claimed device as a “game controller” and as a device that is “held and
`
`10
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`operated by a user” does not suggest that claim 20 is limited to controllers
`
`that are held in and operated by both hands of a user. See Pet. 15. Our
`
`observation in the institution decision for the first Petition that the
`
`’525 patent relates to hand held controllers does not suggest that claim 20 is
`
`limited to controllers that may be held in and operated by both hands of a
`
`user. See Dec. 5. Similarly, our observation in the institution decision for
`
`the first Petition in IPR2016-00949 that “conventional controllers were
`
`intended to be held and operated by the user using both hands” is a general
`
`description and does not suggest that claim 20 is limited to controllers that
`
`may be held in and operated by both hands of a user. IPR2016-00949, Paper
`
`10, 25.
`
`Claim 20 is not limited to a controller that is held in and operated by
`
`both hands of a user, nor is the preamble otherwise limiting. Rather, the
`
`preamble of claim 20 describes an intended use (as a controller for a game
`
`console) of the structurally complete outer case recited in the body of the
`
`claim.
`
`
`
`A.
`
`EVIDENCE AND GROUNDS OF UNPATENTABILITY
`
`III. PATENTABILITY
`
`Petitioner asserts the following grounds of unpatentability:
`
`(1) Claims 1, 2, 4–7, 12, 16, 17, and 20 as unpatentable under
`35 U.S.C. § 103(a) over Wörn3;
`
`(2) Claims 1–3, 6, 8–11, and 13 as unpatentable under 35 U.S.C.
`§ 103(a) over Wörn and Enright4;
`
`
`3 U.S. Patent 6,362,813 B1, issued Mar. 26, 2002 (Ex. 1003).
`
`4 U.S. Pub. 2010/0073283 A1, published Mar. 25, 2010 (Ex. 1004).
`
`11
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`(3) Claims 14–16 and 19 as unpatentable under 35 U.S.C. § 103(a)
`over Wörn and Date5;
`
`(4) Claims 14, 15, and 19 as unpatentable under 35 U.S.C. § 103(a)
`over Wörn and Lee6;
`
`(5) Claim 18 as unpatentable under 35 U.S.C. § 103(a) over Wörn
`and Oelsch7.
`
`Pet. 13–14.
`
`
`
`B. GROUNDS
`
`1. Wörn
`
`Petitioner asserts that claims 1, 2, 4–7, 12, 16, 17, and 20 are
`
`unpatentable as obvious over, or anticipated by, Wörn. Pet. 23–32
`
`(regarding anticipation, see Pet. 23, n.1).
`
`a)
`
`Claims 1, 2, 4–7, 12, 16, 17
`
`With regard to the requirement that the elongate member is
`
`“inherently resilient and flexible” as claimed, Petitioner asserts that,
`
`It is necessary and inherent that control buttons such as
`Wörn’s switching keys 21 are resilient and flexible, because
`otherwise a user would not be able to repeatedly displace the
`buttons to accomplish the control function intended for such
`buttons. See the Rempel ‘525 Decl., Exhibit 1009, at ¶ 19, p. 4.
`See also, MPEP § 2112 (“The express, implicit, and inherent
`disclosures of a prior art reference may be relied upon in the
`rejection of claims under 35 U.S.C. 102 or 103.”
`Moreover, the Office may take official notice that it was
`notoriously old and well known common knowledge in the art to
`make a control button resilient and flexible, for example to
`
`
`5 U.S. Patent 6,153,843, issued Nov. 28, 2000 (Ex. 1005).
`
`6 U.S. Patent 6,364,771 B1, issued Apr. 2, 2002 (Ex. 1006).
`
`7 U.S. Patent 4,032,728, published June 28, 1977 (Ex. 1007).
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`enable users to repeatedly displace the buttons whenever desired.
`See the Rempel ‘525 Decl., Exhibit 1009, at ¶ 19, p. 4. See also,
`MPEP § 2144.03 (“Reliance on Common Knowledge in the
`Art”).
`
`Pet. 26–27.
`
`Based on this, Petitioner asserts that Wörn’s switching keys 21 must
`
`be resilient and flexible as claimed because they can be repeatedly displaced.
`
`The cited evidence echoes the Petition. See Ex. 1009 ¶ 19. The ability to be
`
`repeatedly displaced relates to resilience as claimed. Petitioner has not
`
`addressed how Wörn’s switching keys 21 are flexible as claimed (i.e., may
`
`be bent or flexed).
`
`Regarding official notice, Manual of Patent Examining Procedure
`
`(MPEP) § 2144.03 pertains to notice by an examiner, and says nothing about
`
`notice in an inter partes review. See generally Washington Inventory
`
`Services v. RGIS, LLC, Case CBM2014-00158, slip op. at 38 (PTAB Dec.
`
`30, 2015) (Paper 40); see also 37 C.F.R. § 42.104(b)(4) (requiring
`
`petitioners to demonstrate how the claim in unpatentable to include where
`
`each element of the claim is found in the prior art). Further, even assuming
`
`we may take official notice, Petitioner has not persuaded us that making
`
`buttons inherently resilient and flexible as of the critical date of the
`
`’525 patent is “capable of instant and unquestionable demonstration as being
`
`well known.” See MPEP § 2144.03.A. Nor is the Declaration of
`
`Mr. Rempel persuasive on this point, as Mr. Rempel merely concludes that
`
`this characteristic was well known and does not provide any underlying facts
`
`or data for that conclusion. See 37 C.F.R. § 42.65. Even if we were to take
`
`notice as requested, Petitioner only addresses the characteristic of resilience
`
`and not flexibility.
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`On the record before us, Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing in the contention that claims 1, 2, 4–7, 12, 16, and
`
`17 are unpatentable as anticipated by, or obvious over, Wörn.
`
`b)
`
`Claim 20
`
`Independent claim 20 is similar to claim 1, except that the elongate
`
`members are not required to be inherently resilient and flexible.
`
`Petitioner contends that Wörn’s hand held programming device 10
`
`corresponds to a hand held controller for a game console as claimed.
`
`Pet. 29–30. Petitioner contends that Wörn’s controller includes an outer case
`
`having a front, back, top edge, and bottom edge as claimed. Id. at 30.
`
`Petitioner contends that Wörn’s function keys and thumb ball pad each
`
`correspond to a front control as claimed. Id. at 30–31. Petitioner contends
`
`that Wörn’s switching keys 21 are elongated and correspond to a first and a
`
`second back control as claimed. Id. at 31–32.
`
`Thus, Petitioner contends that Wörn discloses each limitation.
`
`Petitioner does not identify any difference between Wörn and the claimed
`
`subject matter, nor does Petitioner propose to modify Wörn in any way.
`
`Consequently, Petitioner has provided a showing of likely anticipation, but
`
`not of obviousness over Wörn alone.
`
`Patent Owner argues that Wörn is not analogous art. Prelim.
`
`Resp. 32–37. This assertion is not relevant to a ground of unpatentability
`
`based on anticipation.
`
`Patent Owner argues that Wörn does not disclose a hand held
`
`controller for a game console. Prelim. Resp. 37–38; see also 20–25
`
`(contending that the preamble is limiting). As explained above, the
`
`preamble to claim 20 describes an intended use for the structurally complete
`
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`device described in the body of the claim. At this stage of the proceeding,
`
`we are persuaded by Petitioner’s contention that Wörn discloses such a
`
`device.
`
`On the record before us, Petitioner has demonstrated a reasonable
`
`likelihood of prevailing in the contention that claim 20 is unpatentable as
`
`anticipated by Wörn.
`
`2.
`
`Obviousness over Wörn and Enright
`
`Petitioner contends that claims 1–3, 6, 8–11, and 13 are obvious over
`
`Wörn and Enright. Pet. 33–41. In this ground of unpatentability, Petitioner
`
`contends that Enright discloses elongate members that are inherently
`
`resilient and flexible as claimed because Enright’s buttons may be depressed
`
`and return to the same position after force is removed. Id. at 38.
`
`Our analysis here parallels that of claim 1 in the previous ground.
`
`Specifically, Petitioner does not address the requirement that the elongate
`
`members are flexible.
`
`Accordingly, on the record before us, Petitioner has not demonstrated
`
`a reasonable likelihood of prevailing in the contention that claims 1–3, 6, 8–
`
`11, and 13 are unpatentable as obvious over Wörn and Enright.
`
`3.
`
`Remaining Grounds8
`
`In each of the remaining grounds, Petitioner relies on Wörn with
`
`regard to the elongate members being inherently resilient and flexible just as
`
`for claim 1 of the first ground analyzed above. See Pet. 42, 46, 50 (referring
`
`in each ground to the earlier discussion of Wörn). Thus, these grounds of
`
`
`8 Obviousness over Worn and either Date, Lee, or Oelsch.
`
`15
`
`
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`unpatentability suffer from the same shortcoming as the ground based on
`
`Wörn alone.
`
`
`
`IV. OTHER MATTERS
`
`A.
`
`JOINDER AND CONSOLIDATION
`
`Joinder is not appropriate in this case. Petitioner’s only reason that
`
`joinder is appropriate is the overlap in prior art references in the two
`
`proceedings. See Mot. 5–8. As detailed above, the only ground of
`
`unpatentability that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on is anticipation by Wörn. See Opp. 9 (arguing that a new
`
`ground of unpatentability counsels against joinder). Petitioner did not rely
`
`on Wörn in the first Petition, and consequently, there is no overlap in the
`
`prior art.
`
`In seeking joinder, Petitioner repeatedly emphasizes that it was Patent
`
`Owner’s amendment of the complaint to add the ’229 patent to the related
`
`litigation that caused Petitioner to discover the Wörn reference. See, e.g.,
`
`Mot. 4–5, 8–9, Pet. 5–6, 8, 9, 10–11. Petitioner contends that Patent Owner
`
`would not be prejudiced by joinder because it was Patent Owner’s actions
`
`that led to discovery of Wörn. Mot. 8–9. Essentially, Petitioner asserts that
`
`because Patent Owner is responsible for the belated discovery of Wörn,
`
`Patent Owner cannot complain of prejudice. We agree with Patent Owner
`
`that Petitioner inappropriately seeks to attribute the reason for delay to
`
`Patent Owner. See Opp. 9–10. Petitioner has not alleged, nor are we aware
`
`of, any obligation Patent Owner was under to include the ’229 patent with
`
`the original complaint in the related litigation. The fact that the ’229 and
`
`16
`
`
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`’525 patents are in the same area of technology (see, e.g., Mot. 4, 8; Pet. 5–
`
`6) is immaterial. The ’229 and ’525 patents are not related.
`
`Petitioner has not persuaded us that joinder is appropriate in these
`
`circumstances. See 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.20(c),
`
`42.122(b).
`
`Petitioner contends that consolidation is appropriate for the same
`
`reasons that joinder is appropriate. Mot. 8. This contention is unpersuasive
`
`for the reasons given above.
`
`
`
`B.
`
`35 U.S.C. § 325(d)
`
`The Board has the authority under 35 U.S.C. § 325(d) to reject a petition
`
`when the same or substantially the same prior art or arguments previously
`
`were presented in another proceeding before the Office. Here, we institute
`
`only on Wörn, a reference that was not used in the first Petition. This ground
`
`does not involve substantially the same prior art or argument, and for that
`
`reason we decline to reject this Petition under 35 U.S.C. § 325(d). See Prelim.
`
`Resp. 6–17; Pet. 4–11.9
`
`
`
`
`9 The contentions of the parties were written with respect to all the asserted
`grounds of unpatentability and must be considered in the context that we are
`instituting on Wörn only.
`
`17
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`
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`Case IPR2017-00136
`Patent 8,641,525 B2
`
`
`V. CONCLUSION
`
`For the foregoing reasons, we do not institute on the following
`
`grounds of unpatentability:
`
`(1) Claims 1, 2, 4–7, 12, 16, and 17 as anticipated by Wörn under
`35 U.S.C. § 102(b), or as unpatentable under 35 U.S.C. § 103(a) over
`Wörn or;
`
`(2) Claims 1–3, 6, 8–11, and 13 as unpatentable under 35 U.S.C.
`§ 103(a) over Wörn and Enright;
`
`(3) Claims 14–16 and 19 as unpatentable under 35 U.S.C. § 103(a)
`over Wörn and Date;
`
`(4) Claims 14, 15, and 19 as unpatentable under 35 U.S.C. § 103(a)
`over Wörn and Lee; and
`
`(5) Claim 18 as unpatentable under 35 U.S.C. § 103(a) over Wörn
`and Oelsch.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the patentability of any challenged claim or any
`
`underlying factual and legal issues.
`
`
`
`VI. ORDER
`
`Accordingly, it is
`
`ORDERED that inter partes review is instituted with respect to claim
`
`20 as unpatentable under 35 U.S.C. § 102(b) as anticipated by Wörn;
`
`FURTHER ORDERED that no other ground of unpatentability is
`
`authorized for this inter partes review;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’525 patent is hereby instituted commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial; and
`
`18
`
`
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder/
`
`Consolidation is denied.
`
`
`
`19
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge, concurring.
`
`I concur with the majority decision in all respects except for the
`
`reasons expressed in Part IV.A. for denying the motion for joinder.
`
`Nevertheless, I concur in the result of denying the motion for joinder.
`
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`2
`
`Case IPR2017-00136
`Patent 8,641,525 B2
`
`PETITIONER:
`
`Joshua Harrison
`josh@bhiplaw.com
`
`Reynaldo Barcelo
`rey@bhiplaw.com
`
`
`
`PATENT OWNER:
`
`Ehab Samuel
`esamuel-ptab@manatt.com
`
`Danielle Mihalkanin
`dmihalkanin@manatt.com
`
`
`
`
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