Trials@uspto.gov Paper 10
`571-272-7822 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 IPR2017-00137
`Patent 9,089,770 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
`
`
`
`
`571-272-7822 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 IPR2017-00137
`Patent 9,089,770 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
`
`
`
`
`
`Case IPR2017-00137
`Patent 9,089,770 B2
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`A. OVERVIEW
`
`I.
`
`INTRODUCTION
`
`Previously, Valve Corporation (“Petitioner”) filed a corrected Petition
`
`(Paper 4, “the first Petition”) requesting inter partes review of claims 1–20
`
`of U.S. Patent No. 9,089,770 B2 (Ex. 1002, “the ’770 patent”). Ex. 2015, 4.1
`
`We instituted an inter partes review (IPR2016-00949) of claims 1–12 and
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`14–20 of the ’770 patent, but did not institute review of claim 13. Ex. 2016
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`(“Dec.”), 1.2
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`Petitioner filed a second Petition (Paper 1, “Pet.” or “the second
`
`Petition”) requesting inter partes review of claims 1–20 of the ’770 patent.
`
`Pet. 12. In conjunction with the second Petition, Petitioner filed a Motion
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`(Paper 3, “Mot.”) seeking Joinder or Consolidation with IPR2016-00949.
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`Ironburg Inventions Ltd. (“Patent Owner”) filed a Preliminary
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`Response (Paper 9, “Prelim. Resp.”) to the second Petition, and an
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`Opposition to the Motion (Paper 7, “Opp.”). Petitioner filed a reply to
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`Patent Owner’s Opposition (Paper 8, “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 at least one of the challenged claims. We institute
`
`an inter partes review of claims 1–4, 12, 15–18, and 20 of the ’770 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 IPR2016-00949
`(Paper 10) as Exhibit 2016.
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`Patent 9,089,770 B2
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`B.
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`RELATED PROCEEDINGS
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`The parties indicate that the ’770 patent is at issue in: Ironburg
`
`Inventions Ltd. v. Valve Corp., Case No. 1:15-cv-04219-MHC (N.D. Ga.).
`
`Pet. 1–2; Paper 6, 1.
`
`Petitioner also filed a first and a second petition against U.S. Patent
`
`8,641,525 B2 (“the ’525 patent”) (IPR2016-00948 and IPR2017-00136).
`
`The ’770 and ’525 patents are related. Specifically, the ’770 patent
`
`issued from an application that was a continuation of application
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`13/162,727, now the ’525 patent.
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`
`
`II. THE CLAIMED SUBJECT MATTER
`
`A.
`
`INTRODUCTION
`
`The ’770 patent relates to hand held controllers for video game
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`consoles. Ex. 1002, 1:6–7.
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`As background, the ’770 patent describes that conventional controllers
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`were intended to be held and operated by the user using both hands, and the
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`plurality of controls were mounted on the front and the top edge. Id. at 1:8–
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`17; Fig. 1. The drawback of this design was that the user was required to
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`remove his or her thumb from one control to operate another control,
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`causing loss of control, such as aiming. Id. at 1:33–40. The ’770 patent was
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`intended to address this problem. Id. at 1:41–45.
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`Controller 10 of the ’770 patent includes a plurality of controls on the
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`front and the top edge like a conventional controller, and includes additional
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`controls on the back, such as paddles 11, that are operable by fingers other
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`than the thumb. Id. at 1:51–58; 3:14–17; Fig. 1 (front of conventional
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`controller and controller 10), 2 (back of controller 10). Figures 1 and 2
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`follow:
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`Figure 1 is a schematic illustration of the front of a conventional game
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`controller according to the prior art, and Figure 2 is a schematic illustration
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`of the back of game controller 10. Id. at 2:61–64.
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`
`
`
`
`B.
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`ILLUSTRATIVE CLAIM
`
`Claim 1 is the sole independent challenged claim and follows:
`
`A video game controller, comprising:
`1.
`an outer case comprising:
`a front and a back, wherein the back is opposite the front;
`a top edge and a bottom edge, wherein the top edge is
`opposite the bottom edge;
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`first handle adjacent a first side edge and a second handle
`adjacent a second side edge, wherein the first side edge is
`opposite the second side edge; and
`a first back control and a second back control, wherein
`each of the first back control and the second back control is
`located at the back of the controller, wherein the first back control
`includes a first elongate member and the second back control
`includes a second elongate member;
`wherein the first elongate member extends along at least
`half of a first distance between the top edge and the bottom edge,
`the first distance being measured along a longitudinal axis of the
`first elongate member; and
`wherein the second elongate member extends along at
`least half of a first distance between the top edge and the bottom
`edge, the first distance being measured along a longitudinal axis
`of the first elongate member.
`
`Claims 2–20 depend from independent claim 1.
`
`
`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,
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`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).
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`We emphasize that these determinations are preliminary. The parties
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`may further develop argument and evidence regarding claim construction as
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`appropriate.
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`
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`D.
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`SPECIFIC CLAIM TERMS
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`1.
`
`Preamble
`
`The preamble of claim 1 recites “A video game controller.”
`
`Patent Owner argues that claim 1 requires “a hand-held controller for
`
`a video game console that is held in and operated by both hands of a user.”
`
`Prelim. Resp. 20–27 (quote found at pages 20 and 27). For the reasons that
`
`follow, claim 1 is not limited to a hand held controller, nor is the preamble
`
`otherwise limiting.
`
`Regarding the controller being hand held, Patent Owner’s argument is
`
`not supported by the language of the claim. Specifically, claim 1 does not
`
`include the term “hand held.” Rather, claim 1 more broadly recites a “video
`
`game controller.” In contrast, claim 1 of the ’525 patent explicitly recites
`
`that the controller is “shaped to be held in the hand of a user,” and the
`
`absence of such language in claim 1 of the ’770 patent suggests that
`
`limitation is not present here. See Ex. 1001, 4:47–48; see also NTP, Inc. v.
`
`Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (When
`
`construing claims in patents that derive from the same parent application and
`
`share common terms, “we must interpret the claims consistently across all
`
`asserted patents.”); Belden Inc. v. Berk-Tek LLC, 610 F. App’x. 997, 1002–
`
`03 (Fed. Cir. 2015) (approving the Board’s claim construction applying NTP
`
`in an inter partes review) (non-precedential). Further, Patent Owner does
`
`not assert, nor do we discern, that the Specification of the ’770 patent
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`includes a lexicographical definition for a video game controller that would
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`provide such meaning.
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`Regarding the preamble otherwise being limited to a video game
`
`controller, 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 1 describes an outer
`
`case having a front, back, top edge, bottom edge, first and second handles,
`
`and first and second back controls. 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.,
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`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
`
`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).
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`Patent Owner contends that the Specification and prosecution history
`
`contain clear and unmistakable claim scope disavowal. Prelim. Resp. 21–
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`25. Patent Owner also contends that it is not disputed that claim 1 is limited
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`to a hand held controller. Id. at 26. 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. 21–25; Martek Biosciences Corp. v.
`
`Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009). That is, the
`
`’770 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., “intended to be held by a user in both
`
`hands”) is not limiting because the language of claim 1 is broader in that it
`
`does not use the term “hand held”. Ex. 1002, Abstract, 4:39–60; 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. 26–27. Petitioner’s reference to the
`
`claimed device as “game controller” and as a device that is “held and
`
`operated by a user” does not suggest that claim 1 is limited to controllers
`
`that are held in and operated by both hands of a user. See Pet. 14. Our
`
`observation in IPR2016-00949 that the ’770 patent relates to hand held
`
`controllers does not suggest that claim 1 is limited to controllers that may be
`
`held in and operated by both hands of a user. See Dec. 5.
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`Patent 9,089,770 B2
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`Contrary to Patent Owner’s contentions, claim 1 is not limited to a
`
`hand held controller, nor is the preamble otherwise limiting. The preamble
`
`of claim 1 describes an intended use (as a video game controller) for the
`
`structurally complete outer case recited in the body of the claim.
`
`2.
`
` Handle
`
`Claim 1 requires that the outer case includes first and second handles
`
`that are each adjacent to a respective side edge, the side edges being
`
`opposite one another. Claim 3 depends from claim 1 and adds that the first
`
`and second handles are defined by convex portions.
`
`The ’770 patent does not provide a lexicographical definition of
`
`“handle.” Indeed, the term handle is not used in the ’770 patent other than in
`
`the claims.
`
`An ordinary meaning of “handle” is a part of a thing by which it is
`
`held in order to use, move, or carry it. Ex. 3002. This meaning is consistent
`
`with the Specification. See Ex. 1002, 4:39–5:33, Fig. 3.
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`
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`A.
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`EVIDENCE AND GROUNDS OF UNPATENTABILITY
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`III. PATENTABILITY
`
`Petitioner asserts the following grounds of unpatentability:
`
`(1) Claims 1–4, 12, and 15–20 as unpatentable under 35 U.S.C.
`§§ 102(b) and 103(a) over Wörn3;
`
`(2) Claims 1–12 and 15–20 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).
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`(3) Claims 12–14 and 19 as unpatentable under 35 U.S.C. § 103(a)
`over Wörn and Date5;
`
`(4) Claims 12–14 as unpatentable under 35 U.S.C. § 103(a) over
`Wörn and Lee.6
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`Pet. 12–13.
`
`
`
`B. GROUNDS
`
`1.
`
`Anticipation by Wörn
`
`Petitioner contends that claims 1–4, 12, and 15–20 are unpatentable as
`
`obvious over, or anticipated by, Wörn.7 Pet. 24–32. As detailed below,
`
`Petitioner contends that Wörn discloses each limitation of the challenged
`
`claims. 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.
`
`Petitioner contends that Wörn discloses a controller (programming
`
`device 10) comprising an outer case (housing 11). Pet. 24–25. Petitioner
`
`contends that the outer case of Wörn’s controller includes a front, back, top
`
`edge, and bottom edge as claimed. Id. at 25. Petitioner contends that Wörn
`
`discloses first and second handles (grips 16 and 17) as claimed. Id. at 25–
`
`26. Petitioner contends that Wörn discloses first and second back controls
`
`(switching keys 21) as claimed. Id. at 26–28.
`
`
`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 Regarding anticipation, see Pet. 24, note 1.
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`Patent Owner argues that Wörn is not analogous art. Prelim.
`
`Resp. 31–36. 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. 36–37; see also 20–25
`
`(contending that the preamble is limiting). As explained above, the
`
`preamble of claim 1 recites an intended use for the structurally complete
`
`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.
`
`Patent Owner contends that Wörn’s grip strips are merely the outer
`
`edge of the control and programming unit and are not first and second
`
`handles as claimed. Prelim. Resp. 37–38. Patent Owner contends that
`
`Wörn’s strips are positioned at the side edges rather than adjacent the side
`
`edges as claimed. Id.
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`As explained above, a handle as claimed is the portion of the outer
`
`case that is held in order to use, move, or carry it. For this stage of the
`
`proceeding, Petitioner has demonstrated adequately that Wörn’s grip strips
`
`16 and 17 are held in order to use, move, or carry the controller. See
`
`Pet. 25–26; Ex. 1003, 4:63–5:3, Figs. 3–6.
`
`Regarding positioning of the strips, Patent Owner argues as if
`
`positioning of the handles “adjacent” the side edges as claimed would not
`
`include positioning at the side edges. The ’770 patent does not define the
`
`term “adjacent.” An ordinary meaning of “adjacent” is “next to or very near
`
`something.” See Ex. 3003. The term adjacent is not used in the
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`Specification outside of the claims. The ordinary meaning of “adjacent” is
`
`consistent with the Specification. See Ex. 1002, 2:65–67, Figure 3
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`(depicting a user holding the device). If Wörn’s grip strips 16 and 17 are at
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`the side edges, as Patent Owner acknowledges, then those strips are adjacent
`
`the side edges as claimed in that they are next to or very near the side edges.
`
`On the record before us, Petitioner has demonstrated a reasonable
`
`likelihood of prevailing in the contention that claim 1 is unpatentable as
`
`anticipated by Wörn.
`
`a)
`
`Claims 2–4, 12, 15–18, and 20
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`Patent Owner does not present additional argument with regard to
`
`these claims. We have reviewed Petitioner’s contention that Wörn discloses
`
`each element of claims 2–4, 12, 15–18, and 20. Pet 28–32. On the record
`
`before us, Petitioner has demonstrated a reasonable likelihood of prevailing
`
`in the contention that these claims are unpatentable as anticipated by Wörn.
`
`b)
`
` Claim 19
`
`Claim 19 depends indirectly from independent claim 1, and recites,
`
`“wherein each of the first elongate member and the second elongate member
`
`is a paddle lever.”
`
`Petitioner contends that Wörn’s switching keys 21 correspond to
`
`elongate members in the form of paddle levers as claimed. Pet. 32 (citing
`
`Ex. 1011 ¶ 24)8; see also Pet. 26–28 (citing Exhibit 1003, 5:63–6:1 and
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`Figure 6 and contending that switching keys 21 correspond to first and
`
`second back controls in the form of elongate members as claimed). In
`
`support, Dr. Rempel opines that Wörn’s switching keys 21 correspond to
`
`paddle levers as claimed “because the specification of the ’770 patent does
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`8 Petitioner cites to Exhibit 1012, but from context, Exhibit 1011 was
`intended.
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`not adequately structurally distinguish a ‘paddle lever’ from any other type
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`of button, trigger, or control.” Ex. 1011 ¶ 24.
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`Petitioner essentially contends that Wörn’s switching keys 21
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`correspond to paddle levers as claimed because a paddle lever as claimed is
`
`any button, trigger, or control. We disagree. The ’770 patent does not
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`broadly recite that the elongate members may be any button, trigger, or
`
`control. Rather, the ’770 patent makes an adequate structural distinction by
`
`reciting that the elongate members are a specific type of button, trigger, or
`
`control, namely, a paddle lever. As we observed with regard to this
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`limitation in the institution decision in IPR2016-00949, not every button,
`
`trigger, or control member qualifies as a “paddle lever” as recited in claim
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`19. Dec. 10–11. Petitioner’s assertion in IPR2016-00949 that a switch
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`attached at only the top end corresponds to a paddle lever is an
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`acknowledgment that a paddle lever is a particular kind of switch. See
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`IPR2016-00949, Paper 24, 25–26.
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`Consequently, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing in the contention that claim 19 is unpatentable as anticipated by
`
`Wörn.
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`2.
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`Obviousness over Wörn and Enright
`
`Petitioner contends that claims 1–12 and 15–20 are obvious over
`
`Wörn and Enright. Pet. 32–44.
`
`Petitioner contends that Enright discloses a video game controller as
`
`claimed, except that Enright’s back controls (first and second mode switches
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`32, 34) do not extend as claimed. Pet. 32–39. Petitioner contends that
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`Wörn’s back controls (switching keys 21) extend at least half of the distance
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`from the top edge to the bottom edge of the case. Id. at 38–39. Petitioner
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`contends that it would have been obvious to lengthen Enright’s back controls
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`(first and second mode switches 32, 34) to extend like Wörn’s switching
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`keys 21. Id. at 32–35, 38–39. Petitioner reasons that a person of ordinary
`
`skill in the art would have made the modification “for easy operation of the
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`invention” or “if ergonomically desired.” Pet. 35 (quoting Ex. 1004 ¶ 32).
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`For the reasons that follow, the cited portions of Enright do not support
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`Petitioner’s contention.
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`Enright discloses an input controller device such as a video game
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`controller. Ex. 1004 ¶ 1. As background, Enright describes that input
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`devices had become more complex and harder to use. Id. ¶ 2. In particular,
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`moving the finger from the thumbstick to a button and then back is difficult,
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`and for that reason, it was desirable to create a device that permits the user to
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`select commands without taking his or her finger off of the thumbstick. Id.
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`¶¶ 3, 5. Enright discloses an embodiment having first and second mode
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`switches 32, 34 mounted on the underside of hand-holdable housing 24 of
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`user device 2. Id. ¶¶ 23, 30, 32. Enright discloses that first and second
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`mode switches 32, 34 reside near the user’s fingers, “which makes for easy
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`operation of the invention.” Id. ¶ 32. Enright notes that, “the switches may
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`be located elsewhere on the housing if ergonomically desired.” Id.
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`Each of the quoted disclosures pertains to the position of the switches
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`and not the length of the switches. See Pet. 35 (quoting Ex. 1004 ¶ 32).
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`Specifically, positioning mode switches 32 and 34 on the underside of the
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`controller in proximity to a user’s fingers is what makes for easy operation,
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`and the switches may provide the same benefit if positioned elsewhere on
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`the housing. Ex. 1004 ¶ 32. These disclosures do not relate to the length of
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`the switches and do not provide a rational underpinning for the proposed
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`modification.
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`Petitioner provides three other reasons for the proposed modification.
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`First, Petitioner reasons that, “both references disclose handheld electronics
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`controllers having front controls operated by a user’s thumbs and rear
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`controls operated by fingers other than the thumb.” See Pet. 32–33 (reason
`
`1); see also Ex. 1011 ¶ 20 (echoing the Petition). The similar configurations
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`of the references may suggest that the references are combinable, but do not
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`provide a reason for doing so. Second, Petitioner reasons that, “lengthening
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`the rear controls of Enright (according to Wörn) would have been expected
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`to be readily practical and successful in this predictable art.” See Pet. 33
`
`(reason 3)9; see also Ex. 1011 ¶ 20 (echoing the Petition). This reason, like
`
`the previous, may suggest the combinability of the references, but is not a
`
`reason for doing so. In other words, the fact that a combination is possible is
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`not a reason to make that combination. Third, Petitioner reasons that, “the
`
`Wörn reference advantageously suggests an alternative rear control
`
`geometry for Enright.” See Pet. 33 (reason 2); see also Ex. 1011 ¶ 20
`
`(echoing the Petition). Neither the Petition nor the cited evidence explains
`
`cogently what advantage would be provided by Wörn’s alternative geometry.
`
` For these reasons, we agree with Patent Owner that Petitioner has not
`
`provided a sufficient reason for combining the references. Prelim. Resp. 42–
`
`45. Petitioner’s contentions regarding dependent claims 2–12 and 15–20
`
`suffer from the same shortcoming. See Pet. 39–44. Consequently, Petitioner
`
`has not demonstrated a reasonable likelihood of prevailing in the contention
`
`
`9 We present Petitioner’s reasons in a different order to facilitate discussion.
`
`15
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`Case IPR2017-00137
`Patent 9,089,770 B2
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`that claims 1–12 and 15–20 are unpatentable as obvious over Wörn and
`
`Enright.
`
`3.
`
`Obviousness Wörn and Date
`
`Claims 12–14 and 19 depend, directly or indirectly from claim 1.
`
`Petitioner contends that claims 12–14 and 19 are obvious over Wörn
`
`and Date. Pet. 45–49. Specifically, Petitioner relies on Wörn for the
`
`limitations of independent claim 1, and relies on Date for the additional
`
`limitations of claims 12–14 and 19.10 Id.
`
`Petitioner provides three reasons for combining the references. First,
`
`Petitioner reasons that Date and Wörn are both hand-held controllers. Pet.
`
`45. The similarity of the references may suggest that the references are
`
`combinable, but does not provide a reason for making that combination.
`
`Second, Petitioner reasons that Date’s L button 25111 “may advantageously
`
`improve operability of the switching keys 21 of Wörn through the outer
`
`housing 11 of Wörn.” Id. This contention is not persuasive because
`
`Petitioner does not identify what improvement would be provided. Third,
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`Petitioner reasons that using Date’s switch structure with Wörn’s switching
`
`keys 21 would “be expected to be readily practical and successful in this
`
`predictable art.” Id. (citing Ex. 1011 ¶ 26). In support, Dr. Rempel echoes
`
`the three reasons given in the Petition. This assertion pertains to the
`
`feasibility of the combination and is not a reason for combining the
`
`references.
`
`
`10 Petitioner states that this ground relies the previous ground of
`unpatentability based on Wörn. See Pet. 46. Based on content, Petitioner
`refers to the ground of unpatentability based on anticipation by Wörn rather
`than the grounds based on Wörn and Enright.
`
`11 Petitioner refers to this element as “switch structure 251.”
`
`16
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`Case IPR2017-00137
`Patent 9,089,770 B2
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`For these reasons, we agree with Patent Owner that Petitioner has not
`
`provided a sufficient reason for combining the references. Prelim. Resp. 49–
`
`51.
`
`With regard to claims 13 and 14, Petitioner alternatively asserts that
`
`the ’770 patent contains so little information regarding the limitations of
`
`claims 13 and 14 that the patent must have relied on what was known in the
`
`art to meet the written description, enablement, and indefiniteness
`
`requirements. Pet. 48–49. Even accepting for sake of argument that this
`
`contention is correct, Petitioner has not provided a reason for modifying
`
`Wörn to reach the claimed subject matter. See Prelim. Resp. 56.
`
`Consequently, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing in the contention that claims 12–14 and 19 would have been
`
`unpatentable as obvious over Wörn and Date.
`
`4.
`
`Obviousness over Wörn and Lee
`
`Petitioner contends that claims 12–14 are obvious over Wörn and Lee.
`
`Pet. 49–54. Specifically, Petitioner relies on Wörn for the limitations of
`
`independent claim 1, and relies on Lee for the additional limitations of
`
`claims 12–14 and 19.12 Id.
`
`Petitioner provides three reasons for combining the references. First,
`
`Petitioner reasons that Lee and Wörn are both hand held controllers. Pet. 50.
`
`The similarity of the references may suggest that the references are
`
`combinable, but does not provide a reason for combining the references.
`
`Second, Petitioner reasons that Lee’s elongate switch structure 40, 48, 60–
`
`
`12 Petitioner states that this ground relies a previous ground of
`unpatentability based on anticipation by Wörn. See Pet. 50.
`
`17
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`Case IPR2017-00137
`Patent 9,089,770 B2
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`6313 “may advantageously improve operability of the switching keys 21 of
`
`Wörn through the outer housing 11 of Wörn to activate switches on an
`
`internal printed circuit board (e.g. PCB 56 of Lee).” Id. Petitioner does not
`
`explain cogently how operability will be improved. Third, Petitioner
`
`reasons that using Date’s switch structure with Wörn’s switching keys 21
`
`would “be expected to be readily practical and successful in this predictable
`
`art.” Id. (citing Ex. 1011 ¶ 28). In support, Dr. Rempel echoes the three
`
`reasons given in the Petition. Ex. 1011 ¶ 28. This assertion pertains to the
`
`feasibility of the combination and is not a reason for combining the
`
`references.
`
`For these reasons, we agree with Patent Owner that Petitioner has not
`
`provided a sufficient reason for combining the references. See Prelim. Resp.
`
`49–51.
`
`Consequently, Petitioner has not demonstrated a reasonable likelihood
`
`of prevailing in the contention that claims 12–14 are unpatentable as obvious
`
`over Wörn and Lee.
`
`
`
`IV. OTHER MATTERS
`
`A.
`
`JOINDER AND CONSOLIDATION
`
`Joinder is not appropriate in this case. Petitioner’s only reason for
`
`contending 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
`
`
`13 Petitioner refers to this element as “switch structure 251.”
`
`18
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`Case IPR2017-00137
`Patent 9,089,770 B2
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`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,
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`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
`
`’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
`
`reason 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,
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`19
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`Case IPR2017-00137
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`we institute only on Worn, 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 Pet. 3–11; Prelim. Resp. 6–16.14
`
`
`
`V. CONCLUSION
`
`For the foregoing reasons, we do not institute on the following
`
`grounds of unpatentability:
`
`(1) Claims 1–4, 12, and 15–20 as unpatentable under 35 U.S.C.
`§ 103(a) over Wörn;
`
`(2) Claim 19 as unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Wörn;
`
`(3) Claims 1–12 and 15–20 as unpatentable under 35 U.S.C.
`§ 103(a) over Wörn and Enright;
`
`(4) Claims 12–14 and 19 as unpatentable under 35 U.S.C. § 103(a)
`over Wörn and Date; and
`
`(5) Claims 12–14 as unpatentable under 35 U.S.C. § 103(a) over
`Wörn and Lee.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the patentability of any challenged claim or any
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`underlying factual and legal issues.
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`
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`
`
`
`14 The contentions of the parties were writt
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