Trials@uspto.gov Paper 10
`571-272-7822
` Date Entered: January 18, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALVE CORPORATION,
`Petitioner,
`v.
`ELECTRONIC SCRIPTING PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00074
`Patent 8,553,935 B2
`____________
`
`Before ANDREI IANCU, Director of the United States Patent and
`Trademark Office, WILLIAM M. FINK, Vice Chief Administrative Patent
`Judge, and ROBERT J. WEINSCHENK, Administrative Patent Judge.
`
`FINK, Vice Chief Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`571-272-7822
` Date Entered: January 18, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALVE CORPORATION,
`Petitioner,
`v.
`ELECTRONIC SCRIPTING PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00074
`Patent 8,553,935 B2
`____________
`
`Before ANDREI IANCU, Director of the United States Patent and
`Trademark Office, WILLIAM M. FINK, Vice Chief Administrative Patent
`Judge, and ROBERT J. WEINSCHENK, Administrative Patent Judge.
`
`FINK, Vice Chief Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`IPR2019-00074
`Patent 8,553,935 B2
`
`
`
`
`
`INTRODUCTION
`I.
`Valve Corporation (“Petitioner” or “Valve”) filed a Petition for inter
`
`partes review of claims 1–21 of U.S. Patent No. 8,553,935 B2 (Ex. 1001,
`“the ’935 patent”). Paper 1 (“Pet.”). Concurrently with its Petition, Valve
`filed a Motion for Joinder with HTC Corp. v. Elec. Scripting Prods., Inc.,
`Case IPR2018-01032 (“the HTC IPR”), a case challenging the same claims
`of the ’935 patent on the same grounds as here. Paper 3 (“Mot.”). Valve
`represents that the petitioner in the HTC IPR—HTC Corporation and HTC
`America, Inc. (“HTC”)—does not oppose the Motion for Joinder. Mot. 6.
`Electronic Scripting Products, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). Patent Owner does not oppose
`Valve’s Motion for Joinder per se, but filed a Response to Petitioner’s
`Motion for Joinder in which it requests a stay in the HTC IPR pending the
`Board’s institution decision in this proceeding, as well as an extension of the
`due date for Patent Owner’s response in the HTC IPR. Paper 8 (“Resp.”), 2.
`
`For the reasons explained below, we institute inter partes review of
`claims 1–21 of the ’935 patent and grant Valve’s Motion for Joinder. We
`also deny Patent Owner’s request for a stay and extension of time in the
`HTC IPR.
`
`RELATED PROCEEDINGS
`II.
`In addition to identifying the HTC IPR discussed above, Valve and
`Patent Owner inform us that the ’935 patent and a related patent, U.S. Patent
`No. 9,235,934 B2 (Ex. 1002), are the subject of a patent infringement
`lawsuit in the U.S. District Court for the Northern District of California:
`Elec. Scripting Prods., Inc. v. HTC Am., Inc., No. 3:17-cv-05806-RS (N.D.
`Cal.), filed October 9, 2017. Pet. 1–2; Paper 6, 2. There is no contention
`
`2
`
`
`
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`
`that Petitioner would be time-barred if not for the request for joinder. See 35
`U.S.C. § 315(b).
`Valve also identifies more recently filed inter partes review
`proceedings of which the ’935 patent is the subject: Case IPR2019-00064
`and Case IPR2019-00065. Pet. 2.
`
`INSTITUTION OF INTER PARTES REVIEW
`III.
`In the HTC IPR, we instituted inter partes review of claims 1–21 of
`the ’935 patent on the following grounds:
`
`Basis
`References
`Welch-HiBall1 and SIGGRAPH 20012 § 103(a)
`Welch-HiBall, SIGGRAPH 2001, and
`§ 103(a)
`Romanik3
`
`Challenged Claims
`1–6, 11–18, and 21
`7–11 and 19–21
`
`
`HTC Corp. v. Elec. Scripting Prods., Inc., Case IPR2018-01032, slip op. at
`32 (PTAB Sept. 13, 2018) (Paper 6) (“HTC Decision”).
`
`Petitioner confirms that “[t]he instant petition presents grounds of
`rejection identical to the grounds upon which trial was instituted in the HTC
`IPR.” Mot. 6–7. Specifically, the Petition here presents identical challenges
`to those reproduced above from the HTC IPR. See Pet. 23 (“Ground 1”), 53
`(“Ground 2”). Accordingly, regarding the underlying patentability
`challenges, there are no additional issues presented by Petitioner.
`
`
`1 Greg Welch, et al., High-Performance Wide-Area Optical Tracking,
`PRESENCE: TELEOPERATORS AND VIRTUAL ENVIRONMENTS, Feb. 2001, at 1
`(Ex. 1004) (“Welch-HiBall”).
`2 Greg Welch, et al., Tracking: Beyond 15 Minutes of Thought, SIGGRAPH
`2001 Conference (Aug. 12, 2001) (Ex. 1005) (“SIGGRAPH 2001”).
`3 U.S. Patent No. 5,884,239 (March 16, 1999) (Ex. 1006) (“Romanik”).
`3
`
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`In its Preliminary Response in this proceeding, Patent Owner repeats
`
`many of the arguments that it made in its Preliminary Response in the HTC
`IPR. We direct the parties to our institution decision in the HTC IPR for our
`responses to these arguments at this stage of the proceeding. Patent Owner
`also makes several additional arguments, which we address here.
`
`In the HTC Decision, we determined that “SIGGRAPH 2001’s
`disclosure of gyroscopic sensors to determine the rate of change in roll,
`pitch, and yaw (i.e., Δφ, Δθ, Δψ), is consistent with claim limitation 1b’s
`requirement for ‘relative motion data indicative of a change in orientation.’”
`HTC Decision 16. Patent Owner argues here that SIGGRAPH 2001’s
`gyroscopic sensors were “improperly equated to claim limitation 1(b)”
`because “[c]hanges in orientation can be measured by accelerometers or
`gyroscopes.” Prelim. Resp. 7 (emphasis added). We are not persuaded that
`the prior art must teach both gyroscopic sensors and accelerometers in order
`to satisfy claim limitation 1(b). It is not necessary for the prior art to teach
`all of the possibilities known in the art for satisfying a given claim
`limitation. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (“When
`a claim covers several structures or compositions, either generically or as
`alternatives, the claim is deemed anticipated if any of the structures or
`compositions within the scope of the claim is known in the prior art.”).
`Thus, even if gyroscopic sensors are not the only devices that may provide
`relative motion data indicative of a change in orientation, there is sufficient
`evidence at this stage of the proceeding that gyroscopic sensors do provide
`such data. See Pet. 39 (citing Ex. 1003 ¶¶ 157–158).
`
`In this proceeding, Patent Owner contends that our analysis of the
`recited “said relative motion data” in claim limitations 1(c) and 12(d) (see
`
`4
`
`
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`HTC Decision 18) did not account for the term’s antecedent basis from
`claim limitations 1(b) and 12(c), which, according to Patent Owner, limit
`relative motion data to changes in orientation only. Prelim. Resp. 3–4, 15–
`18. We agree that “said relative motion data” derives antecedent basis from
`claim limitations 1(b) and 12(c), which require the relative motion data be
`“indicative of a change in an orientation.” For the reasons discussed in our
`institution decision in the HTC IPR, however, we are not persuaded at this
`stage of the proceeding that the “relative motion data indicative of a change
`in an orientation,” as recited in limitation 1(c), is limited solely to changes in
`orientation to the exclusion of other data. See HTC Decision 18 (citing Ex.
`1001, 38:2–12 (explaining that “accelerometer 906 provides information
`about linear displacements”)).
`
`Patent Owner further argues that Welch-HiBall and SIGGRAPH 2001
`would have instructed a person of ordinary skill in the art to “use all relative
`data coming from the inertial measurement units in their hybrid systems”
`and that the references “teach against discarding any inertial data or else not
`including it in any sensor fusion approach to pose recovery.” Prelim.
`Resp. 9. According to Patent Owner, this is the opposite of the ’935 patent’s
`approach, in which “reducing the amount of data to a subset is preferred.”
`Id. We are not persuaded by this argument at this stage of the proceeding.
`
`A reference can be said to teach away “when a person of ordinary
`skill, upon reading the reference, would be discouraged from following the
`path set out in the reference, or would be led in a direction divergent from
`the path that was taken by the applicant.” Galderma Labs., L.P. v. Tolmar,
`Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Here, for the reasons discussed in
`the HTC Decision, the claims simply require determining pose based on
`
`5
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`both light data and motion data and do not require discarding or excluding
`any inertial data, or reducing the amount of data to a subset. See HTC
`Decision 17–18 (citing Ex. 1001, 35:28–31, 44:51–54). At this stage of the
`proceeding, we determine that SIGGRAPH 2001’s approach of fusing
`inertial and optical data is consistent with and not divergent from the claim
`requirements.
`Patent Owner also argues that the ’935 patent “provides a different
`motivation for combining both optical and inertial data for determining
`pose”—“to reduce the computational load of an on-board processor or
`computer.” Prelim. Resp. 14. We recognized this argument previously. See
`HTC Decision 21 (noting Patent Owner’s argument that the ’935 patent’s
`method “can result in more efficient battery usage”). Whether the prior art
`and the ’935 patent combine inertial data with optical data for different
`reasons is not persuasive of non-obviousness because any need or problem
`known in the field can provide a reason to combine the references. See KSR
`Int’l v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (“The first error of the Court
`of Appeals in this case was to foreclose this reasoning by holding that courts
`and patent examiners should look only to the problem the patentee was
`trying to solve. . . . Under the correct analysis, any need or problem known
`in the field of endeavor at the time of invention and addressed by the patent
`can provide a reason for combining the elements in the manner claimed.”).
`
`Patent Owner further argues that Valve has not met its burden of proof
`and has improperly shifted the burden to Patent Owner. Prelim. Resp. 4, 29;
`see 35 U.S.C. 316(e). Specifically, Patent Owner argues that Valve has
`made “[v]ague and ambiguous assertions without proper mapping (e.g.,
`complete claim charts) between claim limitations and specific teachings” of
`
`6
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`IPR2019-00074
`Patent 8,553,935 B2
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`the prior art. Prelim. Resp. 4. In the HTC IPR, we determined that HTC had
`provided sufficient support that the references teach or suggest all the
`limitations of the claims, and provided sufficient motivation to combine the
`references, for purposes of its burden on institution. See HTC Decision 21–
`22. Here, Valve’s Petition relies on the same prior art analysis and
`supporting evidence presented in HTC’s petition. See Mot. 4, 6. For the
`same reasons as in the HTC Decision, therefore, we determine that Valve
`has satisfied its burden on institution.
`
`For the same reasons set forth in our institution decision in the HTC
`IPR, as well as the reasons discussed above, we determine that the
`information presented in Valve’s Petition shows a reasonable likelihood that
`Valve would prevail in showing (a) claims 1–6, 11–18, and 21 would have
`been obvious over Welch-HiBall and SIGGRAPH 2001; and (b) claims 7–
`11 and 19–21 would have been obvious over Welch-HiBall, SIGGRAPH
`2001, and Romanik. See HTC Decision 9–32. Accordingly, we institute
`inter partes review on the same grounds as those on which we instituted
`review in the HTC IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`Valve’s Petition was accompanied by a Motion for Joinder under 35
`
`U.S.C. § 315(c). The Petition and Motion for Joinder in this proceeding
`were filed on October 11, 2018. As noted above, there is no contention that
`Petitioner would otherwise be time-barred. Valve’s Motion for Joinder is
`timely because joinder was requested no later than one month after the
`September 13, 2018 institution date of the HTC IPR. See 37 C.F.R.
`§ 42.122(b).
`
`7
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`IPR2019-00074
`Patent 8,553,935 B2
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`A motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Valve contends joinder is appropriate in this case because its Petition
`does not “present new issues that might complicate or delay an existing
`proceeding.” Mot. 5 (citing Dell, Inc. v. Network-1 Sec. Sols., Inc., Case
`IPR2013-00385, slip op. at 3 (PTAB July 29, 2013) (Paper 17)). As noted
`above, the Petition in this case asserts the same invalidity grounds on which
`we instituted review in the HTC IPR. Valve also relies on the same prior art
`analysis and supporting evidence submitted by HTC. See Mot. 4, 6. Indeed,
`there are no new issues, because the Petition is substantively identical to the
`petition filed by HTC with respect to the grounds on which review was
`instituted in the HTC IPR. See id. at 1, 6–7.
`
`If joinder is granted, Valve “agrees to limit its role to that of an
`‘understudy’ in the proceeding.” Id. at 8. Valve also agrees to “consolidate
`all filings, discovery, and other papers” with those of HTC, so long as HTC
`remains a participant in the case; “rely on HTC’s expert” and “offer no
`additional expert testimony”; and, collectively with HTC, “be bound by the
`normal limits set forth in the rules, such as word or page counts and
`deposition time, as if they were a single party.” Id. at 9. Valve concludes
`that “briefing and discovery in the joined proceeding would be no more
`complex than if Valve had not been joined.” Id.
`
`8
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`
`
`
`Patent Owner “does not per se oppose the Petitioner’s motion to
`consolidate the present petition” with the HTC IPR but requests that the
`procedural schedule in the HTC IPR, including the time to file Patent
`Owner’s Response in that proceeding, be continued in the event we institute
`inter partes review in this proceeding. Resp. 2. According to Patent Owner,
`Should the Board decide to institute the subject Petition, it would
`make sense to consolidate the two petitions, and have a
`coterminous scheduling (including briefing). To that end, the
`Patent owner’s brief in [the HTC IPR] currently due on
`December 12, 2018, is requested to be reset to be due 3 months
`after any institution of the subject Petition - meaning Patent
`owner’s briefs in both Petitions would be due on the same date.
`Id. at 3.
`Under these circumstances, and considering Patent Owner’s non-
`opposition to joinder, we agree that joinder with the HTC IPR is appropriate.
`Joinder will allow the fully overlapping issues in both proceedings to be
`addressed at the same time and with one procedural schedule. Thus, joinder
`here promotes the just, speedy, and efficient resolution of both proceedings.
`See 37 C.F.R. § 42.1. Accordingly, we grant Valve’s Motion for Joinder.
`As to Patent Owner’s request to “reset” the HTC IPR’s procedural
`schedule to this institution decision, we are not persuaded that this is
`appropriate. Patent Owner cites no instances of the Board joining a new
`proceeding to an existing proceeding and essentially restarting the clock on
`the first proceeding. We decline to do so here, especially where no new
`issues have been added by the joining party. Patent Owner has responded to
`issues raised by Petitioners Valve and HTC with its Preliminary Response
`
`9
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`here and both its Preliminary Response and Response4 in the HTC IPR. To
`the extent Patent Owner perceives unfairness in having had to file its
`Response in the HTC IPR prior to this institution decision, we disagree.
`Patent Owner will have the opportunity to file a sur-reply as provided for in
`the procedural schedule and is authorized to respond to this institution
`decision therein as provided for in the Trial Practice Guide. See Office
`Patent Trial Practice Guide Update5 referenced at 83 Fed. Reg. 39,989 (Aug.
`13, 2018) at 14–15.
`
`V. ORDER
`
`
`
`
`Accordingly, it is:
`ORDERED that an inter partes review is instituted in IPR2019-00074;
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01032 is granted, and Valve Corporation is joined as a petitioner in
`IPR2018-01032;
`FURTHER ORDERED that IPR2019-00074 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2018-
`01032;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-01032 remain unchanged;
`
`
`4 Patent Owner also requested that the HTC IPR be stayed pending the
`institution decision here. Prelim. Resp. 2. We denied this request via email
`for reasons similar to those discussed here. Consistent with the procedural
`schedule in the HTC IPR, Patent Owner filed its Response on December 11,
`2018.
`5 Available at https://go.usa.gov/xU7GP.
`10
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`IPR2019-00074
`Patent 8,553,935 B2
`
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`
`Order in place for IPR2018-01032 (Paper 7) remains unchanged;
`FURTHER ORDERED that in IPR2018-01032, HTC and Valve will
`file each paper, except for a motion that does not involve the other party, as
`a single, consolidated filing, subject to the page limits set forth in 37 C.F.R.
`§ 42.24, and shall identify each such filing as a consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Valve
`wishes to file an additional paper to address points of disagreement with
`HTC, Valve must request authorization from the Board to file a motion for
`additional pages, and no additional paper may be filed unless the Board
`grants such a motion;
`FURTHER ORDERED that HTC and Valve shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by HTC
`and Valve, within the timeframes set forth in 37 C.F.R. § 42.53(c) or agreed
`to by the parties;
`FURTHER ORDERED that HTC and Valve shall coordinate and
`consolidate any requests for discovery from Patent Owner;
`FURTHER ORDERED that HTC and Valve shall collectively
`designate attorneys to present a consolidated argument at the oral hearing, if
`requested and scheduled;
`FURTHER ORDERED that the case caption in IPR2018-01032 shall
`be changed to reflect joinder of Valve as a petitioner in accordance with the
`attached example below; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01032.
`
`11
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`IPR2019-00074
`Patent 8,553,935 B2
`
`For PETITIONER VALVE:
`
`Brian C. Nash
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`brian.nash@pillsburylaw.com
`
`Reynaldo Barcelo
`BARCELO, HARRISON & WALKER, LLP
`rey@bhiplaw.com
`
`
`For PETITIONER HTC IN IPR2018-01032:
`
`Chun Ng
`Evan Day
`Han-Wei Chen
`PERKINS COIE LLP
`cng@perkinscoie.com
`eday@perkinscoie.com
`harveychen@perkinscoie.com
`
`
`For PATENT OWNER:
`
`Marek Alboszta
`marek@patentsafari.com
`
`
`
`
`
`
`12
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC.,
`AND VALVE CORPORATION,
`Petitioners,
`v.
`ELECTRONIC SCRIPTING PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-010321
`Patent 8,553,935 B2
`____________
`
`
`
`
`1 Valve Corporation, who filed a Petition in IPR2019-00074, has been joined
`as a party to this proceeding.
`
`
`
`
`
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