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`Patent Owner’s Sur-Reply - U.S. Patent No. 8,553,935 B2
`PTAB Case No. IPR2019-00085
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`VALVE CORPORATION,
`Petitioner,
`v.
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`ELECTRONIC SCRIPTING PRODUCTS, INC.
`Patent Owner.
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`______________
`Inter Partes Review No. IPR2019-00085
`U.S. Patent No. 8,553,935 B2
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`Title: COMPUTER INTERFACE EMPLOYING A MANIPULATED OBJECT
`WITH ABSOLUTE POSE DETECTION COMPONENT AND A DISPLAY
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`______________
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`PATENT OWNER’S SUR-REPLY RE: PETITIONER VALE BEING A
`"SIMILARLY SITUATED PARTY"
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`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.
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`Karen I. Sweeney, Trial Paralegal
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`Patent Owner’s Sur-Reply - U.S. Patent No. 8,553,935 B2
`PTAB Case No. IPR2019-00085
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`Without putting too fine a point on it, Valve's reply (Paper 8) is a complete CHARADE.
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`Yes it has not been a party for "over a year", but it was without doubt a party "defendant"
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`in the District Court case, having been named as a defendant in the identical infringement
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`District Court action from October, 2017 to January 2018 with HTC.
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`Valve claims it was never served even though it does not dispute the date or address
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`where it received the "summons and complaint", which delivery is "presumed" to be correct.
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`Rios v. Nicholson (Fed. Circ. 2007) 490 F. 3d. 928 at 930-931. However, its counsel filed for
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`"pro hac vice" in the District Court ", filed an objection to a trial by magistrate, and participated
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`in the proceeding in the District Court immediately after it was served in October, 2017.
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`Presumably Valve wants to lead this panel to believe that it filed its "venue motion" along with
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`the other papers it filed in the District Court after it was not served as a defendant.
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`Valve's counsel (Mr. Lavery) filed his declaration under oath (Exhibit 2010) in the
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`District Court action and admits Valve's "co-defendant" status; admits Valve's "technologies" in
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`the accused "VIVE" infringing devices; and admits its contractual license agreement with its "co-
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`defendant HTC" for use of the technologies.
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`As set forth in Shenzhen:
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`Given petitions filed by two or more similarly situated
`defendants, there is a rebuttable presumption that a later-filed
`petition will be denied under General Plastics if that later-filed
`petition is filed after an earlier-filed petition has received a
`preliminary response or a decision on institution.
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`The concept behind this is that, things being equal, if two or more
`co-defendants are sued around the same time, they should, within
`reason, file their petitions around the same time; it is generally
`unfair for one defendant to wait for a "test case" to go through the
`inter partes review process by another defendant before filing their
`own petition. [at p. 16-17]
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`Patent Owner’s Sur-Reply - U.S. Patent No. 8,553,935 B2
`PTAB Case No. IPR2019-00085
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`Valve knows that its dismissal was only for "venue", "without prejudice", and on non-
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`substantive grounds. Given the judicial admissions by its lawyer of "co-defendant" status, its
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`license with HTC for the infringing "VIVE" device, its technologies used in the infringing
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`device, its filing of papers in the District Court after having been served, does it seriously
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`contend it is not "similarly situated" to HTC?
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`Valve's shameless "misleading" of this panel that the Patent Owner (ESPI) "dropped its
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`case against Valve" after its counsel Lavery's declaration, is blatantly false. Nothing was
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`"dropped". A stipulation due to "venue" issues was agreed to.
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`Under Shenzhen Silver Star and General Plastics, Valve is a similarly situated party. The
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`facts do not lie. Valve has admitted co-defendant status (unequivocal); involvement in the
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`development of the alleged infringing VIVE devices (unequivocal); privity of contract in a
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`license agreement between HTC (unequivocal); its involvement in the District Court
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`infringement case where it was a named defendant (unequivocal), and incorporating the
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`technology of Valve into the accused infringing VIVE devices at both HTC's facilities in China
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`and Valve facilities in Washington (unequivocal). These are indisputable facts by Valve
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`admitted under oath that lead to no other conclusion that Valve and HTC are similarly situated
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`parties with regard to the patent technology at issue.
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`As Judge Saindon stated in Shenzhen Silver Star:
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`"[B]oth Petitioner and the prior petitioner… are similarly
`situated defendants because they both had a reason to seek Inter
`Partes review at or around the same time, when Patent Owner
`asserted at or around the same time that they infringe… [pg. 19].
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`HTC and Valve are similarly situated and the Board should exercise its discretion to deny
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`Valve's cumulative "follow-on" petition.
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`Patent Owner’s Sur-Reply - U.S. Patent No. 8,553,935 B2
`PTAB Case No. IPR2019-00085
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`Respectfully submitted,
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`/Marek Alboszta/
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`Marek Alboszta
`Reg. No. 39,894
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`555 Bryant sTreet, #142
`Palo Alto, CA 94301
`Tel: (650) 862-1085
`Counsel for Patent Owner
`Electronic Scripting Products, Inc.
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`Dated: March 21, 2019
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`Patent Owner’s Sur-Reply - U.S. Patent No. 8,553,935 B2
`PTAB Case No. IPR2019-00085
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`CERTIFICATE OF SERVICE (37 CFR §§ 42.6(e) and 42.105(a))
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`The undersigned hereby certifies that the above Patent Owner’s Sur-Reply in the Inter-Partes
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`Review Case IPR2019-00085 of U.S. Patent No. 9,235,934 B2 were served on this 21st day of
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`March, 2019 on the Petitioner at the official correspondence address for the Lead Counsel and
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`Back-Up Counsel by e-mail per Petitioner’s stated consent:
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`for Lead Counsel:
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`brian.nash@pillsburylaw.com
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`for Back-Up Counsel:
`rey@bhiplaw.com
`courtesy e-mail address:
`firmwidecalendardocket@pillsburylaw.com
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`LEAD COUNSEL’S ADDRESS:
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`Brian C. Nash (Reg. No. 58,105)
`Pillsbury Winthrop Shaw Pittman LLP
`401 Congress Avenue, Suite 1700
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`Austin, TX 78701
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`Date: March 21st, 2019
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`BACK-UP COUNSEL’S ADDRESS:
`Reynaldo C. Barcelo (Reg. No. 42,290)
`Barcelo, Harrison & Walker, LLP
`2901 West Coast Hwy, Suite 200
`Newport Beach, CA 92663
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`/Marek Alboszta/
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`Marek Alboszta (Reg. No. 39,894)
`555 Bryant Street #142
`Palo Alto, CA 94301
`Phone: (650) 862-1085
`Fax: (510) 746-7057
`e-mail: marek@patentsafari.com
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