Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 87
`Date: January 26, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`IPR2017-00858
`Patent 9,289,688 B2
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`I. INTRODUCTION
`
`A. Trial Background
`Valve Corporation (“Valve”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1–3, 9, 10, 18–22, and 26–30 (the
`“challenged claims”) of U.S. Patent No. 9,289,688 B2 (Ex. 1001, “the
`
`
`Tel: 571-272-7822
`
`
`
`Paper 87
`Date: January 26, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`IPR2017-00858
`Patent 9,289,688 B2
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`I. INTRODUCTION
`
`A. Trial Background
`Valve Corporation (“Valve”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1–3, 9, 10, 18–22, and 26–30 (the
`“challenged claims”) of U.S. Patent No. 9,289,688 B2 (Ex. 1001, “the
`
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`IPR2017-00858
`Patent 9,289,688 B2
`’688 patent”). 35 U.S.C. § 311. Petitioner supported the Petition with a
`Declaration from David Rempel, M.D. (Ex. 1009). Ironburg Inventions Ltd.
`(“Ironburg”) timely filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). On September 1, 2017, based on the record before us at the time,
`we instituted an inter partes review of claims 1–3, 9, 10, 20, 22, and 26–30.
`Paper 7 (“Institution Decision” or “Inst. Dec.”). On May 7, 2018, pursuant
`to SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), we modified our
`Institution Decision and reintroduced into this proceeding all challenges to
`the patentability of claims 1–3, 9, 10, 18–22, and 26–30 alleged in the
`Petition. Paper 28 (“SAS Order”). Accordingly, we conducted a trial on all
`challenges to the claims as summarized below:
`Claims Challenged
`35 U.S.C. § Reference(s)/Basis
`1–3, 9, 10, 20, 22, 26–30
`102(a)(2) Uy1
`
`1, 26, 30
`
`1, 2, 18, 19, 21, 26, 28–30
`
`1, 2, 9, 10, 21, 30
`
`103
`
`103
`
`103
`
`Bellinghausen,2 Burns3
`
`Burns, LaCelle4
`
`Burns, Knight5
`
`1, 2, 9, 10, 20, 26, 28–30
`
`102(a)(1) Butler6
`
`
`1 U.S. Patent App. Pub. 2015/0238855 A1 (Ex. 1002, “Uy”).
`2 U.S. Patent No. D711,881 S (Ex. 1003, “Bellinghausen”).
`3 Burns, David, Review: Scuf Xbox 360 Controller, https://www.xboxer360/
`features/reviewscuf-xbox-360-controller/ (Ex. 1004, “Burns”).
`4 U.S. Patent No. D419,985 (Ex. 1005, “LaCelle”).
`5 U.S. Patent No. D502,468 S (Ex. 1007, “Knight”).
`6 Butler, Harry, Razer Sabertooth Review, http://www.bit-
`tech.net/hardware/2013/03/11/razer-sabertooth-review/1 (Ex. 1008,
`“Butler”).
`
`2
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`After we instituted this review, Ironburg filed a Patent Owner
`Response in opposition to the Petition (Paper 14, “PO Resp.”) that was
`supported by a Declaration from Glen Stevick, Ph.D. (Ex. 2001). Valve
`filed a Reply in support of the Petition. (Paper 19, “Reply”). With our
`authorization, Ironburg filed a Supplemental Patent Owner Response
`(Paper 39, “Supp. PO Resp.”) to address the challenges to claims
`reintroduced pursuant to the SAS Order. Valve filed a Supplemental Reply
`in support of the Petition and responding to the Supplemental Patent Owner
`Response (Paper 43, “Supp. Reply”), which was supported by another
`Declaration of Dr. Rempel (Ex. 1019). With our authorization, Ironburg
`filed a Surreply addressing arguments set forth in Valve’s Supplemental
`Reply. (Paper 50, “Ironburg Surreply”). Also with our authorization, Valve
`filed a brief responding to the Ironburg Surreply. (Paper 52, the “Valve
`Surreply”). Each party also submitted a brief addressing the relevance of
`deposition testimony from Simon Burgess (Exhibit 1046). Paper 59 (the
`“Burgess Brief”); Paper 62 (the “Burgess Resp.”). Ironburg did not move to
`amend any claim of the ’688 patent.
`Ironburg filed three motions to exclude evidence (Papers 25, 48, 63),
`each of which was opposed by Valve (Papers 27, 51, 64) and supported by
`Ironburg with reply briefs (Papers 29, 53, 65).
`We heard oral argument on September 7, 2018, a transcript of which
`has been entered in the record (Paper 66, “Tr.”).
`We entered a corrected Final Written Decision (Paper 68, “Decision”
`or “Dec.”) in which we concluded that Valve had demonstrated by a
`preponderance of evidence that Uy anticipated claims 1, 2, 9, 10, 20, 22, 27,
`28, and 30 of the ’688 patent, but failed to do so for claims 3, 26, and 29.
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`Dec. 21–29. We also concluded that Valve had failed to demonstrate by a
`preponderance of evidence that Butler anticipated any claim of the
`’688 patent. Id. at 29–32. Lastly, we also concluded that Valve had failed to
`prove by a preponderance of evidence that Burns was a prior art printed
`publication. Id. at 32–39. On this basis, we concluded that Valve’s
`collective challenges to the patentability of claims 1, 2, 9, 10, 18, 19, 21, 26,
`and 28–30 as being obvious over the combination of Burns in view of one of
`Bellinghausen, LaCelle, or Knight failed. Id.
`B. The Appeal to the Federal Circuit
`On August 17, 2021, the Federal Circuit affirmed-in-part, vacated-in-
`part, and remanded-in-part our prior Decision. Valve Corp. v. Ironburg
`Inventions Ltd., 8 F.4th 1364, 1381 (Fed. Cir. 2021). Paper 76.7 The
`Federal Circuit affirmed our determination that Uy anticipated claims 1, 2, 9,
`10, 20, 22, 27, 28, and 30. Valve, 8 F.4th at 1381. The Federal Circuit also
`affirmed our determination that Uy did not anticipate claim 29. Id.
`at 1378–79. Valve did not appeal our Decision to the extent that we
`concluded that Uy did not anticipate claims 3 and 26 and that Butler did not
`anticipate claims 1, 2, 9, 10, 20, 26, and 28–30. Id. at 1368–69, n.1. The
`Federal Circuit reversed our determination that Burns was not prior art. Id.
`at 1381. The Federal Circuit also vacated our determination that claims 18,
`19, 21, 26, and 29 had not been proven unpatentable as obvious in view of
`Burns in combination with various other prior art references. Id.
`Accordingly, the Federal Circuit remanded the case to us to consider Valve’s
`challenges to the patentability of claims 18, 19, 21, 26, and 29 of the
`
`
`7 The Federal Circuit issued its mandate on October 8, 2021. Paper 75.
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`Patent 9,289,688 B2
`’688 patent as obvious based on the combinations of prior art listed in the
`table below.
`
`Claim(s)8
`18, 19, 21, 26, 29
`
`35 U.S.C. §
`103
`
`References
`Burns, LaCelle
`
`21
`
`26
`
`103
`
`103
`
`Burns, Knight
`
`Bellinghausen, Burns
`
`Id.
`C. Remand Background
`On remand, we authorized the parties to concurrently file an opening
`brief and then concurrently file responsive reply briefs. Paper 77, 4. The
`parties agreed, and we concurred, that no new evidence would be submitted
`during the remand proceeding. Id. Accordingly, we decide the issues on
`remand based on the record that was submitted during the original trial.
`Valve filed an opening brief (Paper 79, “Valve Remand Br.”).
`Ironburg filed an opening brief (Paper 78, “Ironburg Remand Br.”). Valve
`filed a Reply responding to Ironburg’s opening brief (Paper 82, “Valve
`Remand Reply”). Ironburg filed a Reply responding to Valve’s opening
`brief (Paper 84, “Ironburg Remand Reply”).
`During the original trial, the panel dismissed without prejudice as
`moot Ironburg’s motions to exclude evidence (Papers 48 and 63).9 Dec. 45.
`
`
`8 Because all the claims to be addressed on remand depend directly from
`claim 1, we instructed the parties to address on remand the manner in which
`the combinations of Burns with the references above teach or suggest the
`limitations recited in claim 1. Paper 77, 3, n.3.
`9 In Paper 48, Ironburg seeks to exclude evidence submitted with Valve’s
`Supplemental Reply included the Dr. Rempel’s Reply Declaration (Exhibit
`1019). Paper 48. As explained in Part II.D below, we find that Valve, by
`
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`In a joint e-mail on November 5, 2021, the parties agreed that both of these
`motions were pertinent, at least in part, to the issues remaining on remand.
`Exhibit 3001. We authorized Ironburg to renew these motions by indicating
`a desire to do so in its opening brief. No additional briefing by either party
`was authorized on these motions. Ironburg renewed both motions to exclude
`mentioned above. Ironburg Remand Br. 14.
`This Final Written Decision is issued pursuant to 35 U.S.C. §§ 144,
`318(a) and 37 C.F.R. § 42.73. For the reasons expressed below, we
`conclude that Valve has failed to demonstrate by a preponderance of
`evidence that any of claims 18, 19, 21, 26, and 29 are unpatentable as
`obvious.
`D. Related Proceedings
`The parties have identified as a related proceeding the co-pending
`district court litigation of Ironburg Inventions Ltd. v. Valve Corporation,
`Case No. 1:15-cv-04219-MHC (N.D. Ga.). Paper 3, 1; Pet. 1. Valve also
`identifies Ironburg Inventions Ltd. v. Collective Minds Gaming Co. Ltd.,
`Case No. 1:16-cv-04110-MHC (N.D. Ga.). Pet. 2. Valve also identifies
`inter partes review proceedings IPR2016-00948, IPR2016-00949, IPR2017-
`00136, IPR2017-00137 as related proceedings because they collectively
`
`
`submitting Exhibit 1019, has presented evidence outside the scope of what is
`permitted under Rule 42.23(b). We also find that, even if the evidence were
`considered, it would be insufficiently persuasive to support a successful
`challenge. In Paper 63, Ironburg seeks to exclude Exhibit 1048 as
`unauthenticated (under FRE 901), hearsay (under FRE 801–803), and
`irrelevant (under FRE 401, 402). Paper 63. Exhibit 1048 is a different copy
`of the article submitted as Burns (Exhibit 1004), which the Federal Circuit
`has found to be a prior art printed publication; thus mooting Paper 63.
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`Patent 9,289,688 B2
`address related U.S. Patent No. 9,089,770 B2.10 Id. We issued final written
`decisions in IPR2016-00948 and IPR2016-00949. We terminated IPR2017-
`00136 and IPR2017-00137 without issuing final written decisions in
`response to the joint motions of the parties after they settled their disputes.
`E. The ’688 Patent
`The ’688 patent relates to “controllers for controlling the play of
`computerized games; more particularly, . . . to an actuator system of a game
`controller for a gaming console.” Ex. 1001, 1:13–17. The Specification
`describes conventional controllers as having controls such as buttons, analog
`control sticks, bumpers, and triggers mounted to the top and front surfaces of
`the controller that are intended to be actuated by the user’s thumbs or index
`fingers. Id. at 1:27–54. A user may grip these conventional controllers by
`wrapping the middle, ring, and little fingers around two spaced-apart grip
`portions. Id. at 1:55–58.
`The Specification describes one embodiment in which controller 10
`includes allegedly novel paddle levers 11A–D that a user may actuate with
`the middle, ring, and/or little fingers on the “rear” or underside of controller
`body 14 as shown in Figure 5, which we reproduce below.
`
`
`10 Valve mistakenly refers to IPR2016-00136 and IPR2016-00137 rather
`than IPR2017-00136 and IPR2017-00137. Pet. 1–2.
`
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`
`Figure 5 is “a plan view from below of the rear panel of the
`games controller of FIG. 1.” Id. at 4:28–29.
`In one embodiment, the lower surface of outermost paddle levers 11A, 11D
`are oriented at an angle β relative to surface SB of controller 10, as shown in
`Figure 7, which we reproduce below. Id. at 8:12–16.
`
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`8
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`Patent 9,289,688 B2
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`
`
`Figure 7 is an enlarged front view of the games controller of
`Figure 1 showing the relationship among paddles 11A–D, the
`rear of controller body 14, and handles H1, H2.
`The configuration and arrangement of paddle levers 11A, 11D as
`compared to adjacent paddle levers 11B, 11C enables the user (1) to “readily
`find the adjacent paddle 11B, 11C” without needing to “disengage or lift off
`the outermost paddle 11A, 11D” and (2) to “maintain touching contact
`therewith whilst actuating one of the inner paddles 11B, 11C.” Id.
`at 7:56–60.
`Independent claim 1, which is the only independent claim at issue on
`remand, recites:
`1. A games controller comprising:
`a case; and
`a plurality of controls located on a front end and a top of the case;
`the case being shaped to be held in both hands of a user such that
`the user’s thumbs are positioned to operate controls located
`on the top of the case and the user’s index fingers are
`positioned to operate controls located on the front end of the
`case; wherein
`
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`Patent 9,289,688 B2
`the games controller further comprises at least one first
`additional control located on a back of the case in a position
`operable by a middle, ring or little finger of the user,
`the first additional control comprising a first elongate member
`displaceable by the user to activate a control function,
`wherein
`the first elongate member comprises a first surface
`disposed proximate an outer surface of the case and
`the first elongate member comprises a second surface
`opposing the first surface, the second surface being
`configured and arranged to be non-parallel with a
`portion of the outer surface of the back of the case to
`which the first elongate member is mounted.
`Id. at 9:28–48 (with line breaks added for clarity).
`
`II. ANALYSIS
`
`A. Claim Interpretation
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b) (2016)11; see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (affirming that USPTO has statutory authority to
`construe claims according to Rule 42.100(b)). When applying that standard,
`we interpret the claim language as it would be understood by one of ordinary
`
`
`11 Our recently changed version of this Rule, which requires that we interpret
`claims in the same manner used in a civil action under 35 U.S.C. § 282(b),
`does not apply here because the Petition was filed before the effective date
`of the new Rule, November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,344 (Oct. 11,
`2018).
`
`10
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`IPR2017-00858
`Patent 9,289,688 B2
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`and customary meaning as they would be understood by an ordinarily skilled
`artisan. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007) (“The ordinary and customary meaning ‘is the meaning that the term
`would have to a person of ordinary skill in the art in question.’”) (quoting
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). Only terms
`that are in controversy need to be construed, and then only to the extent
`necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Although the meaning of various claim terms was argued during the
`trial, we need not expressly address the meaning of any particular claim
`language in reaching our conclusion that Valve has failed to establish that
`any claim remaining at issue is unpatentable.
`B. Legal Standards
`The Supreme Court in KSR International Co. v. Teleflex Inc., 550
`U.S. 398 (2007), reaffirmed the framework for determining obviousness as
`set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
`summarized the four factual inquiries set forth in Graham that we apply in
`determining whether a claim is unpatentable as obvious under 35 U.S.C.
`§ 103(a) as follows: (1) determining the scope and content of the prior art,
`(2) ascertaining the differences between the prior art and the claims at issue,
`(3) resolving the level of ordinary skill in the pertinent art, and (4) when in
`evidence, considering objective evidence indicating obviousness or
`nonobviousness. KSR, 550 U.S. at 406 (citing Graham, 383 U.S. at 17–18).
`
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`Petitioner must explain how the proposed combinations of prior art
`would have rendered the challenged claims unpatentable. An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249,
`1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380–81 (Fed. Cir. 2016). Petitioner also must articulate a reason
`why a person of ordinary skill in the art would have combined the prior art
`references. NuVasive, 842 F.3d at 1382.
`At this stage, we determine whether a preponderance of the evidence
`of record shows that the challenged claims would have been rendered
`obvious in view of the asserted prior art. We analyze the asserted grounds of
`unpatentability in accordance with these principles.
`C. Level of Ordinary Skill
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily
`skilled artisan would have:
`a bachelor’s degree in an industrial design or engineering field,
`and approximately two years of relevant experience, for
`example. Alternatively, the same or an equivalent level of skill
`in the art could be obtained by end users or hobbyists who have
`substantial experience modifying or creating customized game
`
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`controllers that include features to better suit their needs, even
`without any college education.
`Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the
`level of ordinary skill, contends that a college degree of the type identified
`by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the
`level of ordinary skill is “relatively low” and the technology involved “is
`simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s
`contentions regarding the level of ordinary skill are consistent with Valve’s
`position, id. at 6, which we apply in our analysis.
`D. Claims 18, 19, 21, 26, and 29: Obviousness over Burns with One of
`Bellinghausen, LaCelle, or Knight
`On remand, we address Valve’s arguments that certain claims among
`dependent claims 18, 19, 21, 26, and 29 are unpatentable as obvious over
`Burns in combination with one of Bellinghausen, LaCelle, or Knight. See
`Pet. 24–28 (addressing claims 1 and 26 in view of Burns and
`Bellinghausen), 32–40 (addressing claims 1, 18, 19, 21, 26, and 29 in view
`of Burns and LaCelle), 45–52, 54 (addressing claims 1 and 21 in view of
`Burns and Knight). Burns is an article reviewing a game controller that
`incorporates technology licensed from Ironburg. Prelim. Resp. 26 (citing
`Ex. 2003, 54). Bellinghausen, LaCelle, and Knight (collectively, the
`“Design References”) are design patents, and none of them verbally
`describes individual elements of its controller or the function of any portion
`of the controllers illustrated in their respective figures. See generally
`Ex. 1003; Ex. 1005; Ex. 1007. Each of claims 18, 19, 21, 26, and 29
`depends directly from independent claim 1. Ex. 1001, 10:65–12:8. Thus,
`we consider Valve’s showing relating to claim 1 for each of the
`
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`combinations of Burns with one of the Design References as part of the
`challenge to dependent claims 18, 19, 21, 26, and 29.
`In its Petition, Valve, relying exclusively on testimony by Dr. Rempel,
`contends that, because Burns and the Design References all “disclose hand-
`held game controllers,” an ordinarily skilled artisan would have improved
`functional aspects of Bellinghausen in view of Burns or Burns in view of
`functional features allegedly described in the Design References. For the
`combination of Burns and Bellinghausen, Valve argues that “flexibility and
`resilience of the bottom controls of Bellinghausen may be improved by
`being cantilevered as taught by the paddle levers of Burns, so as to have a
`top surface and an opposing undersurface that is proximate the outer surface
`of the case.” Pet. 24; see also Ex. 1009 ¶ 21 (parroting the Petition). On its
`face, this testimony fails to explain why an ordinarily skilled artisan would
`have sought to improve the flexibility and resilience of Bellinghausen’s
`bottom controls or what advantage would ensue from doing so. This
`testimony merely states that it “may be improved.” For the combinations of
`Burns with LaCelle and Burns with Knight, Valve argues that each of the
`design patents “advantageously suggests an alternative rear control geometry
`for Burns, e.g. to give the distal ends of the back paddles of Burns the
`curved (i.e. “non-parallel”) outer shape of the back buttons” allegedly shown
`in each design patent. Pet. 32 (Burns with LaCelle), 45 (Burns with Knight);
`Ex. 1009 ¶¶ 27, 32 (parroting Petition). Similarly, this testimony simply
`fails to explain why an ordinarily skilled artisan would have modified Burns’
`paddles to have a curved shape or what advantage would ensue from doing
`so. Valve also contends that each proposed alteration in Bellinghausen or
`Burns “would have been expected to be readily practical and successful in
`
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`this simple and predictable art, and the results would not have been
`unexpected.” Id. (citing Ex. 1009 ¶¶ 21, 27, 32). Dr. Rempel cites no
`objective evidence to support this cited testimony, which largely parrots
`Valve’s brief. Compare id., with Ex. 1009 ¶¶ 21, 27, 32. Dr. Rempel’s
`testimony is entitled to less weight because it is not supported by underlying
`facts or data. See 37 CFR § 42.65(a).
`In its Supplemental Response, Ironburg argues that, based solely upon
`the evidence adduced in the Petition, Valve fails to show how or why an
`ordinarily skilled artisan would have combined elements of Burns and
`LaCelle. Supp. PO Resp. 14–18. When analyzing essentially the same
`arguments in the Institution Decision, we agreed with Ironburg and did not
`institute review of the challenges based upon Burns for this reason. Inst.
`Dec. 15–18. We concluded that Valve had failed “to provide reasons for
`combining specific aspects of individual references to arrive at the claimed
`controller.” Id. at 17.
`However, because of the Supreme Court’s decision in SAS Institute,
`Inc. v. Iancu, 138 S. Ct. 1348 (2018), we modified our Institution Decision
`and reinstated Valve’s challenges based on Burns and other references. SAS
`Order. We also allowed each party to submit two additional briefs
`addressing these challenges. Paper 46, 3–4; Paper 42, 3; see also Paper 34,
`3 (authorizing parties to proceed on schedule formally adopted in Paper 42).
`The first brief in this series of four was Ironburg’s Supplement Patent Owner
`Response in which Ironburg renewed its argument that the Burns challenges
`were fatally flawed for at least the same reasons we expressed in our
`Institution Decision. Supp. PO Resp. 1, 14–18.
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`Perhaps sensing that its showing in the Petition was fatally deficient,
`Valve submitted new testimony from Dr. Rempel with its Supplemental
`Reply in which Dr. Rempel attempted to provide reasons why an ordinarily
`skilled artisan would have combined teachings of Burns with each one of the
`Design References. Supp. Reply 12–14 (citing Ex. 1019 ¶ 14, 39, 40). For
`the combination of Burns and Bellinghausen, Valve contends that an
`ordinarily skilled artisan “would have understood that cantilevering the
`bottom controls of Bellinghausen (as taught by the paddle levers of Burns)
`would have predictably and advantageously resulted in increased flexibility
`and resilience in the controls, because then the controls would be supported
`at only one end.” Id. at 13 (citing Ex. 1019 ¶ 14). For the combination of
`Burns and either LaCelle or Knight, Valve contends that an ordinarily
`skilled artisan “would have recognized the predictable advantage of the
`combination: a back paddle having a curved end (like that of LaCelle or
`Knight) could allow better coupling with the user’s finger than the flat
`paddles that are otherwise disclosed by Burns.” Id. at 14 (citing Ex. 1019
`¶¶ 39–40). Dr. Rempel cites no objective evidence to support his testimony,
`and the panel accords little probative value to the testimony for this reason.
`Ex. 1019 ¶¶ 14, 39, 40; 37 CFR § 42.65(a).
`In response, Ironburg persuasively argues that the testimony from
`Dr. Rempel that we summarize above improperly exceeds the scope of a
`reply under Rule 42.23(b) and is thus not properly before us. Ironburg
`Surreply 1–9. We agree.
`It is of the utmost importance that petitioners in the IPR
`proceedings adhere to the requirement that the initial petition
`identify “with particularity” the “evidence that supports the
`grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3).
`“All arguments for the relief requested in a motion must be made
`
`16
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`in the motion. A reply may only respond to arguments raised in
`the corresponding opposition or patent owner response.”
`37 C.F.R. § 42.23(b).
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
`(Fed. Cir. 2016). We find that: (1) Valve proffered new testimony to fill the
`gaps that we identified in the Institution Decision and (2) presenting such
`testimony in the reply constitutes untimely new argument and evidence that
`must have been presented in the Petition.
`Moreover, even if we were to consider Dr. Rempel’s untimely
`testimony relating to the combinations of Burns with LaCelle or Knight, it
`falls short of providing a reasoned basis for modifying Burns. Dr. Rempel
`merely opines that incorporating the curved shapes of back controls from
`LaCelle or Knight into Burns would result in a back control that “could have
`better coupling with the user’s finger than the flat paddles that are otherwise
`disclosed by Burns.” Ex. 1019 ¶¶ 39–40 (emphasis added). In other words,
`modifying Burns in view of LaCelle or Knight might improve Burns.
`Dr. Rempel testified that the modification “could” improve Burns, not that it
`“would” improve Burns. The possibility of improvement, which also allows
`that Burns would not be improved, fails to rise to the level of “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`Accordingly, we find such testimony to be insufficient to demonstrate that
`an ordinarily skilled artisan would have modified Burns in view of LaCelle
`or Knight.
`After considering the parties’ briefing, we conclude that Valve’s
`arguments and supporting evidence for combining teachings of Burns with
`each one of the Design References, excluding the untimely evidence
`
`17
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`submitted with Valve’s Supplemental Reply, are unpersuasive. Neither the
`Petition nor the evidence cited in the Petition cogently explains what
`advantage would be provided by the alternative control geometries of Burns
`and each of the Design References. A petitioner cannot demonstrate
`obviousness “by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`“To facilitate review, this analysis should be made explicit.” KSR, 550 U.S.
`at 418 (citing Kahn, 441 F.3d at 988). Here, we find that Valve proffers
`conclusions without sufficient reasoning or objective evidence to
`demonstrate a reasonable likelihood of establishing that an ordinarily skilled
`artisan would have found it obvious to combine the elements from the prior
`art to arrive at the claimed controllers.
`Valve also contends that the proposed alterations to Bellinghausen in
`view of Burns or to Burns in view of a relevant one of the Design
`References “would have been expected to be readily practical and successful
`in this simple and predictable art, and the results would not have been
`unexpected.” Pet. 24, 32, 45; see also Ex. 1009 ¶¶ 21, 27, 32 (parroting
`Petition). Valve’s statements, like the similarity of references, might suggest
`that Burns could be combined in the manners proposed with each of the
`Design References, but they fail to provide reasons that specific aspects of
`individual references would have been combined to arrive at the claimed
`controller. In other words, Valve’s contentions merely demonstrate the
`feasibility of the proposed combinations, not the motivations for the
`proposed combinations.
`
`18
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`For all these reasons, we conclude that Valve has failed to prove by a
`preponderance of evidence that the combined teachings of Burns with one of
`Bellinghausen, LaCelle, or Knight render any of claims 18, 19, 21, 26,
`and 29 of the ’688 patent unpatentable as obvious.
`
`III. IRONBURG’S MOTIONS TO EXCLUDE
`As authorized in our Scheduling Order on Remand (Paper 77),
`Ironburg renews a pair of motions to exclude evidence (Papers 48 and 63)
`that we previously dismissed without prejudice as moot in our first Decision.
`Dec. 45. To the extent that the motion presented in Paper 48 sets forth
`issues that overlap with our analysis of whether Dr. Rempel’s testimony in
`Exhibit 1019 constitutes evidence in support of an improper argument that is
`outside the proper scope of a reply under Rule 42.23(b), we grant-in-part
`Ironburg’s motion as it relates to Exhibit 1019 for the reasons discussed
`above. We dismiss-in-part without prejudice the remaining issues raised in
`the motion set forth in Paper 48 as moot because the resolution of those
`issues is not required to reach our decision expressed above. For the same
`reason, we dismiss the motion set forth in Paper 63 without prejudice as
`moot.
`
`IV. CONCLUSION
`
`In summary,
`
`Claim(s)
`
`21
`
`18, 19, 21,
`26, 29
`
`35
`U.S.C. § Reference(s)
`Burns,
`Bellinghausen
`Burns,
`LaCelle
`
`103
`
`103
`
`Claim(s)
`Shown
`Unpatentable
`
`Claim(s) Not
`Shown
`Unpatentable
`
`
`
`
`
`21
`
`18, 19, 21, 26, 29
`
`19
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`
`35
`U.S.C. § Reference(s)
`103
`Burns, Knight
`Overall Outcome
`
`Claim(s)
`Shown
`Unpatentable
`
`
`
`Claim(s) Not
`Shown
`Unpatentable
`26
`18, 19, 21, 26, 29
`
`Claim(s)
`26
`
`
`
`V. ORDER
`For the reasons given, it is:
`ORDERED that claims 18, 19, 21, 26, and 29 of U.S. Patent No.
`9,289,688 B2 have not been shown to be unpatentable;
`FURTHER ORDERED that Ironburg’s Motion to Exclude Evidence
`(Paper 48) is granted-in-part and dismissed-in-part without prejudice as set
`forth above;
`FURTHER ORDERED that Ironburg’s Motion to Exclude Evidence
`(Paper 63) is dismissed without prejudice; and
`FURTHER ORDERED because this is a final written decision, the
`parties to this proceeding seeking judicial review of our Decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`20
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`PETITIONER:
`Joshua C. Harrison
`Reynaldo C. Barceló
`BARCELÓ, HARRISON & WALKER LLP
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`PATENT OWNER:
`Robert Becker
`Charles A. Kertell
`MANATT, PHELPS & PHILLIPS, LLP
`RBecker@manatt.com
`CKertell@manatt.com
`
`21
`
`
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