Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 77
`Entered: November 10, 2021
`
`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.
`
`SCHEDULING ORDER ON REMAND
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`I. DISCUSSION
`On August 17, 2021, the Federal Circuit affirmed-in-part, vacated-in-
`part, and remanded-in-part the Final Written Decision in this proceeding
`
`
`Tel: 571-272-7822
`
`Paper 77
`Entered: November 10, 2021
`
`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.
`
`SCHEDULING ORDER ON REMAND
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`I. DISCUSSION
`On August 17, 2021, the Federal Circuit affirmed-in-part, vacated-in-
`part, and remanded-in-part the Final Written Decision in this proceeding
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`(Paper 68 (“Dec.” or “Decision”)). Valve Corp. v. Ironburg Inventions Ltd.,
`8 F.4th 1364, 1381 (Fed. Cir. 2021). Paper 76.1
`We conducted a trial to address Valve’s challenges to the patentability
`of claims 1–3, 9, 10, 18–22, and 26–30 of U.S. Patent 9,289,688 B2 (the
`“’688 patent”), which are summarized in the table below.
`
`References
`U.S. Patent App. Pub. 2015/0238855
`A1 (Ex. 1002, “Uy”)
`
`Claims challenged
`Basis
`§ 102(a)(2) 1–3, 9, 10, 20, 22,
`26–30
`
`§ 103
`
`1, 26, 30
`
`U.S. Patent No. D711,881 S (Ex. 1003,
`“Bellinghausen”) and Burns, David,
`Review: Scuf Xbox 360 Controller,
`https://www.xboxer360/features/review
`scuf-xbox-360-controller/ (Ex. 1004,
`“Burns”)
`
`Burns and U.S. Patent No. D419,985
`(Ex. 1005, “LaCelle”)
`
`§ 103
`
`1, 2, 18, 19, 21, 26,
`28–30
`
`Burns and U.S. Patent No. D502,468 S
`(Ex. 1007, “Knight”)
`
`§ 103
`
`1, 2, 9, 10, 21, 30
`
`Butler, Harry, Razer Sabertooth
`Review, http://www.bit-
`tech.net/hardware/2013/03/11/razer-
`sabertooth-review/1 (Ex. 1008,
`“Butler”)
`
`Dec. 2.
`
`§ 102(a)(1) 1, 2, 9, 10, 20, 26,
`28–30
`
`
`1 The Federal Circuit issued its mandate on October 8, 2021. Paper 75.
`
`2
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`The Federal Circuit affirmed our determination that Uy anticipated
`claims 1, 2, 9, 10, 20, 22, 27, 28, and 30.2 Valve, 8 F.4th at 1381. The
`Federal Circuit reversed our determination that Burns was not prior art. Id.
`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 listed in the table above.
`Id. Accordingly, the Federal Circuit remanded the case for us to consider
`Valve’s challenges to the patentability of claims 18, 19, 21, 26, and 29 of the
`’688 patent as obvious based on the combinations of prior art listed in the
`table below.
`
`References
`Bellinghausen and Burns
`
`Claim(s)3 challenged as obvious
`26
`
`Burns and LaCelle
`
`Burns and Knight
`
`18, 19, 21, 26, 29
`
`21
`
`On October 27, 2021, Judges Weatherly and Kauffman conducted a
`conference call with the parties to explore their preferences on the
`
`
`2 The Federal Circuit also affirmed our determination that Uy did not
`anticipate claim 29. Valve, 8 F.4th 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.
`3 We note that, because all the claims to be addressed on remand depend
`directly from claim 1, we expect 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.
`
`3
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`procedures to govern the remand proceedings.4 Before that conference, the
`parties had indicated via email to the Board that they had conferred and
`agreed that no new evidence shall be submitted during the remand and that
`each party should concurrently file an opening brief and then concurrently
`file a reply brief. The panel adopts these agreed upon procedures.
`Based upon discussion with the parties during the teleconference, the
`panel specifies the following additional procedures that shall govern the
`remand proceeding:
`1. Opening briefs of up to fifteen (15) pages shall be concurrently
`filed on November 23, 2021;
`2. The opening briefs shall address the effect of the Federal Circuit’s
`decision in Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th
`1364 (Fed. Cir. 2021) on the PTAB’s Corrected Final Written
`Decision (Paper 68) regarding the patentability of claims 18, 19,
`21, 26, and 29 of the ’688 patent in view of Valve’s challenges to
`the patentability of those claims as set forth in the table above;
`3. Each party may file a reply brief of up to five (5) pages that
`responds to the opposing party’s opening brief by no later than
`December 14, 2021; and
`4. The panel will defer deciding the issue of whether an oral
`argument is warranted until after briefing is completed.
`The panel also instructed the parties to confer and determine which
`motions, if any, filed during the original proceeding addressed issues that
`remain pertinent to the issues on remand. During the original proceeding,
`the panel dismissed without prejudice as moot Ironburg’s motions to exclude
`evidence (Papers 48 and 63). Dec. 45. In a joint e-mail on November 5,
`
`
`4 Judge Petravick joins this order after conferring with Judges Weatherly and
`Kauffman.
`
`4
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`2021, the parties agreed that both of these motions were pertinent, at least in
`part, to the issues remaining on remand. Exhibit 3001. Ironburg is only
`authorized to renew these motions by indicating a desire to do so in its
`opening brief. No additional briefing by either party will be permitted on
`these motions.
`
`II. ORDER
`
`Accordingly, it is:
`ORDERED that the parties shall not file new evidence during the
`remand proceeding;
`FURTHER ORDERED that each party shall concurrently file an
`opening brief of up to fifteen (15) pages on November 23, 2021;
`FURTHER ORDERED that, except as otherwise indicated, each
`opening brief may only address the effect of the Federal Circuit’s decision in
`Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1381 (Fed. Cir. 2021)
`on the PTAB’s Corrected Final Written Decision (Paper 68) regarding the
`patentability of the remanded claims 18, 19, 21, 26, and 29 of the ’688
`patent in view of Valve’s challenges to the patentability of those claims as
`set forth in the table above;
`FURTHER ORDERED that Ironburg is authorized to renew one or
`more of the motions to exclude evidence filed during the trial as Paper Nos.
`48 and 63 by expressly indicating in its opening brief which of these motions
`it renews;
`FURTHER ORDERED that no additional briefing by either party on
`any such renewed motion to exclude evidence is authorized;
`
`5
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`FURTHER ORDERED that, each party is authorized to file a reply
`brief of up to five (5) pages responding to arguments made in the opposing
`party’s opening brief by no later than December 14, 2021; and
`FURTHER ORDERED that, by no later than January 11, 2022, either
`party may contact the Board via e-mail to seek authorization to request an
`oral hearing.
`
`6
`
`
`
`IPR2017-00858
`Patent 9,289,688 B2
`For PETITIONER:
`Joshua C. Harrison
`Reynaldo C. Barceló
`BARCELÓ, HARRISON & WALKER LLP
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`For PATENT OWNER:
`Robert Becker
`Ehab Samuel
`Yasser El-Gamal
`MANATT, PHELPS & PHILLIPS, LLP
`RBecker@manatt.com
`ESamuel-PTAB@manatt.com
`YElGamal@manatt.com
`
`7
`
`
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