DCT
2:17-cv-01182
Ironburg Inventions Ltd
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ironburg Inventions Ltd. (United Kingdom)
- Defendant: Valve Corporation (Washington)
- Plaintiff’s Counsel: Manatt, Phelps & Phillips, LLP; Parks IP Law LLC
- Case Identification: 1:15-cv-04219, N.D. Ga., 05/16/2016
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant committing acts of infringement within the Northern District of Georgia.
- Core Dispute: Plaintiff alleges that Defendant’s Steam Controller infringes three patents related to the ergonomic design of handheld video game controllers, specifically concerning the placement and function of additional controls on the rear of the device.
- Technical Context: The technology addresses a desire for advanced control schemes in video gaming, allowing players to perform complex actions without removing their thumbs from primary movement and aiming sticks.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement, including specific claims of the '525 Patent, as early as March 2014. Plaintiff also notes it has licensed the patents-in-suit to third parties, including Microsoft Corporation. Subsequent to the filing of this complaint, two of the patents-in-suit underwent Inter Partes Review (IPR). The IPR for the '525 Patent resulted in the cancellation of asserted independent claims 1 and 20, while asserted dependent claims 2, 7, and 15 survived. The IPR for the '770 Patent resulted in the cancellation of all asserted claims (1, 3, 4-6, and 7-9). These post-filing developments may significantly narrow the scope of the dispute.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-17 | Priority Date for '525 and '770 Patents |
| 2014-02-04 | Issue Date for U.S. Patent No. 8,641,525 |
| 2014-03-07 | Alleged pre-suit notice to Valve from Ironburg (at least as early as) |
| 2014-03-XX | Defendant allegedly began marketing the Steam Controller (at least since) |
| 2014-04-14 | Priority Date for '688 Patent |
| 2015-07-28 | Issue Date for U.S. Patent No. 9,089,770 |
| 2016-03-22 | Issue Date for U.S. Patent No. 9,289,688 |
| 2016-04-22 | IPR filed against '525 Patent (IPR2016-00948) |
| 2016-04-22 | IPR filed against '770 Patent (IPR2016-00949) |
| 2016-05-16 | Complaint Filing Date |
| 2020-01-28 | IPR Certificate Issued for '770 Patent (cancelling asserted claims) |
| 2020-01-30 | IPR Certificate Issued for '525 Patent (cancelling asserted independent claims) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,641,525 - "CONTROLLER FOR VIDEO GAME CONSOLE," issued February 4, 2014
The Invention Explained
- Problem Addressed: The patent describes a limitation in conventional game controllers where a user must remove their thumb from an analog stick (often used for aiming or movement) to press face buttons (often used for actions like jumping or shooting), causing a momentary loss of control that can be critical in gameplay (’525 Patent, col. 1:36-42).
- The Patented Solution: The invention adds one or more controls to the back of the controller, positioned to be operated by a user's other fingers, such as the middle fingers, that are otherwise used only for gripping the device (’525 Patent, col. 2:21-28). These back controls, described as "paddle levers," can replicate the functions of the front-mounted buttons, allowing the user to perform actions without removing their thumbs from the analog sticks (’525 Patent, col. 2:30-36; Fig. 3).
- Technical Importance: This design provides a more ergonomic and efficient control scheme, enabling continuous character movement and aiming while simultaneously actuating other game functions.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 20, and dependent claims 2, 7, and 15 (Compl. ¶14). Subsequent to the complaint's filing, claims 1 and 20 were cancelled in an Inter Partes Review proceeding, while claims 2, 7, and 15 were confirmed as patentable (’525 Patent, IPR Certificate, p. 2). The analysis of infringement may therefore focus on the surviving dependent claims.
- Independent Claim 1, upon which the surviving asserted claims depend, recites the following essential elements:
- A hand held controller for a game console comprising an outer case with a front, back, top edge, and bottom edge.
- A front control located on the front of the controller.
- The controller is shaped to be held so a user's thumb is positioned to operate the front control.
- A first and second back control, each located on the back of the controller and including an elongate member that extends substantially the full distance between the top and bottom edge and is inherently resilient and flexible.
- Plaintiff reserves the right to rely on the doctrine of equivalents (Compl. ¶14).
U.S. Patent No. 9,089,770 - "CONTROLLER FOR VIDEO GAME CONSOLE," issued July 28, 2015
The Invention Explained
- Problem Addressed: Like its parent '525 Patent, the '770 Patent addresses the need for a controller that allows simultaneous operation of primary movement/aiming controls and secondary action buttons (’770 Patent, col. 1:36-45).
- The Patented Solution: The invention is a game controller with back-mounted elongate controls. The claims of this patent focus more specifically on the geometry of the controller body and the length of the back controls, requiring that the elongate members extend "at least half of a first distance between the top edge and the bottom edge" of the controller (’770 Patent, col. 6:40-62; Abstract). This specific dimensional requirement is a key feature of the claimed solution.
- Technical Importance: The claimed geometry aims to provide an ergonomic configuration for the back paddles that is accessible to a wide range of user hand sizes.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3, 4-6, and 7-9 (Compl. ¶18). Subsequent to the complaint's filing, all asserted claims (1, 3, 4-6, and 7-9) were cancelled in an Inter Partes Review proceeding (’770 Patent, IPR Certificate, p. 2).
- Independent Claim 1, as asserted in the complaint, recites the following essential elements:
- A video game controller with an outer case comprising a front, back, top and bottom edge, and first and second handles.
- A first back control and a second back control located at the back of the controller, each including an elongate member.
- The first elongate member extends along at least half of a first distance between the top edge and the bottom edge.
- The second elongate member extends along at least half of a second distance between the top edge and the bottom edge.
- Plaintiff reserves the right to rely on the doctrine of equivalents (Compl. ¶18).
U.S. Patent No. 9,289,688 - "GAMES CONTROLLER," issued March 22, 2016
Technology Synopsis
The ’688 Patent describes a game controller with additional back-mounted controls, or actuators. The invention focuses on the specific cross-sectional shape and orientation of the elongate members, claiming a configuration where a surface of the member is "non-parallel" with the outer surface of the controller, creating an ergonomic surface for finger operation (’688 Patent, col. 2:18-31).
Asserted Claims
The complaint asserts "exemplary Claim 1" (Compl. ¶22). The independent claims of the patent are 1 and 30.
Accused Features
The complaint alleges that the Steam Controller includes "at least one additional back control with an elongate member" where the member has surfaces that are non-parallel with the outer surface of the case, operable by the user's middle, ring, or little finger (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
Defendant's "Steam Controller" (Compl. ¶11).
Functionality and Market Context
The complaint describes the Steam Controller as a handheld controller for video games that incorporates the patented technology (Compl. ¶11, 14). The controller features an outer case, front controls, and "two back controls with elongated members" (Compl. ¶14). Pictures annexed as Exhibit D show various angles of the accused Steam Controller, including its front and back surfaces (Compl. ¶14, fn 1). The complaint alleges Defendant is making, using, selling, and marketing the controller in the United States (Compl. ¶11).
IV. Analysis of Infringement Allegations
’525 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A hand held controller for a game console comprising: an outer case comprising a front, a back, a top edge, and a bottom edge... | The complaint alleges the Steam Controller is a handheld controller that includes an outer case. | ¶14 | col. 3:41-43 |
| a front control located on the front of the controller; wherein the controller is shaped to be held in the hand of a user such that the user's thumb is positioned to operate the front control | The complaint alleges the Steam Controller includes a front control and is shaped to be held in a user's hand with the thumb positioned to operate the front control. | ¶14 | col. 3:44-50 |
| a first back control and a second back control, each back control being located on the back of the controller and each back control including an elongate member that extends substantially the full distance between the top edge and the bottom edge and is inherently resilient and flexible | The complaint alleges the Steam Controller includes "two back controls with elongated members" that possess the claimed characteristics. The infringement allegation for this element is stated in a conclusory manner without specific factual support for each limitation. | ¶14 | col. 4:19-25 |
Identified Points of Contention
- Scope Questions: A central question will be the construction of "extends substantially the full distance between the top edge and the bottom edge." The complaint does not provide specific evidence showing how the Steam Controller's back paddles meet this geometric limitation. The dispute may focus on whether the dimensions of the accused paddles fall within a reasonable interpretation of "substantially the full distance."
- Technical Questions: Given the cancellation of Claim 1, the viability of the case for the '525 Patent may depend on proving infringement of the additional limitations in the surviving dependent claims. For example, Claim 7 requires that each elongate member is "mounted within a recess located in the case of the controller." The factual question will be whether the accused Steam Controller has such a recess, an issue not detailed in the complaint's allegations.
’770 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A video game controller, comprising: an outer case comprising... a first handle... and a second handle... | The complaint alleges the Steam Controller is a handheld controller that includes an outer case. | ¶18 | col. 6:41-47 |
| a first back control and a second back control... 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 | The complaint alleges the Steam Controller includes "two back controls with elongated members." | ¶18 | col. 6:48-52 |
| wherein the first elongate member extends along at least half of a first distance between the top edge and the bottom edge... | The complaint alleges in a conclusory manner that the first back control on the Steam Controller meets this dimensional requirement. | ¶18 | col. 6:53-57 |
| wherein the second elongate member extends along at least half of a second distance between the top edge and the bottom edge... | The complaint alleges in a conclusory manner that the second back control on the Steam Controller meets this dimensional requirement. | ¶18 | col. 6:58-62 |
Identified Points of Contention
- Scope Questions: The primary point of contention would have been the interpretation of "extends along at least half of a first distance," including how that "distance" is defined and measured on the accused device.
- Technical Questions: The complaint provides no technical argument or evidence to support its conclusory allegation that the Steam Controller's paddles meet the specific length requirements of Claim 1. However, as all asserted claims of the ’770 Patent have been cancelled post-filing, the infringement analysis for this patent as pleaded is moot.
V. Key Claim Terms for Construction
’525 Patent
- The Term: "extends substantially the full distance between the top edge and the bottom edge" (from cancelled Claim 1, but relevant to understanding the invention's scope).
- Context and Importance: This phrase defines the primary dimensional characteristic of the back paddles. Its construction is critical because infringement will depend on whether the accused paddles are long enough to be considered to span "substantially the full distance" of the controller's rear grip area. Practitioners may focus on this term as its inherent ambiguity likely contributed to the arguments leading to its cancellation in IPR proceedings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the controls as "elongate in shape" and extending "in a direction from the top edge to bottom edge," which may support an interpretation that does not require a precise, near-total span (’525 Patent, col. 4:51-54).
- Evidence for a Narrower Interpretation: The use of the word "full" could be argued to impose a significant constraint, limiting the claim to paddles that cover nearly the entire height of the grip. The patent's figures, particularly Figure 2, depict long paddles that could be used to support a narrower construction (’525 Patent, Fig. 2).
’688 Patent
- The Term: "non-parallel with a portion of the outer surface of the back of the case" (from Claim 1).
- Context and Importance: This term defines the core novel geometric feature of the claimed back control. The infringement analysis for the ’688 Patent will turn on whether the surfaces of the Steam Controller's back paddles are in fact "non-parallel" to the adjacent portion of the controller's case in the manner claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification broadly describes the benefit of this configuration as providing tactile recognition and ergonomic advantages, which could support reading the term on any design that is not perfectly parallel (’688 Patent, col. 8:22-26).
- Evidence for a Narrower Interpretation: The patent provides specific figures (e.g., Fig. 7) showing a distinct angle (α) between the paddle surface and the case surface. A defendant could argue these embodiments limit the term to a specific type or degree of non-parallel orientation that is more than merely incidental (’688 Patent, col. 8:12-16; Fig. 7).
VI. Other Allegations
Indirect Infringement
The prayer for relief seeks an injunction against "inducements of infringement and contributions to infringement" (Compl. p. 11, ¶C). However, the body of the complaint does not plead specific factual allegations to support these theories, such as active instruction to infringe or the sale of a non-staple component for an infringing use.
Willful Infringement
The complaint alleges that Defendant's infringement has been and is willful (Compl. ¶26). The basis for this allegation is pre-suit knowledge, stemming from "written and oral communications with Valve" beginning "at least as early as March 7, 2014," in which Plaintiff allegedly identified the '525 Patent and pending applications (including one that issued as the '770 Patent) as being infringed by the Steam Controller (Compl. ¶12, 26).
VII. Analyst’s Conclusion: Key Questions for the Case
Viability Post-IPR: A threshold issue for the case is how, or if, Plaintiff can proceed given that the foundational independent claims of the '525 Patent and all asserted claims of the '770 Patent have been cancelled by the USPTO. The dispute will likely narrow to whether the accused Steam Controller infringes the specific, additional limitations of the surviving dependent claims of the '525 Patent.
Geometric Infringement: Assuming the case proceeds, a key evidentiary question will be one of geometric conformance: does the physical structure of the Steam Controller's back paddles meet the detailed limitations of the surviving asserted claims, such as being "mounted within a recess" (’525 Patent, Claim 7) or having a specific "non-parallel" surface orientation (’688 Patent, Claim 1)? The complaint's conclusory allegations will need to be supported by detailed factual evidence.
Scope of Pre-Suit Notice: A central question for the willfulness claim will be the substance of the alleged notice: what specific information was conveyed to Valve in the March 2014 communications, and was the infringement risk so "objectively defined" and known that Valve's continued marketing and sale of the Steam Controller constituted egregious conduct?