PTAB

IPR2016-00948

Valve Corp v. Ironburg Inventions Ltd

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: CONTROLLER FOR VIDEO GAME CONSOLE
  • Brief Description: The ’525 patent discloses a handheld video game controller with conventional front-facing controls and additional back-mounted controls. These back controls are described as elongate, resilient paddle levers positioned to be operated by a user’s middle fingers, allowing gameplay without removing thumbs from the front thumbsticks.

3. Grounds for Unpatentability

Ground 1: Anticipation by Tosaki - Claims 1, 6, 13, 14, 16, 17, 19, and 20 are anticipated by Tosaki.

  • Prior Art Relied Upon: Tosaki (Patent 5,989,123).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tosaki, which discloses a steering wheel-style controller for racing games, teaches every limitation of the challenged claims. Tosaki’s controller includes front controls operated by the thumbs and two elongate shift levers (125, 126) on the rear side, operated by the user's other fingers. Petitioner asserted these shift levers meet the claim limitations of "back controls," are "elongate members" that are "inherently resilient and flexible," and extend substantially the full distance between the top and bottom edges of the controller grips. The mapping also covered dependent claims, arguing Tosaki’s levers are positioned for middle finger operation (claim 6), converge towards a front end (claim 13), and actuate an internal switch mechanism (claim 14).

Ground 2: Obviousness over Enright and Tosaki - Claims 1-11, 13, 16, 17, and 20 are obvious over Enright in view of Tosaki.

  • Prior Art Relied Upon: Enright (Application # 2010/0073283) and Tosaki (Patent 5,989,123).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Enright discloses a modern handheld game controller with all the basic features of the ’525 patent, including a housing, front controls, and two back-mounted "mode switches" (32, 34) operated by the user's fingers. The primary difference alleged was that Enright's back controls do not extend "substantially the full distance" between the top and bottom edges. Petitioner argued that Tosaki remedies this deficiency by teaching elongate, paddle-like back controls that do extend this distance.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Enright and Tosaki because both address the same problem: allowing a user to operate controls without moving their thumbs from the front thumbsticks. A POSITA looking to improve the ergonomics or finger placement options of Enright’s back switches would have looked to known controller designs like Tosaki and found its elongate lever geometry to be an obvious, advantageous alternative.
    • Expectation of Success: A POSITA would have had a high expectation of success in applying Tosaki's elongate lever design to Enright's controller, as it involved a simple substitution of one known type of electrical switch actuator for another in a predictable art.

Ground 3: Obviousness over Tosaki and Jimakos - Claims 2, 4, 5, 7, 8, 12, 14-16, and 19 are obvious over Tosaki in view of Jimakos.

  • Prior Art Relied Upon: Tosaki (Patent 5,989,123) and Jimakos (a 2008 internet forum tutorial titled "Rapid Fire Mod for Wireless Xbox 360 Controller").

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground primarily addressed dependent claims related to features common in modern controllers but not explicitly detailed in Tosaki’s steering wheel design. Petitioner used Tosaki as the primary reference disclosing the core invention of elongate back controls. Jimakos, which provides a step-by-step guide for modifying a standard Xbox 360 controller, was used to show that features like top-edge controls (triggers/bumpers), recessed mounting of back buttons, and specific perpendicular orientations between surfaces were well-known and conventional. For example, Jimakos’s photos illustrated how added back buttons are mounted in a recessed area of the controller's rear case.
    • Motivation to Combine: A POSITA would combine Tosaki and Jimakos because they both relate to improving game controllers. A designer starting with Tosaki’s concept would naturally look to conventional controllers, like the one modified in the Jimakos tutorial, for implementing standard features such as top-edge controls or for guidance on physically integrating new buttons into an existing controller shell. Jimakos provided a practical, publicly available example of these common design choices.
    • Expectation of Success: The combination was argued to be straightforward, as it involved applying conventional and well-documented controller features and modification techniques to the base design taught by Tosaki.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Enright, Tosaki, and Ono (Application # 2001/0025778) to teach specific switch mechanism details for claims 14, 15, and 19; and combining Enright, Tosaki, and Oelsch (Patent 4,032,728) to teach forming the back control as an integral part of the outer case for claim 18.

4. Key Claim Construction Positions

  • "paddle lever," "elongate member," and "thickness": Petitioner argued that the ’525 patent fails to provide adequate structural definitions for these key terms, rendering them vague. The patent illustrates the "paddle levers" as simple ovals without detail. Lacking specific definitions, Petitioner contended these terms should be construed broadly to encompass any control that is longer than it is wide, such as the shift levers in Tosaki or the mode switches in Enright. The term "thickness" was argued to be ambiguous as it is used in the claims but not identified in any figure.
  • Directional Terms ("back," "top," "bottom"): Petitioner highlighted that the ’525 patent specification explicitly disclaims any specific orientation for directional terms, stating they "merely serve to distinguish these features from one another." Petitioner argued this broadens the scope of the claims, allowing any opposing surfaces of a controller to be designated "front" and "back," which supports the application of prior art like the Tosaki steering wheel.
  • "inherently resilient and flexible": The patent defines "inherently resilient" as returning to an unbiased position when not under load. Petitioner argued that, given the lack of a clear definition for "flexible," the combined phrase should mean that the member can be moved by a user's finger and will return to its original position afterward—a basic function of any spring-loaded button or switch common in the prior art.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of all challenged claims, 1-20, of the ’525 patent as unpatentable.