PTAB

IPR2016-00949

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 ’770 patent discloses a video game controller that is substantially similar to conventional controllers but adds two paddle-like levers on the back. These levers are positioned to be operated by a user's middle fingers, allowing the user to perform game functions without removing their thumbs from the front-mounted thumbsticks.

3. Grounds for Unpatentability

Ground 1: Anticipation over Tosaki - Claims 1, 3-12, 15-17, and 19-20 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 video game controller, teaches every element of the challenged claims. Tosaki’s controller includes an outer case with a front, back, top/bottom edges, and handles, as required by independent claim 1. Critically, Tosaki discloses two rear-mounted "gearshift levers" (125, 126) that function as back controls. Petitioner asserted these levers are "elongate members" that extend along at least half the distance between the top and bottom edges of the controller, thereby meeting the core limitations of claim 1. Petitioner provided detailed mappings with annotated figures to show how Tosaki’s structure, including the shape and placement of its handles and the converging orientation of the rear levers, anticipates the limitations of the dependent claims as well.

Ground 2: Obviousness over Tosaki in view of Jimakos - Claims 6-7, 9-10, and 12-19 are obvious over Tosaki in view of Jimakos.

  • Prior Art Relied Upon: Tosaki (Patent 5,989,123) and Jimakos (a 2008 internet forum tutorial on modifying an Xbox 360 controller).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the teachings of Tosaki as the base controller with rear-mounted, elongate paddles. The challenged dependent claims add limitations requiring a "recessed portion" on the back of the controller between the handles. Petitioner argued that while Tosaki discloses the fundamental controller, Jimakos explicitly teaches the modification of a standard Xbox 360 controller, which inherently includes a recessed portion on its back between the handles where a battery pack is housed. Jimakos further shows the addition of custom back controls adjacent to this recessed area.
    • Motivation to Combine: A POSITA would combine Tosaki and Jimakos because Tosaki teaches a game controller with rear controls, and Jimakos teaches methods for modifying and improving such controllers. The thriving "modding" community, represented by Jimakos, was constantly seeking to improve controller ergonomics and functionality, making the combination of known features a routine design choice.
    • Expectation of Success: The combination would have been a straightforward integration of known elements. Jimakos provided a detailed tutorial for modifying a popular controller, demonstrating the predictability and feasibility of adding custom controls to a controller body that already possessed the handle and recessed-back geometry recited in the claims.

Ground 3: Obviousness over Enright in view of Tosaki - Claims 1-12 and 14-20 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: Enright discloses a video game controller with two elongated mode switches on its underside, expressly designed to solve the same problem as the ’770 patent: allowing operation without removing thumbs from the front controls. Petitioner contended Enright discloses all elements of claim 1 except, potentially, that its back controls do not explicitly extend "along at least half of a first distance between the top edge and the bottom edge." Tosaki was introduced to supply this teaching, as its rear shift levers are longer and meet this dimensional limitation.
    • Motivation to Combine: A POSITA would combine Enright and Tosaki to optimize the design of Enright’s controller. Since both references address rear-mounted controls for ergonomic benefit, a designer looking at Enright would naturally look to other known rear-control configurations, such as the longer levers in Tosaki, to improve finger placement options and ease of use. Enright itself suggests that its controls can be located "if ergonomically desired," providing a clear motivation to modify their length and position based on known, successful alternatives like Tosaki.
    • Expectation of Success: Adjusting the length of a control lever is a simple mechanical design choice within the skill of a POSITA. The combination involved applying a known control length (from Tosaki) to a similar controller (Enright) to achieve a predictable improvement in ergonomics, carrying a high expectation of success.
  • Additional Grounds: Petitioner asserted that claim 13 is obvious over Enright in view of Tosaki and further in view of Ono (Application # 2001/0025778), with Ono providing specific teachings for a switch mechanism disposed between an elongate member and the outer surface of the controller back.

4. Key Claim Construction Positions

  • Unsupported Terms: Petitioner argued that several key claim terms—including "longitudinal," "medial portion," "recessed portion," and "transition edge"—are not described or shown anywhere in the ’770 patent’s specification or drawings. Petitioner contended this lack of support under 35 U.S.C. §112 prevents these claims from receiving the benefit of the parent patent’s filing date and requires them to be construed based only on the claim language and extrinsic evidence.
  • "Elongate Member": Petitioner argued this term should be construed simply as a member that is longer along its longitudinal axis than it is wide. This construction is supported by the claim’s own language, which requires measuring a distance along a "longitudinal axis" of the member.
  • "Paddle Lever": Petitioner asserted that the specification fails to provide a structural distinction between a "paddle lever" and any other type of button, trigger, or control member. Therefore, a POSITA would interpret the term broadly to include prior art buttons and triggers that perform a levering action.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’770 patent as unpatentable.