PTAB

IPR2017-00858

Valve Corp v. Ironburg Inventions Ltd

Key Events

Petition

petition

Title: GAMES CONTROLLER
Brief Description: The ’688 patent discloses a handheld video game controller featuring standard controls on its front and top surfaces, and at least one additional control located on the back of the controller case. This additional control is described as an elongate member, or paddle, positioned to be operated by a user's middle, ring, or little finger.

Prior Art Relied Upon: Uy (Application # 2015/0238855).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Uy, which was of record but not substantively applied during prosecution, discloses every limitation of the challenged claims. Uy teaches a game controller with a case, front/top controls, and rear-mounted additional controls operable by a user’s middle, ring, or little finger. Petitioner asserted that Uy’s rear controls are “elongate members” that are displaceable to activate a function. Specifically, Uy’s rear controls were shown to have a first surface proximate to the controller case and an opposing second surface that is curved and arranged to be non-parallel with a portion of the case to which it is mounted, directly mapping to the limitations of independent claims 1 and 30. Petitioner further mapped Uy’s disclosure to dependent claims, including features like a triangular cross-section, disposition within a channel for lateral support, and operation as a paddle lever.

Prior Art Relied Upon: Burns ("Review: Scuf Xbox 360 Controller," a 2010 publication) and LaCelle (Design Patent 419,985).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Burns discloses a handheld game controller with standard front controls and rear-mounted paddle levers (elongate members) for operation by fingers other than the thumbs. Burns’s paddles were argued to meet most limitations of claim 1, including being displaceable and having opposing surfaces. Petitioner argued that LaCelle, which also discloses a game controller with rear-mounted controls, teaches an alternative geometry where the outer surface of the rear controls is curved. The combination of Burns's paddle levers with LaCelle's curved outer surface geometry was alleged to render the claimed invention obvious.
- Motivation to Combine: A POSITA would combine Burns and LaCelle to improve the ergonomics and functionality of the rear controls. Petitioner argued that applying the known curved button shape from LaCelle to the distal ends of the Burns paddles represented a simple design choice to provide an alternative rear control geometry.
- Expectation of Success: The proposed modification was described as a simple and predictable substitution of one known button shape for another in the established field of game controller design. A POSITA would have expected the combination to be readily practical and successful, yielding predictable results.

Prior Art Relied Upon: Butler ("Razer Sabertooth Review," a 2013 publication).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that the Razer Sabertooth controller, as disclosed in the Butler review, anticipates the challenged claims. Butler describes and depicts a controller with a case, front/top controls, and two additional, removable rocker paddles on the back. These rockers were argued to be "elongate members" with a first surface (underside) proximate to the controller base and a conspicuously curved second surface opposing the first. Petitioner argued this configuration meets the "non-parallel" limitation of claims 1 and 30. Butler was also cited for disclosing that the rockers are separate components, fit into channels in the case, and are resilient and flexible enough to be displaced to activate a control function, mapping to various dependent claims.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Bellinghausen (Design Patent 711,881) and Burns, as well as Burns and Knight (Design Patent 502,468), which relied on similar teachings for combining known rear-mounted controller paddles with alternative ergonomic shapes.

Directional References ("top," "back," etc.): Petitioner argued that the ’688 patent specification explicitly disclaims narrow orientational interpretations for directional terms. The specification states these terms "merely serve to distinguish these features from one another," meaning any side of the controller could be considered the "back" as long as other claim limitations are met.
"elongate member": Based on its plain meaning and the patent's embodiments, Petitioner proposed this term be construed as "a distinct slender object having a length that is much greater than a maximum width between its side edges."
"vertical": In the context of the specification, Petitioner argued "vertical" refers to a direction "perpendicular" or "normal to the outer surface of the controller case," rather than a strict gravitational orientation.

Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 9-10, 18-22, and 26-30 of the ’688 patent as unpatentable.