PTAB

IPR2017-01928

Valve Corp v. Ironburg Inventions Ltd

Key Events

Petition

petition

Case #: IPR2017-01691 (Filing date used as a proxy; trial number was not yet assigned)
Patent #: 9,352,229
Filed: 2017-07-07
Petitioner(s): Valve Corporation
Patent Owner(s): Ironburg Inventions Ltd.
Challenged Claims: 1-24

Title: CONTROLLER FOR A GAMES CONSOLE
Brief Description: The ’229 patent discloses a handheld controller for a gaming console featuring additional controls located on the back of the controller's outer casing. These back controls are described as elongate, resilient, and flexible members, such as paddles, positioned to be operable by a user's middle fingers, distinct from the standard controls on the front and top of the device.

Prior Art Relied Upon: Uy (Application # 2015/0238855).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Uy discloses every element of the challenged claims. Specifically, Uy teaches a handheld game controller with an outer case shaped to be held in both hands, with controls on the front and top for thumbs and index fingers. Crucially, Uy also discloses at least one additional control on the back of the case, operable by a user's middle finger. This additional control is an elongate member (lever) that is inherently resilient and flexible (via a biasing spring), and is at least partially disposed within a channel on the back of the outer case, as required by independent claims 1 and 24. Petitioner further mapped Uy’s disclosure of features like multiple, detachable, and angled back controls to the various dependent claims.

Prior Art Relied Upon: Burns (a 2010 article titled "Review: Scuf Xbox 360 Controller") in view of Uy (Application # 2015/0238855).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Burns discloses a handheld game controller with all the features of the independent claims except for the back paddles being located within a channel. Burns teaches a controller with two polycarbonate paddles screwed and bonded to the back, operable by the user's middle fingers. Uy was cited for its teaching of disposing similar back control levers within respective channels or recesses on the controller housing.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because both references address hand-held game controllers with rear controls. A POSITA would have recognized that the channels taught by Uy could be used with the paddles of Burns to reduce undesired lateral movement or yawing, which is a known issue with externally mounted paddles.
- Expectation of Success: The combination was presented as a simple and predictable integration of known mechanical elements in the well-established and predictable art of game controller design, with no unexpected results.

Prior Art Relied Upon: Burns (the 2010 article) in view of AlphaGrip (a 2006 article titled "AlphaGrip AG-5 handheld keyboard and mouse").
Core Argument for this Ground:
- Prior Art Mapping: This ground is similar to Ground 2, using Burns as the primary reference for the base controller with back paddles. However, it substitutes AlphaGrip for Uy as the secondary reference. Petitioner argued that AlphaGrip, a handheld controller with numerous back-side buttons, teaches disposing elongate back controls within respective channels on the back of the outer case.
- Motivation to Combine: A POSITA would combine Burns and AlphaGrip for several reasons: (1) to add more back controls to the Burns design for increased functionality, as shown by AlphaGrip; (2) to reduce paddle yawing by incorporating the channels from AlphaGrip; and (3) to make the back controls detachable for maintenance or customization, an option recognized in the art.
- Expectation of Success: As both references are in the field of handheld input devices, a POSITA would have found the combination straightforward and expected it to be successful.

Prior Art Relied Upon: Uy (Application # 2015/0238855) in view of Tosaki (Patent 5,989,123).
Core Argument for this Ground:
- Prior Art Mapping: This ground targets dependent claims that add limitations for a "cover portion forming a conduit enclosing the elongate member" and a "complementary locking mechanism." Petitioner asserted that Uy provides the base controller with back levers in channels, as established in Ground 1. Tosaki was cited for its disclosure of a controller with elongate shift levers that pivot within a conduit formed by a cover portion, which also includes a complementary locking mechanism (barb and recess) to secure the lever.
- Motivation to Combine: A POSITA reviewing Uy's design would be motivated to incorporate Tosaki's conduit and locking features to better secure the pivot portion of Uy's elongate levers. This would provide a more robust and protected assembly.
- Expectation of Success: Combining these known mechanical securing features from Tosaki with the controller of Uy was argued to be a predictable design choice with a high expectation of success.

"directional references" (e.g., 'back', 'top'): Petitioner argued that the ’229 patent’s specification acts as its own lexicographer, stating that such terms "do not limit the respective features to such orientation, but merely serve to distinguish these features from one another." This broadens the terms beyond a fixed, conventional orientation.
"elongate member": Petitioner proposed that the broadest reasonable interpretation is "a distinct slender object having a length that is greater than a maximum width between its side edges." This was based on the term's ordinary meaning and the consistent depiction in the patent's embodiments.
"inherently resilient and flexible": Petitioner contended this phrase is functionally defined by the patent's claims and specification to mean that the member can be displaced by a user to activate a control and subsequently returns to an unbiased position when unloaded. It was argued that this does not require the member to be a single, monolithic piece and can include an assembly of subcomponents (e.g., a rigid lever with a separate spring).

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-24 of Patent 9,352,229 as unpatentable under 35 U.S.C. §102 and §103.