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Ironburg Inventions Ltd. v. Valve Corp.

United States District Court, W.D. Washington, Seattle

June 7, 2018

IRONBURG INVENTIONS LTD., Plaintiff,
v.
VALVE CORPORATION, Defendant.

          ORDER

          Thomas S. Zilly, United States District Judge

         THIS MATTER comes before the Court to construe certain claim terms in United States Patent Nos. 8, 641, 525 (the “'525 Patent”) and 9, 089, 770 (the “'770 Patent), pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Before this action was transferred from the Northern District of Georgia, the parties submitted a Joint Claim Construction Statement, docket no. 64, attached to which was a list of eighteen disputed claim terms. Ex. 1 (docket no. 64-1). The last nine of those eighteen terms relate to United States Patent Nos. 9, 289, 688 and 9, 352, 229, as to which the Court has stayed plaintiff's infringement claims. See Minute Order at ¶ 2(b) (docket no. 148). With regard to the first, third, and fourth disputed claim terms, namely (1) directional references (i.e., top, bottom, front, back, end, side, inner, outer, upper, lower), (3) “inherently resilient and flexible, ” and (4) “substantially the full distance between the top edge and the bottom edge, ” the Court previously adopted the Patent Trial and Appeal Board's interpretations. Minute Order at ¶ 1 (docket no. 153). The fifth disputed claim term, i.e., (5) “the front end, ” was stricken from the parties' joint claim chart and will not be construed by the Court. See id. at ¶ 2.

         Defendant Valve Corporation (“Valve”) contends that the second, fourth, sixth, seventh, and eighth disputed claim terms are indefinite. In adopting the Patent Trial and Appeal Board's interpretation of the fourth disputed claim term, the Court reserved ruling on whether the term is indefinite. See id. at ¶ 1. The second and sixth disputed claim terms are duplicative, both involving (2)/(6) “elongate member, ” which appears in each patent at issue. Valve has offered a construction of “elongate member” in the event that the Court does not find the term indefinite. With regard to the seventh and eighth disputed claim terms, namely (7) “a first/second distance between the top edge and the bottom edge” and (8) “substantially all of the first/second distance, ” the parties have agreed that, if the Court concludes such claim terms are not indefinite, the Court need not further construe such claim terms.

         The Court is asked, however, to construe the ninth disputed claim term, which is (9) “the medial portion is closer to the top edge than a distal end of each of the first handle and the second handle.” See Tr. (Jan. 5, 2018) at 19-22 (docket no. 157). As a result, the Court will first consider whether disputed claim terms (2)/(6), (4), (7), and (8) are indefinite, and regardless of how it rules on that question, the Court will then address the parties' request that disputed claim term (9) be construed. The other disputed claim term that might require interpretation is (2)/(6) “elongate member, ” but only if it is not deemed indefinite. Having reviewed the parties' supplemental briefs and other relevant filings, the Court now enters the following order.

         Background

         Both the '525 Patent and the '770 Patent disclose an "improved controller for a game console that is intended to be held by a user in both hands in the same manner as a conventional controller, " but which has "two additional controls located on the back in positions to be operated by the middle fingers of a user." '525 Patent & '770 Patent at Abstract. With one exception, the disputed claim terms involve limitations related to the rear controls, which are described in the specification as "paddles 11" and in the claims as including an "elongate member." See id at Col. 3, Line 51; '525 Patent at Col. 4, Line 52; '770 Patent at Col. 4, Lines 50-52. The '525 Patent requires that each "elongate member" extend "substantially the full distance between the top edge and the bottom edge" of the outer case of the hand held controller. '525 Patent at Col. 4, Lines 53-54. In contrast, the '770 Patent describes each "elongate member" independently, with the "first elongate member" extending "at least half of a first distance between the top edge and the bottom edge" and the "second elongate member" extending "at least half of a second distance between the top edge and the bottom edge" of the outer case of the video game controller. '770 Patent at Col. 4, Lines 53-59. Both patents contain the following illustration:

         (Image Omitted)

         '525 Patent & '770 Patent at Fig. 3. In a separate, dependent claim, the '770 Patent states that the first elongate member must extend "along substantially all of the first distance, " while the second elongate member must extend “along substantially all of the second distance.” '770 Patent at Col. 4, Lines 61-64 (Claim 2). In a different dependent claim, the '770 Patent specifies that the “medial portion” between the first convex portion of the bottom edge of the video game controller, which defines the first handle, and the second convex portion of the bottom edge of the video game controller, which defines the second handle, must be “closer to the top edge than a distal end of each of the first handle and the second handle.” Id. at Col. 5, Lines 8-10 (Claim 5); see also Col. 4, Line 65 - Col. 5, Line 3 (Claim 3 on which Claim 5 depends). This limitation concerning the “medial portion” is the only disputed claim term that does not involve the controls (or paddles or elongate members) on the back of the device.

         Discussion

         A. Indefiniteness[1]

         A patent is presumed valid. 35 U.S.C. § 282(a). Such presumption may be overcome on the ground of indefiniteness only if a patent's “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). An invalidity defense must be proven by “clear and convincing evidence.” Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). The Court concludes that Valve has not carried its burden of showing that disputed claim terms (2)/(6) “elongate member, ” (4) “substantially the full distance between the top edge and the bottom edge, ” (7) “a first/second distance between the top edge and the bottom edge, ” and (8) “substantially all of the first/second distance” are indefinite. The disputed claim terms contain words of degree (“elongate, ” “between, ” and “substantially”) that provide a sufficient standard of measurement.

         As observed by the Federal Circuit, claim language “employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015). The certainty that the law requires in patents is not greater than is reasonable and, in evaluating a claim for indefiniteness, the Court must take into account the inherent limitations of language, as well as the “modicum of uncertainty” that is the “price of ensuring the appropriate incentives for innovation.” See id. at 1378-79 (quoting Nautilus, 134 S.Ct. at 2128). A patent must merely be “precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of what is still open to them.'” Id. at 1378 (quoting Nautilus, 134 S.Ct. at 2129 (alteration in original) (quoting Markman, 517 U.S. at 373)).

         In Biosig, on remand from the Supreme Court, the Federal Circuit held that the term “spaced relationship” was not indefinite. The patent at issue was for a heart rate monitor that included (coincidentally) an “elongate member” with a first and second half; each half contained a live electrode and a common electrode in “spaced relationship” with each other. 783 F.3d at 1376. The Federal Circuit reiterated its earlier analysis that an ordinarily skilled artisan would understand the claim language to require “the spaced relationship to be neither infinitesimally small nor greater than the width of a user's hands.” Id. at 1382. The Biosig Court reasoned that the distance between the electrodes could not exceed the width of a user's hands because the patent claim required the electrodes to “independently detect electrical signals at two distinct points of a hand, ” and that an infinitesimally small distance between the electrodes was infeasible because it would effectively merge the electrodes into one detection point. See id. at 1383 (quoting Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 899 (Fed. Cir. 2013), vacated, 134 S.Ct. 2120 (2014)). As a result, the Federal Circuit concluded that a skilled artisan “would understand the inherent parameters of the invention as provided in the intrinsic evidence.” Id. at 1384.

         1. Elongate Member

         Biosig undermines Valve's contention that disputed claim term (2)/(6) “elongate member” is indefinite. Biosig is not the only decision of the Federal Circuit involving claim language that included the phrase “elongate member”[2] or the term “elongate” to modify another noun, for example, guard panel, stem, tube, or base portion.[3] Despite the prevalence of the word “elongate” in patents spanning a variety of industries, Valve has cited no case in which the Federal Circuit has found the term “elongate, ” when used as an adjective, to be indefinite. Rather, in at least one (albeit unpublished) decision, the Federal Circuit has construed “elongate” consistently with its dictionary meaning as referring to “a structure ‘having a ...


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