United States District Court, W.D. Washington, Seattle
S. Zilly, United States District Judge.
MATTER comes before the Court on (i) plaintiff's motion
regarding inter partes review estoppel, docket no. 260, and
(ii) plaintiff's motion for partial summary judgment
concerning inequitable conduct, docket no. 258. Having
reviewed all papers filed in support of, and in opposition
to, the motions, the Court enters the following order.
Ironburg Inventions Ltd. (“Ironburg”), a limited
company based in the United Kingdom, and defendant Valve
Corporation (“Valve”), a Washington corporation,
compete in the video-game controller market. See
Order at 1 (docket no. 116). Ironburg licenses its patents to
Scuf Gaming International, LLC and Microsoft Corporation. 2d
Am. Compl. at ¶ 11 (docket no. 44). Valve produces a
device known as the “Steam Controller.”
Id. at ¶ 12. Ironburg alleges that Valve's
Steam Controller infringes four patents, namely United States
Patent No. 8, 641, 525 (the “'525 Patent”),
United States Patent No. 9, 089, 770 (the “'770
Patent”), United States Patent No. 9, 289, 688 (the
“'688 Patent”), and United States Patent No.
9, 352, 229 (the “'229 Patent”). Id.
at Counts I-IV. In light of related matters pending before
the United States Patent and Trademark Office
(“PTO”) Patent Trial and Appeal Board
(“PTAB”), Ironburg's claims concerning the
'688 and '229 Patents have been stayed. See
Minute Order at ¶ 2(b) (docket no. 148). The pending
motions and this Order relate to the '525 and '770
Patents (the “patents-in-suit”).
litigation commenced in the Northern District of Georgia in
December 2015.See Compl. (docket no. 1). Sometime
thereafter, Valve requested inter partes review
(“IPR”) by the PTAB of all twenty claims in the
'525 Patent and all twenty claims in the '770 Patent.
See Exs. C & D to Becker Decl. (docket nos.
262-3 & 262-4). The PTAB instituted inter partes review
on most, but not all, of the grounds set forth in Valve's
IPR petitions. See Exs. E & F to Becker Decl.
(docket nos. 262-5 & 262-6). In September 2017, the PTAB
issued its final written decisions in the related IPR
proceedings. Exs. K & L to Becker Decl. (docket nos.
262-11 & 262-12). In July 2019, the United States Court
of Appeals for the Federal Circuit affirmed the PTAB's
rulings. Ex. A to Joint Status Report (docket no. 302-1).
Ironburg and Valve dispute the extent to which the PTAB's
conclusions preclude Valve from challenging the validity of
the patent claims remaining in this matter.
September 2016, when the PTAB instituted the IPR proceedings
at issue, the United States Supreme Court had not yet decided
SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348 (2018),
which invalidated the PTAB's former practice of
instituting inter partes review as to less than all of the
claims in the IPR petition. Consistent with its earlier
protocol, the PTAB instituted inter partes review concerning
the '525 and '770 Patents with regard to less than
all of the claims and less than all of the prior art
references cited in Valve's IPR petition. The following
table summarizes the claims and prior art references as to
which the related IPR proceedings, IPR2016-00948 and
IPR2016-00949, were instituted.
Table 1: Grounds Addressed in IPR
Prior Art References
â525 Patent IPR2016-00948
1, 6, 13, 14, 16, 17, 19, and 20
1-11, 13, 16, 17, and 20
Enright  and Tosaki
Enright, Tosaki, and Oelsch 
â770 Patent IPR2016-00949
1, 3-12, 15-17, 19, and 20
1-12 and 14-20
Enright and Tosaki
See Exs. E & F to Becker Decl. (docket nos.
262-5 & 262-6).
IPR2016-00948, the PTAB concluded that Claims 1, 6, 13, 14,
16, 17, 19, and 20 of the '525 Patent were anticipated by
Tosaki and that Claim 20 of the '525 Patent was obvious
over Enright and Tosaki. Ex. K to Becker Decl. (docket no.
262-11). In IPR2016-00949, the PTAB determined that Claims 1,
3-12, 15-17, 19, and 20 of the '770 Patent were
anticipated by Tosaki and that Claims 1-12, 15-18, and 20 of
the '770 Patent were obvious over Enright. Ex. L to
Becker Decl. (docket no. 262-12). The PTAB rejected
Valve's other invalidity contentions, including its
reliance on Oelsch in combination with Enright and Tosaki.
See Exs. K & L to Becker Decl. The claims
surviving inter partes review and still pending in this
matter are Claims 2-5, 7-12, 15, and 18 of the '525
Patent and Claims 13 and 14 of the '770 Patent, all of
which are dependent claims.
regard to these remaining patent claims, Valve had sought
inter partes review in reliance on the following prior art
Table 2: Grounds Rejected by PTAB
Prior Art References
Enright, Tosaki, and Ono
2, 4, 5, 7, 8, 12, and 15
Tosaki and Jimakos
Enright, Tosaki, and Ono
13 and 14
Tosaki and Jimakos
See Exs. C and D to Becker Decl. (docket nos. 262-3
& 262-4). The PTAB concluded, however, that Valve had not
demonstrated a “reasonable likelihood” of
prevailing on its contentions that the claims listed in Table
2 are unpatentable as obvious over the prior art references
identified. See Exs. E and F to Becker Decl. (docket
nos. 262-5 & 262-6). In defending against the
infringement allegations in this litigation, Valve continues
to rely on the combinations of (i) Enright, Tosaki, and Ono,
and (ii) Tosaki and Jimakos (collectively, the
“non-instituted grounds”) to challenge the
validity of most of the remaining patent claims.
also asserts that the following prior art references, which
were not raised in the IPR proceedings (collectively, the
“non-petitioned grounds”), render most of the
remaining patent claims obvious:
Table 3: Grounds Not Raised in IPR
Prior Art References
2-3, 5, 9-11, and 18
2, 4, 5, and 7-11
Willner, Koji, and
13 and 14
Willner and Koji
Def.'s Resp. at 1 (docket no. 276). In its motion
regarding IPR estoppel, Ironburg contends that Valve should
be estopped from pursuing invalidity defenses on the grounds
set forth in Tables 2 and 3, the non-instituted grounds and
the non-petitioned grounds, respectively.
Accusation of Inequitable Conduct
separate motion for partial summary judgment, Ironburg seeks
to prevent Valve from asserting inequitable conduct as an
affirmative defense or counterclaim. In answering
Ironburg's Second Amended Complaint, docket no. 44, Valve
alleged that, during the prosecution of the '525 and
'770 Patents, Ironburg failed to disclose a prior art
reference, namely website posts titled “Rapid Fire Mod
for Wireless Xbox 360 Controller, Step by Step Tutorial with
Pictures, ” which Valve has denominated as the
“Mod document, ” but which the PTAB abbreviated
as “Jimakos” in connection with Valve's IPR
petitions. See Def.'s Answer, Affirmative
Defenses & Counterclaims at ¶¶ 59-98 (docket
no. 49); see also Exs. E (at 17 n.5) & F (at 11
n.3) to Becker Decl. (docket nos. 262-5 & 262-6).
fifth affirmative defense and ninth (declaratory judgment)
counterclaim rely solely on Jimakos (or the Mod document) as
a basis to deem the '525 and '770 Patents
unenforceable as a result of inequitable conduct committed
before the PTO during the patent application
process. In moving to strike the affirmative
defense and dismiss the counterclaim, Ironburg contends that
Jimakos does not have the requisite “materiality”
to support a finding of inequitable conduct, citing the
PTAB's refusal to institute inter partes review as to the
combination of Tosaki and Jimakos. Ironburg also asserts that
Jimakos was, in fact, disclosed to the patent examiner.
Inter Partes Review Estoppel
Supreme Court's decision in SAS significantly altered the
jurisprudential landscape with regard to IPR estoppel. Prior
to SAS, in interpreting the relevant provision of the
Leahy-Smith America Invents Act,  the Federal Circuit held
that, when the PTAB instituted IPR proceedings on some, but
not all, grounds set forth in an IPR petition, estoppel did
not attach to the grounds on which the PTAB declined to
institute inter partes review. See Shaw Indus. Grp., Inc.
v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed.
Cir. 2016). Since SAS was issued, other district courts have
addressed the continued viability of Shaw in two contexts,
namely with respect to (i) “non-instituted”
grounds, i.e., grounds contained in the IPR petition that did
not survive the PTAB's former triage process, and (ii)
“non-petitioned” grounds, i.e., grounds not
raised in the IPR petition. See Trustees of Columbia
Univ. v. Symantec Corp., 390 F.Supp.3d 665 (E.D. Va.
2019) (involving only non-petitioned grounds); Palomar
Techs., Inc. v. MRSI Sys., LLC, 373 F.Supp.3d 322 (D.
Mass. 2019) (involving non-petitioned grounds); Am. Tech.
Ceramics Corp. v. Presidio Components, Inc., 2019 WL
365709 (E.D.N.Y. Jan. 30, 2019) (involving non-petitioned
grounds); Cal. Inst. of Tech. v. Broadcom Ltd., 2018
WL 7456042 (C.D. Cal. Dec. 28, 2018) (involving both
non-instituted and non-petitioned grounds); SiOnyx, LLC
v. Hamamatsu Photonics K.K., 330 F.Supp.3d 574 (D. Mass.
2018) (involving both non-instituted and non-petitioned
matter, Valve asserts that the remaining claims of the
patents-in-suit are invalid on the basis of non-instituted
and/or non-petitioned grounds. With regard to the
non-instituted grounds, Ironburg seeks to preclude Valve from
relitigating the PTAB's decision that such invalidity
defenses lack merit. As to the non-petitioned grounds,
Ironburg argues that Valve should be estopped from raising
such challenges in this litigation because it could have but
failed to do so in the prior IPR proceedings. The Court
agrees with Ironburg with respect to both categories of
on Ironburg's motion for IPR estoppel with respect to
non-instituted grounds, the Court must analyze the legal
effect of the PTAB's pre-SAS institution of IPR
proceedings on some, but not all, grounds stated in the IPR
petition. In SiOnyx, a case with a procedural
posture similar to the one here, the district court concluded
that § 315(e)(2) estoppel applied to the non-instituted
grounds. See 330 F.Supp.3d at 601. Like Valve in
this case, the IPR petitioner in SiOnyx, Hamamatsu
Corporation, had the opportunity to but did not request any
SAS-based relief. See Id. at 601 & n.18;
see also Google LLC v. Lee, 759 Fed.
App'x 998 (Fed. Cir. 2019) (remanding to the PTAB to
address non-instituted grounds). The SiOnyx Court ruled that,
because Hamamatsu Corporation “reasonably could have
raised” the non-instituted grounds by seeking a
post-SAS remand to the PTAB, but failed to do so, it was
estopped from further pursuing those contentions. 330
F.Supp.3d at 601.
Court is persuaded that SiOnyx reached the correct result.
See also Cal. Inst. of Tech., 2018 WL 7456042 at *8.
The Court is aware that two previous district court cases
determined, in light of Shaw, that § 315(e)(2) estoppel
did not attach to non-instituted grounds, but both of those
opinions were issued before SAS. See Milwaukee Elec. Tool
Corp. v. Snap-On Inc.,271 F.Supp.3d 990 (E.D. Wis.
2017); Oil-Dri Corp. of Am. v. Nestlé Purina
Petcare Co., 2017 WL 3278915 (N.D.Ill. Aug. 2, 2017).
SAS rendered unnecessary the adherence to Shaw that formed
the basis of the decisions in Milwaukee Electric and ...