Ironburg Inventions Ltd. v. Valve Corporation

Opinion

1 2

3 UNITED STATES DISTRICT COURT 4 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 5 IRONBURG INVENTIONS LTD., 6 Plaintiff, 7 C17-1182 TSZ v. 8 ORDER VALVE CORPORATION, 9 Defendant. 10 11 THIS MATTER comes before the Court on plaintiff’s renewed motion for inter 12 partes review (“IPR”) estoppel, docket no. 513, and defendant’s cross-motion for a 13 finding of no IPR estoppel, docket no. 528. Having reviewed all papers filed in support 14 of, and in opposition to, each motion, the Court enters the following order. 15 Discussion 16 Plaintiff Ironburg Inventions Ltd. (“Ironburg”) owns United States Patent 17 No. 8,641,525 B2 (“’525 Patent”), a copy of which is attached as Exhibit A, docket 18 no. 44-1, to the Second Amended Complaint. The invention described in the ’525 Patent 19 is “a hand held controller for a game console.” See ’525 Patent at 4:41 & 6:14. During 20 the period from June 2015 through December 2019, defendant Valve Corporation 21 (“Valve”) sold approximately 1,612,136 devices known as the “Steam Controller.” See 22 Stip. Facts Nos. 7 & 10–11, Jury Instr. No. 5 (docket no. 413). On February 1, 2021, a 1 Controller, Valve had willfully infringed Claims 2, 4, 7, 9, 10, 11, and 18 of the ’525 2 Patent. See Verdict (docket nos. 416 & 417). The jury awarded to Ironburg

3 $4,029,533.93 in damages. Id. By Order entered May 26, 2021, docket no. 458, the 4 Court denied Valve’s motion for judgment as a matter of law (“JMOL”), remittitur, or a 5 new trial; the Court also denied Ironburg’s motion for enhanced damages. On appeal, the 6 Federal Circuit affirmed all but one of the Court’s numerous rulings in this case. See 7 Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274 (Fed. Cir. 2023). 8 The only decision of this Court that was vacated by the Federal Circuit involved

9 the effect of Valve’s failure to raise, in an IPR petition dated April 22, 2016, see Ex. C to 10 Becker Decl. (docket no. 262-3), the following grounds for challenging the validity of the 11 ’525 Patent: 12 Non-Petitioned Grounds Relevant Patent Claims1 Prior Art References 13 2, 9–11, and 18 Kotkin2 14 2, 4, 7, and 9–11 Willner,3 Koji,4 and Raymond5 15 See Ironburg, 64 F.4th at 1296 n.7 & 1297–1300; see also Order at 5 (docket no. 320). 16 The IPR that Valve sought in April 2016, on different grounds, was instituted in part on 17 18 1 In its response to Ironburg’s original motion for IPR estoppel, Valve asserted obviousness on the basis of Kotkin as to Claims 1–3, 5, 6, 9–11, 14, 17–18, and 20 of the ’525 Patent, and it 19 asserted obviousness on the basis of Willner, Koji, and Raymond as to Claims 1, 2, 4–11, 13, 17, and 19–20 of the ’525 Patent. See Def.’s Resp. at 1 (docket no. 276). These lists of patent 20 claims have been narrowed to reflect the claims on which the jury found infringement. 2 United States Patent Application Publication No. 2010/0298053 A1 filed by David Kotkin. 21 3 United States Patent No. 6,760,013 B2 issued to Michael Willner and Scott Arnel. 22 4 Japanese Patent Application No. JP-A H10-020951 filed by Koji Tsuchiya. 1 September 27, 2016, as IPR2016-00948 (“948 IPR”), see Ex. E to Becker Decl. (docket 2 no. 262-5), and decided almost a year later, on September 22, 2017, by the Patent Trial

3 and Appeal Board (“PTAB”), see Ex. K to Becker Decl. (docket no. 262-11) (concluding 4 that Claims 1, 6, 13, 14, 16, 17, 19, and 20 of the ’525 Patent are unpatentable). 5 A. Collective Minds 6 In January 2018, while the cross-appeals concerning the 948 IPR were pending 7 before the Federal Circuit, another entity, Collective Minds Gaming Co. Ltd. (“Collective 8 Minds”), petitioned for inter partes review, raising both Kotkin and the combination of

9 Willner, Koji, and Raymond as grounds for declaring certain claims of the ’525 Patent 10 invalid, including some of the claims already found unpatentable by the PTAB in the 11 948 IPR. See Pet. for Inter Partes Review, Collective Minds Gaming Co. v. Ironburg 12 Inventions Ltd., No. IPR2018-00354, 2018 WL 280722 (Jan. 3, 2018). The PTAB 13 instituted the requested IPR, but it never ruled on the merits of the obviousness

14 challenges presented by Collective Minds because the parties reached a settlement. See 15 Collective Minds Gaming Co. v. Ironburg Inventions Ltd., No. IPR2018-00354, 2018 WL 16 2938858 (P.T.A.B. June 7, 2018); see also Collective Minds Gaming Co. v. Ironburg 17 Inventions, Ltd., Nos. IPR2018-00354, -00355, -00356 & -00357, 2018 WL 6624854 18 (P.T.A.B. Dec. 14, 2018). These events occurred more than six months before the

19 Federal Circuit, shortly after hearing oral argument, affirmed the PTAB’s decision in the 20 948 IPR. See Ex. A to Joint Status Report (docket no. 302-1) (containing a copy of the 21 Federal Circuit’s two-page judgment dated July 15, 2019). 22 1 As observed in this Court’s previous Order concerning IPR estoppel, docket 2 no. 320, Valve’s petition for the 948 IPR predated SAS Institute, Inc. v. Iancu, 138 S. Ct.

3 1348 (2018), in which the Supreme Court invalidated the PTAB’s former practice of 4 instituting inter partes review as to less than all of the claims in an IPR petition. Because 5 Valve’s requested IPR had been instituted in part and not instituted in part, Valve could 6 have, but did not seek, a post-SAS remand to the PTAB. See Order at 8–9 (docket 7 no. 320) (citing Google LLC v. Lee, 759 Fed. App’x 998 (Fed. Cir. 2019), and SiOnyx, 8 LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574 (D. Mass. 2018)). This Court

9 therefore imposed IPR estoppel with respect to the non-instituted grounds, and the 10 Federal Circuit affirmed this decision. See Ironburg, 64 F.4th at 1297. The Court now 11 notes that, if Valve had requested a post-SAS remand, it could have sought further relief 12 from the PTAB, including consolidation of the two IPR proceedings initiated by Valve 13 and Collective Minds, respectively, involving the same patent. See 35 U.S.C. § 315(d);

14 37 C.F.R. § 42.122. 15 The Court did not, however, make this observation in its prior ruling. Instead, in 16 reaching its earlier decision, the Court viewed Collective Minds’ IPR petition as evidence 17 that, during the timeframe when Valve was motivated to learn of references that might 18 have rendered the ’525 Patent invalid, a skilled searcher reasonably could have been

19 expected to discover Kotkin and the combination of Willner, Koji, and Raymond. See 20 Order at 11–13 (docket no. 320). As a result, pursuant to 35 U.S.C. § 315(e)(2),6 the 21 22 6 The cited statute provides in relevant part as follows: “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision . . . may not assert 1 Court concluded that Valve was estopped from raising the non-petitioned grounds as 2 defenses at trial. Order at 13 (docket no. 320). On appeal, the Federal Circuit agreed

3 with this Court that, 4 provided the other conditions of the statute are satisfied, § 315(e)(2) estops a petitioner as to invalidity grounds a skilled searcher conducting a diligent 5 search reasonably could have been expected to discover, as these are grounds that the petitioner “reasonably could have raised” in its petition. 6 64 F.4th at 1298; compare Order at 10 (docket no. 320) (“The statutory language has 7 been interpreted to include any patent or printed publication about which a petitioner 8 actually knew or that ‘a skilled searcher conducting a diligent search reasonably could 9 have been expected to discover.’”). The Federal Circuit also articulated for the first time 10 that the burden of proving, 11 by a preponderance of the evidence, that a skilled searcher exercising 12 reasonable diligence would have identified an invalidity ground rests on the patent holder, as the party asserting and seeking to benefit from the 13 affirmative defense of IPR estoppel. 64 F.4th at 1299. 14 Based on its perception that this Court had improperly placed the burden on Valve 15 to disprove IPR estoppel, the Federal Circuit remanded for further proceedings. See id. at 16 1298–99. The Federal Circuit viewed the record as insufficient to establish whether 17 Collective Minds (i) undertook merely a “‘reasonably’ diligent” search that did not 18 involve “extraordinary measures,” or (ii) “employed ‘scorched earth’ tactics” to find the 19 prior art references. Id. Declining Valve’s request that a “trial” be ordered, the Federal 20 21

22 invalid on any ground that the petitioner raised or reasonably could have raised during that inter 1 Circuit has left to this Court to decide “whether to reopen the record and permit 2 discovery, the relevance of Valve’s own search efforts,” and whether the IPR estoppel

3 dispute is “amenable to resolution via case-dispositive motions or some other 4 mechanism.” Id. at 1300. 5 On remand, the Court has allowed limited discovery. See Minute Order (docket 6 no. 511). As part of this process, Ironburg was provided an opportunity to obtain 7 declarations from individuals with personal knowledge about the searches performed by 8 Collective Minds. See id. at ¶ 1(b). No such declaration has been submitted. Thus, the

9 record remains silent with regard to the intensity with which Collective Minds engaged in 10 its efforts to locate the patents (Willner and Raymond) and patent applications (Kotkin 11 and Koji) at issue. As a result, the Court GRANTS Valve’s motion to strike, see Def.’s 12 Surreply at 3 (docket no. 540), Ironburg’s assertion that Collective Minds “easily” found 13 the four references, see Pl.’s Reply at 1 (docket no. 536) (emphasis added). The Court,

14 however, notes that a diligent search conducted at a time when Valve could still have 15 asked for a post-SAS remand of the 948 IPR would have uncovered the PTAB’s publicly- 16 available decision to institute the IPR requested by Collective Minds, which set forth in 17 detail the two grounds of unpatentability now at issue. See Collective Minds, 2018 WL 18 2938858, at *2 & *8–14.

19 B. Valve’s Own Search Efforts 20 As contemplated by the Federal Circuit, this Court has considered the evidence 21 concerning Valve’s preparations before petitioning to institute the 948 IPR. The relevant 22 materials, in the form of a declaration and three appendices, were provided to the Court 1 in opposition to Ironburg’s original motion for IPR estoppel. See Williams Decl., Ex. B 2 to Barceló Decl. (docket no. 277-2). The declaration has been offered again, but this time

3 without the first appendix, which contained excerpts from David Hunt, Long Nguyen, 4 and Matthew Rodgers, PATENT SEARCHING TOOLS & TECHNIQUES (2007) [hereinafter 5 “Hunt”]. See Williams Decl., Ex. C to Cotropia Decl. (docket no. 530-1); Williams Decl. 6 at App’x 1, Ex. B to Barceló Decl. (docket no. 277-2). 7 The declaration, along with all three appendices, was initially provided to the 8 PTAB in support of Valve’s opposition to Ironburg’s request to terminate IPR2017-

9 00136 (“136 IPR”) on the basis of estoppel pursuant to 35 U.S.C. § 315(e)(1), which 10 relates to matters before the United States Patent and Trademark Office (“PTO”). See 11 Valve Corp. v. Ironburg Inventions Ltd., Nos. IPR2017-00136 & IPR2017-00137, 2018 12 WL 575390, at *2 (P.T.A.B. Jan. 25, 2018) (identifying the declaration as Exhibit 1019); 13 see also Williams Decl. (docket no. 530-1 at 44) (captioned as relating to the 136 IPR).

14 The 136 IPR challenged Claim 20 of the ’525 Patent as anticipated by Wörn, also known 15 as United States Patent No. 6,362,813 B1. See Valve, 2018 WL 575390, at *1 & n.3. 16 The PTAB concluded that “a skilled searcher conducting a diligent search reasonably 17 would have been expected to discover Wörn” through a classification search. See id. at 18 *2–4.

19 1. Classification Searches 20 Before the advent of digital, text-searchable databases, “[t]he way to navigate 21 patents was by relying exclusively on the patent classification system.” See Hunt at 35 22 (docket no. 277-2 at 20). Patents involving similar technology should have the same or 1 similar classifications, making them easier to find. See Valve, 2018 WL 575390, at *2; 2 see also Hunt at 41 (docket no. 277-2 at 26) (“Since patent classification systems were

3 designed to assist with patent searching, they are a good place to start.”). 4 The United States is a party to the treaty known as the Strasbourg Agreement, 5 pursuant to which the International Patent Classification (“IPC”) system was established 6 in 1971. See https://www.wipo.int/treaties/en/classification/strasbourg. In accordance 7 with the Strasbourg Agreement, the PTO is required to indicate on its issuing documents 8 (e.g., patents and published patent applications) the appropriate designations within the

9 IPC system, and the PTO does so within the section of its materials labeled “Int. Cl.” See 10 Manual of Patent Examining Proc. § 906 (9th ed. 2020) [hereinafter “MPEP”] (available 11 at https://www.uspto.gov/web/offices/pac/mpep). Since January 1, 2013, the PTO has 12 also employed the Cooperative Patent Classification (“CPC”) system, which was jointly 13 developed with the European Patent Office. See GeigTech E. Bay LLC v. Lutron Elecs.

14 Co., Nos. 18 Civ. 5290, 19 Civ. 4693, & 20 Civ. 10195, 2023 WL 8827572, at *10 15 (S.D.N.Y. Dec. 21, 2023). The various IPC (or IC) and CPC classifications are, in many 16 instances, identical, but the PTO maintains a list of deviations between the two systems. 17 See https://www.uspto.gov/web/patents/classification/cpc/html/discordance-list.html. 18 The PTO previously used the United States Patent Classification (“USPC”)

19 system, but only “design” and “plant” applications, application publications, and patents 20 currently receive USPC designations. See MPEP §§ 903 & 903.04. The USPC codes, 21 however, are still a means of finding “utility” applications, application publications, and 22 patents that predate the switch to the CPC system. See Cotropia Decl. at ¶ 35 (docket 1 no. 530) (“Patent offices do not change the classification on the printed versions of 2 published patent applications or issued patents. Those are fixed at the time of printing.”).

3 The PTAB’s application of § 315(e)(1) estoppel in the 136 IPR, in which Valve 4 sought to invalidate Claim 20 of the ’525 Patent on the basis of Wörn, is illustrative of 5 how patent classifications should be considered in evaluating what a diligent skilled 6 searcher reasonably could have been expected to discover. The ’525 Patent is in USPC 7 class 463, subclass 37, which relates to “Amusement Devices: Games” that are “[h]and 8 manipulated (e.g., keyboard, mouse, touch panel, etc.).” See Valve, 2018 WL 575390, at

9 *2; see also ’525 Patent at 1, ¶ (52) (docket no. 44-1). The prior art on which Valve 10 wished to rely (Wörn) is in USPC class 345, subclass 169. See Valve, 2018 WL 575390, 11 at *3; see also United States Patent No. 6,362,813 B1 at 1, ¶ (52). Rejecting Valve’s 12 expert’s assertion that a diligent skilled searcher would not have looked for material 13 under USPC 345/169, the PTAB observed that the ’525 Patent itself cited previous

14 patents that are in USPC 345/169, and that the respective descriptions for USPC classes 15 345 and 463 cross-reference each other. Valve, 2018 WL 575390, at *2–3. The PTAB 16 also noted that the titles for USPC 463/37 and 345/169 are similar. Id. at *3; see id. at *2 17 (USPC class 345 concerns “Computer Graphics Processing and Selective Visual Display 18 Systems,” subclass 169 is labeled “Portable (i.e., handheld, calculator, remote controller),

19 and subclass 169 is indented under subclass 168, which is indented under subclass 156, 20 which relates to “Display Peripheral Interface Input Device”). Concluding that a skilled 21 searcher performing a diligent search would have searched USPC 345/169 and thereby 22 identified Wörn as pertinent prior art, the PTAB determined that Valve was estopped in 1 the 136 IPR under § 315(e)(1) because it failed to raise the Wörn ground in its earlier 2 petition giving rise to the 948 IPR. See id. at *3–4.

3 2. Kotkin and Koji 4 A similar analysis leads to the conclusion that Kotkin and Koji were reasonably 5 discoverable. Unlike in the 136 IPR proceeding, however, whether a particular patent 6 classification should have been searched is not at issue here; the classifications associated 7 with Kotkin and Koji were actually searched before Valve sought inter partes review as 8 to the ’525 Patent. Thus, unlike the PTAB in the 136 IPR, this Court need not address

9 whether a skilled searcher would have looked for materials with the classifications 10 assigned to Kotkin and Koji. 11 Shortly after the ’525 Patent issued in February 2014, Valve’s attorneys hired 12 Landon IP, Inc., which was later purchased and rebranded as CPA Global (Landon IP) 13 Inc., to conduct prior art searches. See Williams Decl. at ¶¶ 2–4, Ex. C to Cotropia Decl.

14 (docket no. 530-1 at 45). A four-person team, including Jamila Williams acting as 15 “Technical Lead,” conducted eleven classification searches and 45 keyword searches 16 within the United States and Japanese patent databases and then transmitted their results 17 to one of Valve’s lawyers on March 27, 2014. Id. at ¶¶ 5 & 9 (docket no. 530-1 at 45–46 18 & 47). The searches performed in March 2014 are enumerated in Appendices 2 and 3 to

19 Ms. Williams’s declaration, but the results of those searches (i.e., any lists or summaries 20 of prior art references) have not been provided to the Court. Instead, in an attempt to 21 cure this deficiency in Ms. Williams’s declaration, one of Valve’s experts, Christopher 22 1 || Cotropia,’ has asserted that Ms. Williams did not discover Kotkin, Koji, or Raymond, see 2 || Cotropia Decl. at 18, 20, 34, 44, & 53 (docket no. 530), but he says nothing about 3 | Ms. Williams’s three peers. More importantly, however, Mr. Cotropia does not purport 4 || to have any personal knowledge about what Ms. Williams and her colleagues found in 5 || March 2014, and he cites no evidence to support his representation concerning what 6 || materials were or were not located. 7 In addition to lacking any indicia of reliability, Mr. Cotropia’s statements that 8 || Kotkin and Koji were not found are contradicted by the search methodology that 9 | Ms. Williams and her teammates used. Of the eleven classification searches run in 10 || March 2014, one sought materials with an IC or CPC designation of “A63F-013/06,” 11 || which is the exact code under which Kotkin was indexed, and another requested 12 || references with an IC or CPC classification of “G0O6F3/033,” which was one of four 13 || labels assigned to Koji. The search strings and the relevant sections of the patent 14 || applications at issue are reproduced below and on the next page. 15 Search History ] 6 The analyst used a cut-off date of published before June 17, 2011. 17 ig 19 || See App’x 2 to Williams Decl. at Search String No. 52 (docket no. 530-1) (modified). 20 21.) 22 7 Mr. Cotropia is the same expert who opined that a skilled searcher would not have looked for materials (like W6rn) classified under USPC 345/169, and the PTAB disregarded his testimony 3 for lack of “a persuasive explanation.” Valve, 2018 WL 575390, at *3.

1 asx) United States a2) Patent Application Publication co) Pub. No.: US 2010/0298053 Al 2 Kotkin (43) Pub, Date: Nov. 25, 2010 (54) DEVICE FOR ENHANCING OPERATION OF Related U.S. Application Data A GAME CONTROLLER AND METHOD OF ws , . rig THE © (60) Provisional applic No, 61/179,551, filed on May 3 USING THE SAME ee 19.2009. povisional application No. 61/306.211. 4 | , . filed on Feb, 19, 2010, 4 (73) Inventor: David Kotkin, Miami, FL (US) publication Classification Correspondence Address: LERN ER GREENBERG STEMER LLP (2006.01) P.O BOX 2480 = □□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□□ AOBIIT 5 HOLLYWOOD, FL 33022-2480 (US) (57) ABSTRACT a □□□ ore ae A device for enhancing operation of a game controller i (7) Avignee: KCONTROL ENTERPRISES, vee fo ening open of ge evo BODTOR a ing with a game controller for adding functions to be con- 6 trolled with parts of the hand other than the thumbs, such as (21) Appl. No. 12/782 089 the side or tip of the index finger, while using the thumbs for other functions. A skin is placed onto part or all of the con- 7 (22) Filed: May 18, 2010 troller for permitting additional functions to be carried aut. See Ex. 3 to Stevick Decl. (docket no. 514-3) (modified). 8 9 ep lemamomeemm ae tz |roszaee | 2+ BH) + OR — NEARS a hO—S oR 3 on Sip on BE On HEE OF 34 OF F385 OF ite Fd 10 is fusase atone tbOtevey on Laeoexe sep onterian hye fia__[aeaaate |r A) -coora/omsonacarivos ——SSSCSCSCSCSC~SCSY $005 137 items 11 Boolean expression 137items | L1ANDL2 ANDL3 AND L4 Li 15,268,576 items Date of publication/international publication<=2011/6/17 12 2 10,628 items Title + Abstract + Claims=game NEARS controller OR control [[alternate spelling (katakana) in Japanese]] OR control OR operation OR maneuver OR grip OR handheld OR handle 3 119,333 items Full text=back OR back part OR back face OR reverse face OR reverse 13 side OR reverse end OR rear OR rear side OR rear face OR rear part OR rear [[alternate spelling (hiragana) in Japanese]] NEAR10 button OR switch OR paddle OR paddling OR lever OR stick OR bumper OR trigger 14 L4 26,333 items FI (begins with) =GO6F3/033 OR AG3F13/06 15 See App’x 3 to Williams Decl. at Search String No. S005/L4 (docket no. 530-1).

apan Patent ce nexamined Japanese Patent ublication No.: 16 19) J] P Offi 12) U ined J P. 11) Publication N (JP) Application Publication (A) JP-A H10-020951 (43) Publication date: l 7 January 23, 1998 nt. Cl. . No. eme erence): 31) Int. Cl.* ID Code JPO Ref. N FI Th code (ref G0SG 4/06 GO05G 9/06 18 A63F 9/22 A63F 9/22 F O15 o/08 GO5G 9/08 GO6F 3/0339) 310 GO6F 3/033 310 ¥ 1 9 Examination request status: not uested: No. of claims: 5; Online application (6 total (21) Application No.: HO8-172412 (71) Applicant: 000132471 Sega Enterprises, Ltd. 20 (22) Filing date: July 2, 1996 2-12 Haneda I-chome, Ota-ku, Tokyo-to (72) Inventor: Koji TSUCHIYA Sega Enterprises, Ltd. 21 2-12 Haneda |-chome, Ota-ku, Tokyo-to (74) Agent: Yoshihito KITANO, patent agent 22 (54) [Title of the Invention] MULTISTAGE TRIGGER DEVICE 73 See Ex. 7 to Stevick Decl. (docket no. 514-7) (modified).

1 Kotkin and Koji8 must have been among the references identified during the 2 March 2014 search. Based on the classifications that Valve’s own consultant believed

3 were relevant, the Court concludes, as a matter of law,9 that a skilled searcher conducting 4 a diligent search, at the relevant time, reasonably could have been expected to (and likely 5 did) discover both Kotkin and Koji. See TrustID, Inc. v. Next Caller Inc., No. 18-172, 6 2021 WL 3015280, at *1 (D. Del. July 6, 2021) (“One way to show what a skilled search 7 would have found would be (1) to identify the search string and search source that would 8 identify the allegedly unavailable prior art and (2) present evidence, likely expert

9 testimony, why such a criterion would be part of a skilled searcher’s diligent search.” 10 (quoting Clearlamp, LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 4734389, at *9 (N.D. 11

12 8 Although Appendix 3 to Ms. Williams’s declaration does not identify the references found, it does show that 26,333 items were located using the classifications G06F3/033 or A63F13/06; 13 Koji must have been among them. When the classification search results were narrowed by (i) excluding materials that post-dated the application for the ’525 Patent, and (ii) requiring that 14 certain word patterns appear in the title, abstract, claims, and/or text, only 137 documents were reported. See App’x 3 to Williams Decl. (docket no. 530-1 at 54 & 57). Koji satisfies the time 15 restriction; it was published almost 15 years before June 17, 2011. See Ex. 7 to Stevick Decl. (docket no. 514-7 at 2). Moreover, within the text of Koji, the phrase “rear side” appears within 16 ten words of “button” as required by Search String No. S005/L3. See id. (docket no. 514-7 at 5). Although the combination of “game” and “controller” is not present in the title, abstract, or 17 claims of Koji, as contemplated by Search String No. S005/L2, the term “video game controller” shows up in the field-of-invention section, and the word “controller” is repeated four times in the abstract. Id. (docket no. 514-7 at 2–3). Thus, the search actually performed in March 2014 18 establishes by a preponderance of the evidence that Koji was or reasonably could have been discovered with the requisite diligence. 19 9 Whether IPR estoppel applies is a question of law to be addressed through motion practice. 20 See GeigTech, 2023 WL 8827572, at *1 (“judges, not juries, decide what issues parties are or are not legally barred from raising”); EIS, Inc. v. IntiHealth Ger GmbH, No. 19-1227, 2023 WL 21 6797905, at *4 (D. Del. Aug. 30, 2023); Innovative Memory Sys., Inc. v. Micron Tech., Inc., No. 14-1480, 2022 WL 4548644, at *5 (D. Del. Sep. 29, 2022) (observing that IPR estoppel is 22 meant “to streamline litigation, not to further complicate already complicated trials by sending questions about the reasonableness of prior art searches to the jury”). 1 Ill. Mar. 18, 2016))); see also Aseteck Danmark A/S v. CoolIT Sys., Inc., No. 19-cv-410, 2 2019 WL 7589209, at *8 (N.D. Cal. Dec. 30, 2019) (also quoting Clearlamp).

3 Because Valve proposes to present Kotkin as a standalone basis for invalidating 4 Claims 2, 9–11, and 18 of the ’525 Patent, the conclusion that Kotkin was reasonably 5 discoverable is dispositive. As a result, Valve is precluded by § 315(e)(2) from 6 proceeding further on its contention that Kotkin renders the claims at issue unpatentable, 7 and the Court need not address the merits of the invalidity challenge premised on Kotkin 8 or engage in any further analysis concerning Kotkin. With regard to Koji, however, the

9 Court turns to the question of whether the other two references Valve seeks to combine 10 with this Japanese patent application, namely Willner and Raymond, were known or also 11 findable by a skilled searcher exercising reasonable diligence. 12 C. Known or Reasonably Discoverable References 13 1. Willner

14 Like Wörn, Willner is classified in USPC 345/169. See United States Patent 15 No. 6,760,013 B2 at 1, ¶ (52), Ex. 6 to Stevick Decl. (docket no. 514-6). For the same 16 reasons that Wörn was reasonably discoverable, Willner could have been found by a 17 skilled searcher exercising reasonable diligence. See Valve, 2018 WL 575390, at *2–4; 18 see also Innovative Memory, 2022 WL 4548644, at *4 (expressing doubt about whether

19 “§ 315(e) leaves any room for a patent challenger to argue that it could not reasonably 20 have raised an indexed, searchable U.S. patent in its prior IPR proceedings”). Indeed, 21 Willner was actually identified by a skilled searcher, and the reference appears on the 22 1 face of the ’525 Patent, having been cited by the patent examiner. See ’525 Patent at p. 2 2 (docket no. 44-1).

3 As noted in the Court’s earlier Order, in response to Ironburg’s original motion 4 for IPR estoppel, Valve made no attempt to argue that Willner was not actually known, 5 or was undiscoverable via a reasonably diligent search, at the time it filed its IPR petition. 6 Order at 11 (docket no. 320). In opposing Ironburg’s renewed motion for IPR estoppel, 7 Valve continues to focus solely on the other references, Kotkin, Koji, and Raymond, 8 and the Court now explicitly rules that Ironburg has met its burden of showing by a

9 preponderance of the evidence that, at the relevant time, Willner was known from the 10 face of the ’525 Patent and/or reasonably could have been expected to be discovered by a 11 diligent skilled searcher. 12 2. Raymond 13 The IC and USPC codes with which Raymond is indexed were not among those

14 used in the eleven classification searches performed by Ms. Williams and her colleagues 15 in March 2014. Moreover, neither Raymond nor its IC or USPC designations appear in 16 the ’525 Patent. Thus, to evaluate whether Raymond was reasonably discoverable, the 17 Court must consider the evidence with which the parties have supplemented the record on 18 remand. See Minute Order (docket no. 511) (granting leave to provide expert testimony).

19 Ironburg has offered the testimony of the following employees of Cardinal Intellectual 20 Property, Inc.: (i) Seth Greenia, a search professional; and (ii) Brian Hameder, a project 21 manager. See Greenia Decl. at ¶ 1 (docket no. 515); Hameder Decl. at ¶ 1 (docket 22 no. 516). According to Messrs. Greenia and Hameder, a reasonably diligent search 1 would have found (and did find) all four references at issue, including Raymond, during 2 approximately fifty (50) hours of work at a cost of roughly $10,825. See Greenia Decl. at

3 ¶¶ 10 & 29 (docket no. 515); see also Hameder Decl. at ¶¶ 8–9 (docket no. 516).10 4 a. Citation Search 5 Mr. Greenia reports initially finding Raymond using a “citation search,” which 6 looks for materials that either cite to (are forward of) or are cited by (are backward from) 7 a particular reference. See Greenia Decl. at ¶¶ 21, 26, & 27 (docket no. 515). In a search 8 conducted between August 25 and September 1, 2023, Mr. Greenia used a set of twenty

9 published applications, utility patents, and design patents, some of which pre-date and 10 others of which post-date Valve’s April 2016 IPR petition, and then identified prior art 11 (i.e., any item existing before the application for the ’525 Patent was filed on June 17, 12 2011) that either was cited in or cited to one of those twenty documents, producing a list 13 of 292 references. See Search Strings Nos. 33 & 34, App’x F to Greenia Decl. (docket

14 no. 515-6 at 5); see also Cotropia Decl. at ¶ 30 (docket no. 530) (explaining that the “cta” 15 command, which was used in Search String No. 34, searches for “all backward and 16 forward citations”). 17 Valve’s expert, Christopher Cotropia, criticizes Mr. Greenia’s methodology for 18 attempting to “improperly benefit from information unavailable to a skilled searcher

19 performing a diligent search in April 2016,” when Valve filed its IPR petition. Cotropia 20

21 10 Valve’s motion to strike, see Def.’s Resp. & Cross-Mot. at 21–22 (docket no. 528), the first 22 declaration of Mr. Hameder, is DENIED. The topics addressed by Mr. Hameder, namely, the costs associated with Mr. Greenia’s searches and whether such expenses are typical for patents 1 Decl. at ¶ 25 (docket no. 530). This criticism applies to forward citation searches, i.e., 2 searches for materials that cite to an earlier reference. See id. at ¶¶ 23–24. As explained

3 by Mr. Cotropia, “[t]he universe of forward citations grows over time.” Id. at ¶ 23. The 4 database is always expanding because new applications and patents are constantly being 5 filed, published, or issued, and each of these documents cites to one or more previously 6 filed or published applications and/or earlier-issued patents. 7 The Court agrees with Mr. Cotropia’s assessment about the flaw in Mr. Greenia’s 8 “cta” (forward-and-backward citation) approach. Raymond is cited in United States

9 Patent No. D983,269 S, which is a design patent that was issued to Ironburg on April 11, 10 2023, and which is one of the twenty references included in Mr. Greenia’s “cta” search 11 string. See App’x F to Greenia Decl. (docket no. 515-6 at 5). The citations in this design 12 patent would not have been available to a diligent skilled searcher before Valve filed its 13 IPR petition in April 2016. Mr. Greenia has not identified any item in his group of

14 twenty applications and patents that both predated Valve’s IPR petition and cited to 15 Raymond. The Court therefore concludes that the results of Mr. Greenia’s Search String 16 No. 34 do not prove or tend to prove11 by a preponderance of the evidence that a skilled 17 18

19 11 Given this ruling, the Court GRANTS in part Valve’s motion, see Def.’s Resp. & Cross-Mot. at 20–21 (docket no. 528), to strike Mr. Greenia’s opinion. Mr. Greenia’s view that Raymond 20 was reasonably discoverable via a forward/backward citation search is deemed irrelevant and inadmissible, see Fed. R. Evid. 401(a) & 402, and is therefore STRICKEN. The Court need not 21 address whether the results of Search String No. 34 with respect to Kotkin and Koji are also lacking in probative value because those two references were reasonably discoverable using the 22 classification searches performed by Valve’s contractor in March 2014. Thus, as to Kotkin and Koji, Valve’s motion to strike Mr. Greenia’s testimony relating to his Search String No. 34 is 1 searcher conducting a diligent forward citation search at the relevant time reasonably 2 could have been expected to discover Raymond.

3 b. Classification Search 4 Although Mr. Greenia found Raymond using a forward/backward citation search, 5 he did not include the reference in his initial search results because it was considered to 6 be of only “peripheral relevance.” Greenia Decl. at ¶ 27 (docket no. 515). When asked 7 to perform a supplemental search, Mr. Greenia again identified Raymond, but this time 8 through a classification-based search, the results of which were narrowed by using certain

9 keywords and Boolean logic. See id. at ¶ 28; see also id. at App’x G, Search String 10 No. 26 (docket no. 515-7 at 6). Mr. Greenia began with certain USPC codes (returning 11 41,075 results), IC designations (identifying 289,186 references), and CPC classifications 12 (locating 37,419 documents), and then narrowed the combined field to items predating 13 the filing of the application for the ’525 Patent (reducing the total to 179,830 hits). See

14 id. at App’x G, Search Strings Nos. 22–25. Mr. Greenia then searched within the 15 remaining materials for a pattern of relevant terms (like “levers” within eight words of 16 “flexible” and “key” or “lever” or “paddle” near “flexible”), and Raymond appeared 17 among the 368 results. See id. at App’x G, Search String No. 26. 18 With respect to Raymond, Valve does not contend that the USPC, IC, and/or CPC

19 values, date restriction, and/or keywords that Mr. Greenia used were inappropriate or 20 inconsistent with those that a diligent skilled searcher would employ.12 Rather, on behalf 21

22 12 Valve and its expert attack Mr. Greenia’s choices of IC or CPC classifications only with 1 of Valve, Mr. Cotropia speculates that an intervening reclassification (occurring 2 sometime after March 2014, when Ms. Williams and her teammates completed their

3 work, and before September 2023, when Mr. Greenia commenced his supplemental 4 search) might explain why Mr. Greenia found Raymond, but Ms. Williams did not. See 5 Cotropia Decl. at ¶¶ 41 & 44 (docket no. 530). Again, however, the record is silent with 6 regard to what Ms. Williams (or her colleagues) discovered. In addition, Mr. Hameder 7 has represented that the IC designation under which Raymond was located (“H01H 8 21/00”) has not been updated since January 2006,13 see Hameder Decl. at ¶ 6 (docket

9 no. 538); see also Ex. 8 to Stevick Decl. (docket no. 514-8) (showing that, when issued in 10 June 1998, Raymond’s IC code was “H01H 21/86”), and thus, a diligent skilled searcher 11 looking for materials with the classification “H01H 21/00” in the April 2016 timeframe 12 would reasonably have been expected to find Raymond. The Court concludes that 13 discovering Raymond at the relevant time14 would not have required any “extraordinary

14 measures” or “scorched earth” tactics. 15

16 13 Valve’s motion to strike, see Def.’s Surreply at 2–3 (docket no. 540), Mr. Hameder’s second declaration, which is based on Valve’s theory that Mr. Hameder describes work performed after 17 he was deposed, is DENIED. Mr. Hameder’s declaration offers appropriate responses to the challenges raised by Valve during his deposition and in opposition to Ironburg’s renewed motion 18 for IPR estoppel. Moreover, the status of IC code “H01H 21/00” is a fact “readily determined from sources whose accuracy cannot reasonably be questioned,” about which the Court may and 19 does take judicial notice. See Fed. R. Evid. 201. Valve’s alternative request for an opportunity to further depose Mr. Hameder and submit additional briefing and evidence, see Def.’s Surreply 20 at 3 (docket no. 540), is also DENIED. 14 Valve’s and its expert’s insistence on April 2016 as a litmus test for the proper scope of prior 21 art ignores the procedural posture of this case, see supra pp. 4-6, but the Court has assumed for purposes of its rulings on Ironburg’s renewed motion for IPR estoppel that what a skilled 22 searcher conducting a diligent search reasonably could have been expected to discover should be measured as of the period shortly before Valve petitioned to institute the 948 IPR. 1 c. Combining Raymond with Willner and Koji 2 Valve contends that, even if Raymond could have been identified using reasonable

3 diligence, a skilled searcher would not have understood Raymond’s relevance, and would 4 not have “discovered” the Willner-Koji-Raymond ground. See Def.’s Resp. & Cross 5 Mot. at 5–6 (docket no. 528). Indeed, as previously mentioned, Mr. Greenia believed that 6 Raymond, which discloses “[a] twin lever mechanical key unit with horizontal finger 7 pads for code transmission when used with an electronic iambic keyer,” Raymond at 8 Claims 1 & 2, Ex. 8 to Stevick Decl. (docket no. 514-8), was of only “peripheral

9 relevance,” and he did not include the reference in his summaries regarding prior art of 10 particular concern. See Greenia Decl. at ¶ 27 & App’xs B & C (docket nos. 515, 515-2, 11 & 515-3). The problem for Valve, however, is that its argument against IPR estoppel 12 proves too much; the contention attempts to improperly shift the burden to Ironburg to 13 disprove invalidity while also undermining Valve’s ability to show unpatentability.

14 With respect to its invalidity contention premised in part on Raymond, Valve 15 concentrates on the thickness elements defined in Claims 9, 10, and 11, which depend 16 from Claim 115 and require as follows: 17 18 15 Claim 1 of the ’525 Patent reads: 19 A hand held controller for a game console comprising: 20 an outer case comprising a front, a back, a top edge, and a bottom edge, wherein the back of the controller is opposite the front of the controller and the top edge 21 is opposite the bottom edge; and a front control located on the front of the controller; 22 wherein the controller is shaped to be held in the hand of a user such that the user’s 1 Claim 9: “each elongate member has a thickness between about 1 mm and 10 mm” 2 Claim 10: “each elongate member has a thickness between about 1 mm 3 and 5 mm” Claim 11: “each elongate member has a thickness between about 1 mm 4 and 3 mm.” 5 ’525 Patent at 5:11-16 (docket no. 44-1).16 According to Valve’s expert Robert 6 Dezmelyk, the primary contribution of Raymond is a key or paddle “made from a flat, 7 flexible strip of metal” to form “the actuating element for an input device.” See 8 Dezmelyk Decl. at ¶¶ 124 & 179 (docket no. 531). Mr. Dezmelyk opines that a person of 9 ordinary skill in the art would understand that a lever “could be fabricated of the typical 10 plastic used for input devices” and that “a thickness of from 1 to 3 mm would provide 11 sufficient flexibility, restoring force, and reliability.” Id. at ¶ 213. Importantly, however, 12 13 a first back control and a second back control, each back control being located on 14 the back of the controller and each back control including an elongate member that extends substantially the full distance between the top edge and the bottom 15 edge and is inherently resilient and flexible. ’525 Patent at 4:41–55 (docket no. 44-1). Claim 1 has already been invalidated. See Valve 16 Corp. v. Ironburg Inventions Ltd., No. IPR2016-00948, 2017 WL 4221468, at *13 & 21 (P.T.A.B. Sep. 22, 2017). 17 16 Valve does not contend that the teachings of Raymond contributed to the inventions set forth 18 in Claims 2, 4, or 7 of the ’525 Patent, which also depend from Claim 1 and articulate the following limitations: 19 Claim 2: “a top edge control located on the top edge of the controller,” which controller is “shaped such that the user’s index finger is positioned 20 to operate the top edge control” Claim 4: “at least one of the back controls has functions in addition to the top 21 edge control and the front control” Claim 7: “each elongate member is mounted within a recess located in the 22 case of the controller.” 1 | Mr. Dezmelyk does not indicate that the thickness allegedly taught by Raymond could 2 || exceed 3 mm, or could be as much as 10 mm or 5 mm, as reflected in Claims 9 and 10 of 3 || the °525 Patent, respectively. Moreover, when asked in his deposition about the 4 || components in Raymond that are described as “flat flexible steel strips (6)” and “finger 5 || key pads (8),” Raymond at 2:29 —30 (docket no. 514-8) & Figs. 1 & 5 (reprinted below), 6 ; ay} } 4 cup 3 7 cq \ ¢2 tk cl. 28 10,14 7 > 9,11 6S SS 8 Lan ems! 8 SS 6 eS 15 ee eters Sr port 67 45 SS Aa bat 8 eX ce — 4 yy et CS Se 6 1 6 9 13 4g 1 47 Fh 13

10 | Mr. Dezmelyk acknowledged that Raymond does not specify the thicknesses of the strips, 11 | and he testified that, for steel, the dimensional range needed to create the requisite 12 || flexibility was “half a millimeter or less.” Dezmelyk Dep. (Feb. 16, 2024) at 79:12—80:3, 13 | Ex. 3 to Meyer Decl. (docket no. 537-3). Thus, Mr. Dezmelyk’s opinion does not even 14 || purport to show obviousness as to Claims 9 and 10 of the ’525 Patent, and his concession 15 || concerning the maximum thickness in steel (0.5 mm) undermines his assertion that a 16 | person of ordinary skill in the art would have been motivated by Raymond to use plastic 17 || that was 100—500% thicker (Z.e., in the range of 1-to-3 mm), as indicated in Claim 11 of 18 | the °525 Patent. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 19 | 1360 (Fed. Cir. 2012) (“A party seeking to invalidate a patent on the basis of obviousness 20 || must ‘demonstrate, “by clear and convincing evidence, that a skilled artisan would have 21 || been motivated to combine the teachings of the prior art references to achieve the claimed 22 || invention, and that the skilled artisan would have had a reasonable expectation of success 23

1 in doing so.’’” (quoting Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 2 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.

3 2007)))). 4 Against this backdrop, Valve argues that, to secure IPR estoppel, Ironburg must 5 prove that a skilled searcher conducting a diligent search at the relevant time must have 6 read, interpreted, and understood the relevance of Willner, Koji, and Raymond combined. 7 See Def.’s Resp. & Cross-Mot. at 5–7 (docket no. 528). The authority that Valve cites 8 for this proposition, Palomar Technologies, Inc. v. MRSI Systems, LLC, No. 18-10236,

9 2020 WL 2115625, 2020 U.S. Dist. LEXIS 77929 (D. Mass. May 4, 2020), is both 10 factually distinguishable17 and premised on an incorrect burden of proof.18 Moreover, 11 Palomar did not place on a patentee invoking IPR estoppel the impossible burden that 12 Valve now proposes. 13 The Palomar Court indicated that “it is not enough simply to locate a reference;

14 that reference must be read, and interpreted, and understood in the context of the patent.” 15

16 17 In Palomar, the expert who testified for the patent owner was found to have used a “hindsight approach,” i.e., creating search strings that relied “heavily on knowing the exact target” of the 17 searches. See 2020 WL 2115625, at *9 & *14. In contrast, in this matter, the four references at issue, Kotkin, Willner, Koji, and Raymond, were “not provided or made known” to Mr. Greenia 18 before he commenced his search. Greenia Decl. at ¶ 12 (docket no. 515). Thus, unlike in Palomar and other cases involving IPR estoppel, Mr. Greenia’s opinions are not the product of 19 “hindsight analysis,” 2020 WL 2115625, at *14, or “plagued by hindsight bias,” EIS, 2023 WL 6797905, at *4, and his results were not “essentially ‘reverse engineered,’” GeigTech, 2023 WL 20 8827572, at *6. 21 18 The Palomar Court concluded that “the initial burden to assert estoppel should be on the party seeking to invoke it . . . , after which the burden shifts to the responding party to show that the 22 prior-art reference could not reasonably . . . have been raised in the IPR proceeding.” 2020 WL 2115625, at *4. This ruling was implicitly abrogated by the Federal Circuit. See Ironburg, 64 1 Id. at *14. When making this observation, the Palomar Court was not faced with a 2 combination of references, but rather with standalone documents known as the Harigane

3 patent and the Ueno publication. See id. at *6. In evaluating whether Harigane or Ueno 4 reasonably could have been found using a keyword search constructed from synonyms 5 and alternatives to the terms of the challenged patent, the Palomar Court noted that “[t]he 6 farther afield that the searcher goes from the actual words in the patent, the less likely it is 7 that . . . [the] searcher will . . . locate the reference . . . [and] understand its potential 8 significance.” See id. at *14. The Palomar Court’s remarks do not address prior art that

9 is reasonably discoverable via classification searches, which themselves tend to establish 10 the requisite connectedness or “potential significance” by revealing references involving 11 the same or similar subject matter, and this Court declines to construe the Palomar 12 Court’s comments as broadly as Valve requests. 13 Valve’s suggestion that, to successfully invoke IPR estoppel, Ironburg must

14 establish that a skilled searcher would have comprehended how Willner, Koji, and 15 Raymond could together have rendered the ’525 Patent obvious is also unsupported by 16 the Federal Circuit’s recent guidance. The Federal Circuit made clear that this Court’s 17 inquiry should concern “what the searcher of ordinary skill would find through 18 reasonable diligence,” Ironburg, 64 F.4th at 1299 (emphasis omitted and added), which is

19 only a precursor to what a skilled artisan would have been motivated to combine. The 20 latter contention is Valve’s burden to prove by clear and convincing evidence. See 21 Kinetic Concepts, 688 F.3d at 1360; see also Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 22 91 (2011) (holding that invalidity defenses must be proven by clear and convincing 1 evidence). To the extent that Raymond is too far afield from hand-held game-controller 2 technology to be “discoverable” earlier with reasonable diligence, as Valve contends,

3 Raymond likewise would be too remote for a skilled artisan to consider combining it with 4 Willner and Koji to develop a hand held controller for a game console identical to the one 5 disclosed in the ’525 Patent, or more particularly, in Claims 2, 4, 7, and 9–11 of the ’525 6 Patent. 7 D. Obviousness and Collateral Estoppel 8 Having concluded that a skilled searcher conducting a diligent search reasonably

9 could have been expected to discover (i) Kotkin and Koji through classification searches 10 like the ones performed by Valve’s own vendor, (ii) Willner from the face of the 11 ’525 Patent, as well as via a search using its assigned USPC code, and (iii) Raymond by 12 a time-limited classification search combined with relevant keywords, the Court imposes 13 on Valve the estoppel required by § 315(e)(2). Valve may not further pursue challenges

14 to the validity of the ’525 Patent based on Kotkin and/or the combination of Willner, 15 Koji, and Raymond. In light of this ruling, the Court need not address the merits of 16 Valve’s contentions that these references render Claims 2, 4, 7, 9, 10, 11, and 18 of the 17 ’525 Patent unpatentable pursuant to 35 U.S.C. § 103, which precludes a patent “if the 18 differences between the claimed invention and the prior art are such that the claimed

19 invention as a whole would have been obvious . . . to a person having ordinary skill in the 20 art.” The Court also need not address Ironburg’s argument that Valve is collaterally 21 estopped from raising § 103 arguments. The portions of the cross-motions involving 22 obviousness and collateral estoppel are STRICKEN as moot. Moreover, because the 1 Court does not reach the merits of Valve’s invalidity contentions, Valve’s motion to 2 strike the opinions of Ironburg’s expert Glen Stevick, Ph.D., P.E., see Def.’s Resp. &

3 Cross Mot. at 22–23 (docket no. 528), is also STRICKEN as moot.19 4 Conclusion 5 For the foregoing reasons, the Court ORDERS: 6 (1) Plaintiff’s renewed motion for IPR estoppel, docket no. 513, is GRANTED 7 in part and STRICKEN in part as moot, defendant’s cross-motion for a finding of no 8 IPR estoppel, docket no. 528, is DENIED in part and STRICKEN in part as moot, and

9 defendant’s related motions to strike, docket nos. 528 & 540, are GRANTED in part, 10 DENIED in part, and STRICKEN in part, as indicated in this Order. Valve is precluded 11 by 35 U.S.C. § 315(e)(2) from asserting the non-petitioned grounds at issue (Kotkin and 12 the combination of Willner, Koji, and Raymond) for challenging the validity of Claims 2, 13 4, 7, 9, 10, 11, and 18 of the ’525 Patent.

14 (2) The Court hereby finds no just reason for delay, see Fed. R. Civ. P. 54(b), 15 and the Clerk is DIRECTED to enter a supplemental partial judgment consistent with this 16 Order, in favor of Ironburg and against Valve. The stay of execution imposed by the 17 Order entered July 29, 2021, docket no. 466, of the partial judgment entered July 19, 18 2021, docket no. 464, shall remain in effect pending further order. If no appeal is timely

19 20 19 Valve did not seek to strike the copies of Kotkin, Willner, Koji, and Raymond that are attached to Dr. Stevick’s declaration, see Exs. 3 & 6–8 to Stevick Decl. (docket nos. 514-3, 514-6, 514-7, 21 & 514-8), and the Court has taken judicial notice of these publicly-available materials. See Fed. R. Evid. 201(b) & (c); see also Anderson v. Kimberly-Clark Corp., 570 Fed. App’x 927, 932 n.3 22 (Fed. Cir. 2014) (“It is also well-established that a court may take judicial notice of patents or patent applications.” (citing Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 954 n.27 (Fed. Cir. 1 filed, the parties shall submit, within forty-nine (49) days of the date of this Order, an 2 agreed-upon proposed order for disbursement to Ironburg of the funds currently held in

3 the Registry of the Court. Such proposed order shall be consistent with the requirements 4 of Local Civil Rule 67(b). 5 (3) This matter remains stayed as to Ironburg’s infringement claims relating to 6 United States Patents Nos. 9,352,229 (“’229 Patent”) and 9,289,688 (“’688 Patent”). See 7 Minute Order at ¶ 2(b) (docket no. 148). 8 (a) Ironburg has represented that the ’229 Patent “does not add

9 appreciably to the case” if IPR estoppel applies with regard to the ’525 Patent. 10 See Joint Status Report at 2 (docket no. 512). Ironburg shall show cause within 11 thirty-five (35) days of the date of this Order why its claims involving the 12 ’229 Patent should not be dismissed, either with or without prejudice. 13 (b) With regard to the ’688 Patent, the parties are DIRECTED to file a

14 Joint Status Report within fourteen (14) days after the Federal Circuit issues a 15 decision in Valve Corp. v. Ironburg Inventions Ltd., No. 23-1725, which is on 16 appeal from Valve Corp. v. Ironburg Inventions Ltd., No. IPR2017-00858, 2023 17 WL 698799 (P.T.A.B. Jan. 26, 2023) (concluding that Claims 18, 19, 21, 26, and 18 29 of the ’688 have not been shown to be unpatentable).

19 (4) The Clerk is further DIRECTED to send a copy of this Order and the 20 supplemental partial judgment entered pursuant to Paragraph 2, above, to all counsel of 21 record. 22 1 IT IS SO ORDERED. 2 Dated this 3rd day of May, 2024.

3 A 4 Thomas S. Zilly 5 United States District Judge 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22