Ironburg Inventions Ltd. v. Valve Corporation
Docket No. 2021-2296, -2297, 2022-1070 (https://cafc.uscourts.gov/opinions-orders/21-2296.OPINION.4-3-2023_2104462.pdf)
LOURIE, CLEVENGER (D), STARK
April 3, 2023
Brief Summary: DC indefiniteness finding affirmed; vacated and remanded as burden to show prior art relied on in non-instituted IPR request could have been found was on Ironburg but placed on Valve. Summary: Valve appealed DC claim constructions/validity findings and Ironburg appealed the DC’s denial of its motion to enhance damages. The disputed patent is Irongburg’s US 8,641,525 related to handheld video game controllers with “back control[s] including an elongate member that extends substantially the full distance between the top edge and the bottom edge and is inherently resilient and flexible.” Valve argued the DC erred in its finding that “elongate member” and “substantially the full distance between the top edge and the bottom edge”, which the FC panel reviewed de novo (BASF, FC 2017). The FC panel explained the Nautilus standard (US 2014) that claims are indefinite if “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” and “[w]ords of degree are not ‘inherently indefinite,’ but “the court must determine whether the patent provides some standard for measuring that degree” (Biosig, FC 2015; Exmark, FC 2018 and Sonix, FC 2017 (“numerical precision is not always required”)). The FC panel agreed with the DC that the terms are not indefinite as there is no contrary clear and convincing evidence that it erred (e.g., there is support in the specification and drawings, “in the context of the…claims”, expert testimony (Hologic, FC 2011; Thomas & Betts, FC 1983; Dow, FC 2015 (definition of slope); Teva, FC 2015 (definition of molecular weight); Presidio Comp., FC 2017 ( “competing existing methodologies that reached different results, and the patent failed to describe which of the multiple methods to use’”); SmithKline, FC 2005), and Valve forfeited newly raised arguments regarding expert testimony conflicting with Ironburg’s closing arguments (In re Google, FC 2020)). Valve argued that “‘elongate member’ is indefinite due to the patent’s lack of objective guidance as to how much longer than wider the member must be in order to be ‘elongate’” but the FC panel explained that “numerical precision is not always required, even when using a term of degree” provided one of ordinary skill in the art could “reasonably ascertain” the meaning from the specification and prosecution history (citing, e.g., Exmark, FC 2018; Sonix, FC 2018). Valve also argued the limitation “extends substantially the full distance between the top edge and the bottom edge” is indefinite but the FC panel disagreed as “[t]he intrinsic evidence permits a person of ordinary skill in the art to understand the scope of the term with reasonable certainty” (e.g., “embodiments…allow the claim’s purpose to be effectuated are within the scope of the claims, while those that do not are not” (Grace, FC 2023 (“‘enlarged chamber’…must be large enough to accomplish a particular function”)). Judge Clevenger dissented (e.g., “patent lacks reasonable certainty in sufficiently teaching how to make the measurement”). The FC panel also agreed with the DC and jury that the claims were willfully infringed but that enhanced damages were rightly denied (e.g., “the only patent claim Ironburg alleged Valve infringed prior to suit was later cancelled by the PTAB in the IPR”, “totality of the circumstances” (Presidio, FC 2017)). The FC panel did vacate and remand the DC’s finding that Valve is estopped from litigating the prior-art grounds on which IPR was requested but not instituted (section 315(e)(2); Click-to-Call, FC 2022) because the burden to show the prior art “reasonably could have been expected to [be] discover[ed]” is on Ironburg as the party asserting the affirmative defense, and was erroneously placed on Valve (Fuji, FC 2007; Titan Tire, FC 2009).