Valve Corp. v. Elec. Scripting Prods., Inc.

Trials@uspto.gov 	Paper 11
571-272-7822 	Entered: April 2, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
VALVE CORPORATION,
Petitioner,
v.
ELECTRONIC SCRIPTING PRODUCTS, INC.,
Patent Owner.
_______________
Case IPR2019-00062 (Patent 9,235,934 B2)
Case IPR2019-00063 (Patent 9,235,934 B2)
Case IPR2019-00084 (Patent 9,235,934 B2)1
_______________
Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
ROBERT J. WEINSCHENK, Administrative Patent Judge.
WEINSCHENK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
1 These cases have not been joined or consolidated. Rather, this Decision
governs each case based on common issues. The parties shall not employ
this heading style.

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I. 	INTRODUCTION
Valve Corporation (“Valve”) filed three petitions (IPR2019-00062,
Paper 1, “Pet.”; IPR2019-00063, Paper 3; IPR2019-00084, Paper 1)
requesting inter partes review of claims 1–12 of U.S. Patent No. 9,235,934
B2 (Ex. 1002, “the ’934 patent”). This Decision addresses common issues
presented by all three petitions. For purposes of this Decision, we treat the
Petition in IPR2019-00062 as representative and cite to the record in
IPR2019-00062, unless otherwise indicated.
Electronic Scripting Products, Inc. (“Patent Owner”) filed a
Preliminary Response (IPR2019-00062, Paper 5, “Prelim. Resp.”) to the
Petition. Patent Owner argues that we should exercise our discretion under
35 U.S.C. § 314(a) to deny the Petition as an “unfair” follow-on petition.
Prelim. Resp. 7–11. Pursuant to our authorization (Paper 6, 4), Valve filed a
Reply (Paper 7, “Reply”) to Patent Owner’s follow-on petition argument,
and Patent Owner filed a Sur-reply (Paper 8, “Sur-reply”) to the Reply.
Valve is not the first party to request an inter partes review of the
’934 patent. HTC Corporation and HTC America, Inc. (collectively,
“HTC”) previously filed a petition requesting an inter partes review of the
’934 patent in IPR2018-01031 (“the 1031 IPR”). IPR2018-01031, Paper 2.
The Board denied institution of HTC’s petition because HTC failed to show
a reasonable likelihood of prevailing in establishing the unpatentability of at
least one challenged claim. Ex. 1060, 16. Valve filed the Petition in this
case after the Board denied institution in the 1031 IPR. Paper 4, 1;
Ex. 1060, 1.

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In General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
Case IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19)
(precedential), the Board articulated a non-exhaustive list of factors to be
considered in determining whether to exercise discretion under § 314(a) to
deny a petition that challenges the same patent as a previous petition. Under
the first General Plastic factor, we consider “whether the same petitioner
previously filed a petition directed to the same claims of the same patent.”
General Plastic, slip op. at 16. However, our application of the General
Plastic factors is not limited solely to instances when multiple petitions are
filed by the same petitioner. Rather, when different petitioners challenge the
same patent, we consider any relationship between those petitioners when
weighing the General Plastic factors. Based on our consideration of the
General Plastic factors, we determine that it is appropriate to exercise our
discretion under § 314(a) to deny the Petition.
A. 	Related Proceedings
The ’934 patent and a related patent, U.S. Patent No. 8,553,935 B2
(Ex. 1001, “the ’935 patent”), are the subject of a patent infringement
lawsuit, Electronic Scripting Products, Inc. v. HTC America, Inc., No. 3:17-
cv-05806-RS, filed on October 9, 2017, in the United States District Court
for the Northern District of California (“the District Court litigation”).
Pet. 1; Prelim. Resp. 2. Valve and HTC were named as co-defendants in
that lawsuit and were accused of infringing the ’934 patent based on HTC’s
VIVE devices that incorporate Valve’s technology. Prelim. Resp. 7–8
(citing Ex. 2010 (declaration of Valve’s in-house attorney)); Reply 1. In
response to Valve’s motion challenging venue, however, Patent Owner

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voluntarily dismissed Valve without prejudice on January 25, 2018.
Reply 1; Sur-reply 2.
As discussed above, HTC requested an inter partes review of the ’934
patent in the 1031 IPR, but the Board denied institution. Pet. 1–2; Prelim
Resp. 8; Ex. 1060, 16. HTC also requested an inter partes review of the
related ’935 patent in IPR2018-01032, and the Board granted institution.
Pet. 1. Valve requested that it be joined to IPR2018-01032, and the Board
granted that request. IPR2019-00074, Paper 10, 10. Valve also has pending
requests for inter partes review of the ’935 patent in IPR2019-00064,
IPR2019-00065, and IPR2019-00085. Pet. 2; Prelim. Resp. 8.
B. 	The ’934 Patent
The ’934 patent relates to determining an absolute pose of a
manipulated object in a real three-dimensional environment, particularly of a
manipulated object used by human users to interface with the digital world.
Ex. 1002, 1:24–28. An object’s pose is its position and orientation. Id. at
46:14. More specifically, an object’s pose combines the three linear
displacement coordinates (x, y, z) of any reference point on the object and
the three orientation angles, also called the Euler angles (ϕ, θ, ψ), that
describe the object’s pitch, yaw, and roll. Id. at 1:46–50.
Figure 23 of the ’934 patent is reproduced below.

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Figure 23 illustrates an embodiment having virtual reality simulation
program 970 running on computer 964. Id. at 40:15–16.
User or military trainee 968 interfaces with program 970 using
manipulated objects 952A and 952B. Id. at 39:38–40. For example,
“[o]bject 952B is a wearable article, in this case a pair of glasses worn by
military trainee 968.” Id. at 40:3–4. Glasses 952B are equipped with on-
board optical measuring arrangement 956B for sensing light emitted from
beacons 958, which are disposed in a 3-D grid pattern and modulated by
computer 964. Id. at 39:41–46, 39:50–51. Using a lens and a position-
sensing device (PSD), on-board optical measuring arrangement 956B infers
its own absolute pose by viewing beacons 958. Id. On-board optical
measuring arrangement 956B then transmits absolute pose data (x, y, z, ϕ, θ,

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ψ) to computer 964. Id. at 40:35–37, 40:57. Using the absolute pose data, a
combat scenario including avatar 968′, corresponding to trainee 968, is
displayed on display 974 to monitor the progress of trainee 968. Id. at
40:16–18, 40:24–26, 40:37–38. The inferred absolute pose of on-board
optical measuring arrangement 952B also allows for the looking direction of
trainee 968 to be automatically inferred, tracked, and visualized on display
974. Id. at 40:6–11, 40:23–24.
C. 	Illustrative Claim
Of the challenged claims, claims 1 and 7 are independent. Claim 1 is
illustrative of the claims at issue and is reproduced below.
1. A wearable article cooperating with a first plurality of
predetermined light sources disposed in a known pattern, said
wearable article comprising:
a) a photodetector configured to detect said first plurality
of predetermined light sources and generate photodetector data
representative 	of 	the 	positions 	of 	said 	first 	plurality 	of
predetermined light sources; and
b) a controller configured to identify a derivative pattern
of said first plurality of predetermined light sources from said
photodetector data, wherein said derivative pattern is indicative
of the position of said photodetector.
Ex. 1002, 51:6–16.
D. 	Evidence of Record
In Valve’s three petitions for inter partes review of the ’934 patent,
Valve relies on the following references and declarations.
IPR2019-00062
Reference or Declaration 	Exhibit No.
Declaration of Dr. Gregory Welch 	Ex. 1003
Masaki Maeda et al., Tracking of User Position and
Orientation by Stereo Measurement of Infrared Markers
Ex. 1047

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and Orientation Sensing, PROCEEDINGS OF THE EIGHTH
I NTERNATIONAL SYMPOSIUM ON WEARABLE COMPUTERS
77 (2004) (“Maeda”)
Anderson et al., U.S. Patent No. 7,063,256 B2 (filed Jan.
23, 2004; issued June 20, 2006) (“Anderson”)
Ex. 1054
IPR2019-00063
Reference or Declaration 	Exhibit No.
Declaration of Dr. Gregory Welch 	Ex. 1003
Greg Welch et al., High-Performance Wide-Area Optical
Tracking, PRESENCE: TELEOPERATORS AND V IRTUAL
ENVIRONMENTS 1 (Feb. 2001) (“Welch-HiBall”)
Ex. 1004
IPR2019-00084
Reference or Declaration 	Exhibit No.
Declaration of Dr. Gregory Welch 	Ex. 1003
Masaki Maeda et al., A Wearable AR Navigation System
Using Vision Based Tracking with Infrared, TECHNICAL
REPORT OF IEICE (2004) (“Maeda II”)
Ex. 1048
Masaki Maeda et al., Proposal of a Three-dimensional
User Position and Orientation Detection Technique
Using Infrared Identifiers for a Wearable System, THE
65TH NATIONAL CONVENTION OF THE I NFORMATION
PROCESSING SOCIETY OF J APAN 203 (2003) (“Maeda I”)
Ex. 1064
E. 	Asserted Grounds of Unpatentability
In Valve’s three petitions for inter partes review of the ’934 patent,
Valve asserts that the challenged claims are unpatentable on the following
grounds.
IPR2019-00062
Claims Challenged 	Basis 	Reference
1–12 	§ 103(a) 	Maeda
1–12 	§ 103(a) 	Anderson

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IPR2019-00063
Claims Challenged 	Basis 	Reference
1–12 	§ 103(a) 	Welch-HiBall
IPR2019-00084
Claims Challenged 	Basis 	References
1–12 	§ 103(a) 	Maeda I and Maeda II
II. 	ANALYSIS
A. 	35 U.S.C. § 314(a)
Patent Owner argues that the Petition should be denied under
35 U.S.C. § 314(a) because the Petition challenges the same claims of the
’934 patent as the petition in the 1031 IPR, and Valve is “similarly situated”
to HTC, the petitioner in the 1031 IPR. Prelim. Resp. 7–9. Patent Owner
also argues that Valve “waited until HTC’s petition on this patent was
reviewed by the Board (as a test case), and only then filed its own petition
on cumulative grounds on the same patent.” Id. at 9–10 (emphasis omitted).
Patent Owner, therefore, contends that the Petition “is nothing more than an
‘unfair’ follow-on petition of the previously denied HTC IPR petition.” Id.
at 11. Valve responds that the Board should not deny the Petition under
§ 314(a) because HTC is an “unrelated” company that at most shares “[a]
common desire to see a patent invalidated.” Reply 1–2. Valve also
responds that the timing of its Petition was the result of a recent change in
the law regarding the one-year time bar under 35 U.S.C. § 315(b). Reply 2.
For the reasons discussed below, we determine that it is appropriate to
exercise our discretion under § 314(a) to deny the Petition.

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1. 	Legal Framework
35 U.S.C. § 314(a) states that
[t]he Director may not authorize an inter partes review to be
instituted unless the Director determines that the information
presented in the petition filed under section 311 and any response
filed 	under 	section 	313 	shows 	that 	there 	is 	a 	reasonable
likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.
Under § 314(a), the Director has discretion to deny institution of an inter
partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
the Patent Office’s discretion.”).
As discussed above, in the precedential General Plastic decision, the
Board articulated a non-exhaustive list of factors to be considered in
determining whether to exercise discretion under § 314(a) to deny a petition
that challenges the same patent as a previous petition. General Plastic, slip
op. at 15–16. These factors are
1. whether 	the 	same 	petitioner 	previously 	filed 	a 	petition
directed to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner
knew of the prior art asserted in the second petition or should
have known of it;
3. whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s decision
on whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner
learned of the prior art asserted in the second petition and the
filing of the second petition;
5. whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions directed
to the same claims of the same patent;

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6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the
Director notices institution of review.
Id. at 16.
2. 	Factor One
Under the first General Plastic factor, we consider “whether the same
petitioner previously filed a petition directed to the same claims of the same
patent.” Id. at 16. Patent Owner argues that the Petition in this case
challenges the same claims of the ’934 patent as the petition in the 1031 IPR,
and Valve is “similarly situated” to HTC, the petitioner in the 1031 IPR.
Prelim. Resp. 7–9. Valve responds that HTC is an “unrelated” company that
at most shares “[a] common desire to see a patent invalidated.” Reply 1.
The petitions in these cases and the previous petition in the 1031 IPR
all challenge claims 1–12 of the ’934 patent. See, e.g., Pet. 3; IPR2018-
01031, Paper 2, 3. Although Valve did not file the petition in the 1031 IPR,
as discussed above, our application of the General Plastic factors is not
limited solely to instances when multiple petitions are filed by the same
petitioner. Rather, when different petitioners challenge the same patent, we
consider any relationship between those petitioners when weighing the
General Plastic factors. See NetApp Inc. v. Realtime Data LLC, Case
IPR2017-01195, slip op. at 10 (PTAB Oct. 12, 2017) (Paper 9) (“[T]he
General Plastic factors provide a useful framework for analyzing the facts
and circumstances present in this case, in which a different petitioner filed a
petition challenging a patent that had been challenged already by previous
petitions.”). Here, Valve and HTC were co-defendants in the District Court
litigation and were accused of infringing the ’934 patent based on the same

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product, namely HTC’s VIVE devices that incorporate technology licensed
from Valve. Prelim. Resp. 7–8; Ex. 2009 ¶ 7; Ex. 2010 ¶¶ 6–7. Indeed, in
that lawsuit, Valve represented that “HTC’s VIVE devices incorporate
certain Valve technologies under a technology license from Valve,” and that
“Valve employees did provide HTC with technical assistance during the
development of the accused VIVE devices.” Ex. 2010 ¶¶ 6–7. Although
Valve was voluntarily dismissed from the District Court litigation after it
filed a motion challenging venue (Reply 1; Sur-reply 2), Valve was aware of
Patent Owner’s infringement allegations at the time HTC filed its petition in
the 1031 IPR (Ex. 2009 ¶ 7; Ex. 2010 ¶¶ 6–7).
We determine that the first General Plastic factor weighs against
institution. As discussed above, the petitions in these cases challenge the
same claims of the ’934 patent as the previous petition in the 1031 IPR. As
also discussed above, Valve and HTC were co-defendants in the District
Court litigation and were accused of infringing the ’934 patent based on
HTC’s VIVE devices that incorporate technology licensed from Valve.
Thus, there is a significant relationship between Valve and HTC with respect
to Patent Owner’s assertion of the ’934 patent. The complete overlap in the
challenged claims and the significant relationship between Valve and HTC
favor denying institution.
3. 	Factor Two
Under the second General Plastic factor, we consider “whether at the
time of filing of the first petition the petitioner knew of the prior art asserted
in the second petition or should have known of it.” General Plastic, slip op.
at 16. This factor includes considering whether the prior art relied on in the
later petition “could have been found with reasonable diligence.” Id. at 20.

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Patent Owner argues that Valve “was simply lying in wait and fully
aware of the alleged new prior art.” Prelim. Resp. 10. Patent Owner points
out that the Maeda reference relied on in the Petition in this case cites two
articles by Dr. Gregory Welch, the same author as the prior art references in
the 1031 IPR. Id. Patent Owner contends that “Maeda’s citation of these
references clearly shows that Maeda’s and Welch’s research groups were
well aware of each other,” and that “present Petitioner Valve was also aware
of prior Petitioner HTC’s prior art references.” Id.
We determine that the second General Plastic factor weighs against
institution. With respect to IPR2019-00063, Valve knew or should have
known of the Welch-HiBall reference around the time HTC filed its petition
in the 1031 IPR because it was one of the two references relied upon by
HTC. Ex. 1060, 5. With respect to IPR2019-00062 and IPR2019-00084, as
indicated above, the petitions in those cases rely on references attributable to
Maeda and Anderson. Although Valve may not have known of the Maeda
and Anderson references at the time HTC filed its petition in the 1031 IPR,
the timing of Valve’s petitions suggests that it could have found the Maeda
and Anderson references through the exercise of reasonable diligence around
the time of HTC’s petition. Specifically, by its own admission, Valve began
preparing its petitions on or after August 16, 2018, and filed them less than
two months later, which indicates that Valve found the Maeda and Anderson
references quickly. See Reply 2. Valve’s knowledge of the Welch-HiBall
reference and its ability to quickly locate the Maeda and Anderson
references favor denying institution.

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4. 	Factor Three
Under the third General Plastic factor, we consider “whether at the
time of filing of the second petition the petitioner already received the patent
owner’s preliminary response to the first petition or received the Board’s
decision on whether to institute review in the first petition.” General
Plastic, slip op. at 16. The Board previously explained that
factor 	3 	is 	directed 	to 	Petitioner’s 	potential 	benefit 	from
receiving and having the opportunity to study Patent Owner’s
Preliminary Response, as well as our institution decisions on the
first-filed petitions, prior to its filing of follow-on petitions. . . .
Multiple, staggered petitions challenging the same patent and
same claims raise the potential for abuse. 	The absence of any
restrictions on follow-on petitions would allow petitioners the
opportunity to strategically stage their prior art and arguments in
multiple petitions, using our decisions as a roadmap, until a
ground is found that results in the grant of review. 	All other
factors aside, this is unfair to patent owners and is an inefficient
use of the inter partes review process and other post-grant review
processes.
Id. at 17–18 (internal citation and footnote omitted). Patent Owner argues
that Valve “waited until HTC’s petition on this patent was reviewed by the
Board (as a test case)” and then filed its Petition. Prelim. Resp. 9–10.
We determine that the third General Plastic factor weighs against
institution. In the 1031 IPR, the Board construed the term “wearable article”
in the preamble of claims 1 and 7 as limiting and including a “controller.”
IPR2018-01031, Paper 6, 11. The Board determined that HTC failed to
show that the asserted prior art teaches a wearable article including the
claimed controller. Id. at 15. Valve had access to the Board’s institution
decision in the 1031 IPR before filing the Petition and used the institution
decision as guide to addressing the deficiencies in the 1031 IPR. See Pet. 27

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(“The Board has construed the preamble of claims 1 and 7 to be limiting.”).
For example, Valve submitted a declaration from the same expert that HTC
used in the 1031 IPR, Dr. Welch. Ex. 1003 ¶ 9. In this case, Dr. Welch
acknowledges that the Board “disagreed with certain of [his] prior opinions
regarding the ’934 Patent” in the 1031 IPR, and he “address[es] those
issues” in his declaration. Id.; see also id. ¶¶ 100, 122, 149, 208, 261, 262,
275, 287, 288, 291. Valve’s use of the Board’s institution decision in the
1031 IPR as a roadmap for the Petition in this case implicates the fairness
concerns discussed in General Plastic and favors denying institution.
5. 	Factors Four and Five
Under the fourth and fifth General Plastic factors, we consider “the
length of time that elapsed between the time the petitioner learned of the
prior art asserted in the second petition and the filing of the second petition”
and “whether the petitioner provides adequate explanation for the time
elapsed between the filings of multiple petitions directed to the same claims
of the same patent.” General Plastic, slip op. at 16.
Patent Owner argues that “given that Valve and HTC have been
immersed and were intimately involved in [the] subject ‘VIVE’ technology
in tandem and were both ‘sued at the same time,’ there can be no colorable
reason that their petitions should not have been filed ‘around the same
time.’” Prelim. Resp. 10. Valve responds that the timing of its Petition was
dictated by the Federal Circuit’s decision in Click-to-Call Technologies, LP
v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). Reply 2. Valve argues
that, under the Board’s established practice, the voluntary dismissal of a
district court complaint without prejudice tolled the one-year deadline for
requesting an inter partes review under § 315(b). Id. Valve contends that,

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as a result, it “had no intention of filing any IPR petitions after its dismissal”
from the District Court litigation. Id. According to Valve, however, Click-
to-Call changed the Board’s practice by holding that the voluntary dismissal
of a district court complaint without prejudice does not toll the one-year
deadline under § 315(b). Id. Thus, after Click-to-Call, Valve “immediately
began preparing its own petitions—including analyzing prior art and
retaining an expert—to avoid a statutory bar if [Patent Owner] refiled in the
future.” Id. Valve states that the Board’s denial of HTC’s petition in the
1031 IPR “was not a factor in Valve’s decision to pursue its petitions.” Id.
We determine that the fourth and fifth General Plastic factors weigh
against institution. The Click-to-Call decision may have prompted Valve to
file the Petition before the deadline under § 315(b), but it does not excuse
the five-month delay between the filing of HTC’s petition and Valve’s
Petition. As discussed above, Valve could have found the prior art asserted
in its Petition through the exercise of reasonable diligence at or around the
time of HTC’s petition. As also discussed above, Valve was a co-defendant
with HTC in the District Court litigation and provides HTC with technology
used in the accused VIVE devices. As a licensor of technology incorporated
in the accused products, Valve’s interests are aligned closely with HTC’s
interests, and Valve could have filed its Petition at or around the same time
as HTC. The fact that Valve waited five months after HTC’s petition to file
the Petition in this case favors denying institution. If Click-to-Call had been
decided differently, and Valve had waited even longer to file these petitions,
Valve’s delay still would favor denying institution.

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6. 	Factors Six and Seven
Under the sixth and seventh General Plastic factors, we consider “the
finite resources of the Board” and “the requirement under 35 U.S.C.
§ 316(a)(11) to issue a final determination not later than 1 year after the date
on which the Director notices institution of review.” General Plastic, slip
op. at 16. The sixth and seventh factors are efficiency considerations. Id. at
16–17; see also Trial Practice Guide Update,2 at 9 (referenced at 83 Fed.
Reg. 39,989 (Aug. 13, 2018)) (noting that the Director’s discretion under
§ 314(a) is informed by 35 U.S.C. § 316(b), which requires “the efficient
administration of the Office, and the ability of the Office to timely complete
proceedings instituted under this chapter”).
We determine that the sixth and seventh General Plastic factors weigh
against institution. In general, having multiple petitions challenging the
same patent, especially when not filed at or around the same time as in this
case, is inefficient and tends to waste resources. Here, Valve waited until
after the institution decision in the 1031 IPR, and then filed not one but three
additional petitions. These serial and repetitive attacks implicate the
efficiency concerns underpinning General Plastic, and, thus, favor denying
institution.
7. 	Summary
As discussed above, the evidence of record shows that all the General
Plastic factors weigh against institution. As a result, we determine that it is
appropriate to exercise our discretion under § 314(a) to deny institution.
2 Available at https://go.usa.gov/xU7GP.

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III. 	CONCLUSION
For the forgoing reasons, we exercise our discretion under § 314(a) to
deny institution of an inter partes review.
IV. 	ORDER
It is hereby
ORDERED that the Petition is denied, and an inter partes review is
not instituted.

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PETITIONER:
Brian C. Nash
PILLSBURY WINTHROP SHAW PITTMAN LLP
brian.nash@pillsburylaw.com
Reynaldo C. Barcelo
BARCELO, HARRISON & WALKER, LLP
rey@bhiplaw.com
PATENT OWNER:
Marek Alboszta
marek@patentsafari.com