Valve Corp. v. Ironburg Inventions Ltd., No. 20-1315 (Fed. Cir. 2021)
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The separate inter partes review (IPR) proceedings concerned the 688 patent, and the 229 patent, which have the same inventors and owner. Both are directed to controllers for games consoles. The Patent Board determined that nine claims of the 688 patent were unpatentable as anticipated by the Uy application; five other claims were not unpatentable as obvious over a claimed prior art reference (Burns article) in combination with other references because a copy of the Burns article that Valve relied on had not been authenticated. The 229 patent is directed to “[a] hand[-]held controller for a games console,” “wherein the controller further includes at least one additional control located on a back of the controller,” The Board determined that none of the claims of the 229 patent were unpatentable as anticipated by Uy because Uy did not teach “an elongate member” that “is inherently resilient and flexible,” and because Valve failed to show that a copy of the Burns article Valve relied on as a reference to show obviousness was prior art.
The Federal Circuit reversed the determination that the Exhibit is not prior art and vacated the determination that five claims of the ’688 patent and multiple claims of the 229 patent were not shown to be unpatentable. The court remanded for the Board to consider Valve’s arguments that relied on the Exhibit as to those claims. The court affirmed that other of the patents were not unpatentable.
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