A Remarkable Turnaround: After Remand From Federal Circuit, PTAB Finds Many Game Controller Patent Claims Unpatentable

In the latest (but perhaps not the last) chapter in a long-running dispute, the USPTO’s Patent Trial and Appeal Board issued a Final Written Decision recently (attached), representing a remarkable change of circumstances in favor of our petitioner client, Valve Corporation. This decision is interesting as a relatively rare opinion on remand from the Federal Circuit.

In its original FWD, issued in 2019, the PTAB concluded that none of the claims of the patent at issue had been proven to be unpatentable on obviousness grounds.  In large part, the basis for this decision was the PTAB’s conclusion that one of the prior art references presented by Valve (specifically, the “Burns” reference, which was an online marketing review of an embodiment of the claim invention) was not shown to be a printed publication.  Based on this threshold issue, all obviousness arguments that included the Burns reference were initially unsuccessful at the PTAB.

Valve appealed this conclusion to the Federal Circuit, which ruled in a precedential opinion in 2021 that the Burns reference was indeed a printed publication, as Valve had argued all along, and remanded the obviousness issues back to the PTAB.

Almost two years after the Federal Circuit’s decision, the PTAB’s new decision concludes that all the patent’s independent claims (and many dependent claims) are unpatentable as obvious, agreeing with Valve’s arguments from the start.

We share this result with our co-counsel at Shook, Hardy & Bacon and Fox Rothschild, and with Valve’s excellent in-house legal team.  For now, more chapters of this saga likely still remain to be written…

 

About Mr. Barceló:

Mr. Barceló represents high-technology companies in various intellectual property matters, including prosecution, litigation, transactions, and counseling involving patents, trademarks, copyrights, domain names, and trade secrets.

Mr. Barceló is a registered patent attorney out of the firm’s Newport Beach office in Orange County, California located at:

2901 West Coast Hwy 
Suite 200 
Newport Beach, CA 92663