Ironburg Inventions Ltd. v. Valve Corporation

Filing 372

PRETRIAL ORDER: Counsel shall meet and confer and file, by 6/1/2020, a revised exhibit list. This case will be scheduled for trial before a jury as soon as possible. Signed by Judge Thomas S. Zilly. (MW)

Case 2:17-cv-01182-TSZ Document 372 Filed 05/04/20 Page 1 of 11

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The Honorable Thomas S. Zilly

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UNITED STATES DISTRICT COURT

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WESTERN DISTRICT OF WASHINGTON AT SEATTLE

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IRONBURG INVENTIONS LTD.,
Plaintiff,

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No. 2:17-cv-01182-TSZ
PRETRIAL ORDER

v.
VALVE CORPORATION,
Defendant.

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JURISDICTION
Jurisdiction is vested in this Court under 28 U.S.C. §§1331 and 1138(a). This is an action
for patent infringement arising under the patent laws of the United States, 35 U.S.C. § 1 et seq.

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CLAIMS AND DEFENSES
Plaintiff, Ironburg Inventions Ltd. (“Ironburg”), will pursue at trial the following claims
against Defendant, Valve Corporation (“Valve”):

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A claim for damages under 35 U.S.C. § 284 for Valve’s infringement of United States Patent

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No. 8,641,525 (the “’525 Patent” or the “Patent-in-Suit”) entitled, “CONTROLLER FOR VIDEO

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GAME CONSOLE.” Ironburg contends that Valve’s accused device, the “Steam Controller”,

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infringes the following claims of the ‘525 Patent: Claims 2, 4, 7, 9, 10, 11 and 18.

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A claim for increased or enhanced damages under 35 U.S.C. § 284 based on Valve’s willful
infringement of the claims in the ‘525 Patent.

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A claim for Ironburg’s costs, expenses, and reasonable attorneys’ fees under 35 U.S.C.
§ 285.

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A claim for injunctive relief restraining Valve from further infringing the Patent-in-Suit.

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A claim for such other relief as the Court may deem just and proper under the circumstances.

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Valve will assert at trial the following defenses and counterclaims to Ironburg’s claims:
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Valve has not infringed any asserted claim of the ’525 Patent.
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Ironburg’s claims for infringement of the ’525 Patent under the doctrine of equivalents are
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barred by the doctrines of prosecution history estoppel and/or prosecution disclaimer, ensnarement
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and vitiation.
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If Valve is found to have infringed the ’525 Patent, any such infringement was not willful.
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Ironburg is not entitled to any increased or enhanced damages under 35 U.S.C. § 284.
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Ironburg is not entitled to recover any of its costs, expenses, or attorneys’ fees.
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Ironburg is not entitled to injunctive relief.
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A claim for any other relief the Court may deem just and proper under the circumstances.
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ADMITTED FACTS
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The following facts are admitted by the parties:
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1.

The United States Patent and Trademark Office issued the ’525 Patent to Ironburg

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on February 4, 2014.
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2.

Ironburg is, and has been at all times since February 4, 2014, the owner and assignee

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of record of the ’525 Patent.
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3.

As part of its business, Ironburg licenses the ’525 Patent to other companies,

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including to Scuf Gaming International LLC (“Scuf”), Microsoft Corporation and others.
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4.

Valve is a video gaming company that develops and sells gaming software,

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hardware, and related devices and accessories, and that provides an on-line gaming platform.
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PRETRIAL ORDER
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5.

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controller market.

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At least as early as 2013, Valve announced its intention to enter the video game

Ironburg, through its counsel, sent Valve a letter dated March 7, 2014 and provided

it with notice of the ’525 Patent.

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7.

Valve began to sell its Steam Controller product in 2015.

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8.

In connection with its design of the Steam Controller, Valve made no attempt to

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design around the ’525 Patent.
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None of the design changes that Valve made to the Steam Controller were made in

response to Ironburg’s March 7, 2014 letter notifying Valve of the ‘525 Patent.
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Valve continued to sell its Steam Controller product in the United States at all times

from June 2015 up to and including December 2019.
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Between June 1, 2015 and December 31, 2019, Valve sold approximately 1,612,136

of its Steam Controller products, all of which were manufactured in the United States.
ISSUES OF LAW

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1.

The amount of enhanced damages and fees and costs, if any, under 35 U.S.C. §§ 284

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and 285 to which Ironburg is entitled. Valve denies Ironburg is entitled to any enhanced damages,

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fees, or costs.

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2.

Whether or not this is an exceptional case under 35 U.S.C. § 285 such that either

party is entitled to its reasonable attorneys’ fees.
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Whether or not Ironburg is entitled to injunctive relief restraining Valve from further

infringing the ‘525 Patent. Valve denies it has infringed the ‘525 Patent.
EXPERT WITNESSES

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(a) Each party shall be limited to one expert witness on the issues of infringement and one
expert on the issues of damages.
(b) The names and addresses of the expert witnesses to be used by each party at the trial
and the issue upon which each will testify is:

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(1) On behalf of Ironburg:

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Garry E. Kitchen (infringement)
SGK Service Inc.
3494 Camino Tassajara, #403
Danville, CA 94506

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Kenneth Serwin, Ph.D. (damages)
Berkeley Research Group, LLC
2200 Powell Street, Suite 1200
Emeryville, CA 94608

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(2) On behalf of Valve:

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Robert Dezmelyk (infringement)
LCS/Telegraphics
1 Bancroft Road
Newton, NH 03858

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Ambreen Salters (damages)
StoneTurn Group
One Shell Plaza
910 Louisiana Street, Suite 4905
Houston, TX 77002

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OTHER WITNESSES

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The names and addresses of witnesses, other than experts, to be used by each party at the
time of trial and the general nature of the testimony of each are:

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(a) On behalf of Ironburg:

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Duncan Ironmonger (will testify)
3970 Johns Creek Ct., #325
Suwanee, GA 30024

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Mr. Ironmonger is an inventor of the Patent-in-Suit and CEO & Co-Founder of Ironburg

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and Scuf. Mr. Ironmonger will testify regarding the inventions disclosed in the Patent-in-Suit;

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Ironburg’s and Scuf’s business; the value of and revenues derived from the Patent-in-Suit; the

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licensing of the Patent-in-Suit; Ironburg’s discussions with Valve regarding the Patent-in-Suit,

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including licensing of the Patent-in-Suit; and damages issues.

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Karl Quackenbush (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Mr. Quackenbush will testify regarding Valve’s knowledge of the Patent-in-Suit and
Ironburg’s infringement claims, Valve’s failure to design around the Patent-in-Suit, Valve’s refusal
to obtain a license to the Patent-in-Suit, and willful infringement issues.
Scott Lynch (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Mr. Lynch will testify regarding the design, development and sales of Valve’s accused
Steam Controller product, Valve’s knowledge of the Patent-in-Suit, the revenues derived by Valve
from its sales of the Steam Controller product, and willful infringement issues.
Jane Lo (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Ms. Lo will testify regarding the revenues derived by Valve from its sales of the Steam

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Controller product and bundled products and damages issues.
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Kristian Miller (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084

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Mr. Miller will testify regarding the revenues derived by Valve from its sales of the Steam

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Controller product and bundled products.

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Jeff Bellinghausen (will testify)
Amazon.com, Inc.
425 106th Ave. NE
Bellevue, WA 98004
Mr. Bellinghausen will testify regarding the design and development of Valve’s Steam
Controller product and willful infringement issues.

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Nico Cosereanu (possible witness only)
3970 Johns Creek Ct #325
Suwanee, GA 30024

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Ms. Cosereanu will testify regarding Ironburg’s and Scuf’s business, financial issues

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relating to the Ironburg and the Patent-in-Suit, the value of and revenues derived from the Patent-

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in-Suit, the licensing of the Patent-in-Suit, and damages issues. Ms. Cosereanu was deposed by

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Valve on February 27, 2020. The parties have agreed that any portions of Ms. Cosereanu’s

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deposition transcript to be offered by the parties at trial pursuant to LCR 32(e) shall be designated

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consistent with LCR 16(h) and (i) by March 13, 2020.

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Greg Coomer (possible witness only)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084

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Mr. Coomer will testify regarding the design and development of Valve’s Steam Controller

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product and willfulness infringement issues.

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Scott Dalton (possible witness only)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Mr. Dalton will testify regarding the design and development of Valve’s Steam Controller
product and willfulness infringement issues.
Eric Hope (possible witness only)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Mr. Hope will testify regarding the design and development of Valve’s Steam Controller

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product and the willful infringement issues.
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Jeff Keyzer (possible witness only)
17304 NE 34th Street
Redmond, WA 98052

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Mr. Keyzer will testify regarding the design and development of Valve’s Steam Controller
product and the willful infringement issues.

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Jason Beach (possible witness only)
6509A Ellis Ave. A
Seattle, WA 98108

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Mr. Beach will testify regarding the design and development of Valve’s Steam Controller

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product and the willful infringement issues.

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Greg Matelich (possible witness only)
10515 324th P1 SE
Issaquah, WA 98027

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Mr. Matelich will testify regarding the design and development of Valve’s Steam Controller

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product and the willful infringement issues.
Ironburg reserves the right to call any witnesses disclosed by Valve, any witnesses whose

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testimony cannot reasonably be anticipated before trial, and any rebuttal witnesses, regardless of
whether listed above.

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(b)

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Scott Lynch (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084

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On behalf of Valve:

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Mr. Lynch is Valve’s Chief Operating Officer. Mr. Lynch will testify regarding Valve and

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its business, Valve’s development and marketing of the Steam Controller, the video gaming market

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generally, and Valve’s costs and sales of the Steam Controller.

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Jeff Bellinghausen (will testify)
Amazon.com, Inc.
425 106th Ave. NE
Bellevue, WA 98004

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Mr. Bellinghausen is a former Valve engineer who worked on developing the Steam

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Controller. Mr. Bellinghausen will testify regarding the development and design of the Steam

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Controller, the video gaming market generally, Valve patents relating to gaming controllers.

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Karl Quackenbush (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Mr. Quackenbush is Valve’s General Counsel. Mr. Quackenbush will testify regarding

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Valve’s pre-suit knowledge of and communications with Ironburg regarding the ’525 Patent.
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Eric Hope (will testify)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084

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Mr. Hope is a Valve employee who was involved with developing and marketing the Steam
Controller. Mr. Hope will testify regarding Valve and its business, Valve’s development and
marketing of the Steam Controller, and the video gaming market generally.
Kristian Miller (possible witness only)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084
Mr. Miller is a Valve employee with a background in economics. Mr. Miller will testify
regarding Valve’s marketing and sales of the Steam Controller.

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Jane Lo (possible witness only)
Valve Corporation
10400 NE 4th Street, Suite 1400
Bellevue, WA 90084

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Ms. Lo is Valve employee in Valve’s accounting department. Ms. Lo will testify regarding

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the amount of Valve’s sales of the Steam Controller.
Simon Burgess (possible witness only)
Howe Lane
Rothley, Leicester
United Kingdom
PRETRIAL ORDER
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Mr. Burgess is the first-named inventor of the ’525 Patent and co-founder of Ironmonger

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and Scuf. Mr. Burgess will testify by video deposition regarding the conception and development

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of the inventions claimed in the ’525 Patent, Ironburg’s and Scuf’s businesses, and the

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circumstances surrounding his departure from Ironburg and Scuf.

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Nico Cosereanu (possible witness only)
3970 Johns Creek Ct #325
Suwanee, GA 30024

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Ms. Cosereanu will testify regarding Ironburg’s and Scuf’s business, financial issues

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relating to Ironburg and the Patent-in-Suit, the value of and revenues derived from the Patent-in-

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Suit, the licensing of the Patent-in-Suit, and damages issues. Ms. Cosereanu was deposed by Valve
on February 27, 2020. The parties have agreed that any portions of Ms. Cosereanu’s deposition

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transcript to be offered by the parties at trial pursuant to LCR 32(e) shall be designated consistent
with LCR 16(h) and (i) by March 13, 2020.

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Valve reserves the right to call any witnesses disclosed by Ironburg, any witnesses whose

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testimony cannot reasonably be anticipated before trial, and any rebuttal witnesses, regardless of

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whether listed above.

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EXHIBITS

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Counsel shall meet and confer and file, by June 1, 2020, a revised exhibit list.
ACTION BY THE COURT

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(a) This case will be scheduled for trial before a jury as soon as possible.
(b) Trial briefs, docket nos. 346 and 349, have been submitted to the Court.
(c) Proposed voir dire questions were submitted by the parties on February 28, 2020.
Proposed jury instructions were submitted by the parties on March 5, 2020.
(d) A telephonic pretrial conference was held on May 1, 2020, at 10:00 a.m.

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PRETRIAL ORDER
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This order has been approved by the parties as evidenced by the signatures of their

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counsel and the attorneys’ consent during the pretrial conference. This order shall control the

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subsequent course of the action unless modified by a subsequent order.

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This order shall not be amended except by order of the court pursuant to agreement of the
parties or to prevent manifest injustice.

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DATED this 1st day of May, 2020.
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A

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Thomas S. Zilly
United States District Judge

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FORM APPROVED:
DATED: February 28, 2020

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MANATT, PHELPS & PHILLIPS, LLP

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By:
/s/ Robert D. Becker
Robert D. Becker, pro hac vice
Christopher L. Wanger, pro hac vice
One Embarcadero Center, 30th Floor
San Francisco, CA 94111
Tel: [phone]; Fax [phone]
Email: [e-mail]
Email: [e-mail]

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SAVITT BRUCE & WILLEY LLP
Stephen C. Willey, WSBA #24499
1425 Fourth Avenue, Suite 800
Seattle, WA 98101-2272
Tel: [phone]; Fax [phone]
Email: [e-mail]

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Attorneys for Ironburg Inventions Ltd.

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Case 2:17-cv-01182-TSZ Document 372 Filed 05/04/20 Page 11 of 11

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Dated: February 28, 2020

Respectfully submitted,

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FOX ROTHSCHILD LLP

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By: /s/ Gavin W. Skok
Gavin W. Skok, WSBA #29766
FOX ROTHSCHILD LLP
1001 Fourth Avenue, Suite 4500
Seattle, WA 98154
Telephone:
206.624.3600
Facsimile:
206.389.1708
E-mail: [e-mail]

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B. Trent Webb (pro hac vice)
Patrick A. Lujin (pro hac vice)
Mark D. Schafer (pro hac vice)
Lydia C. Raw (pro hac vice)
SHOOK, HARDY & BACON L.L.P.
2555 Grand Blvd.
Kansas City, Missouri 64108
Telephone:
816.474.6550
Facsimile:
816.421.5547
E-mail: [e-mail]
[e-mail]
[e-mail]
[e-mail]

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Tanya L. Chaney (pro hac vice)
SHOOK, HARDY & BACON L.L.P.
600 Travis Street, Suite 3400
Houston, Texas 77002
Telephone:
713.227.8008
Facsimile:
713.227.9508
E-mail: [e-mail]

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Reynaldo C. Barcelo
Joshua C. Harrison
BARCELO HARRISON & WALKER LLP
2901 West Coast Highway, Suite 200
Newport Beach, CA 92663
Telephone:
949.340.9736
Facsimile:
949.258.5752
Email: [e-mail]
[e-mail]

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Attorneys for Defendant
VALVE CORPORATION

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PRETRIAL ORDER
(No. 2:17-cv-01182-TSZ)

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