IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

IRONBURG INVENTIONS LTD,

Plaintiff,

v

BATTLE BEAVER, LLC,

Defendant.

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CASE NO. 3:22-CV-00686-X

PLAINTIFF IRONBURG INVENTIONS LTD.’S RESPONSE IN OPPOSITION TO 

DEFENDANT BATTLE BEAVER, LLC’S MOTION TO DISMISS

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PLAINTIFF IRONBURG INVENTIONS LTD.’S RESPONSE IN OPPOSITION TO 

DEFENDANT BATTLE BEAVER, LLC’S MOTION TO DISMISS PAGE i

TABLE OF CONTENTS

I. INTRODUCTION AND SUMMARY OF ARGUMENT ................................................. 1

II. THE ASSERTED PATENTS............................................................................................. 2

III. ARGUMENT AND AUTHORITIES................................................................................. 4

A. Legal Standards....................................................................................................... 4

1. Rule 12(b)(6)............................................................................................... 4

2. Patent Eligibility under 35 U.S.C. § 101 and Alice .................................... 5

B. Battle Beaver Fails to Prove that the Claims are Ineligible Under § 101 ............... 6

1. Alice Step One: Battle Beaver Fails to Show that the Claims are Directed 

to an Abstract Idea ...................................................................................... 7

2. Alice Step Two: The Claims Add an Inventive Concept .......................... 13

3. Battle Beaver’s Section 101 Eligibility Argument Is Premature .............. 14

C. Battle Beaver’s Non-Infringement Argument is Inappropriate at the Pleading 

Stage...................................................................................................................... 16

IV. CONCLUSION................................................................................................................. 19

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TABLE OF AUTHORITIES

Cases Page(s)

Aatrix Software, Inc. v. Green Shades Software, Inc.,

890 F.3d 1354 (Fed. Cir. 2018)........................................................................................................5

Aatrix Software, Inc. v. Green Shades Software, Inc.,

882 F.3d 1121 (Fed. Cir. 2018)............................................................................................6, 14, 15

Affinity Labs of Tex., LLC v. DirectTV, LLC,

838 F.3d 1253 (Fed. Cir. 2016)........................................................................................................8

Alice Corp. Pty. v. CLS Bank Int'l,

573 U.S. 208 (2014)............................................................................................................... passim

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,

841 F.3d 1288 (Fed. Cir. 2016)........................................................................................................7

AR Design Innovations LLC v. Ashley Furniture Indus., Inc.,

No. 4:20-CV-392-SDJ, 2021 WL 1213551 (E.D. Tex. Mar. 30, 2021) ..........................................7

Ashcroft v. Iqbal,

556 U.S. 662 (2009).........................................................................................................................4

Bancorp Servs., LLC v. Sun Life Assurance Co. of Can.,

687 F.3d 1266 (Fed. Cir. 2012)......................................................................................................15

Bell Atlantic Corp. v. Twombly,

550 U.S. 544 (2007).........................................................................................................................4

Berkheimer v. HP Inc.,

881 F.3d 1360 (Fed. Cir. 2018)..........................................................................................5, 6, 7, 14

Bilski v. Kappos,

561 U.S. 593 (2010).........................................................................................................................5

Blue Yonder Grp. v. Kinaxis Inc.,

No. 3:20-CV-03636-K, 2021 WL 2698437 (N.D. Tex. May 17, 2021)........................................15

Cap Export, LLC v. Zinus, Inc.,

No. 2:16-cv-00371-SVW-MRW, 2019 WL 982883 (C.D. Cal. Jan. 24, 2019) ..............................9

Cellspin Soft, Inc. v. Fitbit, Inc.,

927 F.3d 1306 (Fed. Cir. 2019)........................................................................................................5

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Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,

776 F.3d 1343 (Fed. Cir. 2014)........................................................................................................8

Elec. Power Grp., LLC v. Alstom S.A.,

830 F.3d 1350 (Fed. Cir. 2016)........................................................................................................8

Enfish, LLC v. Microsoft Corp.,

822 F.3d 1327 (Fed. Cir. 2016)..............................................................................................6, 7, 10

Erfindergemeinschaft Uropep GbR v. Eli Lilly & Co.,

No. 2:15-cv-1202-WCB, 2016 WL 1643315 (E.D. Tex. Apr. 26, 2016)......................................18

Freeny v. Fossil Grp., Inc.,

No. 2:18-CV-00049-JRG-RSP, 2019 WL 1089145 (E.D. Tex. Feb. 12, 2019), report and 

rec. adopted, 2019 WL 1083779 (E.D. Tex. Mar. 7, 2019) ............................................................9

Gestion Proche, Inc. v. Dialight Corp.,

No. 4:16-CV-00407, 2017 WL 1551606 (E.D. Tex. May 1, 2017) ..............................................18

GREE, Inc. v. Supercell OY,

No. 2:19-CV-70-JRG-RSP, 2020 WL 896771 (E.D. Tex. Jan. 21, 2020), report and rec. 

adopted, 2020 WL 887733 (E.D. Tex. Feb. 24, 2020) ............................................8, 11, 13, 14, 17

H-W Tech., L.C. v. Amazon.com, Inc.,

No. 3:11-CV-0651-G, 2013 WL 3146777 (N.D. Tex. June 20, 2013)..........................................17

ID Image Sensing LLC v. OmniVision Techs., Inc.,

No. 20-136-RGA, 2020 WL 6888270 (D. Del. Nov. 24, 2020)................................................9, 13

IDB Ventures, LLC v. Charlotte Russe Holdings, Inc.,

No. 2:17-CV-523-WCB-RSP, 2018 WL 3426282 (E.D. Tex. July 16, 2018) ..............................18

Immersion Corp. v. Fitbit, Inc.,

313 F. Supp. 3d 1005 (N.D. Cal. 2018)...........................................................................................9

In re Bill of Lading Transmission & Processing Sys. Pat. Litig.,

681 F.3d 1323 (Fed. Cir. 2012)......................................................................................................17

In re TLI Commc’ns LLC,

823 F.3d 607 (Fed. Cir. 2016)..........................................................................................................8

Internet Pats. Corp. v. Active Network, Inc.,

790 F.3d 1343 (Fed. Cir. 2015)........................................................................................................8

Lone Star Fund V L.P. v. Barclays Bank PLC,

594 F.3d 383 (5th Cir. 2010) .........................................................................................................18

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Lowrey v. Tex. A&M Univ. Sys.,

117 F.3d 242 (5th Cir. 1997) ...........................................................................................................5

Lumitech IP LLC v. Ikea Supply AG,

No. 2:20-CV-04399-JDW, 2021 WL 4499407 (E.D. Pa. Apr. 22, 2021) .......................................9

McRO, Inc. v. Bandai Namco Games Am. Inc.,

837 F.3d 1299 (Fed. Cir. 2016)................................................................................................10, 11

Microsoft Corp. v. i4i LP,

564 U.S. 91 (2011).......................................................................................................................5, 6

Mirror Imaging, LLC v. PNC Bank, N.A.,

No. W-21-CV-00518-ADA, 2022 WL 229363 (W.D. Tex. Jan. 26, 2022) ..................................10

My Health, Inc. v. Lifescan, Inc.,

No. 2:14-cv-683-RWS-RSP, 2015 WL 13469638 (E.D. Tex. Mar. 19, 2015)..............................15

Nalco Co. v. Chem-Mod, LLC,

883 F.3d 1337 (Fed. Cir. 2018)......................................................................................................17

NetSoc, LLC v. Match Grp., LLC,

No. 3:18-CV-01809-N, 2019 WL 3304704 (N.D. Tex. July 22, 2019), aff'd, 838 F. App’x 

544 (Fed. Cir. 2020)...................................................................................................................8, 10

OLA, LLC v. Builder Homesite, Inc.,

661 F. Supp. 2d 668 (E.D. Tex. 2009)...........................................................................................18

Ottah v. Fiat Chrysler,

884 F.3d 1135 (Fed. Cir. 2018)......................................................................................................17

PM Holdings, LLC v. Heart of Tex. Surgery Ctr., PLLC,

No. 6:21-CV-00644-ADA, 2022 WL 1004644 (W.D. Tex. Apr. 4, 2022) .....................................9

Prust v. Softlayer Techs., Inc.,

No. 2:09-CV-236-TJW-CE, 2010 WL 11629082 (E.D. Tex. Apr. 9, 2010).................................18

SAP Am., Inc. v. InvestPic, LLC,

898 F.3d 1161 (Fed. Cir. 2018)......................................................................................................10

Slyce Acquisition Inc. v. Syte-Visual Conception Ltd.,

No. W-19-CV-00257-ADA, 2020 WL 278481 (W.D. Tex. Jan. 10, 2020) ............................14, 15

Sourcing Mgmt., Inc. v. Simclar, Inc.,

118 F. Supp. 3d 899 (N.D. Tex. 2015) ............................................................................................5

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StoneEagle Servs., Inc. v. Davis,

No. 3:13-CV-00894-P, 2013 WL 12143946 (N.D. Tex. Aug. 14, 2013)......................7, 11, 15, 16

TecSec, Inc. v. Adobe Inc.,

978 F.3d 1278 (Fed. Cir. 2020)................................................................................................10, 11

Thales Visionix Inc. v. United States,

850 F.3d 1343 (Fed. Cir. 2017)............................................................................................6, 10, 12

Ultramercial, Inc. v. Hulu, LLC,

722 F.3d 1335 (Fed. Cir. 2013)..................................................................................7, 8, 10, 11, 15

Ventures II LLC v. FedEx Corp.,

No. 2:16-CV-00980-JRG, 2018 WL 7823098 (E.D. Tex. May 10, 2018)....................................14

WiAV Networks, LLC v. 3com Corp.,

No. 5:09-CV-101-DF, 2009 WL 6048922 (E.D. Tex. Dec. 15, 2009)..........................................18

Statutes

35 U.S.C. § 101..................................................................................................................... passim

35 U.S.C. § 102............................................................................................................................. 13

35 U.S.C. § 103............................................................................................................................. 13

35 U.S.C. § 282(a) ...........................................................................................................................5

Other Authorities

Fed. R. Civ. P. 12(b)(6)......................................................................................................... passim

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Plaintiff Ironburg Inventions Ltd. (“Plaintiff” or “Ironburg”) files this Response in 

Opposition to Defendant Battle Beaver, LLC’s (“Defendant” or “Battle Beaver”) Motion to 

Dismiss (Dkt. #18) (the “Motion”), as follows:

I. INTRODUCTION AND SUMMARY OF ARGUMENT

Battle Beaver does not argue that the allegations in Ironburg’s complaint are insufficient 

to state a plausible claim for relief under the Iqbal/Twombly standard. Instead, it asks this Court, 

via a Rule 12(b)(6) motion, (1) to invalidate 43 claims from three different patents under § 101, 

before claim construction, without discovery, and without addressing any of the actual claim 

elements; or (2) in the alternative, to dismiss Ironburg’s complaint based on nothing more than its 

bare assertion that its products do not infringe. Especially in light of the fact that patents are 

presumed valid, these arguments are premature and unavailing. 

First, courts consistently refuse to decide § 101 patent-eligibility issues at the motion to 

dismiss stage. In any event, Battle Beaver’s argument that the claims are directed to an “abstract 

idea” fails at both steps of the Alice test. Both its step one and step two arguments rely entirely on 

overgeneralizing the claims at a high level of abstraction and ignoring the actual claim elements, 

which defies Federal Circuit precedent requiring such analyses to focus on the claims themselves

and not on overgeneralizations. Moreover, as for step one, Battle Beaver fails to cite a single case

that supports its theory that claims describing a physical game controller could even arguably be 

characterized as being direct to an abstract idea. To the contrary, the body of post-Alice case law 

confirms just the opposite. Simply, these patents relate to physical mechanisms, not processes. As 

to step two of the Alice test, Battle Beaver does not even make any argument as to why or how the 

claim limitations do not add an “inventive concept.” Regardless, the Federal Circuit has made clear 

that this inquiry depends on questions of fact that cannot be decided on a motion to dismiss. 

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Second, Battle Beaver’s non-infringement argument depends on claim construction that 

has not yet occurred, and the only “evidence” of non-infringement that it provides is a single 

conclusory statement by its counsel that its products do not infringe. But aside from these fatal 

deficiencies, both the Federal Circuit and courts in this District repeatedly hold that such claim 

construction/non-infringement arguments go to the merits of the case and that it is improper to 

decide such issues on a Rule 12(b)(6) motion.

II. THE ASSERTED PATENTS

This lawsuit involves three patents directed to video game controllers containing trigger 

control mechanisms that are adjusted: U.S. Patent Nos. 10,188,940 (the “’940 Patent”), 

10,596,455 (the “’455 Patent”), and 11,185,766 (the “’766 Patent”) (collectively, the “Asserted 

Patents”), each of which is entitled “Games Controller.” The Asserted Patents identify and 

improve certain problems and shortcomings in the then-existing field of handheld video game 

controllers. See Dkt. #1-1, ’940 Patent at 1:19–2:17. For example, their specification1 explains: 

• Depending on the video game, “it can be necessary to depress the trigger a distance 

before the trigger initiation point is reached and the command actually acknowledged. 

This renders part of the depressing action futile. Likewise, after the command has been 

operated, it is often possible to carry out further depression of the trigger past the trigger 

initiation point,” which “is unnecessary and . . . disadvantageous.” Id. at 1:35-42.

• “Furthermore, . . . in some video games, the strength of a command is increased or 

decreased in dependence upon how frequently the trigger is depressed. As such, 

depressing the trigger the whole distance is unnecessary and excessive.” Id. at 1:43-47.

• “It is desirable to have a controller . . . for gaming applications, that is more responsive 

or has less scope for [] unnecessary over-movement by the user,” and “for players to 

be able to customise their controllers . . . to gain increased control . . . .” Id. at 1:48-55.

The Asserted Patents describe and claim a novel, improved gaming controller comprising 

certain physical components configured to implement features that were not conventional prior to

Ironburg’s patents. In particular, the Asserted Patents describe the specific improvements and 

 1 The Asserted Patents all share the same specification.

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advancements they achieve with respect to the controller’s physical functionality, including:

• “There are a variety of different commands available for the trigger functions of a game 

controller and the adjustable trigger system of the present invention now provides the 

option to customise the trigger settings . . . to suit the individual game.” Id. at 1:65–2:2.

• Some embodiments enable “adjustments to the depressible range of the trigger so that 

effectively the trigger is already, to some degree, ‘depressed’, before any contact is 

actually made with the trigger by the operator,” and/or “adjustments [so] that the trigger 

is depressible such that no further motion can be effected by the operator,” which 

“removes any unnecessary distance travelled by the trigger.” Id. at 2:3-12.

• “One advantage of the present invention is that it allows adjustments to be made to the 

trigger response,” which “could be customised to suit the nature of the video game that 

is in use at the time of operation and/or the skill of the operator.” Id. at 6:59-63.

• “A further advantage . . . is that it minimises the amount of motion an operator’s finger 

must travel, therefore minimising the recovery time after a trigger initiation command 

has been made, allowing the operator to commence the command prompt again and 

again more rapidly, or to operate different commands quicker.” Id. at 7:22-27.

The Asserted Patents claim physical apparatuses comprising specific tangible components 

arranged in a particular combination to achieve the improvements discussed above. For example, 

representative claims of the ’940 Patent recite:

Claim 2

An apparatus for supplying user inputs to a computer program for controlling the 

computer program, . . . comprising an outer case, at least one depressible trigger 

mechanism, and a first mechanism for adjusting a first end stop position of a range 

of motion of the at least one depressible trigger mechanism, . . . disposed within an 

internal volume defined by the outer case of the apparatus.

Claim 4

A game controller for controlling electronic games, including a housing, at least 

one depressible trigger at least in part exposed relative to the housing, said at least 

one depressible trigger being in operational association with electrical circuitry 

contained within the housing, which . . . is controlled by depression of the at least one 

depressible trigger for manipulating electrical outputs . . . for controlling electronic 

games and the game controller having a mechanism which provides for manual 

adjustment of a depressible range of the at least one depressible trigger mechanism.

Id. at 7:65–8:5 & 8:12-22. Representative claims of the ’455 Patent recite:

Claim 1

An apparatus for providing a user input to a computer program for controlling the 

computer program, the apparatus comprising:

an outer case;

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at least one depressible trigger pivotally mounted to the apparatus and 

resiliently biased to a first position, . . . having an outer surface configured for 

engagement during operation . . . and an inner surface opposite the outer surface; and

a mechanism for adjustment of a range of motion of the at least one 

depressible trigger,

wherein the mechanism is configured to be inserted into a void behind the inner 

surface of the depressible trigger wherein the void is defined by the outer case, and

wherein the mechanism is configured such that when the mechanism is 

inserted, the inner surface of the depressible trigger contacts the mechanism to adjust 

the range of motion . . . by changing a degree of rotation of the depressible trigger.

Claim 17

A game controller for controlling an electronic game, . . . comprising:

a housing;

at least one depressible trigger at least partially disposed within the housing 

comprising a first surface configured to be engaged by a user . . . and a second surface 

. . . defining a pathway when the at least one trigger is depressed;

electrical circuitry contained within the housing, wherein the at least one 

depressible trigger is in operational association with the electrical circuitry . . . ;

a trigger adjustment system disposed within the housing in the pathway of the 

second surface . . . in communication with the at least one depressible trigger, . . . 

configured to adjust a range of depressible motion of the . . . depressible trigger.

Dkt. # 1-2, ’455 Patent at 7:60–8:14 & 9:12–10:8. The’766 Patent claims similar physical devices 

comprising tangible components, and the differences are not material to Battle Beaver’s Motion

or this response.

III. ARGUMENT AND AUTHORITIES

A. Legal Standards

1. Rule 12(b)(6)

Dismissal at the pleading stage is improper if a complaint alleges “enough facts to state a 

claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 

(2007). This plausibility standard is met if the plaintiff “pleads factual content that allows the court 

to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft 

v. Iqbal, 556 U.S. 662, 678 (2009). A motion to dismiss “must be denied if in the light most 

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favorable to the plaintiff and with every doubt resolved in the pleader’s favor . . . the complaint 

states any legally cognizable claim for relief.” Aatrix Software, Inc. v. Green Shades Software, 

Inc., 890 F.3d 1354, 1357 (Fed. Cir. 2018); see also Sourcing Mgmt., Inc. v. Simclar, Inc., 118 F. 

Supp. 3d 899, 912 (N.D. Tex. 2015) (“[T]he court must accept all well-pleaded facts in the 

complaint as true and view them in the light most favorable to the plaintiff.”). In the Fifth Circuit, 

a Rule 12(b)(6) motion “is viewed with disfavor and is rarely granted.” Lowrey v. Tex. A&M Univ. 

Sys., 117 F.3d 242, 247 (5th Cir. 1997). Dismissal cannot be granted “unless it appears beyond 

doubt that the plaintiff can prove no set of facts . . . which would entitle him to relief.” Id.

2. Patent Eligibility under 35 U.S.C. § 101 and Alice

An issued patent and its claims are presumed to be valid, and that presumption can only be 

overcome by clear and convincing evidence of ineligibility. See 35 U.S.C. § 282(a); Microsoft 

Corp. v. i4i LP, 564 U.S. 91, 95-97 (2011); Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 

(Fed. Cir. 2019). This presumption and burden of proof applies to patent eligibility under 35 U.S.C. 

§ 101. Berkheimer v. HP Inc., 881 F.3d 1360, 1360 (Fed. Cir. 2018).

Section 101 defines patent-eligible subject matter as “any new and useful process, machine, 

manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §

101. In choosing such expansive terms to define patent eligibility, Congress took a “permissive 

approach to patent eligibility.” Bilski v. Kappos, 561 U.S. 593, 601 (2010) (noting “Congress 

plainly contemplated that the patent laws would be given wide scope”). There are only three 

narrow exceptions to § 101’s broad eligibility principle: laws of nature, physical phenomena, and 

abstract ideas. Id.; Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014). The Supreme 

Court has cautioned against applying these exceptions broadly, stating courts must “tread carefully 

in construing this exclusionary principle, lest it swallow all of patent law,” because “[a]t some 

level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural 

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phenomena, or abstract ideas.”’ Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. 

Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)).

In Alice, which involved method claims directed at a “process,” the Supreme Court 

established a two-step test for determining whether a patent merely claims an ineligible abstract 

idea. At step one, the court must “determine whether the claims at issue are directed to one of those 

patent-ineligible concepts.” Alice, 573 U.S. at 217. This analysis focuses on the claim language, 

considered in light of the specification, to assess whether a claim’s “character as a whole is directed 

to excluded subject matter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). 

If the claims are not directed to an abstract idea, the inquiry ends: the claims are patent-eligible. 

See id. at 1339; Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017).

If the claims are directed to an abstract idea, the court proceeds to step two, which requires 

the court to “consider the elements of each claim both individually and as an ordered combination” 

to determine if they add an “inventive concept” such that the nature of the claim is a patent-eligible 

application. Alice, 573 U.S. at 217-18 (internal quotation marks and citations omitted). Even if an 

invention is directed to an abstract idea, it is still patentable if the elements or combination thereof 

amount to more than a patent on merely the ineligible concept itself. Id. An inventive concept 

exists if the claim limitations “involve more than performance of well-understood, routine, and 

conventional activities previously known to the industry.” Aatrix Software, Inc. v. Green Shades 

Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018) (collecting cases). And that determination is 

a question of fact. Id. Also, the “mere fact that something is disclosed in [] prior art . . . does not 

mean it was well-understood, routine, and conventional.” Berkheimer, 881 F.3d at 1369.

B. Battle Beaver Fails to Prove that the Claims are Ineligible Under § 101

To prove claims are patent-ineligible through a Rule 12(b)(6) motion, “the only plausible 

reading of the patent must be that there is clear and convincing evidence of ineligibility.”

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StoneEagle Servs., Inc. v. Davis, No. 3:13-CV-00894-P, 2013 WL 12143946, at *6 (N.D. Tex. 

Aug. 14, 2013) (emphasis in original) (citing Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 

(Fed. Cir. 2013)). Any fact relevant to the patent eligibility inquiry must be proven by clear and 

convincing evidence. Berkheimer, 881 F.3d at 1368. Battle Beaver fails to meet its burden for 

either step of the Alice inquiry.

1. Alice Step One: Battle Beaver Fails to Show that the Claims are Directed to an 

Abstract Idea

The claims of the Asserted Patents are—on their face—not directed to an abstract idea. To 

the contrary, they describe and claim physical, tangible video game controllers comprising a 

combination of physical components that serve particular operational functions. The proposition 

that an invention of this concrete nature is directed to an abstract idea defies logic and reason, and 

is unsupported by post-Alice precedent. Tellingly, Battle Beaver does not cite a single case where 

a court has found similar subject matter to be directed to an abstract idea. The Court should deny 

the Motion on this basis alone and need not proceed to step two.

a. The Tangible Devices Claimed in the Asserted Patents are Non-Abstract, 

Patent-Eligible inventions

Because the Supreme Court has not created a definitive rule for what constitutes an 

“abstract idea” under Alice, courts often determine whether challenged claims recite an abstract 

idea by analyzing whether they are analogous to what courts have previously deemed abstract. See

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294-95 (Fed. Cir. 2016); Enfish, 822 

F.3d at 1334; AR Design Innovations LLC v. Ashley Furniture Indus., Inc., No. 4:20-CV-392-SDJ, 

2021 WL 1213551, at *4 (E.D. Tex. Mar. 30, 2021) (“In determining whether claims are directed 

to an unpatentable abstract idea, courts are instructed to look to the Federal Circuit’s large body of 

post-Alice decisions.”). Here, the post-Alice case law confirms that the physical controllers claimed 

in the Asserted Patents do not even arguably fall within the realm of ineligible abstract ideas.

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Battle Beaver does not attempt to compare the claims at issue to those analyzed in postAlice case law. Indeed, none of the cases cited by Battle Beaver involved an invention that is at all 

analogous to the physical controllers claimed in the Asserted Patents—they all involved claims 

directed to computer-implemented methods, processes, or systems. See Ultramercial, 772 F.3d at 

715 (“method of using advertising as an exchange or currency”); NetSoc, LLC v. Match Grp., LLC, 

No. 3:18-CV-01809-N, 2019 WL 3304704, at *2 (N.D. Tex. July 22, 2019), aff'd, 838 F. App’x 

544 (Fed. Cir. 2020) (“method for establishing a social network”); In re TLI Commc’ns LLC, 823 

F.3d 607, 613 (Fed. Cir. 2016) (method for “classifying and storing digital images”); Elec. Power 

Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (“methods for . . . collecting data 

from multiple data sources, analyzing the data, and displaying the results”); Internet Pats. Corp. 

v. Active Network, Inc., 790 F.3d 1343, 1344-48 (Fed. Cir. 2015) (method of providing intelligent 

user interface to online application); Content Extraction & Transmission LLC v. Wells Fargo Bank, 

N.A., 776 F.3d 1343, 1345-49 (Fed. Cir. 2014) (“method of processing information” by “extracting 

and storing data”); Affinity Labs of Tex., LLC v. DirectTV, LLC, 838 F.3d 1253, 1255-62 (Fed. Cir. 

2016) (broadcast system directed to requesting, receiving, and transmitting network-based 

content). Notably, the one gaming-related case cited by Battle Beaver actually resulted in the court 

finding the claims were not directed to an abstract idea. See GREE, Inc. v. Supercell OY, No. 2:19-

CV-70-JRG-RSP, 2020 WL 896771, at *4-8 (E.D. Tex. Jan. 21, 2020), report and rec. adopted, 

2020 WL 887733 (E.D. Tex. Feb. 24, 2020) (denying Rule 12 motion). In sum, even basing the 

analysis on the oversimplified characterization that the Asserted Patents claim a “mechanism 

installed in the trigger pathway that shortens the trigger’s range of motion,” Dkt. #18 at 9, Battle 

Beaver still fails to city any case law to support that such claims are directed to an abstract idea.

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Ironburg’s invention—a video game controller containing specific physical components 

that shorten a trigger’s possible range of motion—is fundamentally dissimilar from the nontangible methods and processes at issue in all of the above cases. As another Texas federal district 

court held, the asserted claims here are “not directed to an abstract idea, but rather [are] drawn to 

a physical device” in which “the components are used to perform a specific improvement over 

existing prior art.” Freeny v. Fossil Grp., Inc., No. 2:18-CV-00049-JRG-RSP, 2019 WL 1089145, 

at *5 (E.D. Tex. Feb. 12, 2019), report and rec. adopted, 2019 WL 1083779 (E.D. Tex. Mar. 7, 

2019). Similarly, in PM Holdings, LLC v. Heart of Tex. Surgery Ctr., PLLC, the claims were 

“directed to physical structures that include . . . physical devices [] and other physical 

components,” and the court held “[n]either the physical components nor the collection are in any 

sense ‘abstract.’” No. 6:21-CV-00644-ADA, 2022 WL 1004644, at *3 (W.D. Tex. Apr. 4, 2022) 

(also noting “Defendants’ brief offers no post-Alice case identifying an abstract idea similar to 

what Defendants propose”). Countless courts in other districts have also consistently held claims 

are inherently non-abstract where, as here, the claimed invention is a device having specific 

physical features and tangible components that serve particular functions.2 Even cases cited by 

Battle Beaver support that claims directed to physical devices such as those in the Asserted Patents 

 2 See, e.g., Immersion Corp. v. Fitbit, Inc., 313 F. Supp. 3d 1005, 1023 (N.D. Cal. 2018) (denying motion 

to dismiss, finding “the claim clearly focuses on a tangible, non-abstract device as the invention which, 

through the . . . combination of components, contains [a] new and useful feature” and recites “various 

physical features of the claimed inventions, including . . . how an actuator can be coupled to the housing of 

the device”); ID Image Sensing LLC v. OmniVision Techs., Inc., No. 20-136-RGA, 2020 WL 6888270, at 

*3 (D. Del. Nov. 24, 2020) (denying motion to dismiss, holding “it is important not to lose sight of the fact 

that this is a claim to a ‘camera’ . . . that has a number of specific, tangible sub-components,” and “when 

the real-world, tangible, specific components of a device seem to predominate what is claimed, . . . this is 

not a claim to an abstract idea,” but “a non-abstract, physical item”); Lumitech IP LLC v. Ikea Supply AG, 

No. 2:20-CV-04399-JDW, 2021 WL 4499407, at *2 (E.D. Pa. Apr. 22, 2021) (finding claims covering “a 

structure for an LED light . . . that can be adjusted in a way that LED lights previously could not” were not 

ineligible, as they “describe[] a ‘module,’ which . . . implies a specific structure, not just an abstraction”); 

Cap Export, LLC v. Zinus, Inc., No. 2:16-cv-00371-SVW-MRW, 2019 WL 982883, at *5 (C.D. Cal. Jan. 

24, 2019) (finding “a patent directed to the design of a bed” is not an “abstract idea,” as it “is a physical 

object and easily overcomes the Section 101 limit on patentability”).

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are not abstract. See Ultramercial, 772 F.3d at 715-716 (noting the claims were “not tied to any 

particular novel machine or apparatus,” but merely recited “an idea having no particular concrete 

or tangible form”); NetSoc, 2019 WL 3304704, at *2 (“If the claims are not directed at creating 

something physical, . . . they are likely directed at only abstract ideas.”) (citing SAP Am., Inc. v. 

InvestPic, LLC, 898 F.3d 1161, 1167-68 (Fed. Cir. 2018) (collecting cases)).

b. Battle Beaver’s Failure to Address the Actual Claim Elements Requires Denial 

of its Motion to Dismiss

Step one of the Alice test does not ask whether there is a patent-ineligible concept 

underlying the claims; it asks whether the claims themselves are directed to a patent-ineligible 

concept. Thales, 850 F.3d at 1349 (noting “it is not enough to merely identify a patent-ineligible 

concept underlying the claim”) (citing Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 

1050 (Fed. Cir. 2016)). In conducting the step one analysis, courts “must focus on the language of 

the Asserted Claims themselves.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020) 

(citing Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016)). And 

courts must avoid overgeneralizing the claims in the § 101 analysis, as “characterizing the claims 

at ‘a high level of abstraction’ that is ‘untethered from the language of the claims all but ensures 

that the exceptions to § 101 swallow the rule.’” Id. (quoting Enfish, 822 F.3d at 1337); see also

Mirror Imaging, LLC v. PNC Bank, N.A., No. W-21-CV-00518-ADA, 2022 WL 229363, at *7 

(W.D. Tex. Jan. 26, 2022). Thus, in determining if claims are directed to an abstract idea, courts 

“must be careful to avoid oversimplifying the claims by looking at them generally and failing to 

account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games Am. 

Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (citations omitted). 

In arguing that the Asserted Patents are directed to an “abstract idea,” Battle Beaver fails 

to even mention (much less analyze) any of the actual claims or any of the elements recited therein. 

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See Dkt. #18 at 8-10; StoneEagle, 2013 WL 12143946, at *6 (“To be sure, ‘the question of eligible 

subject matter must be determined on a claim-by-claim basis.’”) (quoting Ultramercial, 722 F.3d 

at 1339). Instead, it argues that “to the extent the claims purport to cover any internal mechanism 

for blocking a trigger, they are directed to an abstract idea.” Dkt. #18 at 8 (emphasis in original). 

This argument is an oversimplification of the Asserted Patents and overgeneralizes the claims by 

characterizing them at a high level abstraction—the very type of argument the Federal Circuit has 

repeatedly rejected. Moreover, it bases its argument entirely on a single sentence in a pre-suit letter 

from Ironburg’s counsel to Battle Beaver. See id. at 9 (arguing the claims are directed to an abstract 

idea because “[a]ccording to Plaintiff’s own cease-and-desist letters . . . the claims at issue cover 

any ‘mechanism installed in the trigger pathway . . . .”) (emphasis added). Battle Beaver then relies 

on that statement—which it improperly designates as “Plaintiff’s proposed claim construction”—

to argue that “[Ironburg’s] interpretation” is supposedly indicative of an abstract idea. Id. at 9-10.

Such an argument wholly ignores “the language of the Asserted Claims themselves” and “the 

specific requirements of the claims.” TecSec, 978 F.3d at 1292; McRO, 837 F.3d at 1313.3

Battle Beaver’s reliance on an over-generalization of the claims instead of analyzing the 

actual claim language itself compels denial of its Motion. See GREE, 2020 WL 896771, at *4-5 

(“Defendant has not met its burden of showing . . . an abstract idea” because its “analysis 

of Alice Step One provides little discussion as to the actual language of the claims” and “overgeneralizes the claims and describes them at too high of a level of abstraction.”).

Battle Beaver’s Motion also fails to address “what the patent asserts to be the ‘focus of the 

claimed advance over the prior art’” as required by the step one inquiry. TecSec, 978 F.3d at 1292. 

That is likely because even a cursory review of the Asserted Patents confirms that the claimed 

 3 Moreover, the letter on which Battle Beaver relies does not even mention either the ’455 Patent or the

’766 Patent. See Dkt. #18 at 9 n.14 (citing RJN Ex. D at APP020).

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invention—a video game controller that solves a particular problem relating to existing controllers’ 

physical configuration—cannot logically be described as being directed to an “abstract idea.” cf.

SAP, 898 F.3d at 1168 (comparing Thales, where “the improvement was in a physical tracking 

system” and thus not an abstract idea, and finding “[h]ere, in contrast, the focus of the claims is 

not a physical-realm improvement but an improvement in . . . the selection and [] analysis of 

information”). As alleged in the complaint, Ironburg’s patented inventions “increase users’ hand 

usage and reaction time, improve gameplay, and allow users to play . . . more ergonomically.” Dkt. 

#1 ¶ 10. And as set forth in Section II above, the specifications describe the various advances that 

the claimed inventions achieve over the prior art, see supra at pp. 2-4, none of which are focused 

on abstract concepts, but rather on novel operational features of a physical gaming controller. 

c. Battle Beaver’s Prior Art Argument Is Inapposite

Finally, Battle Beaver appears to argue that the existence of certain prior art references 

covering trigger blocks indicates that the Asserted Patents are directed to an abstract idea. Dkt. 

#18 at 9-10 (arguing the PTO “has issued numerous patents for a variety of different ‘mechanisms 

. . . that shorten the trigger’s range of motion,’” and therefore “the idea of blocking the path of the 

trigger” is an abstract idea) (emphasis added) (citing Alice, 573 U.S. at 216).4

This argument is based on the false premise that the Asserted Patents claim “the idea of 

blocking the path of the trigger,” no matter the field of use—be it a video game controller, a 

firearm, a water gun, a spray bottle, a glue gun, a tally counter, etc.—and no matter how the product 

is physically configured to achieve that end. But that is not the case (nor is it Ironburg’s position). 

The Asserted Patents cover computer or game controllers containing a trigger-modification 

mechanism that embodies each of the elements specifically recited in the claims. As another court 

 4 Notably, Battle Beaver concedes that “most . . . of these patents deal with firearm triggers[.]” Id. at 10.

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held when rejecting a similar theory raised as a supposed § 101 argument: 

Defendant’s argument against patent eligibility seems to be that claim 1 merely 

recites [an invention] that was already known in the prior art. [] In other words, . . . it 

really seems to be arguing that the claim is invalid for anticipation under 35 U.S.C. § 

102, or for obviousness under 35 U.S.C. § 103—as opposed to arguing that the claim 

is directed to an abstract idea. But whether [the claimed subject-matter] existed in the 

prior art . . . is a separate and distinct inquiry from the Section 101 inquiry.

ID Image Sensing, 2020 WL 6888270, at *5 (denying motion to dismiss). The same reasoning 

applies to Battle Beaver’s apparent argument here. 

2. Alice Step Two: The Claims Add an Inventive Concept

Even if the Court were to reach the second step under Alice, the Asserted Patents’ claims 

would still be patent eligible because they recite an inventive concept. 

This step requires the Court to “consider the elements of each claim both individually and 

‘as an ordered combination’” to determine whether they contain an “inventive concept.” Alice, 573 

U.S. at 217. However, Battle Beaver’s step two argument does not mention, much less analyze, 

any of the elements recited in the claims themselves—either individually or as an ordered 

combination—in the context of arguing that the claims do not add an inventive concept.5 This 

failure alone is fatal to Battle Beaver’s Motion. See GREE, 2020 WL 896771, at *4 (“Defendant 

has not met its burden . . . at Alice Step Two” because it “fails to analyze the actual claim 

language—the Motion to Dismiss does not discuss several limitations in the claim . . . Without 

more, the Court cannot grant this Motion.”). Instead, Battle Beaver repeats the same general 

statement from Ironburg’s cease-and-desist letter and merely concludes, vaguely, that “[r]ead as 

such, the claims clearly fail the Alice test for patentability under section 101.” Dkt. #18 at 10.

 5 To clarify, while Battle Beaver does identify some elements that it cherry-picks from certain claims, it 

does so only in support of its argument that the “manual adjustability limitation . . . warrant dismissal for 

lack of infringement.” Dkt. #18 at 11-12 (emphasis added). But that is not an Alice/§ 101 argument.

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Furthermore, Battle Beaver does not make any arguments as to why or how the claims 

merely recite routine, conventional, or well-known activities and do not add an inventive concept. 

Instead, Battle Beaver appears to argue that, to the extent the claims add an inventive concept, its 

products do not infringe because they do not meet the limitation that would make the claims 

inventive. See Dkt. #18 at 11-12. But that argument is not about patent eligibility.

Regardless, whether claims are “inventive” or merely recite elements that are wellunderstood, routine, and conventional in the relevant field is a fact question that cannot be decided 

on a motion to dismiss. See Aatrix, 882 F.3d at 1128; Berkheimer, 881 F.3d at 1368. Moreover, 

the Asserted Patents describe the inventions’ inventive features that solve a problem in the field of 

gaming controllers, see supra, Section II, at pp. 2-4, and “the Court must take the allegations made 

in . . . the [] Patent, attached to the Complaint, as true.” Intell. Ventures II LLC v. FedEx Corp., 

No. 2:16-CV-00980-JRG, 2018 WL 7823098, at *9 (E.D. Tex. May 10, 2018) (denying Rule 12 

motion and relying on patent’s descriptions of problems the invention solved for purposes of step 

two analysis); see GREE, 2020 WL 896771, at *2 (“Specific improvements described in a patent 

specification . . . create a factual dispute regarding whether the invention describes wellunderstood, routine, and conventional activities.”) (citing Berkheimer, 881 F.3d at 1369).

3. Battle Beaver’s Section 101 Eligibility Argument Is Premature

Battle Beaver seeks to invalidate under § 101 twelve independent claims and 31 dependent 

claims from three different patents6 via a Rule 12(b)(6) Motion—without claim construction, fact 

discovery, or expert discovery, and without even addressing the elements of the patent claims. But 

“resolving a patent’s § 101 eligibility is rarely appropriate as a Rule 12(b) motion.” Slyce 

 6 The claims at issue include independent claims 1, 2, 4, 5, 6, and 8, and ten dependent claims, of the ’940 

Patent; independent claims 1, 12, and 17, and ten dependent claims, of the ’455 Patent; and independent 

claims 1, 12, and 17, and eleven dependent claims, of the ’766 Patent. See Dkt. #s 1-4 – 1-15 (Exs. D-O).

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Acquisition Inc. v. Syte-Visual Conception Ltd., No. W-19-CV-00257-ADA, 2020 WL 278481, at 

*3 (W.D. Tex. Jan. 10, 2020).

As courts in this District recognize, “it will be rare that a patent infringement suit can be 

dismissed at the pleading stage for lack of patentable subject matter.” StoneEagle, 2013 WL 

12143946, at *6 (citation omitted). This is so for a number of important reasons. First, because 

patents are presumed valid and require clear and convincing evidence of invalidity, Rule 12(b)(6) 

is not suitable for resolving patent-eligibility. Id.; Slyce, 2020 WL 278481, at *5. Second, as the 

“Federal Circuit has cautioned,” the § 101 eligibility analysis “is rife with underlying factual 

issues.” StoneEagle, 2013 WL 12143946, at *6 (quoting Ultramercial, 722 F.3d at 1339); see also

Aatrix, 882 F.3d at 1128 (stating the § 101 analysis involves fact issues that “cannot be answered 

adversely to the patentee based on the sources properly considered on a motion to dismiss”); Slyce, 

2020 WL 278481, at *6 (noting § 101 eligibility “almost certainly requires fact discovery”). Third, 

claim construction is usually necessary before a court can rule on § 101 eligibility. See Bancorp 

Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273-74 (Fed. Cir. 2012);

StoneEagle, 2013 WL 12143946, at *6; Slyce, 2020 WL 278481, at *5 (collecting cases) (noting 

“claim construction . . . in most cases, will affect a court’s § 101 eligibility analysis”); Blue Yonder 

Grp. v. Kinaxis Inc., No. 3:20-CV-03636-K, 2021 WL 2698437, at *2 (N.D. Tex. May 17, 2021)

(denying dismissal, finding the claims “require claim construction before the Court can rule on . . 

. § 101” issues); My Health, Inc. v. Lifescan, Inc., No. 2:14-cv-683-RWS-RSP, 2015 WL 

13469638, at *1 (E.D. Tex. Mar. 19, 2015) (“[R]uling on eligibility before claim construction is 

only warranted in narrow circumstances” and is “the exception rather than the rule”). 

Given these principles, courts in this District recognize the necessity of waiting until after 

both fact discovery and claim construction to determine patent-eligibility, as a “ruling based on 

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[Rule 12] briefing alone without evidence invites pure guesswork.” StoneEagle, 2013 WL 

12143946, at *6 (“[T]he Court lacks a sufficient basis in fact to determine that the patent’s subject 

matter is abstract” and “Defendants cannot show [otherwise] by clear and convincing evidence”).

C. Battle Beaver’s Non-Infringement Argument is Inappropriate at the Pleading Stage

Seemingly as an alternative to requesting that the Court find the claims invalid under Alice, 

Battle Beaver argues that the Court should grant dismissal on the basis of non-infringement. See

Dkt. #18 at 11-12. Battle Beaver alleges that its products do not meet the limitations that it lists on 

pages 11 and 12 of its Motion. See id. This argument does not provide a sufficient basis for the 

Court to dismiss the complaint at this stage under Rule 12(b)(6).

Battle Beaver provides little substantive analysis for its “claim construction,” does not 

attempt to conduct a proper Phillips analysis, fails to consider or even acknowledge most of the 

limitations recited in the asserted claims, and attempts to universally and indiscriminately apply 

its proposed construction to all of the claims at issue across the three Asserted Patents. More 

importantly, the entire basis of its non-infringement argument is a bare, unsubstantiated statement 

that its accused products “are not manually adjustable.” Id. at 12. The only “evidence” cited to 

support this assertion is a similarly bare assertion in an email from Battle Beaver’s counsel that 

simply states in conclusory fashion that it “doesn’t have any game controller with adjustable 

mechanisms.” Id. at 12 n.22 (quoting RJN Ex. C at APP012). This conclusory statement by Battle 

Beaver’s counsel is not sufficient to negate Ironburg’s factual allegations regarding infringement, 

particularly at this stage, where the Court must accept Ironburg’s allegations as true and resolve in 

its favor any doubts or factual disputes regarding same.

Regardless, such claim construction/non-infringement arguments go to the merits of the 

case and are not a proper subject of a motion to dismiss. The Federal Circuit has consistently held

that, because issues of infringement require analysis of the claim language and other intrinsic 

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evidence, as well as potential discovery and analysis of extrinsic evidence, it is improper to decide 

such issues on a motion to dismiss. See, e.g., Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1347-

50 (Fed. Cir. 2018) (“Defendants ask us to conclude that, under any construction,” they could not 

infringe, but it “is not appropriate to resolve these disputes . . . without the benefit of claim 

construction. The purpose of a motion to dismiss is to test the sufficiency of the complaint, not to 

decide the merits.”) (emphasis in original); In re Bill of Lading Transmission & Processing Sys. 

Pat. Litig., 681 F.3d 1323, 1343 n.13 (Fed. Cir. 2012) (“[T]o the extent the district court based its 

assessment of the ‘reasonableness’ of a given inference of infringement on [defendant’s] narrow 

construction of the patent’s claims, claim construction at the pleading stage—with no claim 

construction processes undertaken—was inappropriate. We afford the claims their broadest 

possible construction at this stage of the proceedings.”) (emphasis added). Likewise, courts in this 

District recognize that claims should not be construed at the motion to dismiss stage because it “is 

connected to the merits.” H-W Tech., L.C. v. Amazon.com, Inc., No. 3:11-CV-0651-G, 2013 WL 

3146777, at *4 (N.D. Tex. June 20, 2013) (collecting cases). Even in the case Battle Beaver cites 

to support its position that claim construction is unnecessary, that court ultimately held “traditional 

claim construction proceedings would be the most appropriate way to resolve this dispute,” as it 

“will ensure that the parties fully brief this issue” and “may resolve other issues as to claim scope 

that may impact the § 101 analysis.” GREE, 2020 WL 896771, at *8; see Dkt. #18 at 8 (citing 

same). And the case Battle Beaver cites to support that there is “no plausible claim construction 

that could result in a finding of infringement” is inapposite to the facts here: the sole claim was 

directed to a book holder and recited books in numerous limitations, the accused products were a 

camera (not a book) holder, and the court had already made a prior claim construction ruling that

foreclosed a non-infringement argument based on a doctrine of equivalents theory. See Ottah v. 

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Fiat Chrysler, 884 F.3d 1135, 1141-42 (Fed. Cir. 2018); Dkt. #18 at 12 (citing same).

Where, as here, an accused infringer argues in a motion to dismiss that it does not infringe 

based on its proffered construction of the claims, federal courts in Texas often refuse to even 

address the substance of such arguments and summarily reject them as a basis for dismissal.7 As 

one court aptly explained when faced with arguments similar to Battle Beaver’s:

[Defendant’s] argument is, in essence, a combined claim construction and noninfringement argument. Its resolution turns on how “administers” is construed and 

what the evidence may show . . . . Claim construction proceedings have not yet been 

held in this case, and there is no evidence before the Court on the issue of 

infringement. . . . [I]t would be improper to resolve the dispute on procedural grounds 

. . ., pretermitting the claim construction process and the evidentiary presentations 

that may be made . . . . It may be that the proceedings will ultimately determine that 

the term “administering” does not reach [Defendant’s] conduct . . . or that the 

evidence will show that Brookshire’s pharmacies do not [infringe]. Those questions, 

however, are properly left for claim construction, summary judgment, or trial.

Erfindergemeinschaft Uropep GbR v. Eli Lilly & Co., No. 2:15-cv-1202-WCB, 2016 WL 1643315, 

at *2-4 (E.D. Tex. Apr. 26, 2016). This is because a court’s task at the Rule 12(b)(6) stage is simply

“to determine whether the plaintiff has stated a legally cognizable claim that is plausible, not to 

evaluate the plaintiff’s likelihood of success.” Lone Star Fund V L.P. v. Barclays Bank PLC, 594 

F.3d 383, 387 (5th Cir. 2010); see also Eli Lilly, 2016 WL 1643315, at *3 (“The test at this initial 

stage is not one of ultimate success,” but “a threshold test that asks whether, taking all well-pleaded 

facts as true and view[ed] in the light most favorable to the plaintiff, the claim is plausible.”).

 7 See OLA, LLC v. Builder Homesite, Inc., 661 F. Supp. 2d 668, 673 (E.D. Tex. 2009) (denying motion to 

dismiss and declining to address non-infringement argument before claim construction); Gestion Proche, 

Inc. v. Dialight Corp., No. 4:16-CV-00407, 2017 WL 1551606, at *3 (E.D. Tex. May 1, 2017) (“To engage 

in the claim construction process upon . . . a motion to dismiss would be to go beyond the scope of a court’s 

traditional gatekeeping role . . . [T]he Court refuses to construe this key term without the benefit of full 

briefing”); IDB Ventures, LLC v. Charlotte Russe Holdings, Inc., No. 2:17-CV-523-WCB-RSP, 2018 WL 

3426282, at *1 (E.D. Tex. July 16, 2018) (denying Rule 12 motion on non-infringement, as it depended on 

“a claim construction issue that is not as clear-cut as DSW suggests and cannot be decided based on the 

limited showing [] in the motion”); Prust v. Softlayer Techs., Inc., No. 2:09-CV-236-TJW-CE, 2010 WL 

11629082, at *2 (E.D. Tex. Apr. 9, 2010); WiAV Networks, LLC v. 3com Corp., No. 5:09-CV-101-DF, 

2009 WL 6048922, at *4 (E.D. Tex. Dec. 15, 2009) (“The absence of a claim construction and evidentiary 

record weighs heavily against dismissing the claims.”).

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Based on this overwhelming weight of authority, the Court should reject Battle Beaver’s 

non-infringement arguments and deny its Motion to Dismiss.

IV. CONCLUSION

For the foregoing reasons, Ironburg respectfully requests that the Court deny Battle 

Beaver’s Motion to Dismiss (Dkt. #18) in its entirety.

Dated: June 8, 2022 Respectfully submitted,

DORSEY & WHITNEY LLP

/s/ J. Brian Vanderwoude

J. Brian Vanderwoude 

Texas Bar No. 24047558 

vanderwoude.brian@dorsey.com

Zachary B. Tobolowsky

Texas Bar No. 24106512 

tobolowsky.zachary@dorsey.com

DORSEY & WHITNEY LLP

300 Crescent Ct, Suite 400

Dallas, TX 75201

(214) 981-9900 Phone

(214) 981-9901 Facsimile

Gregory S. Tamkin (admitted pro hac vice)

Colo. Reg. No. 27105

DORSEY & WHITNEY LLP

1400 Wewatta Street, Suite 400

Denver, Colorado 80202

(303) 629-3400

Robert J.M. Lee (admitted pro hac vice)

DORSEY & WHITNEY LLP

701 5th Ave, Suite 6100

Seattle, WA 98105

(206) 903-8800

ATTORNEYS FOR PLAINTIFF

IRONBURG INVENTIONS LTD.

Case 3:22-cv-00686-X Document 23 Filed 06/08/22 Page 25 of 26 PageID 612
PLAINTIFF IRONBURG INVENTIONS LTD.’S RESPONSE IN OPPOSITION TO 

DEFENDANT BATTLE BEAVER, LLC’S MOTION TO DISMISS PAGE 20

CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the foregoing document was served on all 

counsel of record via the Court’s ECF system on June 8, 2022.

/s/ J. Brian Vanderwoude

J. Brian Vanderwoude

4890-6142-5187\

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