Federal Circuit Provides Guidance On Prior Art Authentication And Publication Challenges

August 26th, 2021

Summary:  In Valve Corp. v. Ironburg Inventions Ltd., a panel of the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held that the Patent Trial and Appeal Board (“Board”) improperly rejected the prior art status of a copy of an online article submitted as an exhibit, because the Board failed to compare the exhibit to an authenticated copy in the record, the two copies were “substantively the same,” and there was “overwhelming evidence” that the online article itself was prior art.  No. 2020-1315, slip op. at 9–12, 19 (Fed. Cir. Aug. 17, 2021).

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In 2013, Valve Corporation (“Valve”) introduced its “Steam Controller,” a gaming controller for computer games that “was, despite its lack of popularity, praised for its flexibility and customizability.”  Niels Broekhuijsen, Valve Hits Kill Switch on Steam Controller, Sells Old Inventory for $5 Each, Tom’s Hardware (Nov. 27, 2019), https://www.tomshardware.com/news/steam-controller-discontinued-sale-5-valve.  However, its entry in the marketplace quickly set off a dispute with Ironburg Inventions Ltd. (“Ironburg”), “the IP holding arm of hardware manufacturer SCUF,” and in February of this year, a jury found Valve liable for over $4 million in damages for infringing Ironburg’s patent, U.S. Patent No. 8,641,525 (the ’525 patent).  Alex Baldwin, First Zoom patent jury trial sees Valve fined $4 million, WIPR (Feb. 5, 2021), https://www.worldipreview.com/news/first-zoom-patent-jury-trial-sees-valve-fined-4-million-21016 

During the litigation over the infringement of the ’525 patent, Valve petitioned for inter partes review of two other patents owned by Ironburg: U.S. Patent Nos. 9,289,688 (“the ’688 patent”) and 9,352,229 (“the ’229 patent”).  Valve Corp., slip op. at 2.  Both patents were also directed to game console controllers that included additional controls on the rear or back of the controller.  Id. at 2–6.

In its petition for each proceeding, Valve relied on one exhibit (the “Exhibit”) as evidence of prior art that would, in part, render the subject matter of the challenged claims obvious.  Id. at 7.  Valve asserted that the Exhibit contained a copy of an online review article entitled “Review: Scuf Xbox 360 Controller” by Dave Burns (the “Burns article”).  Id. at 7.  Valve also asserted that the article was published on October 20, 2010, prior to the earliest effective filing date of the ’688 and ’229 patents.  Id.

After Ironburg contested both assertions, Valve responded by introducing into evidence certified copies of the image file wrappers for Ironburg’s other patents, because each wrapper contained a PDF image of a printout of the Burns article reviewed by the examiner during prosecution of each patent.  See Valve Corp. v. Ironburg Inventions Ltd., IPR2017-01928, Paper No. 36, at 18 (Feb. 7, 2019) (discussing the image file wrappers of the ’525 and ’229 patents in the challenge to the ’229 patent).  The copy of the Burns article saved in the image file wrappers was stored with an archival web link to the Internet Archive and plainly indicated a publication date of October 20, 2010.  Id. at 26.  Valve also submitted two declarations from witnesses who stated that the Exhibit was an accurate copy of the Burns article “in all material aspects” as reflected in the image file wrapper.  See id. at 26–27.

Nevertheless, the Board concluded that Valve failed to meet its burden to “prove that Burns is a prior art printed publication by a preponderance of evidence.”  Paper No. 36, at 18.  The Board considered the markings on the face of the Exhibit itself to be inadmissible hearsay and rejected any attempt to establish prior art status from the face of the challenged patents.  Id. at 19–24.  Notably, the Board gave “little weight” to Valve’s declarations that compared the Exhibit to the image file wrappers.  Id. at 26–27.  The Board emphasized two specific differences.  First, the date marking for the article as shown in the Exhibit was posted “6 years ago,” whereas the image file wrapper contained a copy of the article stating the exact posting date of October 20, 2010.  Id. at 18.  Second, the URL as indicated in the Exhibit was not an archival URL, whereas the image file wrapper contained a copy of the article associated with an archival URL.  Id. at 26. Without the Burns article as prior art, Valve’s challenge of the ’688 and ’229 patents failed.  Id. at 29.  Valve timely appealed.  Valve Corp., slip op. at 5–6.

The Federal Circuit began its analysis by reframing the problem: “[The Board’s] determination that Valve failed to prove that the Exhibit was what Valve claimed it to be . . . is an issue of authentication.”  Id. at 9.  And “[a]uthentication by comparison is routine.”  Id.; see also Giulio v. BV CenterCal, LLC, 815 F. Supp. 2d 1162, 1169 (D. Or. 2011) (relying on a comparison of deposition transcript pages to determine “that they . . . are from the same deposition”); United States v. Safavian, 435 F. Supp. 2d 36, 39–41 (D.D.C. 2006) (comparing emails to determine authenticity).  The court also noted that recently they had “specifically held that a comparison between the IPR copies of a reference and a version of the reference proven to be prior art was evidence that the IPR reference was prior art.”  Id. at 10 (citing VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1066–67 (Fed. Cir. 2020)).

The Federal Circuit proceeded to clarify who must conduct the comparison.  Id. at 11.  Under the Federal Rules of Evidence, an exhibit “may be authenticated by ‘[a] comparison with an authenticated specimen by an expert witness or the trier of fact.’”  Id. (alteration in original) (quoting Fed. R. Evid. 901(b)(3)).  Unimpressed with the Board’s focus on the type of URL or the formatting of the posting date, the Federal Circuit concluded that “[t]he Board appears to have held that it was not obligated to compare the two because Valve provided no testimony that the two were identical.”  See id.  But “[t]here is no requirement that such testimony be supplied.”  Id.  The court noted that the required comparison was “not burdensome” and reiterated that “[t]he Board had an obligation to make the comparison, as Rule 901(b)(3) contemplates and as the cases require.”  Id.

The Federal Circuit proceeded to conduct its own comparison.  The court first looked at the text and images, finding them to reflect “near identity.”  Id. at 10.  Then the court considered the difference in the listed posting date but decided that “[t]he difference in dates does not bear on the subject matter being disclosed, which is identical in each document.  Moreover, the difference in dates is consistent with a date of access for the Exhibit that is later than the . . . Burns article and does not suggest that the Exhibit is materially different.”  Id. at 10.

The court also noted that various of the 23 images were missing in certain copies of the article, but it concluded that “[t]his difference appears to be due to how the . . . cop[ies] were downloaded and printed; it does not amount to ‘affirmative evidence challenging . . . material facts.’”  Id. at 11 (quoting Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365–66 (Fed. Cir. 2014)).  For instance, in Suffolk, the court held that mere discrepancies in “time stamps and email addresses in a reproduction of a newgroup post asserted as prior art were insufficient to create a genuine issue of material fact concerning the post.”  Id.  Finally, in a pointed footnote, the court rejected the Board’s focus on the URL on the Exhibit and reaffirmed that the record showed that both URLs led to the same article.  Id. at 12 n.7.

After determining “that the Exhibit is substantively the same as the copies of the Burns article” contained in the certified prosecution histories of record for Ironburg’s other patents, the court considered whether the Burns article itself was a publicly accessible printed publication that would qualify as prior art.  Id. at 12.  In holding that the Burns article was publicly accessible, the court listed the following persuasive findings:

(1)     As a review intended to promote sales of the controllers, “the Burns article ‘was intended to reach the general public,’” which “is strong evidence that the online review was publicly accessible.”  Id. at 14–15 (quoting Suffolk, 752 F.3d at 1365).

(2)     Multiple patent examiners, who are trained to determine publication dates, considered the Burns article to be published on October 20, 2010.  Id. at 15–16.  This determination is supported by the article’s retrieval from the Wayback Machine, a “source[] whose accuracy cannot reasonably be questioned.”  Id. at 16 (quoting Erickson v. Neb. Mach. Co., No. 15-CV-01147, 2015 WL 4089849, at *1 n.1 (N.D. Cal. July 6, 2015)).

(3)     The applicants did not dispute the publication date during prosecution, confirmed the publication date in district court litigation, and, in an IDS, stated that the article was published in 2010.  Id. at 17.

(4)     The examiner for the ’525 patent retrieved the Burns article through a “brief” search conducted before the earliest priority dates of both the ’688 and ’229 patents, which “is highly probative evidence of public accessibility. . . . If an examiner could access the article before the priority date, so could the general public.”  Id. at 18–19.

Therefore, in view of “overwhelming evidence that the . . . Burns article was publicly accessible on October 20, 2010, more than two years before the critical date,” and that the Exhibit was a copy of the Burns article, the Federal Circuit reversed the Board’s rejection of the Exhibit as prior art.  Id. at 14–19.

Takeaway:  Why did Valve have to show that the Exhibit was prior art when an identical article was already cited during prosecution?  Because after Valve cited the Exhibit in its inter partes review petition, Ironburg contested whether the Exhibit was actually prior art even though the Examiner cited the article contained in the Exhibit as prior art during prosecution.  Accordingly, as Valve did in this case, “[a] petitioner may provide evidence of public accessibility of a reference after the petition stage if the patent owner raises a challenge to public accessibility.”  Valve Corp., slip op. at 8 n.6.