In the recent precedential Federal Circuit decision Valve Corporation v. Ironburg Inventions Ltd., No. 2020-1315, 2020-1315, 2020-1379, 2021 WL 3628664 (Fed. Cir. August 17, 2021), the Federal Circuit ruled on an issue that is not often appealed—whether the Petitioner had authenticated a submitted prior art reference.  The appeal arose from IPR proceedings filed by Petitioner Valve Corporation against U.S. Patent Nos. 9,289,688 (“the ‘688 patent”) and 9,352,229 (“the ‘229 patent”), both owned by Ironburg Inventions.

The reference in question was submitted by the Petitioner as Exhibit 1004 to its petition and was a printout of an online review of a video game controller written by Dave Burns (the “Burns article”).  Similar copies of the Burns article had been cited as prior art and enclosed in the prosecution histories of both the ‘688 patent and the ‘229 patent, as well as another patent with the same inventors, U.S. Patent No. 8,641,525 (“the ‘525 patent”).  To prove Exhibit 1004 was prior art, Valve had submitted copies of the prosecution histories and argued that Exhibit 1004 was the same as the copies of the Burns article in those prosecution histories.

As shown in the below excerpts, the documents contained some differences; for example, the ‘525 patent’s prosecution history’s copy of the Burns article (“the ‘525 Burns article”) was a printout from the Wayback Machine’s archive of a page from the xboxer360.com website, whereas Exhibit 1004 was a printout from the xboxer360.com website itself.  The ‘525 Burns article was dated October 20, 2010, whereas Exhibit 1004 did not contain a date but stated that the article was posted “6 years ago.”  There were also some formatting differences between the two.

The PTAB sided against Valve, finding that Valve had not shown the Exhibit to be the same as the art cited in the prosecution histories.  On appeal, the Federal Circuit panel unanimously concluded that Exhibit 1004 and the ‘525 Burns article are “substantively the same,” and reversed and remanded the PTAB’s finding.  The Federal Circuit stated that “[a]uthentication by comparison is routine,” and “a simple comparison of [Exhibit 1004] and the ‘525 Burns article confirms their near identity.”  The Federal Circuit noted that both copies contained twelve paragraphs and 23 images, and the disclosures were the same.  It found that the “difference in dates does not bear on the subject matter being disclosed” and “is consistent with a date of access for the Exhibit that is later than the ‘525 Burns article and does not suggest that the Exhibit is materially different.”  The Federal Circuit also rejected any notion that Valve was required to provide testimony that the two references were identical.  Rather, the Federal Circuit noted, Rule 901(b)(3) of the Federal Rules of Evidence “contemplates comparison by the ‘trier of fact.’”  Having established that the references were substantively the same, the Federal Circuit also found that there was overwhelming evidence the ‘525 Burns article was prior art to the challenged patents, and thus Exhibit 1004 was also prior art.

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