Authenticating Prior Art

by Dennis Crouch

Valve Corp. v. Ironburg Inventions (Fed. Cir. 2021)

Duncan Ironmonger and Simon Burgess founded the UK companies Scuf Gaming and also Ironburg with the goal of reengineering the gaming console.  Corsair purchased the companies in 2019, but by that time the litigation with Valve was well underway.  Ironburg won a $4 million judgment regarding two patents (now on appeal) and the district court stayed the litigation regarding U.S. Patent Nos. 9,289,688 and 9,352,229.  Those two patents are the subject of this appeal.

 

After being sued for infringement, valve filed inter partes review (IPR) petitions challenging the validity of Ironburg’s US Patent Nos. 9,289,688 and 9,352,229.  The Board split its decision, cancelling some claims obvious and left others in place. On appeal, the Federal Circuit has sided with Valve — upholding the obviousness determination and holding that the remaining claims may also be invalid.

The focus of the appeal is whether the purported “Burns” reference should count as prior art. Valve submitted a printout of Burns and argues that it was a printed copy of an online review of a Scuf controller from 2010.  The same reference had been submitted and cited in both patents, although Valve submitted a more recent print-out.

Authentication: Before relying upon a documented evidence, it must first be authenticated — a showing that the document “is what the proponent claims it is.” Fed. R. Evid. 901(a).  Here, the Board found that the Burns printout submitted by Valve had not been authenticated as the same document cited during the examination.  On appeal, the Federal Circuit quickly rejected that finding — holding instead that the new submission can quickly be authenticated by comparison.

Here, a simple comparison of the Exhibit with the ’525 Burns article confirms their near identity. The text of the twelve paragraphs and the 23 images (depicting the controller and a user guide) are the same in the Exhibit and the ’525 Burns article—i.e., the prior art disclosures of these documents are the same.

Slip Op. The Board had refused to compare the two documents since Valve had not presented any testimony that the two were substantially identical.  On appeal here, the Federal Circuit found that the comparison here needed no testimony because the comparison was not burdensome. (10 pages, 23 images).

Isenburg also argued that the document had not been shown to be a prior printed publication. On appeal, the Federal Circuit found “overwhelming evidence” that the reference was prior art.   In particular, one of the inventors (Burgess) testified that he had facilitated the publication back in 2010 for marketing purposes.  The court also gave weight to an examiner statement during prosecution that the document was “published on October 20, 2010.”

Patent examiners are trained and required to determine publication dates. See, e.g., MPEP § 2128 (9th ed. Rev. 10, June 2020). The patent examiner’s determination of the publication date is a “factual finding[] from a legally authorized investigation.” Fed. R. Evid. 803(8)(A)(iii). It also “is supported by sufficient guarantees of trustworthiness.” See Fed. R. Evid. 807(a)(1).

Slip Op.  The applicant did not, at that time, dispute the examiner’s statements regarding the publication.   The court also looked to the IDS document where the applicant had stated that the document was published in 2010. Finally, the court also suggests that the PTAB should have relied upon the Internet Archive – Wayback Machine to further verify the authenticity.

Vacated and remanded.

35 thoughts on “Authenticating Prior Art

  1. 3

    While (given the overwhelming, multi-source evidence) the CAFC panel got this one correct, note the following:

    1. All too often (with both courts and the PTO), the Wayback Machine (and other such “online only” sources) are improperly treated as if their website content is accurate.

    Yet, because the content from such “sources” are easily date and content modifiable, they should be treated as no better than “pointers” to actual, trustworthy, physically-produced evidence.

    2. “Patent examiners are trained and required to determine publication dates.”

    Because they’re equally trained and required to determine 101 / patent claim eligibility, the CAFC should be giving the same weight to examiners / the PTO when they’ve determined that an invention / its claims are 101 eligible as the say they’re granting when it comes to pub dates.

    1. 3.1

      Pro Say, what you said about giving the Examiners deference on 101 makes sense assuming they are trained (or instructed) properly. Just look at the 2019 Patent Eligibility Guidelines and see how the Examiners were given poor instructions as to making 101 evaluations. The Fed Cir has said in several cases they aren’t bound by those Guidelines (e.g., Cleveland Clinic v True Health and Facebook v Windy City). If you read those Guidelines, they stated that integrating an abstract idea, natural phenomena, etc. into a practical application is passes 101. That is complete garbage according to Fed. Cir. decisions. Medical diagnostics is extremely practical but you can count on the fingers found on your foot the number of medical diagnostic patent the Fed. Cir. has upheld. I’m willing to bet that virtually every doctor in this country would find medical diagnostics extremely practical. So while trusting the Examiners is a great idea, they have to be properly instructed first.

      1. 3.1.1

        Just look at the 2019 Patent Eligibility Guidelines and see how the Examiners were given poor instructions as to making 101 evaluations.

        The instructions were as good as possible – GIVEN the fact that leading members of ALL THREE BRANCHES of the government have made the observation that the mess of 101 (created by the Supreme Court) is a Gordian Knot of contradictions.

        The Fed Cir has said in several cases they aren’t bound by those Guidelines

        And rightfully so, given the fact that in our Sovereign, only one Branch was allocated the Constitutional Authority to write patent law, and it was not the Executive Branch.

        The trouble (for everyone) is that that one branch is also not the Judicial Branch.

        As to ‘be properly instructed’ in the day of the Gordian Knot, I would put it to you that no such thing at this point in time.

        1. 3.1.1.1

          I both like an dislike the 101 Guidance. I like it because it at least attempts to give some structure an otherwise contemptible mess that is 101 jurisprudence. I hate it because it was never going to pass muster with the Fed. Cir. because it is not faithful to the 101 jurisprudence. This was obvious the day it came out. In all fairness, I have serious doubts that anything coherent can be faithful to 101 jurisprudence. We have an intra-court split on the issue that no one seems to want to acknowledge.

          1. 3.1.1.1.1

            A split implies two (or more) identifiable positions. I don’t think we have a word for genuine judicial befuddlement.

            101 is both philosophical conundrum and interpretation canon, with zero political valence. They would rather not think about it, because it appears insoluble. It is not.

        2. 3.1.1.2

          Anon, you are completely correct. The 101 decision are a total mess and inconsistent based on whichever judges are sitting on the panel. They don’t seem to be able to agree on the weather so something like patent eligibility seems way beyond most of them. I don’t know if “as good as possible” is correct, but they were a good attempt to add some coherency and consistency to the mess. It reduced the number of 101 rejections made by Examiners, but what good is a patent if it won’t stand up when challenged in an IPR or DC? The answer has to come from Congress, but they don’t seem to have the backbone to fix the issue. Tillis tried but he wanted buy-in from all possible stakeholders, and that will never happen. Big Tech, Pharma, and small inventors all have very different issues and ideas, and the likelihood of them agreeing on anything (other than the existence of a problem) is close to zero.

          1. 3.1.1.2.1

            [The Iancu guidance docs] were a good attempt to add some coherency and consistency to the mess. It reduced the number of 101 rejections made by Examiners, but what good is a patent if it won’t stand up when challenged in an IPR or DC?

            I agree with the love/hate sentiments that both you and OSitA express regarding the Iancu guidance. My thought is that the guidance “unstuck” a lot of applications that had “run aground” (so to speak) on rejections predicated on a very strict interpretation of Mayo/Alice. The guidance also, however, “unstuck” a lot of well-meritted rejections, thus allowing claims to issue that have no business issuing.

            Considered from my point of view (i.e., in-house attorney for a frequent patentee), this is a net good. I can take responsibility (along with the outside counsel that I hire to prosecute my company’s applications) to ensure that the claims that we take to allowance do not extend beyond the limits that one should expect to stand up in court.

            From the public’s point of view, however, the point of having an examination system is to prevent the public from being annoyed by suits on meritless patent claims. Where the relevant market actors are not policing their own patent claim drafting (i.e., where the thinking runs “I am going to take the broadest claim that the examiner will let me have”), the Iancu guidance essentially ensures that the PTO will fail at the mission for which Congress chartered it far more often than it did pre-Iancu.

            In other words, the well-functioning of the PTO under the Iancu guidance depends on the self-restraint and virtue of the applicants. It is too early yet to know whether that virtue is holding, but my intuitive inclination is not to trust systems that depend on the virtue of large numbers of people whom one does not know personally.

    2. 3.2

      Pro Say,

      Publication date of a reference is an issue of fact, while eligibility is an issue of law.

      1. 3.2.1

        True that JD.

        Yet such claims eligibility confirmation by examiners / the PTO is of course based on / resultant from their factual findings.

        Welcome to the world of Alice; where smoke and mirrors rule.

    3. 3.3

      “2. “Patent examiners are trained and required to determine publication dates.””

      They have no clue as to what patent examiners are actually trained to do and what they are not. In my experience, most Federal judges do not know the actual mechanics of a patent examination, aside from the high level stuff. When was the last time a patent examiner explicitly determined the level of ordinary skill in the art in an Office Action? More often than not, a patent examiner’s “training” involves nothing more than learning to parrot how to state a rejection or “finding”. They have templates they are taught to work from and they just “fill in the blank.” For example, some months ago, an Examiner tried to give me a “predictable results” rationale for combining references that was nothing more than a conclusion without analysis. It was obviously (and I don’t use that word lightly ) a well-used template for this Examiner. I responded with PTAB holdings that this conclusion, without any analysis, was improper. The Examiner cited the MPEP back to me (again with no findings or analysis), with the Examiner apparently failing to read that the portion of the MPEP being cited to me required specific findings — findings which were completely missing from the rejection.
      As someone from the New York Metro area might say “I got your training right here!” [omitting description of the physical gesture typically accompanying such a statement]

      1. 3.3.1

        I responded with PTAB holdings that this conclusion, without any analysis, was improper.

        more details please

    4. 3.4

      “Yet, because the content from such “sources” are easily date and content modifiable, they should be treated as no better than “pointers” to actual, trustworthy, physically-produced evidence.”

      How does any party other than operator of archive.com modify the wayback machine results? Or are you referring to modification of printouts from the wayback machine?

  2. 1

    Another of several IPR Fed. Cir. appeal decisions showing how much more serious is full authentication of submitted asserted publications in IPRs than in normal ex parte PTO practice. [IPRs (like interferences) being such a hybrid practice with strictly enforced special PTO rules plus strictly enforced federal evidentiary rules as in contested District Court litigation.]

    1. 1.1

      What drives patent litigation costs? Attorney specialization, mainly. What drives attorney specialization? So to drive down litigation costs, lets create a parallel, but slightly askew legal system with lots of procedural quirks, and then grow a specialized bar to service it. Why we should be able to DOUBLE costs in no time!

      1. 1.1.1

        Both median patent litigation costs and total patent litigation spend are down (and falling or steady) since the advent of the AIA (links below). I think that if the AIA had been better implemented by the CAFC we could have achieved even bigger savings. The idea, however, that the AIA has driven costs up, however, is not borne out in the data.

        link to lexology.com
        link to patentprogress.org

        1. 1.1.1.1

          I’ve seen AIPLA’s economic survey reports & the numbers for completed IPR’s are pretty eye popping, and doubtless many of those featured parallel or subsequent litigation. I highly doubt that the AIA saved anyone a dime.

          Also attorney specializing is a seperate cost vector than the usual costs of guild behavior & procedural excess common to all litigation, but especially DC litigation…

          1. 1.1.1.1.1

            The right question to ask about the AIA is not “did I save money or cost money in this case by filing an IPR?” The mere existence of IPRs makes certain one-time trolls think better of serving a complaint in the first place, but that is money that you will never know that you saved.

            The right question is “has total litigation spend come down since the AIA came online?” The answer to that one is “it has.” You can thank the AIA’s framers at your leisure for that outcome.

            1. 1.1.1.1.1.1

              Hmmm. Have litigation costs declined on a per case basis? No. Was there a decline in overall patent litigation? Apparently.

              Did the AIA cause that decline? Ahh. Doubtful.

              I got two words for ya: Al ice.

              1. 1.1.1.1.1.1.1

                Martin, yes, quite a number of patent suits have been disposed of on preliminary 12(b)(6) motions as having “abstract” claims like Alice. But that number is far smaller that the number of actual and threatened patent suits disposed of by IPRs.
                Also, as to the unrestrained discovery and other major costs of patent litigation previously noted, there should be added the surprising number of patent suits where well known lead trial counsels are now personally billing at least $1000. per hour plus a team of high-billing assisting attorneys, with surprisingly little serious cost controls by in-house counsel.

              2. 1.1.1.1.1.1.2

                Have litigation costs declined on a per case basis? No.

                Huh? Median litigation costs are down since 2011. I cited a source above. Where are you seeing numbers to the contrary?

                I take your point, however, that Alice and the AIA were so close in time that it is hard to tease out how much effect follows from the one or from the other. If you think that Alice has shrunk costs, while the AIA has driven them up, but Alice’s effect is larger on net, I suppose that you could be correct. I am not prepared to establish the contrary theory.

                1. “My intuitive inclination is not to trust systems that depend on the virtue of large numbers of people whom one does not know personally” That’s comedy gold of the NoShi#tSherlock variety. But only a minority of people are no darn good.

                  Most people want to act ethically & not claim what does not belong to them. Unfortunately, they have no idea what you can or cannot patent when the utility of the invention is realized by the use of some item of information.

                  I think Alice was about three years post AIA.

                2. I think Alice was about three years post AIA.

                  Alice was decided in June 2014. Pres. Obama signed the AIA in 2011, but by the legislation’s own terms, IPRs did not come into effect until Sept 2012.

                  Almost no one petitioned for an IPR in 2012, however (only 17 IPR petitions were filed in 2012). 2013 and 2014 each saw only ~500 IPR petitions. It was not until 2015 that large numbers of IPR petitions were filed.

                  Really, the incidence of IPRs as something that actually happen in litigation was essentially coincident with the advent of Alice motions as something that actually happen.

      2. 1.1.2

        What drives patent litigation costs?
        In part, the stakes. Tell a client that it may cost $25K (from start to finish) to obtain a patent, and they look at you funny. Tell a client in litigation that you want to spend $25K to investigate an obscure legal doctrine that has some small chance of leading to a victory, it is “go for it!!”

        To your point, because very frequently the stakes can still be very high in an IPR, there becomes a belief that every stone was be overturned.

        Every time the Federal Circuit conjures some cockamamie way to invalidate a patent (because by and large that is what they like to do), they’ve fed the fuel for both defendants and plaintiffs to investigate whether that particular technique applies. They more convoluted the Federal Circuit makes the process, the more expensive it becomes.

        1. 1.1.2.1

          Yes, the stakes indeed. [Patent suits that can be settled for relatively small amounts get settled.] Most IPRs are filed in direct response to being sued for large sums of money. But the number of different ways in which patent suits can be lost in litigation has always been large. Vastly larger than the number of possible IPR issues for either party. Because the litigation costs for “a belief that every stone was be overturned” are severely limited to only looking under two rocks in IPRs, just patents and publications, with severely limited discovery, page limits, and time limits.

          1. 1.1.2.1.1

            are severely limited to only looking under two rocks in IPRs, just patents and publications
            That just leaves more incentive for attorneys to suggest looking under the same rock two or three or four times.

            Again, because the stakes are still high, there is incentive to go the extra step (or mile).

      3. 1.1.3

        Martin, I do not think attorney specialization drives up litigation costs nearly as much as unrestricted D.C. discovery and all the costly litigations screwups due to law school failures to teach most law students how to authenticate documents, draft effective airtight affidavits or declarations, find, read and follow local court or agency rules, and to seek advice when needed. Furthermore, any attorney dealing with patents who does not by now have some basic knowledge of IPRs [and just complains about them] makes about as much sense as a doctor saying they don’t need to learn anything about treating Covid-19 or some other new disease just hoping it will somehow go away.

        1. 1.1.3.1

          Furthermore, any attorney dealing with patents who does not by now have some basic knowledge of IPRs [and just complains about them] makes about as much sense as a doctor saying they don’t need to learn anything about treating Covid-19 or some other new disease just hoping it will somehow go away.
          Meh — after the institution has been granted, you are really going to want a litigation attorney (perhaps even beforehand depending upon the circumstances). This is typically beyond the ken of an average patent prosecution practitioner.

          1. 1.1.3.1.1

            I was not at all suggesting the “average patent prosecution practitioner” [if restricted to that practice experience] even preparing unassisted an IPR petition, or conducting an IPR. But they should all have a basic understanding of the differences between the two! Including the potential vulnerability of the patents they obtain to much better prior art searches and adverse expert declarations in an IPR, especially if they have been relying solely on examiner searches. Especially without obtaining multiple claims of adequately varying scope. [Likewise, there are a surprising number of patent trial practitioners these days without substantial PTO practice experience, and they must also find some IPR practice rules strangely foreign unless they have learned them or obtained expert assistance.]

    2. 1.2

      Paul,

      You likely are aware of this (your post references it), but the FRE apply to PTAB trial proceedings but do not apply to ex parte appeals. See 37 CFR § 42.62.

      1. 1.2.1

        Indeed, there is even a Fed. Cir. decision that hearsay evidence can be accepted in some cases in ex parte PTO proceedings.

        1. 1.2.1.1

          In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994) (“The inapplicability of hearsay evidence rules in ex parte PTO examination is appropriate in light of the purpose and reason for the hearsay rule.”)

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