Court Holds Fact Finders May Compare Document Versions
Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis. A recent Federal Circuit decision has provided further guidance on how the PTAB should determine what constitutes prior art in AIA trial proceedings, especially as it relates to the duties of a fact finder.
In Valve Corp. v. Ironburg Inventions Ltd., the plaintiff filed inter partes review proceedings against two patents owned by Ironburg Inventions directed to handheld controllers. The PTAB issued a mixed ruling finding that some of the claims were unpatentable while upholding others. The PTABs relevant findings included a determination that Valve’s prior art reference exhibit known as the “Burns article” was rejected based on the ground that it had not been shown to be the same document asserted in the patents’ prosecution histories, and thus that Valve had failed to prove that the exhibit was what Valve purported it to be. Valve appealed the PTAB’s decisions in both proceedings.
In Valve Corp., Fed. Cir., No. 20-1315 (Aug. 17, 2021), (here) the Federal Circuit reversed the PTAB’s conclusion that a printed copy of an online review of an XBOX 360 controller did not qualify as prior art. The Court first addressed the PTAB’s rejection based on authenticity by noting that an exhibit may be authenticated by having an expert witness or the trier of fact compare the item in question to an “authenticated specimen.” It faulted the PTAB for declining to compare the two documents and stated that a trier of fact making this type of comparison was routine and not burdensome. After noting that the documents are virtually identical, the Court moved onto the question of whether the document is a printed publication.
The Court stated the principle that: “Whether a reference qualifies as a ‘printed publication’ under section 102 is a legal conclusion based on underlying factual findings” and noted that in an IPR, it is the burden of the petitioner to prove by a preponderance of the evidence that a document is in fact a printed publication. The key issue in making this determination is whether the reference was “sufficiently accessible” before the earliest priority date of the patent in question.
The Court determined that there was “overwhelming evidence” that Burns article was publicly accessible for several years prior to the relevant patent priority date. The Court made this determination based in part on precedence that established that “where a publication’s purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.” Deposition testimony by one of the co-inventors of several of the patents indicated that he facilitated publication of the Burns article to promote his business. The Court concluded that this was strong evidence that the online review was publicly accessible.