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Authentication of Prior Art References During IPR Proceedings Need Not Be Supported By Expert Testimony

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The United States Court of Appeals for the Federal Circuit recently held in Valve Corp. v. Ironburg Inventions Ltd. that, in the absence of expert testimony, the Patent Trial and Appeal Board (“PTAB”) has an obligation to compare a copy of an alleged prior art document with an authenticated specimen, particularly where the comparison is not burdensome.1

Valve Corp. (“Valve”) filed two inter partes review (“IPR”) proceedings challenging the validity of certain claims of U.S. Patent No. 9,289,688 (“the’688 Patent”) and all claims of U.S. Patent No. 9,352,229 (“the ’229 Patent”).  The ’688 Patent and the ’229 Patent name the same inventors, are owned by Ironburg Inventions Ltd. (“Ironburg”), and are directed to similar subject matter (i.e., controllers for game consoles), but are otherwise not related.2  In particular, and as relevant to the discussion here, Valve relied on an exhibit (“the Exhibit”)3 to argue that claims 1, 2, 9, 10, 18, 19, 21, 26, and 28-30 of the ’688 Patent and claims 1, 2, 9-17, and 21-24 of the ’229 Patent were unpatentable as obvious over the combination of the Exhibit and other references. Valve asserted that the Exhibit was a printed copy of an online review of an Xbox 360 controller, titled “Review: Scuf Xbox 360 Controller” by Dave Burns, published on October 20, 2010 (the “Burns article”). Valve argued that the Exhibit was a printout of the same online article that was cited and enclosed in the prosecution histories of the ’688 Patent, the ’229 Patent, and another of Ironburg’s patents (U.S. Patent No. 8,641,525, which has the same inventors and is directed to similar subject matter as the ’688 Patent and the ’229 Patent) (“the ’525 Burns article”).  In support, Valve submitted prosecution histories of the ’688 Patent, the ’229 Patent, and the ’525 Patent, and a deposition exhibit identical to the reference found in the ‘525 prosecution history.

The PTAB determined that the copy of the Burns article submitted by Valve as the Exhibit had not been authenticated and was not shown to be a printed publication.  As such, the PTAB held that the challenged claims of the ’688 Patent and the ’229 Patent were not shown to be unpatentable as obvious over the Exhibit in combination with other references.

On appeal, the issue considered was whether the Exhibit was shown to be prior art under 35 U.S.C. § 102(a)(1).4  First, pursuant to Rule 901(a) of the Federal Rules of Evidence, before relying upon “an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.”5  To that end, the Federal Circuit rejected the PTAB’s finding that the Exhibit had not been authenticated as a printout of the same online article as the ’525 Burns article.6  The Federal Circuit noted that authentication by comparison is routine practice throughout federal courts.7  Indeed, pursuant to Rule 901(b)(3) of the Federal Rules of Evidence, an item of evidence may be authenticated by “[a] comparison with an authenticated specimen by an expert witness or trier of fact.”8  The Federal Circuit further cited its recent decision in VidStream LLC v. Twitter, Inc., 981 F.3d 1060 (Fed. Cir. 2020), where a panel of the court “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.”9  The Federal Circuit proceeded to compare the Exhibit with the prior publication for purpose of authentication, noting:

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 con-troller 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.10

Although the date of the Exhibit differed from the date of the ’525 Burns article, the Federal Circuit found that the “difference in dates does not bear on the subject matter being disclosed, which is identical in each document.”11 Accordingly, the Federal Circuit held that there is no requirement that testimony regarding the comparison be supplied and the PTAB has an obligation to make the comparison, particularly, as here, where the Exhibit can quickly be authenticated by comparison and the comparison is not burdensome.12

Second, a reference must be “publicly available” to constitute prior art under 35 U.S.C. § 102(a)(1).  To that end, the Federal Circuit also found “overwhelming evidence” that at least the ’525 Burns article was publicly accessible more than two years before the critical date.13  In so doing, the Federal Circuit noted that a co-inventor of the ’688 Patent and the ’229 Patent testified that he facilitated publication of the ’525 Burns article in order to promote his business.14 The Federal Circuit further gave weight to the patent examiner’s finding that the ’525 Burns article was published on October 20, 2010. Notably, the Federal Circuit stated:

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).15

The Federal Circuit concluded that the Exhibit is prior art under 35 U.S.C. § 102(a)(1), without further testimony or authentication, and reversed the PTAB’s determination that the Exhibit was not prior art, vacated the PTAB’s decision regarding invalidity of claims 18, 19, 21, 26, and 29 of the ’688 Patent and claims 1, 2, 9-17, and 21-24 of the ’229 Patent, and remanded the PTAB to consider Valve’s arguments that relied on the Exhibit.16

Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 2021 WL 3628664 (Fed. Cir. 2021).

2 U.S. Patent Nos. 9,289,688 and 9,352,229.

3 Valve relied on two Exhibits, one in IPR proceedings for each patent. The Court found each exhibit to be identical except three lines of text in the comments section after the article, and treated them as a single exhibit for convenience.

Valve Corp. v. Ironburg, 2021 WL 3628664, at *3.

5 Fed. R. Evid. 901(a).

6 Id. at *4

Valve Corp. v. Ironburg, 2021 WL 3628664, at *4 (citing In re Grand Jury Subpoena Duces Tecum Dated Oct. 29, 1992, 1 F.3d 87, 93 (2d Cir. 1993) (noting that the government could authenticate the original of a calendar “simply by establishing [a] prior production of [a] copy [of the calendar] ... and asking the trier of fact to compare the copy and the original”); Giulio v. BV CenterCal, LLC, 815 F. Supp. 2d 1162, 1169 (D. Or. 2011) (authenticating pages of a deposition transcript because it was “evident from comparing these pages [with an authenticated copy] that they contain identical content and are from the same deposition”); United States v. Safavian, 435 F. Supp. 2d 36, 39–41 (D.D.C. 2006) (authenticating emails by comparing the unauthenticated emails to authenticated emails)).

8 Fed. R. Evid. 901(b)(3).

9 valve Corp. v. Ironburg, 2021 WL 3628664, at *4.

10 Id.

11 Id.

12 Id.

13 Id. at *6.

14 Id.

15 Id. at *7.

16 Id. at *8.

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