Last Week in the Federal Circuit (August 16-20): Controlling for Authentication

It has been another steamy August week here in Washington and at the Federal Circuit, with eleven new opinions fresh off the press.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions:  5

Non-precedential opinions:  6 

Rule 36:  2 

Longest pending case from argument:  Tie between Campbell Soup Company v. Gamon Plus, Inc., No. 20-2322 and Campbell Soup Company v. Gamon Plus, Inc., No. 20-2344 (73 days)

Shortest pending case from argument (non-Rule 36):  NuVasive, Inc. v. Hirshfeld, No. 20-2321 (68 days)

Case of the week: Valve Corporation v. Ironburg Inventions Ltd., No. 20-1315.

Panel: Judges Newman, Lourie, and Dyk, with Judge Dyk writing the opinion

You should read this case if: you have a case involving the authentication of prior art from the internet.

Have you heard of the Wayback Machine?  If not, this digital archive of the internet has been cataloguing webpages since 1996.  Have you wondered whether courts would consider archived pages retrieved from this service as authentic prior art?  This week, the Federal Circuit endorsed the practice of patent examiners who rely on the Wayback Machine as evidence of web article’s public availability.

Ironburg sued Valve Corp. for patent infringement over the Valve’s “Steam Controller.”  Valve challenged Ironburg’s patents in two inter partes reviews.  In both reviews, Valve asserted as prior art a printout of an online magazine article reviewing an Xbox360 controller.  This so-called “Burns article” was published in 2010, three years before the priority date of the patents-in-suit.  Valve’s printout of the article, however, was dated after the priority date.  Despite Valve’s request that the Patent Trial and Appeal Board compare the printout with copies of the Burns article included in the prosecution histories of related Ironburg patents, the Board declined to consider Valve’s printout as prior art as it had not been authenticated.

The Federal Circuit reversed and remanded, holding that the Board had “an obligation” to compare Valve’s printout to the Burns article included in the submitted prosecution histories.  The Court explained that “[a]uthentication through comparison is routine.”  Further, a comparison of Valve’s ten-page printout with the nine-page copy of the Burns article from the submitted prosecution histories is “not burdensome.”  Conducting the comparison itself, the Court concluded that these were “substantially the same.”  The only difference was the date, which did not bear on the subject matter of the disclosure.

The Federal Circuit also rejected Ironburg’s argument that, in the alternative, the Burns article is not prior art because it was not “publicly accessible.”  The Federal Circuit found overwhelming evidence of public accessibility based on several factors:  (1) an inventor of the challenged patents had submitted a declaration during prosecution of related patents stating that he facilitated the publication of the Burns article for promotional purposes; (2) patent examiners confirmed during those related prosecutions that the Burns article was published by a date that was before the priority date of the challenged patents; (3) the applicants during those related prosecutions, including a named inventor on the challenged patents, did not dispute the status of the Burns article as prior art; and (4) a patent examiner had found the Burns article through an internet search.  Although the Board did not address this argument, the Federal Circuit held that “overwhelming evidence” in the record precludes the Board from finding that the Burns article is not prior art.

The Federal Circuit specifically noted the evidence of availability based on the “Wayback Machine.”  The Court noted that, according to Patent Office practice, examiners may use the Wayback Machine “as a source of information to determine when a Web reference was first made available to the public.”  The Court also observed that several district courts—including the Northern and Central Districts of California and the Northern District of Florida—have similarly taken judicial notice of the contents of webpages retrieved from the Wayback Machine and relied on the accessibility dates given by the Wayback Machine.  The Federal Circuit endorsed this approach, which may open the door for more district courts to follow the same practice going forward.