Valve Corp. v. Ironburg Inventions Ltd.

• Decision Date: 17 August 2021
• Docket Number: 2020-1315, 2020-1316, 2020-1379
• Citation: 8 F.4th 1364
• Parties: VALVE CORPORATION, Appellant v. IRONBURG INVENTIONS LTD., Cross-Appellant Andrew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor
• Court: U.S. Court of Appeals — Federal Circuit

8 F.4th 1364

VALVE CORPORATION, Appellant

v.IRONBURG INVENTIONS LTD., Cross-Appellant

Andrew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor

2020-1315, 2020-1316, 2020-1379

United States Court of Appeals, Federal Circuit.

Decided: August 17, 2021

Sharon A. Israel, Shook, Hardy & Bacon, LLP, Houston, TX, argued for appellant. Also represented by Kyle E. Friesen ; Patrick A. Lujin, Kansas City, MO; Reynaldo Barcelo, Joshua Charles Harrison, Barcelo, Harrison & Walker, LLP, Newport Beach, CA.

Robert David Becker, Manatt, Phelps, & Phillips, LLC, San Francisco, CA, argued for cross-appellant.

Kakoli Caprihan, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by Daniel Kazhdan, Thomas W. Krause, Farheena Yasmeen Rasheed.

Before Newman, Lourie, and Dyk, Circuit Judges.

Dyk, Circuit Judge.

Valve Corporation ("Valve") appeals two final written decisions of the Patent Trial and Appeal Board ("Board") determining that claims of U.S. Patent No. 9,289,688 ("the ’688 patent") and U.S. Patent No. 9,352,229 ("the ’229 patent") were not shown to be unpatentable. Ironburg Inventions Ltd. ("Ironburg"), the owner of the ’688 patent and the ’229 patent, cross-appeals the Board's determination that other claims of the ’688 patent were shown to be unpatentable. We affirm in part, reverse in part, vacate in part, and remand.

BACKGROUND

This appeal involves two inter partes review ("IPR") proceedings. One concerned the ’688 patent, and the other concerned the ’229 patent. The ’688 patent and the ’229 patent have the same inventors (Simon Burgess and Duncan Ironmonger), are both owned by Ironburg, and are directed to similar subject matter, but they are otherwise not related.

In the first IPR proceeding, Valve petitioned for review of claims 1–3, 9, 10, 18–22, and 26–30 of the ’688 patent on February 7, 2017. The ’688 patent is directed to "[a]n improved controller ... for a games console that is intended to be held by a user in both hands in the same manner as a conventional controller" that "comprises additional controls ... located on the rear of the controller." ’688 patent, Abstract. Figure 5 of the ’688 patent is a rear view of an embodiment of the controller with the additional controls (numbered 11A–11D) shown as "paddle levers," see id. col. 3 l. 63, col. 5 ll. 48–50, one end of which is fixed to the back of the controller by a screw (numbered 15) while the other end is moveable, see id. col. 6 ll. 16–21.Id. , fig. 5. Independent claim 1 of the ’688 patent, relevant to the cross-appeal, claims:

1. A games controller comprising:

a case; and

a plurality of controls located on a front end and a top of the case;

the case being shaped to be held in both hands of a user such that the user's thumbs are positioned to operate controls located on the top of the case and the user's index fingers are positioned to operate controls located on the front end of the case; wherein

the games controller further comprises at least one first additional control located on a back of the case in a position operable by a middle, ring or little finger of the user, the first additional control comprising a first elongate member displaceable by the user to activate a control function, wherein the first elongate member comprises a first surface disposed proximate an outer surface of the case and the first elongate member comprises a second surface opposing the first surface, the second surface being configured and arranged to be non-parallel with a portion of the outer surface of the back of the case to which the first elongate member is mounted.

Id. col. 9 ll. 28–48.

Claim 29 adds an additional limitation that is relevant to Valve's appeal, claiming "[t]he games controller of claim 1 wherein the first elongate member is inherently resilient and flexible so as to be sufficiently displaceable to activ[ate] the control function." Id. col. 12 ll. 6–8; see also J.A. 17 n.3 (noting that the claim mistakenly recites "active" instead of "activate").

The Board determined that claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 of the ’688 patent were shown to be unpatentable as anticipated by U.S. Patent Application Publication 2015/0238855 ("Uy").

The Board determined that claims 18, 19, 21, 26, and 29 were not shown to be unpatentable as obvious over a claimed prior art reference (hereinafter, the "Burns article") in combination with other references because a copy of the Burns article that Valve relied on as prior art had not been authenticated. The Board also held that claim 29 was not shown to be unpatentable because Uy did not teach an "elongate member" that was "inherently resilient and flexible."¹

Valve appeals the Board's determination that claims 18, 19, 21, 26, and 29 were not shown to be unpatentable, and Ironburg cross-appeals the Board's determination that claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 were shown to be unpatentable as anticipated by Uy.

In the second IPR proceeding, Valve petitioned for review of all 24 claims of the ’229 patent on August 9, 2017. Similar to the ’688 patent, the ’229 patent is directed to "[a] hand[-]held controller for a games console," "wherein the controller further includes at least one additional control located on a back of the controller," ’229 patent, Abstract, where the additional controls may be "paddle levers," id. col 3 ll. 52–53, col. 9 ll. 24–27. Figure 34A illustrates an embodiment of the ’229 patent ’s controller, and Figure 34B illustrates the operation of the embodiment's paddles, which may be rotated or pivoted. See id. col. 7 l. 66–col. 8 l. 3, col. 18 ll. 1–31.

Id. figs. 34A, 34B.

Claim 1 of the ’229 patent claims:

1. A hand[-]held controller for a games console comprising: an outer case;

a plurality of controls located on a front and a top of the outer case, wherein the outer case is shaped to be held in both hands of a user such that the user's thumbs are positioned to operate controls located on the front of the outer case and the user's index fingers are positioned to operate controls located on the top of the outer case; and

at least one additional control located on a back of the outer case in a position operable by the user's middle finger, the additional control comprising an elongate member which is inherently resilient and flexible such that it can be displaced by the user to activate a control function, wherein the elongate member is at least partially disposed in a respective channel located on the back of the outer case, the channel being elongated along a longitudinal dimension of the elongate member.

Id. , col. 24 ll. 4–20.

The Board determined that none of the claims of the ’229 patent had been shown unpatentable as anticipated by Uy because Uy did not teach "an elongate member" that "is inherently resilient and flexible," and because Valve failed to show that a copy of the Burns article Valve relied on as a reference to show obviousness was prior art. Valve appeals.

We have jurisdiction over the appeals and cross-appeal under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).

DISCUSSION

I

An issue in both of Valve's appeals is whether an exhibit ("the Exhibit")² to the petition relied on by Valve was shown to be a printed publication and thus prior art under 35 U.S.C. § 102(a)(1).³ Valve relied on the Exhibit to show 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. J.A. 2, 32, 58, 73–74, 1131. The Exhibit discloses a "controller" with "2 paddles to the back of the control pad with are [sic] made from polycarbonate," a "plastic," id. at 1132, which is relevant to various limitations, including the limitation of an "elongate member" that is "inherently resilient and flexible."

Valve argued that the Exhibit was prior art because it was a printout of the same online article by Dave Burns—the Burns article—that was cited and enclosed in the prosecution histories of the ’688 patent, ’229 patent, and another one of Ironburg's patents ( U.S. Patent No. 8,641,525 ("the ’525 patent) ),⁴ and those earlier documents were prior art. In support of its prior art argument, Valve submitted copies of the ’688 patent prosecution history, the ’229 patent prosecution history, the ’525 patent prosecution history,⁵ the ’525 patent itself, and a deposition exhibit identical to the reference found in the ’525 patent prosecution history.⁶

The Board rejected Valve's showing on the ground that the Exhibit had not been shown to be the same as the asserted prior art documents in the prosecution histories. This is essentially a determination that Valve failed to prove that the Exhibit was what Valve what claimed it to be, which is an issue of authentication. See Fed. R. Evid. 901(a) ("To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.").

On appeal, Ironburg alternatively contends that the documents in the prosecution history were not prior art because they had not been shown to be publicly accessible. We think that the record here establishes both that the Exhibit is the same reference as the prosecution history documents and that those documents were prior art.

A

We first address the Board's determination that the Exhibit was not shown to be prior art because it was not shown to be the same as the documents in the prosecution history. The Exhibit may be authenticated by "[a] comparison with an authenticated specimen by an expert witness or the trier of...