Authentication of Prior Art in an IPR Does Not Require Testimony

VALVE CORPORATION v. IRONBURG INVENTIONS LTD.

Before Newman, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board.

Summary: For purposes of authenticating a prior art reference in IPR proceedings, the Board had an obligation to compare the reference  to nearly identical copies in the prosecution histories of the challenged patents.

Valve Corporation petitioned for inter partes review of two of Ironburg Inventions’ patents.  The Patent Trial and Appeal Board instituted review but held certain claims in both patents not unpatentable.  The Board did not consider Valve’s arguments for the obviousness of these claims because it held that a copy of an article Valve relied upon as a prior art reference had not been authenticated.  Valve had asked the Board to authenticate the reference by comparing it to different copies of the article in the prosecution histories of the challenged patents, but the Board had declined.

On appeal, the Federal Circuit reversed the Board’s determination that the article had not been properly authenticated.  The Federal Circuit held that there was no requirement to provide testimony that the article asserted in the IPRs was identical to the copies in the prosecution histories.  It explained that Federal Rule of Evidence 901(b)(3) permits the trier of fact—here, the Board—to compare an exhibit to an authenticated specimen.  After noting that such comparison is done routinely and would not have been burdensome for the Board, the Federal Circuit held that the Board had an obligation to make that comparison.  The Federal Circuit then found that the copy of the article asserted in the IPRs was substantively the same as the copies in the prosecution histories of the challenged patents and therefore authenticated.

The Federal Circuit vacated the Board’s finding of unpatentability of the relevant claims and remanded the case for the Board to consider Valve’s obviousness arguments relying on the article.

Editor: Paul Stewart

Written by: Mack M. Montgomery & Justin C. Gillett