Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`
`8 F.4th 1364
`United States Court of
`Appeals, Federal Circuit.
`
`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
`|
`Decided: August 17, 2021
`
`Synopsis
`Background: Petitions for inter partes review
`were filed to challenge validity of patents
`directed to hand held controllers for game
`consoles. The Patent Trial and Appeal Board
`(PTAB), 2019 WL 494366, denied one petition,
`granted other petition in part, 2019 WL 994650,
`and denied rehearing, 2019 WL 5608329 and
`2019 WL 5608310. Parties appealed.
`
`Holdings: The Court of Appeals, Dyk, Circuit
`Judge, held that:
`
`[1] testimony that exhibit and prior art article
`were identical was not required to authenticate
`exhibit;
`
`[2] judicial notice could be taken of contents
`of webpages available through online digital
`
`archive of web pages run by nonprofit library
`in San Francisco, California;
`
`[3] “inherently resilient and flexible” limitation
`in patent was not anticipated by prior art;
`
`[4] petitioner forfeited its Appointments Clause
`challenge;
`
`[5] phrase, “first surface disposed proximate an
`outer surface of the case,” required first surface
`of additional control and outer surface of case
`to be arranged close or near to each other, but it
`did not require them to be facing each other;
`
`[6] Court of Appeals could determine correct
`construction of disputed limitation; and
`
`[7] “opposing” limitation in patent was met
`by two surfaces that faced each other or were
`opposite each other, but they did not have to be
`substantially flat.
`
`Affirmed in part, reversed in part, vacated in
`part, and remanded.
`
`West Headnotes (19)
`
`[1] Patents
`Inter partes review
`On inter partes review of patent
`directed to hand held controllers
`for game
`consoles,
`testimony
`that exhibit and prior art article
`were identical was not required
`to
`authenticate
`exhibit,
`since
`comparison by trier of fact was
`sufficient, difference in dates did
`not bear on subject matter being
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
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`

`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`identical
`disclosed, which was
`in each document, dates were
`consistent with exhibit being later
`than article and did not suggest
`that exhibit was materially different,
`and difference in exhibit and article
`as
`result of how exhibit was
`printed did not amount to affirmative
`evidence challenging exhibit or
`article's material facts. 35 U.S.C.A. §
`102(a)(1); Fed. R. Evid. 901(a).
`
`[5] Patents
`Evidence
`In inter partes review, petitioner
`bears burden of establishing by
`preponderance of evidence
`that
`particular document
`is printed
`publication. 35 U.S.C.A. § 102.
`
`[6] Patents
`Accessibility
`For reference to qualify under patent
`law as printed publication, before
`critical date reference must have
`been sufficiently accessible to public
`interested in art. 35 U.S.C.A. § 102.
`
`[2] Patents
`Evidence
`An inter partes review petitioner
`may provide evidence of public
`accessibility of a reference after
`the petition stage
`if
`the patent
`owner raises a challenge to public
`accessibility. 35 U.S.C.A. § 102(a)
`(1).
`
`[3] Patents
`Questions of law or fact
`Whether a reference qualifies as a
`“printed publication” under patent
`law is a legal conclusion based
`on underlying factual findings. 35
`U.S.C.A. § 102.
`
`[4] Patents
`Scope of Review
`Court of Appeals reviews the Patent
`Trial and Appeal Board's (PTAB)
`legal determinations de novo, but
`reviews the PTAB's factual findings
`underlying those determinations for
`substantial evidence.
`
`[7] Patents
`Evidence
`examiner's determination
`Patent
`of
`a publication date
`is
`a
`factual
`finding
`from a
`legally
`authorized
`investigation and
`is
`supported by sufficient guarantees
`of trustworthiness to be admissible
`on inter partes review to determine
`whether a reference qualifies as a
`printed publication. 35 U.S.C.A. §
`102; Fed. R. Evid. 803(8)(A)(iii),
`807(a)(1).
`
`[8] Evidence
`Historical facts
`Contents of webpages available
`through online digital archive of
`web pages run by nonprofit library
`in San Francisco, California were
`facts that could be accurately and
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`readily determined from sources
`whose accuracy reasonably could
`not be questioned, as required to
`take judicial notice on inter partes
`review of patent directed to hand
`held controllers for game consoles.
`Fed. R. Evid. 201.
`
`[9] Patents
`Accessibility
`The standard for public accessibility,
`as required for a reference to be
`considered prior art,
`is one of
`reasonable diligence to locate the
`information by interested members
`of the relevant public. 35 U.S.C.A. §
`102.
`
`Computers and
`
`[10] Patents
`Software
`“Inherently resilient and flexible”
`limitation, in patent directed to hand
`held controllers for game consoles,
`was not anticipated by prior art
`directed to “game controller” with
`“lever disposed on a second side of
`the housing,” i.e., back of controller,
`wherein lever “is configured to
`pivot” between positions, such that
`pivoting of
`lever activated and
`deactivated switch, since spring of
`prior art was not part of elongate
`member of prior art, i.e., lever, and
`only spring provided flexibility and
`resilience. 35 U.S.C.A. § 102.
`
`[11] Patents
`Persons entitled to seek
`review or assert arguments;  parties;
` standing
`Petitioner on inter partes review
`forfeited its Appointments Clause
`challenge on appeal by affirmatively
`seeking ruling from members of
`Patent Trial and Appeal Board
`(PTAB), regardless of how they were
`appointed. U.S. Const. art. 2, § 2, cl.
`2.
`
`Computers and
`
`[12] Patents
`Software
`surface disposed
`Phrase, “first
`proximate an outer surface of the
`case,” in patent directed to hand
`held controllers for game consoles,
`required first surface of additional
`control and outer surface of case to
`be arranged close or near to each
`other, but it did not require them to
`be facing each other.
`
`[13] Patents
`Scope of Review
`Court of Appeals could determine
`correct construction of disputed
`limitation in patents directed to hand
`held controllers for game consoles,
`since Patent Trial and Appeal Board
`(PTAB) on inter partes review did not
`rely on extrinsic evidence as to claim
`construction.
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`
`Expert and inventor
`
`[14] Patents
`testimony
`Where the patent documents are
`unambiguous,
`expert
`testimony
`regarding the meaning of a claim is
`not entitled to any weight.
`
`Computers and
`
`[15] Patents
`Software
`in patent
`limitation,
`“Opposing”
`directed to hand held controllers for
`game consoles, was met by two
`surfaces that faced each other or were
`opposite each other, but they did not
`have to be substantially flat.
`
`[16] Patents
`In general;  utility
`US Patent 8,641,525. Cited.
`
`[17] Patents
`In general;  utility
`US Patent 5,989,123. Cited as Prior
`Art.
`
`[18] Patents
`In general;  utility
`US Patent 9,289,688. Unpatentable
`in Part.
`
`[19] Patents
`In general;  utility
`US Patent 9,352,229. Patentable in
`Part.
`
`*1366 Appeals from
`the United States
`Patent and Trademark Office, Patent Trial
`and Appeal Board in Nos. IPR2017-00858,
`IPR2017-01928.
`
`Attorneys and Law Firms
`
`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.
`
`Opinion
`
`Dyk, Circuit Judge.
`
`*1367 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
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`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.
`*1368
`
`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
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`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 *1369 “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
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`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).
`
`*1370 Discussion
`
`I
`
`[1] 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.”
`
`[2] 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
`
`*1371 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.”).
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`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.
`
`Twitter, Inc., 981 F.3d 1060 (Fed. Cir. 2020), we
`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. See id. at
`1066–67.
`
`The record shows that the Exhibit and the
`prosecution documents are virtually identical.
`We first compare the Exhibit with the ’525
`Burns article.
`
`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 controller
`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.
`
`It is true that the date of the Exhibit indicates
`that the article was “[p]osted[ ] 6 years ago,”
`J.A. 1131, while the ’525 Burns article bears
`a date of “October 20, 2010,” id. at 2002. The
`difference in dates does not bear on the subject
`matter being disclosed, which is identical in
`each document. Moreover, the difference in
`dates is consistent with a date of access for
`the Exhibit that is later than the ’525 Burns
`article and does not suggest that the Exhibit
`is materially different. Ironburg identifies no
`other substantive difference between the two.
`
`Despite Valve's request that the Board make the
`comparison, the Board declined to compare the
`’525 Burns article with the Exhibit. The Board
`appears to have held that it was not obligated
`to compare the two because Valve provided no
`testimony that the two were identical. There
`is no *1372 requirement that such testimony
`
`A W
`
`e 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 fact,” here, the article by Dave Burns in
`the certified ’525 patent prosecution history
`(“the ’525 Burns article”). Fed. R. Evid. 901(b)
`(3). Authentication by comparison is routine.
`See, e.g., 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). In VidStream LLC v.
`
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`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`be supplied. Rule 901(b)(3) of the Federal
`Rules of Evidence contemplates comparison
`by the “trier of fact,” and, as noted, that is
`done routinely. A comparison of the ’525 Burns
`article with the Exhibit is not burdensome.
`The ’525 Burns article is nine pages long, and
`the Exhibit is ten pages long. The article in
`each document is twelve paragraphs long, and
`has 23 images. The Board had an obligation
`to make the comparison, as Rule 901(b)(3)
`contemplates and as the cases require.
`
`stamps and email addresses in a reproduction
`of a newsgroup post asserted as prior art were
`insufficient to create a genuine issue of material
`fact concerning the post).7
`
`We conclude that the Exhibit is substantively
`the same as the copies of the Burns article in the
`prosecution histories of the ’525 patent and the
`’688 and ’229 patents.
`
`B T
`
`he Board did not determine whether the
`copies of the Burns article were printed
`publications, but Ironburg argues that Valve
`failed to show that the copies of the Burns
`article in the prosecution histories were prior
`art because they were not shown to be publicly
`accessible before the priority date. We disagree.
`There is overwhelming evidence that at least
`the ’525 Burns article is prior art, and thus, the
`Exhibit, which is substantively the same, is also
`prior art.
`
`[3] [4] “Whether a reference qualifies as
`a ‘printed publication’ under section 102
`is a legal conclusion based on underlying
`factual findings.” M & K Holdings, Inc. v.
`Samsung Elecs. Co., 985 F.3d 1376, 1379
`(Fed. Cir. 2021) (quoting Jazz Pharms., Inc.
`v. Amneal Pharms., LLC, 895 F.3d 1347,
`1356 (Fed. Cir. 2018)). “We review the
`Board's legal determinations de novo, but we
`review the Board's factual findings underlying
`those determinations for substantial *1373
`evidence.” Jazz, 895 F.3d at 1355 (citations
`omitted).
`
`The same near identity between the Exhibit
`and the ’525 Burns article exists in comparing
`the Exhibit with the other copies of the Burns
`article in the prosecution histories of the ’688
`patent and ’229 patent. Ironburg argues that
`these documents “are not identical.” Cross-
`Appellant's Principal and Resp. Br. 16. It points
`out that some of the images in the ’525 Burns
`article and the Exhibit are missing in some of
`the other copies of the Burns article: namely,
`the copy of the Burns article provided as part of
`Ironburg's information disclosure statement for
`the application for the ’688 patent (“the ’688
`patent IDS copy”) and the copy cited by the
`examiner for the ’229 patent (“the ’229 patent
`prosecution copy”). See Oral Arg. at 17:14–
`17:49, http://oralarguments.cafc.uscourts.gov/
`default.aspx?fl=20-1315_06082021.mp3; J.A.
`2281–96 (’688 patent IDS copy); id. at
`4394–4414 (’229 patent prosecution copy).
`This difference appears to be due to how
`the ’688 patent IDS copy and the ’229
`patent prosecution copy were downloaded and
`printed; it does not amount to “affirmative
`evidence challenging [the Exhibit or the ’525
`Burns article's] material facts.” Suffolk Techs.,
`LLC v. AOL Inc., 752 F.3d 1358, 1365–66 (Fed.
`Cir. 2014) (holding that alterations of time
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`[5] [6] “In an IPR, the petitioner bears the
`burden of establishing by a preponderance of
`the evidence that a particular document is
`a printed publication.” Nobel Biocare Servs.
`AG v. Instradent USA, Inc., 903 F.3d 1365,
`1375 (Fed. Cir. 2018), as amended (Sept.
`20, 2018). For a reference to qualify as a
`printed publication, “before the critical date
`the reference must have been sufficiently
`accessible to the public interested in the art.”
`Constant v. Advanced Micro-Devices, Inc., 848
`F.2d 1560, 1568 (Fed. Cir. 1988).
`
`The earliest priority date for the ’688 patent is
`April 14, 2014, which is the filing date of the
`provisional application to which the ’688 patent
`claims priority. See 35 U.S.C. § 119(e)(1); 37
`C.F.R. § 1.78(a)(3) (2020). May 22, 2013, is the
`earliest of the filing dates of the two provisional
`applications to which the ’229 patent claims
`priority and is therefore the earliest priority date
`for that patent. See ’229 patent, col. 1 ll. 5–10;
`’229 patent prosecution history, Application
`Data Sheet at 3.8 We conclude that the Exhibit
`would be prior art for both patents if it were
`publicly accessible before May 22, 2013, and
`that fact may be shown by establishing that the
`’525 Burns article (which is the same as the
`Exhibit) is prior art.
`
`There is overwhelming evidence that the
`’525 Burns article was publicly accessible on
`October 20, 2010, more than two years before
`the critical date. First, Mr. Burgess, a co-
`inventor of the ’525, ’688, and ’229 patents,
`provided a declaration about the Burns article
`during the prosecution of the ’525 patent and
`testified about the ’525 Burns article during a
`deposition in later district court litigation.9
`
`In his declaration and deposition testimony,
`Mr. Burgess explained that he facilitated the
`publication of the Burns article and intended
`that the Burns article reach the general public
`in order to promote his business. According
`to Mr. Burgess's deposition testimony, Mr.
`Burns “worked for an online magazine ...
`called Xboxer 360.” J.A. 2646 (Mr. Burgess's
`deposition
`testimony). “At
`the
`time of
`publication of the Burns article, [Burgess]
`was an owner of a business operating under
`the name ‘Scuf Control.’ ” Id. at 2022 (Mr.
`Burgess's declaration). “Scuf Control sent Dave
`Burns a controller, about which he wrote the
`online review, which is the Burns article ....”
`Id. (emphasis omitted). Mr. Burgess “gave
`it ... away to promote the business,” the
`purpose being to encourage publication of an
`article about the controller and thereby sell
`controllers. Id. at 2648. Mr. Burns “reviewed
`[Burgess's] video game controller.” Id. at
`2646 (Mr. Burgess's deposition testimony).
`The promotional purpose of the Burns article
`is clear from its last sentence, which reads,
`“For more info and to buy visit http://
`www.scufcontrol.com/.” Id. at 2004 (’525
`Burns article); see also *1374 id. at 2647–
`49 (Mr. Burgess's deposition testimony); id. at
`2800 (deposition exhibit).
`
`that where a
`We have previously held
`publication's purpose is “dialogue with the
`intended audience,” that purpose indicates
`public accessibility. Suffolk Techs., LLC v. AOL
`Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014)
`(noting that a newsgroup posting was a printed
`publication). Here, the Burns article “was
`intended to reach the general public,” GoPro,
`Inc. v. Contour IP Holding LLC, 908 F.3d 690,
`695 (Fed. Cir. 2018), so that the review could
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`

`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`“promote” Mr. Burgess's business. J.A. 2648.
`That is strong evidence that the online review
`was publicly accessible. See SRI Int'l, Inc. v.
`Internet Sec. Sys., Inc., 511 F.3d 1186, 1196
`(Fed. Cir. 2008) (recognizing that “intent to
`publicize” is a factor “involved in the public
`accessibility determination”).
`
`In GoPro, we held that a catalog distributed
`at an annual dealer trade show was prior
`art because “a trade show is directed to
`individuals interested in the commercial and
`developmental aspects of products.” 908 F.3d
`at 694. A review of a game controller in
`an online magazine is similarly “directed to
`individuals interested in the commercial and
`developmental aspects of products.” Id.
`
`Second, the patent examiners found that
`the Burns article was published on October
`20, 2010, more than two years before the
`critical date. The examiner for the ’525
`patent characterized the ’525 Burns article
`as “published October 20, 2010.” J.A. 1994
`(listing the Burns article as a non-patent
`document in Notice of References Cited).
`The first page of the ’525 patent also lists
`October 20, 2010, as the date Burns article was
`“published.” ’525 patent, References Cited,
`Other Publications.
`
`[7] 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).
`
`[8] As the Board acknowledged, the ’525
`Burns article appears to have been retrieved
`from a
`resource called
`the “Wayback
`Machine.” J.A. 52 n.1, 91 n.1; see also
`id. at 1949 (examiner providing an Internet
`Archive web address (“URL”)), id. at 2001
`(“Internet Archive Wayback Machine” at
`the bottom of a page of the ’525 Burns
`article). “The Wayback Machine is an online
`digital archive of web pages. It is run by
`the Internet Archive, a nonprofit library in
`San Francisco, California.” Mojave Desert
`Holdings, LLC v. Crocs, Inc., 844 F. App'x
`343, 346 n.2 (Fed. Cir. 2021). “[E]xaminers
`use ‘The Wayback [M]achine’ as a source of
`information to determine when a Web reference
`was first made available to the public.”
`America Invents Act (AIA) Frequently Asked
`Questions, United States Patent and Trademark
`Office,
`https://www.uspto.gov/patents/laws/
`america-invents-act-aia/america-invents-act-
`aia-frequently-asked#type-browse-faqs_2998
`(last visited July 25, 2021). District courts
`have taken judicial notice of the contents
`of webpages available through the Wayback
`Machine “as facts that can be accurately
`and readily determined from sources whose
`accuracy cannot reasonably be questioned.”
`Erickson v. Neb. Mach. Co., No. 15-CV-01147-
`JD, 2015 WL 4089849, at *1 n.1 (N.D. Cal.
`July 6, 2015) (comparing “copies of current
`versions” of websites with versions available
`on the Wayback Machine to determine “that the
`websites were substantively identical during
`the relevant timeframe”); see also Pohl v.
`MH Sub I, LLC, 332 F.R.D. 713, 716 (N.D.
`Fla. 2019) (collecting cases); UL LLC v.
`Space Chariot Inc., 250 F. Supp. 3d 596,
`603–04 & n.2 (C.D. Cal. 2017) (determining
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`Valve Corporation v. Ironburg Inventions Ltd., 8 F.4th 1364 (2021)
`116 Fed. R. Evid. Serv. 394
`when websites began *1375 advertising a
`certification mark and collecting cases). We
`agree.
`
`The confirmation of the ’525 Burns article's
`publication date of October 20, 2010, by the
`’525 patent examiner is highly persuasive
`evidence of public accessibility of the ’525
`Burns article, and therefore, the Exhibit, by that
`date.
`
`Also persuasive is the confirmation of the
`Burns article's publication date of October
`20, 2010, by the ’688 patent examiner. The
`examiner for the ’688 patent cited the article
`by Mr. Burns in a non-final rejection dated
`October 16, 2015, enclosed a copy of the cited
`reference (“the ’688 examiner's copy”),10 and
`described the reference as “published October
`20, 2010.” J.A. 2128, 2131–32, 2139; see also
`id. at 2142–57 (’688 examiner's copy). The
`“published” date of October 20, 2010, also
`appears on the first page of the ’688 patent. ’688
`patent, References Cited, Other Publications.
`
`the applicants during prosecution,
`Third,
`including Mr. Burgess, did not dispute the
`October 20, 2010, publication date of the
`Burns article, see J.A. 2021–22, did not dispute
`the ’688 patent examiner's characterization of
`the Burns article as “prior art,” J.A. 2440,
`confirmed the October 20, 2010, publication
`date in district court litigation,11 and, in an IDS,
`stated that the Burns article was published in
`the year 2010. Mr. Burgess also declared the
`’525 Burns article as “dated October 20, 2010.”
`Id. at 2021 (Mr. Burgess's declaration).
`
`As to the IDS, Ironburg argues that including
`the Burns article in its IDS does not mean
`
`that the Burns article is prior art because
`including a reference in an IDS is not “an
`admission that any reference is prior art.”
`Cr