8 F.4th 1364
Fed. Cir.2021Background
- Valve filed IPRs challenging claims of Ironburg’s U.S. Pat. Nos. 9,289,688 (ʼ688) and 9,352,229 (ʼ229), both directed to game controllers with additional rear controls (paddles/elongate members).
- Valve relied on (1) Uy (a prior controller reference) and (2) an online review by Dave Burns (the Exhibit/Burns article) to show obviousness/anticipation for many claims; the Burns article was also cited in prosecution histories for a related Ironburg patent (ʼ525).
- The PTAB found several ʼ688 claims anticipated by Uy but held that other claims (including many ʼ229 claims and some ʼ688 claims) were not shown unpatentable because the Burns article copy was not authenticated/publicly accessible and Uy did not disclose an elongate member that is inherently resilient and flexible.
- The Federal Circuit held the Exhibit is substantively identical to the Burns article in the prosecution histories and that the Burns article was publicly accessible (Wayback Machine evidence, examiners’ findings, inventor testimony), reversing the PTAB’s refusal to treat the Exhibit as prior art and remanding for reconsideration of grounds relying on it.
- The court affirmed the PTAB’s factual finding that Uy’s flexibility was provided by a separate spring (not an inherently resilient elongate member), so claims relying solely on Uy for that limitation remain not shown unpatentable.
- The court also affirmed claim constructions and anticipation findings for certain ʼ688 claims (construing disposed proximate broadly and opposing surfaces as facing/opposite) and held Valve forfeited its Arthrex Appointments Clause challenge.
Issues
| Issue | Plaintiff's Argument (Valve) | Defendant's Argument (Ironburg) | Held |
|---|---|---|---|
| Whether the Exhibit (Burns article printout) is a printed publication/prior art (authentication/public accessibility) | Exhibit is the same as Burns article in prosecution files and was publicly accessible (Wayback Machine; examiner found Oct 20, 2010) | The Exhibit was not authenticated as the same document and prosecution copies were not shown publicly accessible | Reversed PTAB: Exhibit is the same as Burns article and was publicly accessible by Oct 20, 2010; treat as prior art; remand for PTAB to re-evaluate grounds relying on it |
| Whether Uy discloses an elongate member that is inherently resilient and flexible | Uy’s lever assemblies, taken with its biasing springs, show the claimed inherently resilient/flexible elongate member | Uy’s springs (biasing means) are separate parts; Valve offered no evidence the lever itself is inherently resilient/flexible | Affirmed PTAB: Uy does not teach an elongate member that is inherently resilient and flexible where resilience comes only from a separate spring |
| Whether Valve’s Appointments Clause (Arthrex) challenge requires remand to the Acting Director | Petitioners may obtain Director review per Arthrex | Director opposes; Board adjudication was sought by petitioner | Forfeited: Valve sought Board adjudication and thus forfeited Arthrex challenge; no remand required |
| Claim construction: meaning of disposed proximate and second surface opposing first surface (anticipation of certain ʼ688 claims by Uy) | Valve: proximate means close (need not face); opposing means generally facing/opposite | Ironburg: proximate requires facing; opposing requires substantially flat opposing surfaces | Court adopts Valve’s broader proximate and PTAB’s opposing construction (facing/opposite, not flat); affirms anticipation of specified ʼ688 claims by Uy |
Key Cases Cited
- VidStream LLC v. Twitter, Inc., 981 F.3d 1060 (Fed. Cir. 2020) (comparison to an authenticated prior-art version can authenticate an IPR reference)
- Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir. 2014) (minor reproduction differences do not create a genuine material factual dispute on identity)
- GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018) (public-facing materials directed to interested audiences support public accessibility)
- Arthrex, Inc. v. Smith & Nephew, 141 S. Ct. 1970 (U.S. 2021) (Appointments Clause decision cited by parties; court found the petitioner forfeited its challenge)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (expert testimony cannot override unambiguous patent text)
- Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988) (public accessibility standard for printed publications)