Fed Circ revives Valve patent review
The US Court of Appeals Federal Circuit has criticised the decisions of the Patent Trial and Appeal Board (PTAB) relating to patents owned by video game company Ironburg Inventions, finding that the board ignored “overwhelming evidence”.
The Federal Circuit handed down a precedential ruling yesterday, August 17, offering video game company Valve another opportunity to invalidate one of the patents, which had been affirmed by the PTAB in 2019.
In his summation for a three-judge panel, US Circuit Judge Timothy Dyk wrote that the board had erred by failing to consider or to verify substantial evidence that a copy of an article presented by Valve qualified as prior art.
The dispute arose when Ironburg Inventions sued the Washington-based Valve in a federal court in Atlanta in 2015 for infringing patents, US numbers 9,289,688 and 9,352,229. The disputed patents cover hand held controllers for game consoles.
Valve countered by challenging the validity of the patents at issue at the PTAB in 2017, which upheld the ‘229 patent, while invalidating parts of the ‘688 patent in 2019. Both companies appealed.
Dyk, alongside Circuit Judges Alan Lourie and Pauline Newman, found in favour of Valve’s arguments. The Federal Circuit panel considered how Valve had shown the PTAB a copy of a review of an Xbox 360 controller written by David Burns to cite prior art to the Ironburg patents.
It further argued that Ironburg had referred to the same “Burns” article during its own patent application process, but the board in 2019 held that Valve had failed to prove that the exhibit was a copy of the same article.
But the Federal Circuit disagreed, holding that: “Here, a simple comparison of the exhibit with the...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 ...Burns article—ie, the prior art disclosures of these documents are the same.”
On appeal, Ironburg contended that the article could not be seen as prior art because Valve had failed to show that it was publicly accessible before the patents' 2013 priority date.
But the Federal Circuit panel again disagreed, citing "overwhelming evidence", including the findings of a “basic internet search”, that proved that the article was publicly accessible eleven years ago.
The court also noted that the PTAB should have taken steps to verify the exhibit’s authenticity through the use of the Internet Archive – Wayback Machine.
Dyk remanded the case for the board to reconsider the article in Valve's challenges, while affirming the board's rulings on the validity of the patents’ other claims.
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