Docket Nos. 2017-1554, -1556, -1557 (IPR2015-01201; IPR2016-00209, -00962)
LOURIE, O’MALLEY, TARANTO
April 2, 2018
Brief summary: Board’s obviousness determination following IPR affirmed because, e.g., Raytheon did “not explain why the resulting device” (of the prior) “would be rendered inoperable rather than merely less efficient or less desirable” and could not corroborate the inventor’s testimony regarding prior reduction to practice.
Summary: Raytheon appealed IPR final written decisions (FWD) holding all claims of US 5,591,678 directed to methods for fabricating “stacked semiconductors found in everyday electronic devices” unpatentable for obviousness (§ 103) in view of different combinations of the “Liu”, “Bertin”, and “Morimoto” references. Raytheon argued “the Board failed to address its argument that using silicon in Liu’s devices would render them inoperable”, “finding that it failed to antedate Bertin”, and “erroneously construed the claim term ‘second substrate’ to encompass Morimoto’s temporary supporting substrate.” The FC panel reviewed “the Board’s ultimate legal determination of obviousness de novo and its underlying factual findings for substantial evidence” (PPC Broadband, FC 2016; In re Gartside, FC 2000 (“such relevant evidence as a reasonable mind might accept as adequate”)). Regarding Liu, the FC panel explained that “[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment” (In re Applied Materials, FC 1985) and “the combined teachings of the prior art as a whole must be considered” (EWP, FC 1985). “Thus,” the FC panel explained, “a skilled artisan cannot be assumed to ignore Liu merely because it is primarily directed to a specific application that is different from the application claimed in the patent at issue” (KSR, US 2007). The FC panel found “the Board’s findings” regarding Liu to be “supported by substantial evidence”, and further that “Raytheon does not explain why the resulting device” (of Liu) “would be rendered inoperable rather than merely less efficient or less desirable” (Allied Erecting, FC 2016; Medichem, FC 2006). Raytheon also argued “that Bertin is not prior art because the inventors reduced to practice the claimed subject matter before Bertin’s filing date” (Purdue Pharma, FC 2001 (“inventor must…have ‘contemporaneous recognition and appreciation of the invention’”; In re Steed, FC 2015 (“two-prong test: (1)…embodiment or…process that satisfies every claim element…and, (2) the embodiment or process must operate for its intended purpose”); “an inventor’s testimony alone is insufficient to establish an earlier reduction to practice” and corroborating evidence must be presented (Medichem, FC 2006); REG Synthetic Fules, FC 2016). The FC panel found substantial evidence supported “the Board’s conclusion that Raytheon failed to antedate Bertin” (e.g., a “report indicat[ing] that one of the claimed steps had not yet been completed by December 1990…contradicts the inventor’s testimony and therefore cannot corroborate such testimony” (Cooper, FC 1998 (“corroborating evidence need not disclose each and every aspect of the claimed invention” (which “the Board did not require…here”)); Fleiming, FC 2014; Cf. Woodland Tr., FC 1998)). The FC panel therefore affirmed the Board’s obviousness conclusion on the combination of Liu and Berin.
Although the FC panel did not separately reach the Morimoto-based obviousness determination of those same claims, it explained why it agreed with Raytheon that the Board’s obviousness determination based on the Morimoto reference “is predicated on an erroneous claim construction” of “second substrate”. The Board found the plain meaning of “second substrate” does not require it to “remain part of the final device, and that the claim limitation therefore encompasses Morimoto’s temporary substrate, which is removed during fabrication”. Raytheon argued this construction is too broad and that the “second substrate” must “remain attached”. The FC panel explained that in “an IPR involv[ing] an expired patent, the Board gives the claims their plain meaning” (Phillips, FC 2005), and the plain language of the ‘678 claims “suggests that the second substrate is not, in fact, removed” (e.g., “the claims make clear the first substrate is partially removed…but do not recite similar language with respect to the second substrate”), which is also supported by the specification (Praxair, FC 2008). The FC panel criticized the Board’s focus on the claim term “comprising” as “allow[ing] for subsequent removal of the second substrate” since “‘comprising’ does not displace, or otherwise allow one to disregard, the patent specification” (Indacon, FC 2016; In re Suitco, FC 2010; Dippin’ Dots, FC 2007 (“‘not a weasel word with which to abrogate claim limitations’ and ‘does not reach into each of the…steps to render every word and phrase therein open-ended’”); Power Mosfet, FC 2009 (comprising “does not remove limitations that are present”); In re Varma, FC 2016)).