Docket No. 2018-1095 (IPR2016-00696)
DYK, WALLACH, TARANTO
October 26, 2018
Brief summary: Board IPR decision that BASF did not show obviousness vacated and remanded (e.g., “failure to provide ‘an adequate evidentiary basis for its findings’”).
Summary: BASF appealed Board decision that BASF did not show by a preponderance of the evidence that the challenged claims relating to a method “for electroplating a copper deposit onto a semiconductor integrated circuit device” are unpatentable as obvious. The FC panel reviewed the Board’s “factual findings for substantial evidence and its legal conclusions de novo” (Redline Detection, FC 2015; In re NuVasive, FC 2016 (substantial evidence is that which “a reasonable mind might accept as adequate to support a conclusion”); Elbit, FC 2018 (the PTAB’s decision to favor one possible conclusion over another “is the epitome of a decision that must be sustained”)). BASF argued that the combination of “Barstad”, “Alling”, and the “BASF Catalog”; or “Morrisey”, Alling and the BASF Catalog. The FC panel explained that “the central issue is whether, in view of Alling, a PHOSITA would have been motivated to replace either Barstad’s or Morrissey’s suppressor with BASF Catalog’s Tetronic® surfactant copolymer.” BASF argued that “the PTAB erred by applying an overly ‘stringent version’ of the motivation to combine test” and “that certain of the PTAB’s findings are inadequately support or explained.” The FC panel concluded that the Board did not legally err in finding a motivation to combine the references (e.g., “[t]he PTAB adhered to our precedent when it considered whether the level of unpredictability in the art demanded BASF demonstrate a more definite motivation to combine the prior art in the manner alleged within BASF’s petition” (KSR, US 2007 (“[t]he combination of familiar elements according to the known methods is likely to be obvious when it does no more than yield predictable results”, PTAB “can take account of the inferences and creative steps that a [PHOSITA] would employ”, “KSR’s focus on these identified, predictable solutions may present a difficult hurdle because potential solutions are less likely to be genuinely predictable” (Eisai, FC 2008); “In re Kubin does not stand for the proposition that unpredictability is not relevant to the motivation to combine analysis” (FC 2009)). The FC then considered whether the Board’s findings were supported by substantial evidence, and found that it was not (e.g., its reliance on a declaration was improper (“[T]hat paragraph…does not support what the [PTAB] says about it.”); “The PTAB’s failure to provide ‘an adequate evidentiary basis for its findings’ renders its motivation to combine analysis insufficient…[T]he PTAB must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made” (In re NuVasive)). The FC panel also found that one of the Board’s findings was “inconsistent with the PTAB’s finding in” another IPR in which the same reference was found to teach the disputed limitation in this case (“Rather than providing a satisfactory explanation for its divergent findings, the PTAB simply rejected BASF’s argument…by stating it was ‘not persuaded’”.) The Board decision was therefore vacated and remanded.