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Samsung Electronics Co. v. Elm 3DS Innovations, LLC

Fed Cir Affirms Nonobviousness Based on Insufficient Explanation of Techniques to Combine References

Samsung Electronics Co. v. Elm 3DS Innovations, LLC, __ F.3d __, 2019 WL 2439557 (Fed. Cir. June 12, 2019) (MOORE, Reyna, Chen) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR decisions confirming patentability of claims in multiple Elm 3DS patents. The patents all relate to stacked integrated circuit memory. The Board’s construction of a key term (“substantially flexible”) was overbroad, and the opinion describes how the specification and prosecution history require a narrower interpretation. The error was harmless because substantial evidence supported the Board’s determination that a person of ordinary skill would not have had a reasonable expectation of success in combining the references Samsung proposed. The opinion discusses the references and testimony in detail, and finds sufficient evidence to support the Board’s finding that Samsung had insufficiently explained how a person of ordinary skill in the art would overcome various obstacles involved in substituting one dielectric material for another, and using plasma-enhanced chemical vapor deposition (”PECVD”) to do it. The Board did not legally err in declining to resolve a dispute about the effect of “front-end-of-line” and “back-end-of-line” processing because the core problem was the sufficiency of Samsung’s explanation (not the accuracy of its contentions), and because resolution of the dispute “would not matter” in view of other issues surrounding the proposed combination. Per Applied Materials, 692 F.3d 1289 (Fed. Cir. 2012), the possibility that the evidence might have also supported a different conclusion did not mean the Board’s findings were unsupported by substantial evidence. The opinion also rejects Samsung’s argument that the Board’s analysis addressed the combinability of unclaimed elements. It reasons that the Board’s discussion of the obstacles surrounding use of PECVD in the way Samsung was proposing was an acceptable way of analyzing the case. The opinion also rejects as speculative Samsung’s argument that because the challenged patents incorporated a key reference by reference without mentioning technical problems, an expectation of success was demonstrated.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS; REASONABLE EXPECTATION OF SUCCESS