Rendering a Claim Obvious Requires Specific Evidence That a POSITA Would Have Reasonably Expected Success in Combining Prior Art References

In inter partes reviews (IPR) of challenged patents that share a specification, the Patent Trial and Appeal Board (PTAB) held that the petitioner failed to meet its burden of demonstrating that the claims were unpatentable as obvious. The challenged claims relate to integrated circuit fabrication using a dielectric material. The petitioner attempted to combine a prior art reference disclosing a fabrication process involving depositing the dielectric material on the integrated circuit with a second reference disclosing a fabrication process involving growing the dielectric material on the integrated circuit. The PTAB found that given the complexity involved in integrated circuit fabrication, the petitioner had failed show a motivation to combine the references or a reasonable expectation of success for doing so. The PTAB discounted expert testimony concerning how the references are in the same technological field as insufficient for meeting the petitioner’s burden. Specifically, the PTAB found that the petitioner failed to explain how the fabrication process disclosed in the first reference would be changed when using the technique for incorporating the dielectric material disclosed in the second reference, which is formed by growing instead of depositing.

The Federal Circuit affirmed on appeal, holding that substantial evidence supported the PTAB’s finding of a lack of reasonable expectation of success for the combination. The Federal Circuit explained that the PTAB repeatedly stated that integrated circuit technology is complex and, as such, looked for specific evidence that a POSITA would have reasonably expected success in combining references. In contrast to providing specific evidence, the petitioner argued that the dielectric growing techniques of the second reference could have been replaced by the dielectric depositing techniques of the first reference to obtain predictable results. But the petitioner failed to explain how the fabrication process would be changed when the process of incorporating the dielectric material differed. The petitioner’s argument was not enough to show a reasonable expectation of success in combining the references and the Federal Circuit held that it would not fault the PTAB for analyzing the petitioner’s obviousness grounds in the way presented in the petition.