The More Complex the Harder to Show Obvious

| David J. GrantNicole R. Townes


Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: If the technology is complex, a party may be required to provide more evidence of a reasonable expectation of success for obviousness.  

Samsung, Micron, and SK Hynix (collectively “Petitioners”) filed thirteen IPRs challenging the validity of eleven of Elm’s patents based on obviousness. The patents at issue relate to stacked integrated circuit memory.  During claim construction before the PTAB, the parties disputed the meaning of the term “substantially flexible.”  Elm contended that the claim term should be given its ordinary meaning, while the Petitioners argued that the record supported a construction defined by an embodiment found in the specification.  The PTAB agreed with Elm on the claim construction and relied on a general purpose dictionary to construe “substantially flexible” to mean “largely able to bend without breaking.”  The PTAB went on to determine that the prior art did not disclose the “substantially flexible” limitation.  Further, the PTAB found that a person of ordinary skill in the art would not have reasonably expected success in combining the fabrication process disclosed in two of the pieces of prior art with the dielectric material in another piece of prior art.  The PTAB found that Petitioners’ expert’s testimony that the dielectric material disclosed in the prior art had certain benefits and the prior art disclosing fabrication processes was in the same technological field as the prior art disclosing the dielectric material was insufficient to show a reasonable expectation of success, particularly given the complexity of semiconductor fabrication.  The PTAB held that the claims were patentable and not obvious.

The Federal Circuit affirmed the PTAB’s decisions, but noted that the PTAB’s claim construction incorrectly used a general-purpose dictionary definition of the claim term.  The Federal Circuit found that Elm clearly and unambiguously disclaimed claim scope to overcome various examiner objections or rejections during prosecution of at least some of the patents at issue. Nonetheless, the Federal Circuit affirmed the PTAB’s decisions that the claims were patentable and not obvious.

Editor: Paul Stewart