Tuesday, November 06, 2018

CAFC affirms Acceleration Bay cases: "Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope."


The outcome:



Patent owner Acceleration Bay, LLC (“Acceleration”)
appeals the final written decisions of the Patent Trial and
Appeal Board holding unpatentable claims 1–9 of U.S.
Patent No. 6,829,634, claims 1–11 and 16–19 of U.S.
Patent No. 6,701,344, and claims 1–11 and 16–17 of U.S.
Patent No. 6,714,966. Activision Blizzard, Inc., Electronic
Arts Inc., Take-Two Interactive Software, Inc., 2k Sports,
Inc., and Rockstar Games, Inc. (collectively, “Blizzard”)
cross-appeal portions of the Board’s decisions holding
patentable claims 10–18 of the ’634 patent, as well as
substitute claims 19 of the ’966 patent, 21 of the ’344
patent, and 25 of the ’634 patent. Blizzard also crossappeals
the Board’s decisions holding that the Lin article
is not a printed publication under 35 U.S.C. § 102(a). For
the following reasons, we affirm.



Interesting language in the CAFC decision:



“A claim typically contains three parts: the preamble,
the transition, and the body.” 3 Chisum on Patents § 8.06
(2018). Acceleration’s poor claim drafting will not be an
excuse for it to infuse confusion into its claim scope. We
conclude that “game environment” and “information
delivery service” are part of the preamble of the claims.
We see no beneficial purpose to be served by failing to
include a transition word in a claim to clearly delineate
the claim’s preamble from the body, and we caution
patentees against doing so.



As to printed publication



Whether a reference qualifies as a printed publication
under § 102 is a legal conclusion based on underlying fact
findings.6 Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895
F.3d 1347, 1356 (Fed. Cir. 2018); accord Cooper Cameron
Corp. v. Kvaerner Oilfield Prod., Inc., 291 F.3d 1317, 1321
(Fed. Cir. 2002). One such fact question is public accessibility,
which we review for substantial evidence. Jazz
Pharm., 895 F.3d at 1356. “Because there are many ways
in which a reference may be disseminated to the interested
public, ‘public accessibility’ has been called the touchstone
in determining whether a reference constitutes a
‘printed publication’ . . . .” Id. (quoting In re Hall, 781
F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered
publicly accessible if it was “disseminated or otherwise
made available to the extent that persons interested
and ordinarily skilled in the subject matter or art, exercising
reasonable diligence, can locate it.” Id. at 1355–56
(citing In re Wyer, 665 F.2d 221, 226 (CCPA 1981)). As
petitioner, Blizzard had the burden to prove Lin is a
printed publication. See id. at 1356.
The Board found that Lin was not publicly accessible
before the critical date. See J.A. 10–22; J.A. 114–127; J.A.
141–153. Based on the testimony of Glenn Little, a
Systems Administrator at the Computer Science and
Engineering (“CSE”) department of the University of
California, San Diego (“UCSD”), the Board found that Lin
had been uploaded to the CSE Technical Reports Li-
brary’s website as of November 23, 1999, which is not
challenged on appeal. See, e.g., J.A. 11–13. As the Board
explained, according to Mr. Little, “the CSE department
regularly maintains electronic technical reports and
records concerning those reports, and a staff member
assigns a unique identifier to each report based on the
year it was uploaded and the relative order it was uploaded
in comparison to other papers.” J.A. 11.
The Board then correctly noted that “public accessibility”
requires more than technical accessibility. J.A. 13.
Because there was no evidence that Lin was disseminated
to the public, the Board focused on whether an interested
skilled artisan, using reasonable diligence, would have
found Lin on the CSE Technical Reports Library website.
J.A. 13–14 (citing Voter Verified, Inc. v. Premier Election
Sols., Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012)). The
Board found that despite some indexing and search
functionality on the website, Lin was not publicly accessible.
See J.A. 15–19. It found the website allowed a user
to view a list of technical reports indexed only by author
or year and that there was no evidence as to how many
reports were in the Library’s database in 1999. See J.A.
16–17, 22. The Board determined that at best, Blizzard’s
evidence “suggests that an artisan might have located Lin
by skimming through potentially hundreds of titles in the
same year, with most containing unrelated subject matter,
or by viewing all titles in the database listed by
author, when the authors were not particularly well
known.” J.A. 17. The Board also found the website’s
advanced search form to be deficient. It found that while
the advanced search form appeared to allow a user to
search keywords for author, title, and abstract fields,
evidence demonstrated that functionality was not reliable.
J.A. 18–19, 22. In sum, the Board determined that Blizzard
“has not shown sufficiently that the UCSD CSE
Technical Reports Library was searchable or indexed in a
meaningful way so that a person of ordinary skill in the
art would have located Lin.” J.A. 22. The Board, therefore,
concluded Lin is not a printed publication under
§ 102(a). J.A. 22.
The Board did not err in concluding Lin is not a printed
publication. Substantial evidence supports its findings
that Lin was not publicly accessible, including that Lin
was not indexed in a meaningful way and that the website’s
advanced search form was deficient. Mr. Little
testified he does not know how the search works or how
keywords are generated, that he never searched for Lin
using the advanced search form, and that it was not the
CSE department’s practice to verify the advanced search
capability for title and abstract when a new article was
uploaded. See J.A. 18; J.A. 7034–35. Mr. Little also
admitted it was possible the search function did not work.
J.A. 7035–36. Acceleration presented evidence that a
recent advanced search for keywords in the title and
abstract of Lin failed to produce any results. J.A. 7035–
36; J.A. 7991–94. Blizzard argues these results are
unauthenticated hearsay and are based on searches
conducted years after the critical date, but Mr. Little
testified that as to the website, “[i]t’s pretty much the
same, actually, between [1999] and now. We’re running
the same software.” J.A. 7031 at 19:15–20:23; see also
J.A. 18–19. We will not disturb the Board’s weighing of
the evidence. Substantial evidence supports the Board’s
finding that there “is insufficient evidence of record to
support a finding that a person of ordinary skill in the art
in 1999 could have located Lin using the CSE Library
website’s search function.” See J.A. 19.


The SAS case also arises:



The Board did not abuse its discretion in declining to
consider the cited paragraphs in Dr. Karger’s reply declaration.
See J.A. 271–72. The declaration raises a new
obviousness argument for this limitation that could have
been made in the petition. The Board correctly noted this
argument was not made in the petition, which proposed
that Shoubridge rendered obvious a number of other claim
limitations. Blizzard, as petitioner, had an opportunity to
present this argument in its petition, but chose not to.
See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018)
(noting “the petitioner is master of its complaint”); id. at
1358 (noting the statute “makes the petition the centerpiece
of the proceeding both before and after institution”).
As we recently explained,

[i]t is of the utmost importance that petitioners in
the IPR proceedings adhere to the requirement
that the initial petition identify “with particularity”
the “evidence that supports the grounds for the
challenge to each claim.” 35 U.S.C. § 312(a)(3).
“All arguments for the relief requested in a motion
must be made in the motion. A reply may only respond
to arguments raised in the corresponding
opposition or patent owner response.” 37 C.F.R.
§ 42.23(b). Once the Board identifies new issues
presented for the first time in reply, neither this
court nor the Board must parse the reply brief to
determine which, if any, parts of that brief are re-
sponsive and which are improper. As the Board
noted, “it will not attempt to sort proper from improper
portions of the reply.” Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug.
14, 2012).
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1369 (Fed. Cir. 2016). We conclude that the
Board did not abuse its discretion in not considering the
cited paragraphs of the reply declaration in its analysis.



QUERY: What happens if the Board relies on an argument not
briefed by the petitioner?


Monday, November 05, 2018

Trade show catalog found to be a printed publication


In GoPro vs. Contour, the CAFC issued a revised opinion following a petition for rehearing:


OPINION ISSUED: July 27, 2018
OPINION MODIFIED: November 1, 2018



with the following overview:


GoPro, Inc. appeals from final written decisions of the
Patent Trial and Appeal Board in two inter partes review
proceedings. In the proceedings, the Board found that the
petitioner, GoPro, did not demonstrate that the challenged
claims are unpatentable as obvious. The Board
based this decision on its conclusion that a certain GoPro
catalog is not a prior art printed publication. We disagree.
We vacate and remand for further proceedings
consistent with this opinion.



Of printed publication


Whether a reference constitutes a printed publication
under 35 U.S.C. § 102(b)3 is a legal conclusion based on
underlying factual determinations. See In re Lister, 583
F.3d 1307, 1311 (Fed. Cir. 2009). The issue of whether a
reference represents a printed publication is a question of
law that is reviewed de novo. See In re Klopfenstein, 380
F.3d 1345, 1347 (Fed. Cir. 2004). The Board’s findings of
fact, such as public accessibility, are reviewed for substantial
evidence. 5 U.S.C. § 706(2)(E).
Section 102(b) provides that a person shall be entitled
to a patent unless the invention was described in a printed
publication more than one year prior to the date of
application for patent in the United States. The printed
publication rule is based on the principle that once an
invention is in the public domain, it can no longer be
patented by anyone. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1348 (Fed. Cir. 2016).
We have interpreted § 102 broadly, finding that even
relatively obscure documents qualify as prior art so long
as the relevant public has a means of accessing them.
See, e.g., Jazz Pharm., Inc. v. Amneal Pharm., LLC, Nos.
17-1671, -1673, -1674, -1675, -1676, -1677, -2075, --- F.3d
----, slip op. at 11–22, 2018 WL 3400764, at *5–9 (Fed. Cir.
July 13, 2018). For example, we have determined that a
single cataloged thesis in a university library was “sufficient[ly]
accessible to those interested in the art exercising
reasonable diligence.” In re Hall, 781 F.2d 897, 900
(Fed. Cir. 1986). Subsequently, we explained that
“[a]ccessibility goes to the issue of whether interested
members of the relevant public could obtain the information
if they wanted to” and “[i]f accessibility is proved,
there is no requirement to show that particular members
of the public actually received the information.” Constant
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569
(Fed. Cir. 1988). Accordingly, “[a] reference will be considered
publicly accessible if it was ‘disseminated or
otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or
art exercising reasonable diligence, can locate it.’” Blue
Calypso, 815 F.3d at 1348



The Board's thoughts:


The Board found all the evidence presented by GoPro
credible,4 but explained that GoPro did not provide evidence
that the dealer show was advertised or announced
to the public, such that a person interested and ordinarily
skilled in the art from the public would have known about
it. The Board relied on the evidence presented by Contour,
which consisted of statements about the dealer show
being open exclusively to dealers and not the general
public. See J.A. 422–23. Specifically, the Board found
that a person ordinarily skilled in the art would not be
interested in the dealer show because it was not an academic
conference or camera industry conference, but
rather a dealer show for action sports vehicles like motorcycles,
motorbikes, ATVs, snowmobiles, and watercraft.
See ’694 FWD, at 26–27.



The CAFC noted:


We disagree with the Board’s conclusion that the evidence
presented by GoPro failed to satisfy the § 102(b)
requirements. The case law regarding accessibility is not
as narrow as the Board interprets it. The Board focused
on only one of several factors that are relevant to determining
public accessibility in the context of materials
distributed at conferences or meetings. The Board cited
no cases where we have strictly held that the expertise of
the target audience is dispositive of the inquiry of accessibility.
Cf. Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed.
Cir. 2018) (“The expertise of the target audience can be a
factor in determining public accessibility. But this factor
alone is not dispositive of the inquiry.” (citations omitted)).
Rather, our case law directs us to also consider the
nature of the conference or meeting; whether there are
restrictions on public disclosure of the information; expectations
of confidentiality; and expectations of sharing the
information. Id. at 1382–83. When direct availability to
an ordinarily skilled artisan is no longer viewed as dispositive,
the undisputed record evidence compels a conclusion
that the GoPro Catalog is a printed publication as a
matter of law.
Trade shows are not unlike conferences—a trade show
is directed to individuals interested in the commercial and
developmental aspects of products.

(...)

The Board concluded that the GoPro Catalog was not
a printed publication because the Tucker Rocky Dealer
Show was not open to the general public7 and GoPro
failed to provide evidence that someone ordinarily skilled
in the art actually attended the dealer show. But, the
standard for public accessibility is one of “reasonable
diligence,” Blue Calypso, 815 F.3d at 1348, to locate the
information by “interested members of the relevant public.”
Constant, 848 F.2d at 1569 (emphasis added). Mr.
Jones testified that the dealer show was attended by
actual and potential dealers, retailers, and customers of
POV video cameras. Additionally, the GoPro Catalog was
disseminated with no restrictions and was intended to
reach the general public. Based upon Mr. Jones’s testimony,
the evidence provided by GoPro regarding the
Tucker Rocky Dealer Show, and the evidence of the Tucker
Rocky Distributing website, we conclude that GoPro
met its burden to show that its catalog is a printed publication
under § 102(b).



Note also the Order including text:



(2) The previous precedential opinion in this appeal,
issued July 27, 2018, is withdrawn and replaced
with the modified precedential opinion accompanying
this order.

Who won the battle of Kennesaw Mountain?


In the realm of copying, the television show "Amos Burke: Secret Agent" occupies an unusual place. The producers took an existent show,
Burke's Law, starring Gene Barry as Amos Burke, from a plotline involving a rich Los Angeles police captain to one involving the same character, now a "secret agent." Counting on the trend of popularity of other secret agent shows, including Man from U.N.C.L.E., the re-vamp, with the copied theme, quickly failed.
Going back to the fall 1965 TV schedule, Amos Burke (ABC) was on Wednesday at 10pm, opposite I Spy on NBC. The Wild Wild West, a spy show set in the 19th Century western US, was in the top 30 at 7:30pm on Friday, and Man from UNCLE was Friday at 10pm, and in the top 20. Get Smart, Saturday at 8:30pm, was also in the top 20, opposite Secret Agent. Honey West was Friday at 9pm.

In the episode -- Or No Tomorrow --, first aired December 15, 1965, Burke attempts to "test" the cover
of a fellow agent by asking "Who won the battle of Kennesaw Mountain," as if that question has a
definite and obvious answer. The questioned agent deflects by saying history is not her thing. The battle of Kennesaw Mountain saw more
Union than Confederate losses, but the Confederates were unable to stop Sherman from taking Atlanta, and marching to the sea. Maybe a tactical victory for the Confederates, but overall a loss. Contemplate also the Battle of Monocacy in Jubal Early's march to Washington.

In the previous episode -- The Man's Men --, Burke looks for a radioactive dye on suspects by using an infrared flashlight.
The show contains lines such as "I don't drink with lobbyists" and (of Washington DC) Truth is not the most popular commodity here. The villains, who all end up dead, are a lobbyist, a political columnist and a Senator's wife.

Although Amos Burke: Secret Agent died quickly, one of the last episodes of Burke's Law spun off Honey West. (Who Killed the Jackpot?)




Sunday, November 04, 2018

"CBS Sunday Morning" remembers Walter Cronkite on November 4, 2018


The Almanac feature began


On November 4, 1916, 102 years ago today, future CBS News correspondent Walter Cronkite was born in St. Joseph, Missouri.



and ended with his last CBS News signoff


"And that's the way it is, Friday, March 6th, 1981."



Almanac noted


He joined CBS News in 1950, and in September 1963, he anchored a television news breakthrough: The first daily half-hour network news program.


The Almanac feature did not observe that the 15 minute Huntley-Brinkley report began October 29, 1956, and expanded to 30 minutes on September 9, 1963, one week after the Cronkite show began 30 minutes.

The Moment of Nature was captioned Wolves in Yellowstone, but included other animals. It ended with a curious encounter between a wolf and a bear.

There was a piece Jeff Goldblum: Living life like a jazz piece, which included a brief clip from the New Jersey classic The Adventures of Buckaroo Banzai Across the 8th Dimension! Jeff's character was Dr. Sidney Zweibel/New Jersey. Tho the film was depicted mainly in New Jersey, it was mainly shot in California.

Saturday, November 03, 2018

Politicians and the church, in 1960 (Kennedy) and in 2018 (Sessions)


Recall the words of Presidential candidate John Kennedy in 1960:


I believe in an America that is officially neither Catholic, Protestant nor Jewish; where no public official either requests or accepts instructions on public policy from the Pope, the National Council of Churches or any other ecclesiastical source; where no religious body seeks to impose its will directly or indirectly upon the general populace or the public acts of its officials; and where religious liberty is so indivisible that an act against one church is treated as an act against all.


link: https://www.npr.org/templates/story/story.php?storyId=16920600

From a speech on Sept. 12, 1960, given by John F. Kennedy to the Greater Houston Ministerial Association, a group of Protestant ministers. The Protestants were concerned about possible Catholic influence on political decision making.

Flash forward 58 years, and Protestants are trying to impose religion upon public acts of officials.

A recent comment in the discussion of Attorney General Sessions and the United Methodist Church:



Political actions are not personal conduct’? What’s that supposed to mean? What’s the basis in Scripture for that statement? I know nothing in our Book of Discipline that bifurcates personal behavior from public, politically motivated behavior. Whatever happened to, ‘We must obey God rather than human beings (Acts 5:29)?”

Friday, November 02, 2018

The 14th Amendment and citizenship for native Americans

In the birthright/14th Amendment debate, one topic that has not been discussed by the Trump critics is that citizenship status of
native Americans AFTER the passage of the 14th Amendment.

Wikipedia notes:


The Indian Citizenship Act of 1924, also known as the Snyder Act, was proposed by Representative Homer P. Snyder (R) of New York and granted full U.S. citizenship to the indigenous peoples of the United States, called "Indians" in this Act. While the Fourteenth Amendment to the United States Constitution defines as citizens any persons born in the U.S. and subject to its jurisdiction, the amendment had been interpreted to not apply to Native people.



It might be difficult to reconcile the past history of excluding native Americans, including children, from U.S. citizenship with granting citizenship to children of parents serving a different sovereign. Separately, in terms of the recent discussion of the DNA of Elizabeth Warren, note the statement of the Cherokee nation:


Sovereign tribal nations set their own legal requirements for citizenship, and while DNA tests can be used to determine lineage, such as paternity to an individual, it is not evidence for tribal affiliation,” the Cherokee Nation’s Secretary of State Chuck Hoskin Jr. said. “Using a DNA test to lay claim to any connection to the Cherokee Nation or any tribal nation, even vaguely, is inappropriate and wrong.”


link: http://time.com/5425427/cherokee-nation-responds-elizabeth-warrens-dna-test/


Some relevant past posts on the 14th Amendment/birthright discussion:

From USAToday, President Trump may have met his match when it comes to U.S. citizenship: The 14th Amendment , which includes the text


The Supreme Court ruled in United States v. Wong Kim Ark, an 1898 case, that a man born on U.S. soil to parents who were Chinese nationals was a citizen. As part of a 1982 decision, Plyler v. Doe, the high court said that even if someone enters the country illegally, they are within U.S. jurisdiction, and their children born in the U.S. are entitled to the protections of the 14th Amendment.



BUT which also includes the erroneous text about Dred Scott


Dred Scott brought the first lawsuit in which the Supreme Court denied blacks citizenship. Scott sued for his freedom when he was enslaved after living free in Missouri. His owners eventually freed him.



From yahoo news, Kellyanne Conway’s Husband Shreds Trump Proposal To End Birthright Citizenship


“Sometimes the Constitution’s text is plain as day and bars what politicians seek to do,” Conway wrote with fellow attorney Neal Katyal in The Washington Post. “Such a move would be unconstitutional and would certainly be challenged. And the challengers would undoubtedly win.”

The editorial was published just hours after President Donald Trump said he was preparing an executive order to rescind the longstanding 14th Amendment, which grants citizenship to any person born on American soil, regardless of their parent’s nationality. Legal scholars mostly agree that the provision could only be changed through a separate constitutional amendment.



A commenter to the yahoo news article named Roger made pertinent points:


Sen. Lyman Trumbull, a key figure in the adoption of the 14th Amendment, said that “subject to the jurisdiction” of the U.S. included not owing allegiance to any other country.
As John Eastman, former dean of the Chapman School of Law, has said, many do not seem to understand “the distinction between partial, territorial jurisdiction, which subjects all who are present within the territory of a sovereign to the jurisdiction of that sovereign’s laws, and complete political jurisdiction, which requires allegiance to the sovereign as well.”
In the famous Slaughter-House cases of 1872, the Supreme Court stated that this qualifying phrase was intended to exclude “children of ministers, consuls, and citizens or subjects of foreign States born within the United States.” This was confirmed in 1884 in another case, Elk vs. Wilkins, when citizenship was denied to an American Indian because he “owed immediate allegiance to” his tribe and not the United States.
American Indians and their children did not become citizens until Congress passed the Indian Citizenship Act of 1924. There would have been no need to pass such legislation if the 14th Amendment extended citizenship to every person born in America, no matter what the circumstances of their birth, and no matter who their parents are.
Even in U.S. v. Wong Kim Ark, the 1898 case most often cited by “birthright” supporters due to its overbroad language, the court only held that a child born of lawful, permanent residents was a U.S. citizen. That is a far cry from saying that a child born of individuals who are here illegally must be considered a U.S. citizen.

"Fake Facts" on TriviaGenius.com

On 2 Nov 2018, TriviaGenius asserted the correct answer to -- What does "quid pro quo" mean in English? -- was let the buyer beware and NOT something for something.

link: https://www.triviagenius.com/answer/5bd9d6bfc2060e000edbe4a8

Screenshot:

Wednesday, October 31, 2018

USA Today doing "fake history"

With much discussion of "fake news," it is interesting to note that USA Today is re-writing history.

As seen in the image below, USA Today wrote that Dred Scott "was enslaved after living
free in Missouri." As one point, Dred Scott, prior to the Supreme Court decision in
1857, NEVER lived free in the state of Missouri. Further, although Scott did live in the
free state of Illinois, and also what would later become Minnesota, he did not live "free" there
either, being hired out to perform work on behalf of his owner.

Scott's argument before state courts in Missouri, and later before the U.S. Supreme Court, was
that by living in free states/territories he had become free.

Of greater relevance to the present debate was the status of Dred Scott's daughter Eliza, who was born on a
riverboat on the Mississippi River, between the free state of Illinois, and the free territory of
what would become Iowa.

The U.S. Supreme Court decision was based on an asserted lack of standing of Dred Scott to bring the
lawsuit at all. That presumably would have applied to a suit brought on behalf of the daughter.

USA Today wrote that "his owners eventually freed him." The issue of "who owned" Scott at given points in
time is a bit murky. Scott was initially owned by Peter Blow, who sold Scott to Dr. John Emerson, who died
in 1843, leaving his estate to his wife Irene Emerson. John Sanford was the brother of Irene Emerson, and
there is no record showing that he ever "owned" Dred Scott. In 1850, Irene Emerson re-married, to
Calvin C. Chaffee. In 1857, the Chaffees deeded Scott and his family to Taylor Blow, Peter Blow's son, and
it was Taylor Blow who freed the Scott family. Dred Scott died in 1858, having lived "free" for about 18 months.

From USA Today, on 30 October 2018:


Monday, October 29, 2018

CAFC vacates PTAB ruling which was adverse to BASF


From the BASF decision:


Entitled “Copper Electrodeposition in Microelectronics,”
the ’992 patent generally relates to the field of “microelectronics
manufacture to provide electrical
interconnection in a wide variety of applications, such
as . . . in the manufacture of semiconductor integrated
circuit . . . devices.” ’992 patent col. 1 ll. 13–16. Specifically,
it teaches a “method . . . for electrolytically plating
[copper] onto a semiconductor integrated circuit substrate
having submicron-sized interconnect features.” Id.,
Abstract. “An interconnect feature is a feature such as a
via or trench formed in a dielectric substrate which is
then filled with metal to yield an electrically conductive
interconnect.” Id. col. 1 ll. 23–25. The ’992 patent’s
“method involves superfilling by rapid bottom-up deposition
at a superfill speed by which [copper] deposition
[occurs] in a vertical direction from the bottoms of the
features to the top openings of the features [and] is substantially
greater than [copper] deposition on the side
walls.” Id



BASF argument:


Before the PTAB, BASF asserted that two combinations
of prior art rendered the Challenged Claims obvious:
(1) U.S. Patent No. 6,444,110 (“Barstad”) in view of U.S.
Patent Application No. 2002/0127847 (“Alling”) (J.A. 468–
74) and BASF, Pluronic & Tetronic Block Copolymer
Surfactants (1989) (“BASF Catalog”) (J.A. 436–67), and
(2) U.S. Patent Application No. 2002/0043467 (“Morrissey”)
(J.A. 429–35) in view of Alling and the BASF Catalog.
See BASF I, 2017 WL 4014997, at *1. On appeal, the
parties do not dispute the PTAB’s finding that both combinations
teach each limitation of the Challenged Claims.
See id. at *5–7. See generally Appellant’s Br.; Appellee’s
Br. Instead, 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 the BASF
Catalog’s Tetronic® surfactant copolymer.3 See Appellant’s
Br. 27; Appellee’s Br. 1–2.



PTAB's problems:


Important PTAB Findings Regarding Its Holding of
Nonobviousness Either Lack Support in the Cited Evidence
or Are Inadequately Explained

(...)

Alling references chip interconnects at dimensions of 200
nanometers or less, but stating “beyond that the reference
offers no description of or allusion to filling submicron
features,” nor does it explicitly mention superfilling). At
oral argument, Enthone admitted that the PTAB failed to
support its finding. Oral Arg. at 16:41–19:22,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=
2018-1095.mp3 (Q: “I’m struck by what appears to be,
first of all, a mis-citation on [J.A.] 21–22,
where [the
PTAB] reject[s] this argument that the dimensions disclosed
in Alling necessarily require superfilling, and they
say no that’s not true ‘because those specific dimensions
could effectively receive electrodeposition without superfilling,’
and they cite [J.A.] 2031 and paragraph 69 for
that proposition. . . . [T]hat paragraph . . . does not support
what the [PTAB] says about it.” A: “That statement
is not in [paragraph] 69.”).

(...)

“[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, 842 F.3d at 1382 (internal
quotation marks and citation omitted). “This explanation
enables the court to exercise its duty to review the PTAB’s
decisions to assess whether those decisions are arbitrary,
capricious, an abuse of discretion, or unsupported by
substantial evidence.” Id. (internal quotation marks,
ellipses, and citation omitted).
The PTAB acted arbitrarily and capriciously by failing
to provide a reasoned explanation for reaching an inconsistent
finding regarding Barstad. Barstad states that, in
general, electroplating solutions may contain additives
“such as surfactants, brighteners, levelers[,] and suppressants.”
Barstad col. 1 ll. 24–25.

(...)

The PTAB’s finding that Barstad teaches that suppressors
and surfactants are separate is, therefore, plainly
inconsistent with the PTAB’s finding in the inter partes
review of the ’786 patent that Barstad teaches a Tetronic
copolymer acting as a surfactant-type suppressor agent.
Compare BASF II, 2017 WL 4015000, at *7, with BASF I,
2017 WL 4014997, at *8. This inconsistency is critical
because, if the PTAB finds Barstad teaches a Tetronic
copolymer may be used as a suppressor in superfilling,
such a finding would be highly relevant to obviousness.
See BASF I, 2017 WL 4014997, at *8 (requiring “some
specific motivation to employ specific plating bath components,
given the general unpredictability in the field and
the art” (emphasis added)). Rather than providing a
satisfactory explanation for its divergent findings, the
PTAB simply rejected BASF’s argument “that Barstad
does not contain the clear delineation between suppressors
and surfactants,” by stating it was “not persuaded
that Barstad does not disclose each distinctly.” Id. (internal
quotation marks and citation omitted). Absent “any
reasoned explanation for th[is] inconsistent result” between
the two inter partes reviews, we find it appropriate
to vacate and remand so the PTAB may reevaluate
whether Barstad discloses Tetronic copolymers as suppressors
for use in superfilling. Vicor, 869 F.3d at 1323;
see id. (vacating and remanding where the PTAB failed to
provide any reasoned explanation for reaching directly
conflicting obviousness conclusions in two reexaminations
involving closely-related subject matter)