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)