Thursday, December 22, 2016

CAFC discusses the meaning of evidence in Rudolph Technologies

Of a reversal of PTAB:

For the Board to have found that the “at least one
other die” disclosure in Alumot suggests multiple-die
comparison is one thing. But extrapolating this disclosure
even further, to find that Alumot suggests training a
composite model, is quite another, requiring more inferences
than are justified considering the sum and substance
of Alumot. “A factfinder should be aware, of
course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966)). Indeed, one must “be careful not to allow hindsight
reconstruction of references to reach the claimed
invention without any explanation as to how or why the
references would be [modified] to produce the claimed
invention.” Kinetic Concepts, Inc. v. Smith & Nephew,
Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008)). Because the Board relied on no evidence
for its determination that one of ordinary skill
would have known of training a model using multiple dies
as one of two ways to compare an inspected light pattern
to that of “at least one other die,” substantial evidence
does not support the factual findings underlying its obviousness
conclusion for claim 9 and the claims depending
from it. Accordingly, we find claim 9 not obvious over
Alumot in view of Moriya.

Judge Reyna disagreed:

The majority does not
explain how or why the text from the Alumot reference
does not count as evidentiary support, nor does it cite
legal authority for that proposition. Indeed, a basic tenet
of U.S. Patent law is that the text, diagrams, and figures
of a prior art reference are evidence. See, e.g., Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 280 (1976) (listing prior patents
and prior art publications as types of evidence in an
obviousness inquiry); Okajima v. Bourdeau, 261 F.3d
1350, 1356 (Fed. Cir. 2001) (citing the scope and content
of the prior art references as substantial evidence in
support of the Board’s determination of nonobviousness).
The interpretation of such evidence results in factual
findings. “Art can legitimately serve to document the
knowledge that skilled artisans would bring to bear in
reading the prior art identified as producing obviousness.”
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d
1359, 1365 (Fed. Cir. 2015). These factual findings can
“include findings as to the scope and content of the prior
art, the differences between the prior art and the claimed
invention, the level of ordinary skill in the art, the presence
or absence of a motivation to combine or modify with
a reasonable expectation of success, and objective indicia
of non-obviousness.” Id. at 1364.

Also of note

We dismiss Rudolph’s appeal as to
claims 30–34 and 36 because we lack jurisdiction to
review the Board’s new grounds for rejection.



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