Semiconductor Patents Upheld Where IPR Petitions Fail to Explain Why Modifications Would Be Successful

In Samsung Electronics Co. v. Elm 3DS Innovations, LLC, Nos. 2017-2474 et al. (Fed. Cir. June 12, 2019), the Federal Circuit affirmed the PTAB’s decisions finding eleven patents owned by Elm not unpatentable.

Elm asserted infringement of eleven patents relating to stacked integrated circuit memory against Samsung, Micron, and SK Hynix, who then filed thirteen IPR petitions challenging Elm’s patents at the PTAB. The PTAB found that the petitions did not provide sufficient evidence to establish unpatentability because they did not show that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the prior art references. Samsung, Micron, and Hynix appealed.

On appeal, the Federal Circuit affirmed, holding that that the evidence presented below failed to demonstrate a reasonable expectation of success in achieving the proposed combination. The court credited Elm’s expert’s testimony that integrated-circuit technology is complex and that the evidence did not show why a person of ordinary skill in the art would have expected success in replacing the primary reference’s deposition process while still achieving the high purity level required for the components. The court also rejected appellants’ argument that the proposed modification was “trivial” because the challenged patents incorporated by the asserted prior art by reference. Accordingly, the court affirmed the PTAB’s patentability determinations.