NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BASF CORPORATION,
Appellant
v.
ENTHONE, INC.,
Appellee
______________________
2018-1095
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00696.
______________________
Decided: October 26, 2018
______________________
RUSSELL BLYTHE, King & Spalding LLP, Atlanta, GA,
argued for appellant. Also represented by HOLMES J.
HAWKINS, III.
ROBERT M. EVANS, JR., Stinson Leonard Street LLP,
St. Louis, MO, argued for appellee. Also represented by
JOHN R. SCHROEDER, KYLE G. GOTTUSO.
______________________
Before DYK, WALLACH, and TARANTO, Circuit Judges.
2 BASF CORP. v. ENTHONE, INC.
WALLACH, Circuit Judge.
Appellant BASF Corporation (“BASF”) petitioned for
inter partes review of Enthone, Inc.’s (“Enthone”) U.S.
Patent No. 7,303,992 (“the ’992 patent”). The U.S. Patent
and Trademark Office’s (“USPTO”) Patent Trial and
Appeal Board (“PTAB”) issued a final written decision
“determin[ing] that BASF has not shown by a preponder-
ance of the evidence that claims 1–15, 17–22, and 26–28
[(‘the Challenged Claims’)] of the ’992 [p]atent are un-
patentable” as obvious over two asserted combinations of
prior art. BASF Corp. v. Enthone, Inc. (BASF I),
IPR2016-00696, 2017 WL 4014997, at *10 (P.T.A.B. Sept.
11, 2017).
BASF appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A) (2012). We vacate and remand.
BACKGROUND
Entitled “Copper Electrodeposition in Microelectron-
ics,” the ’992 patent generally relates to the field of “mi-
croelectronics 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. Specifi-
cally, 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 deposi-
tion 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 sub-
stantially greater than [copper] deposition on the side
walls.” Id., Abstract (emphasis added). Superfilling
differs from conventional copper deposition methods, such
BASF CORP. v. ENTHONE, INC. 3
as conformal plating that involves filling “at an equal rate
on all . . . surfaces,” and therefore “avoid[s] seams and
pinching off that can result in voiding.” Id. col. 2 ll. 9–11.
Independent claims 1 and 17 are illustrative. Claim 1
recites:
A method for electroplating a copper deposit onto
a semiconductor integrated circuit device sub-
strate with electrical interconnect features includ-
ing submicron-sized features having bottoms,
sidewalls, and top openings, the method compris-
ing:
immersing the semiconductor integrated
circuit device substrate including submi-
cron-sized features having bottoms, side-
walls, and top openings wherein said
submicron-sized features include high as-
pect ratio[1] features having dimensions
such that the high aspect ratio features
have aspect ratios of at least about 3:1 in-
to an electrolytic plating composition com-
prising a source of [copper] ions in an
amount sufficient to electrolytically depos-
it [copper] onto the substrate and into the
electrical interconnect features and a pol-
yether suppressor compound comprising a
combination of propylene oxide (PO) re-
peat units and ethylene oxide (EO) repeat
units present in a PO:EO ratio between
about 1:9 and about 9:1 and bonded to a
nitrogen-containing species, wherein the
molecular weight of the suppressor com-
1 An aspect ratio is a ratio comparing depth to
width. ’992 patent col. 2 l. 39.
4 BASF CORP. v. ENTHONE, INC.
pound is between about 1000 and about
30,000; and
supplying electrical current to the electro-
lytic composition to deposit [copper] on the
substrate and superfill the submicron-
sized features of rapid bottom-up deposi-
tion at rate of growth in the vertical di-
rection which is greater than a rate of
growth in the horizontal direction.
Id. col. 18 ll. 19–46. Similarly, claim 17 teaches a super-
filling method that involves, inter alia:
supplying electrical current to the electrolytic
composition to deposit [copper] onto the substrate
and superfill the submicron-sized features by rap-
id bottom-up deposition at a vertical [copper] dep-
osition growth rate in features from the bottoms of
the features to the top openings of the features
which is greater than 15 times faster than a field
deposition growth rate on substrate surfaces out-
side the features.
Id. col. 20 ll. 51–58.
DISCUSSION
I. Standard of Review and Legal Standard
“We review the PTAB’s factual findings for substan-
tial evidence and its legal conclusions de novo.” Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449
(Fed. Cir. 2015) (citation omitted). “Substantial evidence
is something less than the weight of the evidence but
more than a mere scintilla of evidence,” meaning that “[i]t
is such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.” In re NuVa-
sive, Inc., 842 F.3d 1376, 1379–80 (Fed. Cir. 2016) (inter-
nal quotation marks and citations omitted). “If two
inconsistent conclusions may reasonably be drawn from
BASF CORP. v. ENTHONE, INC. 5
the evidence in record, the PTAB’s decision to favor one
conclusion over the other is the epitome of a decision that
must be sustained upon review for substantial evidence.”
Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d
1354, 1356 (Fed. Cir. 2018) (internal quotation marks,
brackets, and citation omitted). We also review the
PTAB’s decision to ensure that the decision did not consti-
tute arbitrary and capricious agency action. See Vicor
Corp. v. SynQor, Inc., 869 F.3d 1309, 1323 (Fed. Cir.
2017).
A patent claim is invalid “if the differences between
the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
person having ordinary skill in the [relevant] art
[(‘PHOSITA’)].” 35 U.S.C. § 103(a) (2006). 2 Obviousness
“is a question of law based on underlying findings of fact.”
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
Those underlying findings of fact include (1) “the scope
and content of the prior art,” (2) “differences between the
prior art and the claims at issue,” (3) “the level of ordi-
nary skill in the pertinent art,” and (4) the presence of
objective indicia of nonobviousness such “as commercial
success, long felt but unsolved needs, failure of others,”
and unexpected results. Graham v. John Deere Co. of
Kan. City, 383 U.S. 1, 17–18 (1966); see United States v.
2 Congress amended § 103 when it enacted the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(b)(1), 125 Stat. 284, 285–87 (2011). However,
because the application that led to the ’992 patent has
never contained (1) a claim having an effective filing date
on or after March 16, 2013, or (2) a reference under 35
U.S.C. §§ 120–121 or 365(c) to any patent or application
that ever contained such a claim, the pre-AIA § 103
applies. See id. § 3(n)(1), 125 Stat. at 293.
6 BASF CORP. v. ENTHONE, INC.
Adams, 383 U.S. 49, 50–52 (1966). In assessing the prior
art, the PTAB also “consider[s] whether a PHOSITA
would have been motivated to combine the prior art to
achieve the claimed invention and whether there would
have been a reasonable expectation of success in doing
so.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (internal quotation marks, brackets, and
citation omitted).
II. Obviousness
Before the PTAB, BASF asserted that two combina-
tions 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 (“Morris-
sey”) (J.A. 429–35) in view of Alling and the BASF Cata-
log. See BASF I, 2017 WL 4014997, at *1. On appeal, the
parties do not dispute the PTAB’s finding that both com-
binations 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 Appel-
lant’s Br. 27; Appellee’s Br. 1–2.
BASF raises two primary arguments. First, BASF
argues the PTAB erred by applying an overly “stringent
version” of the motivation to combine test. Appellant’s
Br. 29; see id. at 29–33. Second, BASF contends that
certain of the PTAB’s findings are inadequately supported
3 “Tetronic” is the tradename of a “tetra-functional
block copolymer[]” produced by BASF. J.A. 441.
BASF CORP. v. ENTHONE, INC. 7
or explained. See id. at 33–40. We address each argu-
ment in turn.
A. The PTAB Did Not Commit Legal Error in Analyzing
the Motivation to Combine the Prior Art References
The PTAB found Alling did not provide the requisite
motivation to combine the BASF Catalog’s Tetronic
copolymer with either Barstad’s or Morrissey’s superfill-
ing method. See BASF I, 2017 WL 4014997, at *10. The
PTAB determined that a PHOSITA “would not have had
any basis for predicting the effectiveness for superfilling
of any suppressor whose structure or properties varied in
any material respect from the suppressors that had al-
ready been demonstrated” to be effective for superfilling,
and that “there must be some specific motivation to
employ specific plating bath components, given the gen-
eral unpredictability in the field and the art.” Id. at *8
(emphasis added). BASF argues it was error for the
PTAB to “require[] an explicit and specific disclosure in
the prior art references” of a Tetronic copolymer used in
superfilling. Appellant’s Br. 30 (citation omitted). Ac-
cording to BASF, “limited unpredictability does not re-
quire the prior art to state explicitly that the combination
would be successful, without allowing for any reasonable
inferences by a [PHOSITA].” Id. at 31 (citations omitted).
By not allowing such inferences, BASF contends the
PTAB improperly “treated a [PHOSITA] as an automaton,
able only to understand what is set forth explicitly in a
prior art reference.” Id. at 32. We disagree with BASF.
The PTAB adhered to our precedent when it consid-
ered whether the level of unpredictability in the art
demanded BASF demonstrate a more definite motivation
to combine the prior art in the manner alleged within
BASF’s petition. See BASF I, 2017 WL 4014997, at *8. In
KSR International Co. v. Teleflex Inc., the Supreme Court
explained “[t]he combination of familiar elements accord-
ing to known methods is likely to be obvious when it does
8 BASF CORP. v. ENTHONE, INC.
no more than yield predictable results.” 550 U.S. 398, 416
(2007) (emphasis added). It rejected “rigid and mandato-
ry formulas” in a motivation to combine analysis, id. at
419, and instead employed an “expansive and flexible
approach,” id. at 415. KSR teaches that “the analysis
need not seek out precise teachings directed to the specific
subject matter of the challenged claim . . . [but instead]
can take account of the inferences and creative steps that
a [PHOSITA] would employ.” Id. at 418. We have ex-
plained that, under KSR, “predictability is a vital consid-
eration in the obviousness analysis.” Otsuka Pharm. Co.
v. Sandoz, Inc., 678 F.3d 1280, 1298 (Fed. Cir. 2012)
(citing KSR, 550 U.S. at 421). “To the extent an art is
unpredictable, . . . KSR’s focus on these identified, pre-
dictable solutions may present a difficult hurdle because
potential solutions are less likely to be genuinely predict-
able.” Eisai Co. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353,
1359 (Fed. Cir. 2008) (emphases added) (internal quota-
tion marks omitted). While it is true that “[o]bviousness
does not require absolute predictability of success,” In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1998), the PTAB
did not require absolute predictability. Despite some
confusing language in the PTAB’s decision, we read its
opinion as not departing from KSR’s holding that there
need not be “precise teachings” of a motivation to combine
in the prior art. 550 U.S. at 418. Instead, we read the
PTAB’s decision as simply requiring BASF to demon-
strate a sufficiently “apparent reason to combine the
known elements in the fashion claimed by the patent at
issue,” id. at 418, in light of the record evidence of “gen-
eral unpredictability in the field and the art,” BASF I,
2017 WL 4014997, at *8. The PTAB was entitled to
consider BASF’s asserted combinations of references in
light of this unpredictability. See Eisai, 533 F.3d at 1359.
BASF’s citation to In re Kubin does not alter our con-
clusion. Appellant’s Br. 31 (citing 561 F.3d 1351, 1360–61
(Fed. Cir. 2009)). In In re Kubin, we affirmed the PTAB’s
BASF CORP. v. ENTHONE, INC. 9
finding of obviousness and “decline[d] to cabin KSR to the
‘predictable arts’ (as opposed to the ‘unpredictable art’ of
biotechnology).” 561 F.3d at 1360; see id. at 1361. How-
ever, In re Kubin does not stand for the proposition that
unpredictability is not relevant to the motivation to
combine analysis. Instead, we explained that, “in the face
of KSR, [we cannot] cling to formalistic rules for obvious-
ness, customize its legal tests for specific scientific fields
in ways that deem entire classes of prior art teachings
irrelevant, or discount the significant abilities of [PHOSI-
TAs] in an advanced area of art.” Id. at 1360. Therefore,
we looked to the record to determine whether a PHOSITA
would find the “claimed results profoundly predictable.”
Id. (internal quotation marks omitted). Contrary to
BASF’s argument that the PTAB’s approach of requiring
a more definitive motivation to combine is overly “strin-
gent,” Appellant’s Br. 29, this approach fits within the
Supreme Court’s directive to “account [for] the inferences
and creative steps that a [PHOSITA] would employ,”
KSR, 550 U.S. at 418, by considering whether, based on
the record, the level of unpredictability in the art would
affect such inferences and creative steps, such that a
PHOSITA might require a more explicit directive, see
BASF I, 2017 WL 4014997, at *8. We conclude that the
PTAB did not apply an incorrect legal standard in its
motivation to combine analysis, and we therefore turn to
whether the PTAB’s findings are supported by substantial
evidence.
B. Important PTAB Findings Regarding Its Holding of
Nonobviousness Either Lack Support in the Cited Evi-
dence or Are Inadequately Explained
The PTAB found that a PHOSITA would understand
“the differences between [conventional,] conformal plating
and superfilling electrolytic plating,” and “would have
appreciated that it was unpredictable whether a given
molecule would have served as a suppressor effective for
superfilling.” Id. at *5. According to the PTAB, a
10 BASF CORP. v. ENTHONE, INC.
PHOSITA would not know, without any additional direc-
tion, “that Alling would have had specific utility to super-
filling.” Id. at *8. BASF argues the PTAB erred by, inter
alia, (1) failing to support its finding that Alling has no
application to superfilling, Appellant’s Br. 42–45; and
(2) reaching inconsistent conclusions, in two separate
inter partes reviews, regarding whether Barstad discloses
Tetronic copolymers as suppressors in superfilling, id. at
48–50. We agree with BASF.
1. Alling’s Application to Superfilling
The PTAB failed to support its finding that a
PHOSITA would not have found Alling applicable to
superfilling. Barstad and Morrissey each teach a method
of superfilling that utilizes a suppressor. See Barstad
col. 6 ll. 5–8 (stating “use of a suppressor
agent . . . provides surprisingly enhanced plating perfor-
mance, particularly in bottom-fill plating”); J.A. 430
(providing, in Morrissey, that additives such as “suppres-
sor compounds” are used “particularly . . . in copper
electroplating baths designed to provide superfill of small
apertures”). Both references teach superfilling that may
be used to plate high aspect ratio vias or trenches, with
diameters of about 200 nanometers. See Barstad col. 7
l. 66–col. 8 l. 1 (explaining that “aspect ratios of at least
4:1, having diameters of about 200 [nanometers] or small-
er have been effectively copper plated with no defects,”
such as “voids”); J.A. 433 (stating, in Morrissey, that
“aspect ratios of at least 4:1, having diameters of about
200 [nanometers] or smaller have been effectively copper
plated with no defects,” including “voids”). Alling teaches
that “chip interconnects are required at critical dimen-
sions of 200 [nanometers] or less,” J.A. 469, and that
copolymers, such as those “sold by BASF under [the]
Tetronic . . . tradename[],” may be used as “suppressor
agents for plating compositions,” J.A. 472.
BASF CORP. v. ENTHONE, INC. 11
The PTAB determined that a PHOSITA would not
understand Alling as relating to superfilling because “the
mentioning of chip interconnects at dimensions of 200
[nanometers] and less in Alling would not have informed
[a PHOSITA] that Alling would have had specific utility
to superfilling because those specific dimensions could
effectively receive electrodeposition without superfilling.”
BASF I, 2017 WL 4014997, at *8 (citing J.A. 1029–30).
The PTAB cited no support except one passage in En-
thone’s expert declaration. See id. But nothing in the
cited portion of that declaration supports the proposition
that chip interconnects at dimensions of 200 nanometers
or less could be effectively plated without superfilling. See
J.A. 1029–30 (acknowledgment, by Enthone’s expert, that
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 dis-
closed in Alling necessarily require superfilling, and they
say no that’s not true ‘because those specific dimensions
could effectively receive electrodeposition without super-
filling,’ and they cite [J.A.] 2031 and paragraph 69 for
that proposition. . . . [T]hat paragraph . . . does not sup-
port what the [PTAB] says about it.” A: “That statement
is not in [paragraph] 69.”).
The PTAB’s failure to provide “an adequate eviden-
tiary basis for its findings” renders its motivation to
combine analysis insufficient. In re NuVasive, 842 F.3d at
1382 (internal quotation marks and citation omitted).
Indeed, this determination served as the PTAB’s basis to
disregard other, conflicting deposition testimony from
12 BASF CORP. v. ENTHONE, INC.
Enthone’s expert that appears to support BASF’s position.
See J.A. 946 (Q: “[S]uccessfully plating copper and chip
interconnects of 200 nanometers [or] less is going to
involve superfilling, correct?” A: “For those interconnects
of that dimension, 200 nanometers or less, yes. For larger
interconnects perhaps not.”); see also BASF I, 2017 WL
4014997, at *8 (accepting this testimony as “correct,” but
ultimately crediting Enthone’s expert declaration). Ac-
cordingly, we vacate and remand to the PTAB to recon-
sider whether either of the asserted combinations of prior
art provide the requisite motivation to combine, in light of
the discussion of Alling above.
2. Inconsistent Findings Regarding Barstad
“[T]he PTAB must examine the relevant data and ar-
ticulate 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 incon-
sistent finding regarding Barstad. Barstad states that, in
general, electroplating solutions may contain additives
“such as surfactants, brighteners, levelers[,] and suppres-
sants.” Barstad col. 1 ll. 24–25. Barstad teaches that
“preferably the plating bath [of the invention] . . . contains
a surfactant-type suppressor agent,” and that “such a
suppressor agent in combination with elevated brightener
concentrations can result in effective ‘bottom-fill’ copper
plating of a microvia or other aperture without defects
such as inclusions or voids.” Id. col. 3 ll. 20–25. In an
inter partes review of U.S. Patent No. 7,815,786 (“the ’786
BASF CORP. v. ENTHONE, INC. 13
patent”) 4 involving the same parties and asserted combi-
nations of prior art, the PTAB found the challenged
claims obvious, determining that “Barstad discloses
polyethylene glycol copolymers as preferable surfactant-
type suppressor agents, and expressly discloses the poly-
ethylene glycol copolymers that were commercially avail-
able from BASF under the Tetronic tradename.” BASF
Corp. v. Enthone, Inc. (BASF II), IPR2016-00697, 2017
WL 4015000, at *7 (P.T.A.B. Sept. 11, 2017) (emphasis
added) (internal quotation marks and citation omitted).
Here, the PTAB determined that Barstad discloses
Tetronic copolymers as surfactants, and therefore they
cannot be suppressors, because Barstad “describes sup-
pressors and surfactants as separate components of the
electrodeposition bath.” BASF I, 2017 WL 4014997, at *8
(internal quotation marks and citation omitted); see id.
(disagreeing with BASF that “Barstad implies that
Tetronic[] copolymers may be used as suppressors”).
The PTAB’s finding that Barstad teaches that sup-
pressors and surfactants are separate is, therefore, plain-
ly 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
4 The application that led to the ’786 patent was
filed as a divisional of the application that led to the ’992
patent. “[A] divisional application contains an identical
disclosure to its parent application” and “is defined as a
later application for an independent or distinct invention,
carved out of a pending application and disclosing and
claiming only subject matter in the earlier or parent
application.” Pfizer, Inc. v. Teva Pharm. USA, Inc., 518
F.3d 1353, 1359, 1360 (Fed. Cir. 2008) (internal quotation
marks, brackets, and citation omitted).
14 BASF CORP. v. ENTHONE, INC.
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 compo-
nents, 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 suppres-
sors and surfactants,” by stating it was “not persuaded
that Barstad does not disclose each distinctly.” Id. (inter-
nal quotation marks and citation omitted). Absent “any
reasoned explanation for th[is] inconsistent result” be-
tween the two inter partes reviews, we find it appropriate
to vacate and remand so the PTAB may reevaluate
whether Barstad discloses Tetronic copolymers as sup-
pressors 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).
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, the Final
Written Decision of the U.S. Patent and Trademark
Office’s Patent Trial and Appeal Board is
VACATED AND REMANDED
COSTS
No costs.