Digest of Rozbicki v. Chiang, No. 2014-1041 (Fed. Cir. Nov. 14, 2014) (nonprecedential). On appeal from the USPTO PTAB. Before Dyk and O’Malley. Judge Radar did not participate in the decision.

Procedural Posture: Following an interference proceeding, Appellants Rozbicki, et al. appealed the PTAB construction of the term “etching” and its finding that the patent application contained an adequate written description. The Federal Circuit agreed with the PTAB’s claim construction, affirmed the written description decision for certain claims, and vacated and remanded regarding another set of claims.

  • Claim Construction: The PTAB construed the term “etching” as requiring “the removal of material to create a pattern.” Rozbicki argued that the PTAB erred in ruling that “etching” does not require “net etching.” The Federal Circuit found that Rozbicki improperly attempted to read limitations into the claims based on embodiments in the specification. The Federal Circuit affirmed the PTAB claim construction based on the claim language using the term “etch” as opposed to being limited to “net etching.”
  • Written Description: The Federal Circuit agreed that the Chiang Application sufficiently described the “etching” limitation, based on the specification and expert testimony. Therefore, the Federal Circuit affirmed the PTAB findings that there was sufficient written description for the interference count on certain claims, and that Chiang is entitled to the benefit of its earlier-filed priority application for these claims.
  • However, the Federal Circuit found that the PTAB did not sufficiently address whether the Chiang Application discloses an “etch to deposition ratio greater than 1 in the bottom of the plurality of vias,” which appears in the remaining claims. The Federal Circuit vacated the PTAB’s decision regarding these claims and remanded for a detailed description of how the Chiang Application adequately provides written description support this claim term.