Trials@uspto.gov Paper 92
`571-272-7822 Entered: May 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`CORNING INCORPORATED
`Petitioner
`
`
`
`v.
`
`DSM IP ASSETS B.V.
`Patent Owner
`____________________
`
`Case IPR2013-00045
`Patent 6,339,666 B2
`___________________
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`Case IPR2013-00045
`Patent 6,339,666 B2
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`I. INTRODUCTION
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`A. Background
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`Petitioner, Corning Incorporated (“Corning”), filed a petition on
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`November 15, 2012, for inter partes review of claims 1-20 (“the challenged
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`claims”) of U.S. Patent No. 6,339,666 B2 (Ex. 1001 (“the ’666 Patent”))
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`pursuant to 35 U.S.C. §§ 311-319. Paper 2 (“Pet.”). Patent Owner, DSM IP
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`Assets B.V. (“DSM”), filed a preliminary response on February 21, 2013.
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`Paper 10 (“Prelim. Resp.”). On May 13, 2013, the Board instituted trial on
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`six grounds of unpatentability. Paper 11 (“Dec.”). Those grounds are set
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`forth in the following table:
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`Basis Reference(s)1
`Claims challenged
`§ 102 Szum
`10-20
`§ 103 Szum
`10-20
`§ 103 Szum and Shustack
`1-9
`1, 2, 8, 10, 11, 16, 17, and 19 § 102 Shustack
`1, 2, 8, 10, 11, 16, 17, and 19 § 103 Shustack
`3, 12, 18, and 20
`§ 103 Shustack and Jackson
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`After institution of trial, DSM filed a patent owner response. Paper 43
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`(“PO Resp.”). DSM also filed a motion to amend claims by submitting
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`proposed new claims 21 and 22 to be substituted for original claims 1
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`and 10, respectively. Paper 44 (“Mot. to Amend”). Corning filed a reply to
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`the patent owner response (Paper 61 (“Reply”)) and also an opposition to
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`DSM’s motion to amend (Paper 60). DSM then filed a reply in support of
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`its motion to amend. Paper 72.
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`
`1 The references are: WO 95/15928 (Ex. 1002) (“Szum”); U.S. Patent No.
`5,352,712 (Ex. 1003) (“Shustack”); and U.S. Patent No. 4,900,126
`(Ex. 1005) (“Jackson”).
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`2
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`Both parties filed and fully briefed motions to exclude evidence.
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`Paper 78 (“Pet. Mot. to Exclude”); Paper 75 (“PO Mot. to Exclude”). Oral
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`hearing was held February 11, 2013. Paper 89 (“Transcript”).
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`Corning fails to show by a preponderance of evidence that any of the
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`challenged claims 1-20 are unpatentable. DSM’s motion to amend is denied,
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`without prejudice. DSM’s motion to exclude evidence is denied. Corning’s
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`motion to exclude evidence is dismissed as moot.
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`B. Related Proceedings
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`Corning and DSM are involved simultaneously in nine other inter
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`partes reviews based on patents claiming similar subject matter: IPR2013-
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`00043; IPR2013-00044; IPR2013-00046; IPR2013-00047; IPR2013-00048;
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`IPR2013-00049; IPR2013-00050; IPR2013-00052; IPR2013-00053.
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`C. The ’666 Patent (Ex. 1001)
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`The ’666 patent generally relates to radiation-curable coating
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`compositions for optical glass fibers commonly used in data transmission.
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`Ex. 1001, 1:22-23. In particular, the patent describes optical glass fibers
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`coated with two radiation-cured coatings. Id. at 1:30-31. An inner primary
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`coating contacts the glass surface of the fiber. Id. at 1:32-34. An outer
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`primary coating overlays the inner coating. Id. For identification purposes,
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`the outer primary coating includes colorant or, alternatively, a third colored
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`layer, called an ink coating, which is applied to the outer primary coating.
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`Id. at 1:57-62.
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`Figure 1, depicting such an optical glass fiber, is reproduced below:
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`Figure 1 is a longitudinal cross-sectional view of coated optical glass fiber 7
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`coated with inner primary coating 8 and commercially available outer
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`primary coating 9. Id. at 8:11-12; 10:10-12.
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`To create a cable or ribbon assembly, used in the construction of
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`multi-channel transmission cables, a plurality of coated optical fibers are
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`bonded together in a matrix material. Id. at 1:44-50. In order to connect the
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`fibers of multiple ribbons, the surface of a glass fiber must be accessible. Id.
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`at 1:57–2:10. That is often accomplished by a process known as “ribbon
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`stripping”— removing the coatings and the matrix material, preferably as a
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`cohesive unit. Id. The invention of the ’666 patent is directed to a ribbon
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`assembly having improved ribbon stripping capabilities. Id. at 1:25-27.
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`As described in the Background of the Invention, the prior art
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`discloses ribbon assemblies composed of multiple optical glass fibers with
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`both an inner and outer coating and an optional outer ink layer. Id.
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`at 1:44-52. The two compositions used as the inner and outer coatings often
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`are modified to provide desired properties—providing bare optical glass
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`fibers, which, when stripped, are substantially free of residue. Id. at 2:37-
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`4:33. For example, the inner primary coating may be modified to reduce
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`adhesion between the coating and the optical glass fiber. Id. at 2:42-44. A
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`reduction in adhesion facilitates easy removal of the coating during
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`stripping, but also increases the possibility of undesirable delamination in
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`the presence of moisture. Id. at 2:44-53. “Delamination of the inner
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`primary coating from the optical glass fiber can lead to degraded strength of
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`the optical glass fiber as well as signal transmission attenuation
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`disadvantages.” Id. at 2:54-57.
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`We focus our analysis on a dispositive issue concerning a property,
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`required by each challenged claim, of providing “sufficient adhesion to [a]
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`glass fiber to prevent delamination in the presence of moisture and during
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`handling.” Id. at claims 1, 10.
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`D. Illustrative Claims
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`Claims 1 and 10 are the only independent claims and are reproduced
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`below (emphases added):
`
`1. A composition for coating an optical fiber, said composition
`comprising propoxylated nonyl phenol acrylate and an oligomer
`having at least one functional group capable of polymerizing under
`the influence of radiation, said composition after radiation cure having
`the combination of properties of:
`(a) a fiber pull-out friction of less than 40 g/mm at 90° C.;
`(b) a crack propagation of greater than 1.0 mm at 90° C.;
`(c) a glass transition temperature of below 10° C.; and
`(d) sufficient adhesion to said glass fiber to prevent delamination
`in the presence of moisture and during handling.
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`10. A composition for coating an optical fiber, said composition
`comprising an oligomer having an aliphatic diisocyanate residue and
`at least one functional group capable of polymerizing under the
`influence of radiation, said composition after radiation cure having the
`combination of properties of:
`(a) a fiber pull-out friction of less than 40 g/mm at 90° C.;
`(b) a crack propagation of greater than 1.0 mm at 90° C.;
`(c) a glass transition temperature of below -20° C. of less; and
`(d) sufficient adhesion to said glass fiber to prevent delamination
`in the presence of moisture and during handling.
`
`
`
`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 100(b); Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
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`Claim terms are given their ordinary and customary meaning, as understood
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`by one of ordinary skill in the art in the context of the entire disclosure. In
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`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`If an inventor acts as his or her own lexicographer, the definition must
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`be set forth in the specification with reasonable clarity, deliberateness, and
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`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The
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`construction that stays true to the claim language and most naturally aligns
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`with the inventor’s description is likely the correct interpretation. Renishaw
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`PLC v. Marposs Società per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
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`Each challenged claim requires a curable coating composition that,
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`after radiation cure, exhibits “sufficient adhesion to [a] glass fiber to prevent
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`delamination in the presence of moisture and during handling.” Ex. 1001,
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`claims 1, 10. We refer to that property in our analysis as “the claimed
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`adhesion property.”
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`The parties disagree about the meaning of the term “in the presence of
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`moisture,” which appears in the limitation relating to the claimed adhesion
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`property. Corning argues that the term is broad enough to embrace exposure
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`to 95% relative humidity as disclosed in the ’666 patent for a wet adhesion
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`test. Pet. 15; see Ex. 1001, 28:57–29:7 (disclosing conditions of wet
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`adhesion test). DSM counters that “in the presence of moisture” means
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`exposure to liquid water—that is, 100% relative humidity—as would be
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`present, for example, in the water soak delamination test that is described in
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`the ’666 patent. PO Resp. 24-25 (citing Ex. 2032 ¶¶ 46-53). That
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`delamination test involves soaking a cured coating sample in a hot water
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`bath for up to 24 hours. See Ex. 1001, 27:32-47; Table 3 (describing
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`conditions of the water soak delamination test). DSM produces evidence
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`that, under conditions of 95% relative humidity, “by definition, there will be
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`no moisture condensation on the surface of the coating because moisture
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`condenses at 100% relative humidity.” Ex. 2032 ¶ 48 (declaration of DSM’s
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`witness, Dr. Carl R. Taylor).
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`The evidence supports a conclusion that the broadest reasonable
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`interpretation of the term “moisture” is liquid water—that is, a condition of
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`100% relative humidity. The written description uses the term “moisture” in
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`a context that suggests liquid water. See, e.g., Ex. 1001, 29:5-7 (applying a
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`“wax/water slurry” to surface of sample film in order “to retain moisture”);
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`35:24-26 (applying heat to remove “moisture” from samples, suggesting
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`removal of liquid water). Moreover, where the written description discusses
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`water in vapor form, the inventors use the word “humidity” or “atmospheric
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`moisture,” but not “moisture” alone. See, e.g., id. at 21:54 (referring to
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`“atmospheric moisture”); 28:55, 67; 29:5 (referring to “humidity”).
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`The ’666 patent further discloses that a “ribbon assembly can be buried
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`under ground or water for long distance connections, such as between
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`cities,” which is consistent with the proposition that an optical fiber coating
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`must endure long periods of immersion in liquid water without delaminating.
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`Ex. 1001, 67:20-22. In light of the context in which the term “moisture”
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`appears in the specification, we conclude that the inventors used that term in
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`its ordinary sense to refer to liquid water.
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`The ’666 patent, thus, is directed to a coating composition that, after
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`radiation cure, has sufficient adhesion to glass to prevent delamination in the
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`presence of liquid water. We decline to resolve what temperature, or length
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`of time, of exposure to liquid water the coating must endure, without
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`delaminating, in order to satisfy the claimed adhesion property. Resolving
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`those conditions is not necessary to our analysis, which focuses on whether
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`Corning’s wet adhesion test, conducted under conditions of 95% relative
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`humidity, is probative of the extent to which a cured coating delaminates
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`from glass when exposed to liquid water.
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`B. Basis of Decision to Institute
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`We instituted trial based on the limited information advanced in the
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`petition and preliminary response. In the petition, Corning relied on wet
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`adhesion test data to show that certain prior art coatings inherently exhibit
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`the claimed adhesion property. Pet. 16, 18-19, 26. In the preliminary
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`response, DSM did not challenge specifically Corning’s view that such data
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`are sufficient to establish the claimed adhesion property in a cured coating.
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`See, e.g., Prelim. Resp. 8-12. Based on the record developed at the
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`preliminary stage of the proceeding, therefore, the Board instituted trial.
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`See, e.g., Dec. 10 (citing Prelim. Resp. 8-12) (“DSM does not dispute,
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`specifically, any of [Corning’s] assertions” regarding whether the properties
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`required by the claims are inherently met in the prior art).
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`Additional information developed during the trial, however, casts
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`doubt on the adequacy of wet adhesion test data to support a finding that the
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`prior art coatings in fact exhibit the claimed adhesion property. Informed by
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`the totality of evidence developed during the trial phase, and for the reasons
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`set forth below, we conclude that Corning fails to show by a preponderance
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`of evidence that Szum or Shustack inherently describes or suggests a coating
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`composition that satisfies the claimed adhesion property.
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`C. Szum: Anticipation and Obviousness of Claims 10-20
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`Corning argues that claims 10-20 are anticipated by, or would have
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`been obvious over, Szum. Corning admits that Szum does not disclose
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`expressly a coating composition having the claimed adhesion property. The
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`crux of Corning’s argument is that Szum inherently discloses a coating
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`composition having that property, as evidenced by a wet adhesion test
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`carried out under conditions of 95% relative humidity on a coating prepared
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`according to Szum’s Example 5 (“the Szum coating”). Pet. 18-19.
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`DSM responds that the wet adhesion test does not evaluate for
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`delamination, which is caused by exposure to liquid water, and that a
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`different test—the water soak delamination test—is the only method
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`disclosed in the ’666 patent for assessing delamination. See PO Resp. 16
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`(citing Ex. 2032 ¶¶ 46-53 (opinion of DSM’s witness, Dr. Taylor)). DSM
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`also comes forward with its own test results, which allegedly show that the
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`Szum coating, in fact, delaminates when subjected to the conditions of the
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`water soak delamination test disclosed in the ’666 patent. PO Resp. 29-30.
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`A dispositive question thus arises: Does Corning show by a
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`preponderance of evidence that the Szum coating exhibits sufficient
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`adhesion to prevent delamination from glass in the presence of liquid water?
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`For the reasons set forth below, we answer that question in the negative. We
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`first address the conditions set forth in the ’666 patent for the wet adhesion
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`test and the water soak delamination test. We then consider whether the wet
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`adhesion test, which Corning performed on the Szum coating, is probative of
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`the claimed adhesion property. Finally, we explain why an evaluation of
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`DSM’s water soak delamination test data is not necessary to our analysis.
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`i. The Wet Adhesion Test
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`The ’666 patent describes a wet adhesion test for evaluating a cured
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`coating sample on a glass substrate. Ex. 1001, 28:60-65. The wet adhesion
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`test is conducted “at a temperature of 23±2° C. and a relative humidity of
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`50±5% for a time period of 7 days.” Id. at 28:66–29:1. A portion of the
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`sample film is then “further conditioned at a temperature of 23±2° C. and a
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`relative humidity of 95% for a time period of 24 hours.” Id. at 29:2-5.
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`During that step, “[a] layer of polyethylene wax/water slurry [is] applied to
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`the surface of the further conditioned film to retain moisture.” Id. at 29:5-7.
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`The written description makes plain that the wet adhesion test
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`assesses a cured coating that is conditioned at 95% relative humidity. Id.
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`at 28:66–29:1. Corning acknowledges that fact. See, e.g., Pet. 15 (citing
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`Ex. 1006 ¶ 82) (“The term ‘wet adhesion’ is described in the ’666 patent at
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`col. 28, lines 53-58 as adhesion at 95% relative humidity.”). Corning raises
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`no argument that application of a layer of “wax/water slurry” to the surface
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`of the coating represents an exposure to 100% relative humidity.
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`Ex. 1001, 29:5-7; see Reply 3 (The wet adhesion test described in the ’666
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`patent relates to conditioning “at 95% relative humidity—not liquid water
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`immersion.” (citing Ex. 1001, 29:5-7)).
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`After conditioning the sample at 95% relative humidity, sample that
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`appears “uniform and free of defects” is “peeled back from the glass.”
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`Ex. 1001, 29:13-17. The wet adhesion test is performed on the peeled-back
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`sample using a device that includes “a horizontal support and a pulley.” Id.
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`at 29:8-12. With the glass secured to the horizontal support, a wire is
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`“attached to the peeled-back end of the sample, run along the specimen and
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`then run through the pulley in a direction perpendicular to the specimen.”
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`Id. at 29:17-21. A wet adhesion value is determined by clamping the free
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`end of the wire “in the upper jaw of the testing instrument,” which is
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`activated “until the average force value, in grams force/inch,” becomes
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`“relatively constant.” Id. at 29:21-24. The ’666 patent discloses that “[t]he
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`preferred value for wet adhesion is at least about 5 g/in.” Id. at 29:24-25.
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`On this record, we find that the wet adhesion test assesses the
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`mechanical force required to peel a cured coating away from a glass
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`substrate, after conditioning the coating at 95% relative humidity.
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`
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`ii. The Water Soak Delamination Test
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`The ’666 patent also discloses a water soak delamination test in which
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`“coated microscope slides [are] soaked in [] water.” Id. at 27:32, 43. The
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`samples are soaked in a beaker of deionized water that is placed in a 60° C.
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`hot water bath. Id. at 27:43-45. The samples are “observed for delamination
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`periodically. The time when the first signs of delamination” appear is
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`recorded. Id. at 27:45-47.
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`Table 2 in the ’666 patent specification describes a “hot water soak”
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`in which samples are “aged for 4 hours at 60° C.,” the water bath is “shut-off
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`for about 70 hours,” and then the temperature is “brought back to 60° C. for
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`an additional 48 hours.” Id. at 28:18-19, 23-25. The degree of delamination
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`observed after the hot water soak is reported in Table 2 as “none” or “delam.
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`[a]fter 1 hour at 60° C.” Id. at 28:15-29. Table 3 similarly reports results
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`for a delamination test that is described as a “60° C. Water Soak.” Id.
`
`at 29:53. Delamination results are reported in terms such as “No
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`Delamination After 24 Hours,” “Slight Delamination After 15 Minutes,” and
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`“No Delamination After 8 Hours; Slight Delamination After 24 Hours.” Id.
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`at 29:53-59.
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`On this record, we find that the water soak delamination test assesses
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`the ability of a cured coating to withstand the hydrodynamic forces that
`
`cause delamination of a cured coating from a glass substrate in the presence
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`of liquid water.
`
`iii. Corning Fails to Establish that the Szum Coating
`Inherently Exhibits the Claimed Adhesion Property
`
`The ’666 patent discloses that the wet adhesion test evaluates the
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`force required to peel a coating away from a glass substrate, after the coating
`
`has been conditioned at 95% relative humidity. Ex. 1001, 29:8-25.
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`The ’666 patent identifies a different test—a water soak delamination test—
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`for evaluating the extent of delamination that occurs when a cured coating is
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`exposed to liquid water. Id. at 28:32-47. In DSM’s view, Corning fails to
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`establish sufficiently that the wet adhesion test, or “[p]eel test,” can “be used
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`to reliably determine what the results of a delamination test would be.”
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`PO Resp. 25. We agree.
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`Corning prepared the Szum coating and subjected it to substantially
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`the same wet adhesion test that is described in the written description of
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`the ’666 patent. Compare Ex. 1007 ¶¶ 41-44 (Declaration of Ms. Inna I.
`
`Kouzmina) (describing the wet adhesion test procedure performed on the
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`Szum coating) with Ex. 1001, 28:57–29:25 (describing a wet adhesion test
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`procedure performed on an inventive example). The ’666 patent instructs,
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`however, that coating samples are subjected to a water soak test and
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`“examined for delamination” prior to conducting the wet adhesion test.
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`Ex. 1001, 28:53-54. Specifically, the wet adhesion test is performed “[i]n
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`addition” to the water soak delamination test. Id. at 28:52-56. It is the
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`delamination test that ascertains “[t]he time when the first signs of
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`delamination” appear in a coating sample that is immersed in water. Id.
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`at 27:32-47.
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`Although the ’666 patent describes a sequence of testing that includes
`
`both a delamination test and a wet adhesion test, Corning comes forward
`
`with no evidence that the Szum coating was subjected to a delamination test.
`
`Id.; see Ex. 1007 ¶¶ 41-43 (Corning’s test procedures). Corning’s own
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`witness, Dr. Michael Winningham, was unaware of any delamination test
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`performed by Corning on the Szum coating. PO Resp. 25 (citing Ex. 2029,
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`469:17–471:17). Corning relies on a wet adhesion value for the Szum
`
`coating that is expressed as a grams-per-inch mechanical force required to
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`peel the coating away from a glass substrate after conditioning at 95%
`
`relative humidity. Ex. 1007 ¶¶ 41-44.
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`On this record, we find that Corning relies on test results obtained for
`
`the Szum coating after exposure to conditions of 95% relative humidity, but
`
`not to liquid water. As explained in our claim construction analysis,
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`exposure to 95% relative humidity is not “in the presence of moisture” (i.e.,
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`liquid water) as specified in the challenged claims. Corning argues that the
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`Szum coating exhibits a wet adhesion value “of 44 g/in when conditioned
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`at 95% relative humidity,” but does not explain how that result is probative
`
`of adhesion in the presence of liquid water—that is, 100% relative humidity.
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`Pet. 18 (citing Ex. 1006 ¶ 88); see Ex. 2032 ¶ 48 (moisture condenses
`
`at 100% relative humidity). On that basis, we determine that Corning fails
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`to show by a preponderance of evidence that the Szum coating meets the
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`claimed adhesion property.
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`A second independent basis supports our determination. Corning
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`comes forward with evidence insufficient to support an inference that the
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`results of a 95% relative humidity wet adhesion test correspond to an ability
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`to withstand the hydrodynamic forces that effect delamination. Corning
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`argues that Dr. Winningham “has confirmed that a coating composition with
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`an adhesion to glass of either 23 g/in or 44 g/in, as in Szum, would have
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`sufficient adhesion to the glass fiber to prevent delamination in the presence
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`of moisture and during handling.” Pet. 18-19 (citing Ex. 1006 ¶ 88).2
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`Dr. Winningham’s opinion on that point is unsupported and, therefore,
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`unpersuasive. See Ex. 1006 ¶ 88 (reciting opinion without objective proof).
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`In that regard, Dr. Winningham repeats, verbatim, attorney argument
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`set forth in the petition, but identifies no objective evidence explaining how
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`a wet adhesion value, which indicates a mechanical force required to peel a
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`coating away from a glass substrate, correlates to an ability to withstand the
`
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`2 In addition to the experimental test results tending to establish a wet
`adhesion value of 44 g/in for the Szum coating, Corning points to the
`reference itself for a teaching that the Szum coating exhibits “an adhesion to
`glass at 95% relative humidity of 23 g/in.” Pet. 18 (citing Ex. 1002, 25:12).
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`hydrodynamic forces that effect delamination. Id. Dr. Winningham’s bare
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`opinion is entitled to little weight in the absence of objective evidentiary
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`support. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
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`281, 294 (Fed. Cir. 1985) (finding lack of factual support for expert opinion
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`“may render the testimony of little probative value in a validity
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`determination”).
`
`During cross-examination, Dr. Winningham testified about the
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`differences between a water soak delamination test and a wet adhesion test,
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`which he refers to in his testimony as “a peel test”:
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`Q. If one was concerned about the ability of a coating to
`delaminate from a substrate when exposed to water, would
`performing a peel test not give sufficient information to satisfy
`the interested person?
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`A. I think those tests measure — are looking at different
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`things or measuring different things, so I’m not sure if — I
`can’t say categorically that a peel test is going to tell you what’s
`going to happen in a water delamination test. Different tests.
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`Ex. 2029, 460:12-21.
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`Dr. Winningham also testified that the water soak delamination test
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`evaluates the “hydrodynamic forces” that work to delaminate a coating from
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`a glass substrate, whereas “a peel test” evaluates the “mechanical forces”
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`exerted, where “one is applying a — mechanical force to a film and pulling
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`the film off a substrate.” Ex. 2029, 459:3-18. That testimony of Corning’s
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`witness is consistent with the explanation of the relevant hydrodynamic
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`forces that is provided by DSM’s witness, Dr. Taylor. Ex. 2032 ¶¶ 52-53.
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`At the oral hearing, Corning’s counsel directed our attention to test
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`results reported in Table 3 of the ’666 patent and, for the first time, argued
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`that those results establish “a clear correlation between the films that passed
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`the hot water soak test . . . and films that have a certain wet adhesion.”
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`Transcript 10:15-17. That argument, and Corning’s reliance on Table 3, is
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`not set forth in the petition or the reply. See Pet. 18-19; Reply 2-5. We
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`deem Corning to have waived that argument raised by counsel for the first
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`time at the oral hearing. Cf. Cross Med. Prods., Inc. v. Medtronic Sofamor
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`Danek, Inc., 424 F.3d 1293, 1320-21 n.3 (Fed. Cir. 2005) (arguments not
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`raised in an opening brief are deemed waived).
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`That argument also is unpersuasive because it is unsupported by
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`convincing, objective evidence that explains a relationship between the wet
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`adhesion values and the water soak delamination results reported in Table 3.
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`In that regard, Corning asks us to infer a relationship between wet adhesion
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`values (reported as a grams-per-inch mechanical force) and water soak
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`delamination results (reported as an observation, for example, of slight
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`delamination after 15 minutes) from Table 3. See Transcript 10:15-17;
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`Ex. 1001, 29:50-59 (Table 3). That is a leap we will not undertake in the
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`absence of persuasive evidence, such as a technical article or expert
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`testimony, explaining some relationship between those disparate test results.
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`Pet. 18-19; Reply 2-5 (identifying no such evidence).
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`Because the issue is not discussed in the briefs, moreover, we have no
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`evidence as to how the wet adhesion value obtained for the Szum coating,
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`which never endured a hot water soak, is comparable to the wet adhesion
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`values reported in Table 3, which appear to relate to coating samples that
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`endured both a hot water soak and the wet adhesion test. See Ex. 1001,
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`28:53-57 (wet adhesion test is performed “[i]n addition” to water soak
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`delamination test); see also id. at 29:13-15 (after conditioning, “samples that
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`appeared to be uniform and free of defects” were selected for the wet
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`adhesion test, implying that samples that delaminated were excluded from
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`such testing).
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`In sum, two independent reasons support our determination that the
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`wet adhesion test results advanced by Corning fail to show adequately that
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`the Szum coating has “sufficient adhesion . . . to prevent delamination in the
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`presence of moisture” within the meaning of the challenged claims. First,
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`the wet adhesion test assesses a property of the coating after conditioning
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`at 95% relative humidity, which is not “in the presence of moisture.”
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`Second, Corning identifies no persuasive evidence from which we
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`reasonably can discern that the wet adhesion test evaluates for
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`“delamination.”
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`iv. DSM’s Delamination Test Results
`are Not Necessary to our Analysis
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`DSM presents evidence that the Szum coating exhibits insufficient
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`adhesion to prevent delamination in the presence of liquid water.
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`Specifically, DSM contends that it formulated a coating according to Szum’s
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`Example 5 and subjected it to the water soak delamination test described in
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`the ’666 patent. PO Resp. 29-30 (citing Ex. 2032 ¶¶ 66-69). DSM reports
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`that the Szum coating “experienced delaminations, visible to the unaided
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`eye,” and that those “delaminations appeared as water-filled voids or
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`‘blisters’ between the inner primary coating and the glass.” Id. Corning
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`counters that those results are unreliable because DSM failed to follow the
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`correct procedure for preparing the Szum coating. Reply 5. In particular,
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`Corning argues that DSM used the wrong photoinitiator in its formulation,
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`which negatively affected the ability of the Szum coating to withstand
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`delamination. Id. (citing Ex. 1063 ¶¶ 95-105).
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`Corning bears the burden of showing by a preponderance of evidence
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`that the Szum coating inherently discloses the claimed adhesion property.
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`We need not resolve whether DSM properly formulated the Szum coating or
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`whether DSM’s test results accurately reflect the ability of that coating to
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`withstand delamination in the presence of moisture. Our decision rests on
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`Corning’s failure to show sufficiently that its wet adhesion test results,
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`which relate to the mechanical force sufficient to peel a coating away from a
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`glass substrate after conditioning at 95% relative humidity, are probative of
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`whether the Szum coating has “sufficient adhesion . . . to prevent
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`delamination in the presence of moisture” (i.e., liquid water).
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`Based on the record developed at trial, Corning fails to show by a
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`preponderance of evidence that the Szum coating inherently discloses the
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`claimed adhesion property. Because each of claims 10-20 includes a
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`limitation directed to that property, each claim withstands Corning’s
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`challenge based on anticipation by, or obviousness over, the Szum coating.
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`D. Grounds of Unpatentability Based on Shustack
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`We next turn to the other grounds of unpatentability raised at trial:
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`(1) claims 1-9 based on obviousness over Szum and Shustack; (2) claims 1,
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`2, 8, 10, 11, 16, 17, and 19 based on anticipation by Shustack; (3) claims 1,
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`2, 8, 10, 11, 16, 17, and 19 based on obviousness over Shustack; and (4)
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`claims 3, 12, 18, and 20 based on obviousness over Shustack and Jackson.
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`See Dec. 22.
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`The first of those grounds is based on Corning’s view that the wet
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`adhesion test results establish that the Szum coating inherently exhibits the
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`claimed adhesion property. Pet. 30-31, 33. For the reasons discussed above,
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`Corning fails to establish that fact by a preponderance of evidence.
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`The other grounds are based on a substantially similar argument that a
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`coating made according to Example 1 of Shustack (“the Shustack coating”)
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`exhibits the claimed adhesion property. Corning argues that it prepared the
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`Shustack coating, subjected it to the 95% relative humidity wet adhesion test
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`disclosed in the ’666 patent, and determined that it exhibits “adhesion to
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`glass at 95% relative humidity of 77 g/in.” Pet. 39 (citing Ex. 1007 ¶¶ 30,
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`35, 40, 44; Ex. 1006 ¶ 121); see Ex. 1007 ¶¶ 41-44.
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`For reasons set forth above, the wet adhesion test results do not show
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`sufficiently whether, or to what extent, a cured coating delaminates from
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`glass in the presence of liquid water. On this record, Corning fail