Trials@uspto.gov Paper 81
`571-272-7822 Entered: May 1, 2014
`
`
`
`
`
`
`
`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 IPR2013-00046
`Patent 6,110,593
`___________________
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822 Entered: May 1, 2014
`
`
`
`
`
`
`
`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 IPR2013-00046
`Patent 6,110,593
`___________________
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Case IPR2013-00046
`Patent 6,110,593
`
`I. INTRODUCTION
`A. Background
`Petitioner, Corning Incorporated (“Corning”), filed a petition on
`November 15, 2012, for inter partes review of all claims, 1-9, of U.S. Patent
`No. 6,110,593 (“the ’593 patent”) pursuant to 35 U.S.C. §§ 311-319. Paper
`2 (“Pet.”). Patent Owner, DSM IP Assets B.V. (“DSM”), filed a preliminary
`response on February 20, 2013. Paper 11 (“Prelim. Resp.”). On May 13,
`2013, the Board granted the petition as to a subset of the proposed grounds.
`Paper 12 (“Dec.”). We found that Corning had shown a reasonable
`likelihood of showing that the challenged claims were unpatentable based on
`the following grounds:
`Claim(s) Challenged Basis Reference(s)1
`1, 2, and 7
`§ 102 Edwards
`1, 2, and 7
`§ 103 Edwards
`1-3 and 7-9
`§ 103 Szum and Edwards or Broer
`1, 2, and 7-9
`§ 103 Shustack and Edwards or Broer
`3
`§ 103 Shustack, Edwards or Broer, and Jackson
`4-6
`§ 103 Shustack or Szum, Broer or Edwards, and
`Botelho
`After institution, DSM filed a short patent owner response stating that
`“DSM chooses not to substantively respond to Corning’s Petition and
`instead submits a Motion to Amend under 37 C.F.R. § 42.121.”2 Paper 43,
`
`1 The references are: U.S. Patent No. 5,416,880 (Ex. 1003) (“Edwards”);
`WO 95/15928 (Ex. 1002) (“Szum”); U.S. Patent No. 4,904,051 (Ex. 1006)
`(“Broer”); U.S. Patent No. 5,352,712 (Ex. 1005) (“Shustack”); U.S. Patent
`No. 4,900,126 (Ex. 1007) (“Jackson”); and WO 97/46380 (Ex. 1008)
`(“Botelho”).
`2 DSM also includes a footnote stating that it incorporates by reference its
`arguments from the preliminary response. Paper 43, 1 n.1. Our rules
`explicitly forbid incorporation by reference. 37 C.F.R. § 42.6(a)(3). We,
`therefore, consider only arguments made in the response itself.
`
`2
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`1-2. DSM’s motion to amend proposes new claims 10-13 for claims 1-3 and
`7, respectively. Paper 44 (“Mot. to Amend”). Corning filed a reply to the
`patent owner response (Paper 60, “Reply”) and an opposition to DSM’s
`motion to amend. DSM then filed a reply in support of its motion to amend.
`Paper 68.
`Corning filed and fully briefed a motion to exclude. Paper 72 (“Mot.
`to Exclude”); Paper 74; Paper 76. Oral hearing was held February 11, 2014.
`Paper 79.
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Corning has shown by a preponderance of the evidence that claims
`1-9 are unpatentable.
`DSM’s motion to amend claims is denied.
`B. Related Proceedings
`Corning and DSM simultaneously are involved in nine other inter
`partes reviews based on patents claiming similar subject matter: IPR2013-
`00043; IPR2013-00044; IPR2013-00045; IPR2013-00047; IPR2013-00048;
`IPR2013-00049; IPR2013-00050; IPR2013-00052; and IPR2013-00053.
`C. The ’593 Patent (Ex. 1001)
`The ’593 patent generally relates to radiation-curable, optical fiber
`coating systems. Ex. 1001, 1:5-7. In particular, the patent describes optical
`glass fibers coated with two radiation-cured coatings: an inner primary
`coating and an outer primary coating. For identification purposes, the outer
`primary coating includes colorant or, alternatively, a third colored layer,
`called an ink coating, is applied to the outer primary coating. Id. at 1:42-47.
`
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`To create a cable or ribbon assembly, used in the construction of
`multi-channel transmission cables, a plurality of coated optical fibers is
`bonded together in a matrix material. Id. at 1:30-37. In order to connect the
`fibers of multiple ribbons, the surface of a glass fiber must be accessible.
`Id. at 1:62–2:16. This often is accomplished by a process known as “ribbon
`stripping”—removing the coatings and the matrix material, preferably as a
`cohesive unit. Id. The ’593 patent is directed to a ribbon assembly having
`improved ribbon stripping capabilities. Id. at 2:48-54. As described in the
`Background of the Invention, the prior art discloses ribbon assemblies
`composed of multiple optical glass fibers with both an inner and outer
`coating and an optional outer ink layer. Id. at 1:30-50.
`
`II. ANALYSIS
`A. Claims 1-9 of the ’593 Patent
`DSM’s patent owner response states that “DSM chooses not to
`substantively respond to Corning’s Petition.” Paper 43, 1-2. Thus, DSM
`provides no substantive arguments beyond those previously asserted in its
`preliminary response (Paper 11). We previously considered those
`arguments, but did not find them persuasive. Dec. 6-23. For the reasons set
`forth in our Decision to Institute, we conclude that Corning has shown, by a
`preponderance of the evidence, that the challenged claims are unpatentable
`based on the following grounds: (1) claims 1, 2, and 7 based on anticipation
`by Edwards; (2) claims 1, 2, and 7 based on obviousness over Edwards;
`(3) claims 1-3 and 7-9 based on obviousness over Szum and Edwards or
`Broer; (4) claims 1, 2, and 7-9 based on obviousness over Shustack and
`Edwards or Broer; (5) claim 3 based on obviousness over Shustack, Edwards
`
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`or Broer, and Jackson; and (6) claims 4-6 based on obviousness over
`Shustack, Szum, Broer or Edwards, and Botelho.
`Therefore, we determine that claims 1-9 of the ’593 patent are
`unpatentable.
`B. DSM’s Motion to Amend Claims
`DSM proposes four substitute claims 10-13 to replace original
`independent claims 1-3 and 7. Mot. to Amend 5.
`As the moving party, DSM bears the burden of proof to establish that
`it is entitled to the relief requested. 37 C.F.R. § 42.20(c). The proposed
`amendment is not entered automatically, but only upon DSM’s having
`demonstrated the patentability of the substitute claims.
`In support of its motion, DSM proffers a declaration of Carl R.
`Taylor, Ph.D. Ex. 2032. We have reviewed DSM’s motion and supporting
`evidence. For the reasons stated below, DSM’s motion to amend claims is
`denied. The substitute claims will not be incorporated into the ’593 patent.
`In its motion, DSM proposes substitute claims 10-13. Mot. to Amend
`1-4. Substitute claims 10-12 are independent, and substitute claim 13
`depends from substitute claim 10. Id. The proposed substitute claims are
`reproduced below with markings to show the changes made relative to the
`original claims they are proposed to replace:
`10. (Proposed substitute for claim 1) A system for coating an
`optical glass fiber comprising a radiation-curable inner primary
`coating composition and a radiation-curable outer primary
`coating composition wherein:
`said radiation-curable inner primary coating composition
`comprising an oligomer comprising a polyol residue selected
`from the group consisting of a polyether polyol residue, a
`polycarbonate polyol residue, and combinations thereof, and at
`least one strip enhancing component;
`
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`
`said inner primary coating composition, after radiation cure,
`having the combination of properties of:
`(a) a glass transition temperature of below 0-20º C.; and
`(b) adhesion to glass of at least 5 g/in when conditioned at 95%
`relative humidity;
`and
`(c) a crack propagation of greater than 1.5 mm at 90º C;
`and
`said outer primary coating composition comprising an oligomer
`having at least one functional group capable of polymerizing
`under the influence of radiation, said outer primary coating
`composition, after radiation cure, having a secant modulus of
`greater than 1000 MPa at 23º C after curing on a Mylar
`substrate.
`11. (Proposed substitute for claim 2) A coated optical glass
`fiber, coated with at least an inner primary coating and an outer
`primary coating, wherein said inner primary coating is derived
`from a composition comprising an oligomer having a polyether
`polyol residue, the oligomer having at least one functional
`group capable of polymerizing under the influence of radiation
`and at least one strip enhancing component:
`said inner primary coating having:
`(a) a glass transition temperature of below 0-10º C.; and
`(b) adhesion to glass of at least 5 g/in when conditioned at 95%
`relative humidity;
`and
`(c) no delamination after 24 hours as measured in a 60º C water
`soak delamination test; and
`said outer primary coating having a secant modulus of greater
`than 1000 MPa at 23º C.
`12. (Proposed substitute for claim 3) A ribbon assembly
`comprising:
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`a plurality of coated optical glass fibers, at least one optical
`glass fiber coated with at least an inner primary coating and an
`outer primary coating, and optionally an ink coating; and
`a matrix material bonding said plurality of coated optical glass
`fibers together, wherein:
`said inner primary coating derived from a composition
`comprising an oligomer comprising a polyol residue selected
`from the group consisting of a polyether polyol residue, a
`polycarbonate polyol residue, and combinations thereof, and
`having at least one functional group capable of polymerizing
`under the influence of radiation and at least one strip enhancing
`component said inner primary coating having:
`(a) a glass transition temperature of below 0-20º C.; and
`(b) adhesion to glass of at least 5 g/in when conditioned at 95%
`relative humidity;
`and
`(c) a crack propagation of greater than 1.5 mm at 90º C;
`and
`said outer primary coating having a secant modulus of greater
`than 1000 MPa at 23º C.
`13. (Proposed substitute for claim 7) The system of claim 110
`wherein said inner primary coating composition, after cure, has
`a crack propagation of greater than 0.7 mm at 90º C, and a fiber
`pull-out friction of less than 40 g/mm.
`1. DSM’s Burden
`An inter partes review is neither a patent examination proceeding nor
`a patent reexamination proceeding. The proposed substitute claims, in a
`motion to amend, are not entered automatically and then subjected to
`examination. Rather, the substitute claims will be added directly to the
`issued patent, without examination, if the patent owner’s motion to amend
`claims is granted. The patent owner is not rebutting a rejection in an Office
`Action, as though this proceeding were a patent examination or a patent
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`reexamination. Instead, the patent owner bears the burden of proof in
`demonstrating patentability of the proposed substitute claims over the prior
`art in general and, thus, entitlement to add these proposed substitute claims
`to its patent.
`There is no presumption of patentability as to the challenged claims or
`substitute claims in an inter partes review. In fact, upon consideration of the
`information presented in the petition, we determined that there is a
`reasonable likelihood that claims 1-9 are unpatentable under 35 U.S.C.
`§§ 102 and 103. Dec. 6-23. DSM did not file a patent owner response
`arguing the patentability of claims 1-9. As discussed above, we since have
`determined that Corning has shown by a preponderance of the evidence that
`claims 1-9 are unpatentable. Therefore, there is no inference of patentability
`of substitute claims 10-13 by virtue of the fact that they purportedly are
`replacing claims 1-3 and 7.
`2. Substitute Claims 10, 12, and 13
`DSM asserts that substitute claims 10, 12, and 13 are patentable over
`the prior art based on the following assertions:
`(1) “[n]either Edwards nor Shustack teach using an oligomer
`comprising a polyether polyol residue, a polycarbonate polyol residue, or a
`combination thereof, as recited by proposed substitute claim 10” (Mot. to
`Amend 8 (citing Ex. 2032));
`(2) because “Corning measured the crack propagation at 90ºC for
`Coating Z of Coady and Example 5B of Szum and reported a value of 1.3
`mm for both formulations and a value of 0.9 mm at 90º C for Edwards
`Formulation 2,” the crack propagation value of 1.5 mm at 90º C “renders
`
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`proposed substitute claim 10 patentably distinct over Coady, Edwards, and
`Szum” (id. (citing Ex. 2013)); and
`(3) because “R-1055 has a glass transition temperature (or Tg) of
`-4ºC, (’189 patent, Ex. 1012, at 4:23-24), and Corning measured the Tg of
`Coating Z of Coady to be - 17.8º C,” the limitation of Tg of below -20º C
`renders proposed substitute claim 10 patentably distinct over Coady and R-
`1055 (id. at 8-9 (citing Ex. 2013)).
`DSM does not explain why it has added the limitation of “after curing
`on a Mylar substrate” to substitute claim 10. DSM adds that
`no modification or combination of the known inner primary
`coating of Shustack, Szum, Edwards, Coady, or R-1055, such
`as using the outer primary coatings of Edwards or Broer as
`Corning proposes in its petition, teaches or suggests the
`limitations recited by proposed claim 10. . . . [therefore] no
`prima facie case of obviousness would exist for proposed
`substitute claim 10.
`Id. at 9 (citing Ex. 2032); see id. at 11 (“For the reasons stated for claim 10,
`which are incorporated herein by reference, non[e] of the Cited references
`teach or suggest the claim limitations or combination of claim elements,
`either expressly or inherently. Accordingly, no prima facie case of
`obviousness would exist for proposed claim 12.”); id. (“For all the reasons
`stated for claim 10, which are incorporated herein by reference, no
`modification or combination of the known inner primary coatings of
`Shustack, Szum, Edwards, Coady, or R-1055, such as using the outer
`primary coatings of Edwards or Broer as Corning proposes in its petition,
`teaches or suggests the limitations recited by proposed claim 13.
`Accordingly, with the added claim limitations, no prima facie case of
`
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`
`obviousness would exist for proposed substitute claim 13.” (citation
`omitted)).
`DSM’s arguments and Dr. Taylor’s testimony, proffered in support of
`the motion to amend, are insufficient to demonstrate the patentability of
`substitute claims 10, 12, and 13. DSM merely provides the aforementioned
`conclusory statements and relies primarily on Dr. Taylor’s declaration. Dr.
`Taylor’s testimony is limited to the prior art cited in the petition and, more
`specifically, to the tests run by Corning on various samples based on those
`references. See Ex. 2032.3
`Dr. Taylor states that he “understand[s] these references include the
`closest prior art of which DSM is aware.” Id. at ¶ 73. Dr. Taylor, however,
`does not identify the closest prior art known to him with respect to the
`substitute claims. See id. Nor does he indicate that the prior art cited in the
`petition is the closest prior art known to him with respect to the substitute
`claims. Id. Without indicating that his patentability analysis is based on the
`closest prior art known to him, Dr. Taylor’s testimony provides insufficient
`information to establish that his patentability analysis as to the substitute
`claims is complete or reliable. Therefore, DSM’s conclusion that “[t]he
`proposed claims are patentable based on the amendments both specific and
`as a whole” is entitled to little weight. Mot. to Amend 6; see Rohm & Haas
`Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the
`
`
`3 DSM did not point specifically to the paragraphs in Dr. Taylor’s
`declaration on which it relies for the patentability of substitute claims 10, 12,
`or 13. Mot. to Amend 8-11. Exercising our discretion and, despite DSM’s
`failure to cite specific paragraphs, we considered the entire declaration. Ex.
`2032. Dr. Taylor does not opine specifically on the patentability of claim 13
`in this declaration. See id.
`
`10
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`rules or in our jurisprudence requires the fact finder to credit the
`unsupported assertions of an expert witness.”).
`Further, Dr. Taylor’s testimony also is limited to whether the samples
`tested by Corning include the properties added to the substitute claims and
`fails to demonstrate sufficiently that the substitute claims are patentable over
`even the small collection of prior art references involved in this proceeding.
`Although Dr. Taylor concludes that the substitute claims are patentably
`distinct over the cited art (Ex. 2032 ¶ 76), Dr. Taylor’s analysis merely
`discusses how the specific samples tested by Corning do not include the
`features added in substitute claims 10, 12, and 13. Id. at ¶¶ 73-76, 103-06.
`Such a patentability analysis is insufficient to demonstrate patentability,
`because Dr. Taylor does not show or even assert that the many other
`compositions disclosed in the cited prior art, when created and tested, would
`not include the added features.
`Additionally, Dr. Taylor does not proffer any evidence as to the level
`of ordinary skill in the art at the time of the invention, which is a necessary
`factual inquiry for determining obviousness. See Graham v. John Deere
`Co., 383 U.S. 1, 17-18 (1965). In fact, Dr. Taylor’s testimony does not
`address the level of ordinary skill in the art at the time of the invention and
`what was known previously regarding the features added in substitute claims
`10, 12, and 13. At least some explanations should have been provided as to
`why a person with ordinary skill in the art, applying his own knowledge and
`creativity, would not have found substitute claims 10, 12, and 13 obvious.
`In sum, limiting the discussion to Corning’s tests of a subset of the
`compositions disclosed in the references cited in the petition is insufficient
`to demonstrate patentability of substitute claims 10, 12, and 13 over the
`
`11
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`Case IPR2013-00046
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`
`record prior art and the prior art in general. See, e.g., Minkin v. Gibbons,
`P.C., 680 F.3d 1341, 1350-51 (Fed. Cir. 2012) (requiring a patentability
`analysis by a movant faced with a negative burden of proof). Without
`having discussed the level of ordinary skill in the art, and what was known
`previously regarding the features added in the substitute claims 10, 12, and
`13, DSM’s motion fails to demonstrate the patentability of substitute claims
`10, 12, and 13.
`3. Substitute Claim 11
`DSM asserts that “[i]n addition to the reasons stated above,” substitute
`claim 11 is patentable over the prior art of record “and the art known to
`DSM” because the art fails to disclose the limitation “no delamination after
`24 hours as measured in a 60º C water soak delamination test.” Mot. to
`Amend 9. DSM asserts that Corning did not perform this test on the prior
`art, but instead performed a “peel test.” Id. at 9-10 (citing Ex. 2032 ¶ 44-
`45). In addition, DSM asserts that it did its own water soak delamination
`test of Example 5B of Szum, which showed some delamination within 24
`hours—thus failing the water soak delamination test. Id. at 10 (citing Ex.
`2034). Based on these assertions, DSM concludes that “proposed substitute
`claim 11 is patentable over Edwards, Szum and Shustack.” Id. (citing Ex.
`2032 ¶ 98).
`DSM’s arguments and Dr. Taylor’s testimony suffer from the same
`deficiencies noted for substitute claims 10, 12, and 13 above and, thus, are
`insufficient to demonstrate the patentability of substitute claim 11. DSM’s
`arguments and Dr. Taylor’s testimony are limited to the prior art cited in the
`petition, tests run by Corning on various samples disclosed by those
`references, and tests run by DSM on a single sample disclosed by one
`
`12
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`reference. Id. at 9-10; Ex. 2032 ¶¶ 88-91.4 Although Dr. Taylor states that
`he “understand[s] these references include the closest prior art of which
`DSM is aware,” as discussed above, this testimony alone is insufficient. Ex.
`2032 ¶ 73.
`For the reasons discussed with respect to substitute claims 10, 12, and
`13, the discussion limited to Corning’s testing of a subset of the disclosed
`compositions in the references cited in the petition is insufficient to
`demonstrate patentability of substitute claim 11 over the record prior art and
`the prior art in general. Without having discussed the level of ordinary skill
`in the art, and what was known previously regarding the features added in
`substitute claim 11, DSM’s motion fails to demonstrate the patentability of
`substitute claim 11.
`C. Corning’s Motion to Exclude Evidence
`Corning filed a Motion to Exclude Evidence seeking to exclude
`Exhibits 2036, 2037, and 2038 as unauthenticated hearsay (Mot. to Exclude
`3-7) and certain paragraphs of the declarations of Dr. Bowman (Ex. 2076)
`and Dr. Taylor (Ex. 2032) as relying and promulgating unauthenticated
`hearsay evidence (Mot. to Exclude 8-11). All of the evidence Corning seeks
`to exclude was filed by DSM with its Motion to Amend.
`We find it unnecessary to consider the specific objections to the
`admissibility of evidence relating to DSM’s Motion to Amend, because
`
`
`4 DSM points only to paragraph 98 in Dr. Taylor’s declaration to support its
`assertion that claim 11 is patentable over Edwards, Szum, and Shustack.
`Mot. to Amend 10. Paragraph 98, however, refers to proposed substitute
`claim 12. Ex. 2032 ¶ 98. Based on the headings, we have determined that
`paragraphs 88-91 appear to be the relevant paragraphs. Ex. 2032 (heading
`prior to ¶ 88, “Proposed Substitute Claim 11 Is Patentably Distinct Over The
`Prior Art Cited by Corning and the Closest Prior Art Known to DSM”).
`
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`DSM has failed to demonstrate that it is entitled to its proposed substitute
`claims, even assuming all its proffered evidence to be admissible. Corning’s
`Motion to Exclude, therefore, is dismissed as moot, because even
`considering the evidence that Corning seeks to exclude, we have decided the
`issue in Corning’s favor.
`
`III. CONCLUSION
`Corning has shown, by a preponderance of the evidence, that the
`challenged claims are unpatentable based on the following grounds: (1)
`claims 1, 2, and 7 based on anticipation by Edwards; (2) claims 1, 2, and 7
`based on obviousness over Edwards; (3) claims 1-3 and 7-9 based on
`obviousness over Szum and Edwards or Broer; (4) claims 1, 2, and 7-9 based
`on obviousness over Shustack and Edwards or Broer; (5) claim 3 based on
`obviousness over Shustack, Edwards or Broer, and Jackson; and (6) claims
`4-6 based on obviousness over Shustack, Szum, Broer or Edwards, and
`Botelho.
`DSM has not shown that its proposed substitute claims 10-13 are
`patentable over the prior art.
`Accordingly, it is
`ORDERED that claims 1-9 of the ’593 patent are determined to be
`UNPATENTABLE;
`FURTHER ORDERED that DSM’s Motion to Amend Claims is
`denied;
`FURTHER ORDERED that Corning’s Motion to Exclude Evidence is
`dismissed; and
`
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`FURTHER ORDERED that because this is a final written decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`For PETITIONER:
`
`Michael L. Goldman
`Jeffrey N. Townes
`Edwin V. Merkel
`LeClairRyan, A Professional Corporation
`Michael.Goldman@leclairryan.com
`Jeffrey.Townes@leclairryan.com
`Edwin.Merkel@leclairryan.com
`
`For PATENT OWNER:
`
`Sharon A. Israel
`Joseph A. Mahoney
`Mayer Brown LLP
`SIsrael@mayerbrown.com
`JMahoney@mayerbrown.com
`
`
`15
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