`
`
`
`
`
`
`
`Paper 83
`Entered: March 28, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORNING INCORPORATED
`Petitioner,
`
`v.
`
`PATENT OF DSM IP ASSETS B.V.
`Patent Owner.
`____________
`
`Case No. IPR2013-00047
`Patent 6,438,306
`____________
`
`Held: February 11, 2014
`____________
`
`
`Before: JENNIFER S. BISK, FRED E. McKELVEY, GRACE
`KARAFFA OBERMANN, SCOTT E. KAMHOLZ and ZHENYU
`YANG, Administrative Patent Judges.
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL L. GOLDMAN, ESQ.
`
`
`EDWIN MERKEL, ESQ.
`
`
`LeClairRyan, P.C.
`
`
`70 Linden Oaks, Suite 210
`
`
`Rochester, New York 14625
`
`
`
`and
`
`
`
`
`
`
`
`
`
`
`
`
`
`JEFFREY N. TOWNES, ESQ.
`LeClairRyan, P.C.
`2318 Mill Road, Suite 1100
`Alexandria, Virginia 22314
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`SHARON ISRAEL, ESQ.
`
`
`Mayer Brown, LLP
`
`
`700 Louisiana Street, Suite 3400
`
`
`Houston, Texas 77002-2730
`
`
`
`and
`
`
`JOSEPH MAHONEY, ESQ.
`
`
`Mayer Brown, LLP
`
`
`71 South Wacker Drive
`
`
`Chicago, Illinois 60606
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`February 11, 2014, commencing at 1:21 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
` P R O C E E D I N G S
`
`
`
`- - - - -
`
`JUDGE BISK: Okay. This is IPR2013 -00047.
`
`JUDGE McKELVEY: Mr. Goldman, I have a few
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`25
`
`26
`
`27
`
`28
`
`questions on this case.
`
`29
`
`MR. GOLDMAN: I'm ready to answer them, I
`
`30
`
`hope.
`
`31
`
`JUDGE McKELVEY: First of all, there's three
`
`32
`
`grounds anticipation. Have you withdrawn you r petition as
`
`33
`
`to Edwards?
`
`
`
`
` 2
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. GOLDMAN: We're not -- I guess the answer
`
`would be directly we're not relying on it, so I guess yes, we
`
`will withdraw.
`
`JUDGE McKELVEY: So, that's a yes, you're not
`
`relying on it. Now, the next thing is, is there was some
`
`evidence put in with the reply brief which is the subject of a
`
`motion to exclude, and at the reply stage, are you no longer
`
`relying on the case you made in the petition, based on the
`
`discovery that occurred at some point, or not?
`
`10
`
`MR. GOLDMAN: Well, I t hink that's a very hard
`
`11
`
`question to answer, to be very frank. We have, I think, been
`
`12
`
`quite forthcoming in acknowledging that there were some
`
`13
`
`scientific errors that were in the initial case. So, we have
`
`14
`
`that issue. On the other hand, we have a patent tha t is quite
`
`15
`
`broad, claim-wise, and --
`
`16
`
`JUDGE McKELVEY: Okay, that's fine, it's got a
`
`17
`
`broad --
`
`18
`
`MR. GOLDMAN: So, the issue is, then, well,
`
`19
`
`how relevant or not relevant is that data, given that we have
`
`20
`
`claims that are virtually impossible to fathom the scop e of.
`
`21
`
`JUDGE McKELVEY: Well, so I'm trying to
`
`22
`
`figure out whether we have to analyze the initial data in
`
`23
`
`light of what your witnesses discovered and what the
`
`24
`
`opposition says, I guess it's the Patent Owner's response, or
`
`
`
`
`
` 3
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`is the merits solely based on the n ew evidence that came in
`
`with the reply.
`
`MR. GOLDMAN: I think our primary view is
`
`that you should rely on the reply evidence. Like I said,
`
`given the breadth of the claims, and the indefinite nature of
`
`them, I am not entirely comfortable with saying tha t the
`
`early data is totally irrelevant. There is a scientific error
`
`with it, but there's no indication -- there's not much
`
`indication in the claims of how you do the test and there's
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`not much indication in the spec of how you do the test.
`
`11
`
`So, our -- you know, that's -- I'm troubled to say,
`
`12
`
`well, just ignore the data, but I'd say, you know, our primary
`
`13
`
`reliance is on the later data.
`
`14
`
`JUDGE BISK: Can I ask why this wouldn't be
`
`15
`
`supplemental evidence that you shouldn't have filed a motion
`
`16
`
`to supplement to bring it in?
`
`17
`
`MR. GOLDMAN: I guess we looked at it as
`
`18
`
`evidence to respond to their criticisms of our case in their
`
`19
`
`opposition papers.
`
`20
`
`JUDGE OBERMANN: But what I'm hearing is
`
`21
`
`it's required to make out your case in chief. Is that correct?
`
`22
`
`Could you rest on your petition evidence at this point?
`
`23
`
`MR. GOLDMAN: We think the -- as far as the --
`
`24
`
`on the art, there is issues with the science, and so I think
`
`25
`
`unless you're going to -- if you're going to say the claims are
`
`
`
`
`
` 4
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`so broad that they read on doing an RA U test in any way,
`
`which might be true, we can't rely on the initial data. You
`
`know, if you're going to say you can't rely on the initial data
`
`because of the scientific errors that occurred there, then, you
`
`know, I don't see how we can rely on it.
`
`JUDGE OBERMANN: So, just to be clear, if the
`
`universe of the evidence were your petition evidence, you
`
`would lose?
`
`MR. GOLDMAN: I don't think I quite said that,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`but I think it all depends how you construe the claims. I
`
`11
`
`think if you construe the claims as v ery broad, that it could
`
`12
`
`read on any percentage RAU test that was done, I think it's
`
`13
`
`conceivable that you could read the results on that, but like I
`
`14
`
`said, there's a scientific issue with the results.
`
`15
`
`JUDGE YANG: Counsel, I understand there is an
`
`16
`
`overlapping issue with this case and 52, right?
`
`17
`
`18
`
`MR. GOLDMAN: Yes.
`
`JUDGE YANG: Do you plan to argue something
`
`19
`
`similar in 52, or we should just direct all the questions here?
`
`20
`
`MR. GOLDMAN: I have a little bit to say about
`
`21
`
`52, but not very much. They're ver y similar issues.
`
`22
`
`JUDGE McKELVEY: So, what changed -- were
`
`23
`
`you done?
`
`24
`
`JUDGE YANG: I do have a follow -up question.
`
`25
`
`So, you said your test depends on the claim construction, but
`
`
`
`
`
` 5
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`if I understand the parties' arguments correctly, the
`
`scientific error you just admitted occurred during the
`
`calibration stage, and I wouldn't quite imagine how that is --
`
`has anything to do with the claim construction. Can you just
`
`help me out there?
`
`MR. GOLDMAN: Well, I think what the claim
`
`construction says is, is open to carrying out the error you
`
`tested a lot of different ways. So, if you say the calibration
`
`error doesn't change how you look at the RAU test, then I
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`guess you could read that you continue to look at the
`
`11
`
`original data. I mean, our primary view is the late r data is
`
`12
`
`what we're relying on.
`
`13
`
`14
`
`JUDGE YANG: Okay.
`
`MR. GOLDMAN: But just given the breadth of
`
`15
`
`the claims, I'm uncomfortable with saying that the data -- the
`
`16
`
`original data has no relevance to these claims.
`
`17
`
`JUDGE McKELVEY: Well, explain to me why
`
`18
`
`this new evidence doesn't in effect restart this case. And
`
`19
`
`how it is that there's A and B here, A, why doesn't it restart
`
`20
`
`it; and B, when does the Patent Owner get to rebut or oppose
`
`21
`
`or respond to in a meaningful way?
`
`22
`
`MR. GOLDMAN: Well, with regard to th e new
`
`23
`
`data, it is new. It was responsive to what they raised in their
`
`24
`
`papers, which was there was issues about claim
`
`
`
`
`
` 6
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`interpretation, there were issues critiquing what our science
`
`was initially. So, we responded to that.
`
`They have some opportunity to qu estion our
`
`affiants, or declarants, they chose to let them go after
`
`leaving three and a half and four hours on the time for those
`
`witnesses and didn't ask them a thing about it.
`
`So, they had the chance to ask them and they
`
`chose to do nothing. So, the i dea that they had no chance to
`
`do anything is not true, they had -- they gave that up.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`JUDGE McKELVEY: But it's also true that it's a
`
`11
`
`perfectly acceptable litigation tactic on their part, I don't
`
`12
`
`mean tactic in a negative sense, to say, you know, this i s
`
`13
`
`new and we're going to put our eggs in that basket, and if we
`
`14
`
`win, this evidence is out, and we probably walk away with
`
`15
`
`our patent. Alternatively, we could vigorously cross
`
`16
`
`examine this new evidence and maybe make out a case based
`
`17
`
`on the cross that it's not scientifically correct. So, they have
`
`18
`
`a choice which they made. Now, they live with the choice.
`
`19
`
`JUDGE BISK: Well, and they didn't get any
`
`20
`
`briefing after --
`
`21
`
`MR. GOLDMAN: No, and I think the other --
`
`22
`
`well, they got the chance to put their observa tions in, which
`
`23
`
`they took advantage of.
`
`24
`
`JUDGE BISK: But they're not allowed to
`
`25
`
`continue argument, through the rules.
`
`
`
`
`
` 7
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. GOLDMAN: Well, I'm not sure that held up
`
`here, but in any event, they did have their chance. I would
`
`also mention that with rega rd to the GPC, which they felt
`
`they could gain advantage of, they came back to you and
`
`asked for more time to put a response in, and the Board gave
`
`them that, including a declaration from Dr. Bowman, and
`
`another brief, and they never asked for that here. I mean, if
`
`that's something that would alleviate the problem, that seems
`
`like that wouldn't have been something we would have
`
`10
`
`opposed.
`
`11
`
`JUDGE KAMHOLZ: Why do you say that your
`
`12
`
`reply evidence is responsive?
`
`13
`
`MR. GOLDMAN: Well, they criticized our
`
`14
`
`original testing, and -- of the science, Dr. Bowman raised a
`
`15
`
`number of issues, and it turns out the issues he raised were
`
`16
`
`wrong. The concerns he raised that we pointed out in our
`
`17
`
`briefs, they weren't correct criticisms.
`
`18
`
`So, we felt, for a lot of reasons, that it was
`
`19
`
`important to put this in, one to clear the record, that this is
`
`20
`
`what happened, we think we had a duty to tell the Board
`
`21
`
`about that; and also, to demonstrate the other issue, which
`
`22
`
`was, as we said from the beginning in our petition, the
`
`23
`
`claims are very broad. They have a meaning that is difficult
`
`24
`
`to fathom --
`
`
`
`
`
` 8
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE KAMHOLZ: I mean your new
`
`experimental data, how is that responsive?
`
`MR. GOLDMAN: It proves -- it shows that you
`
`can take two radiometers, you can do --
`
`JUDGE KAMHOLZ: No, no, you a ccepted that
`
`the original data was flawed, and you put in new data, how
`
`was that responsive?
`
`MR. GOLDMAN: It's responsive -- well, it
`
`shows that --
`
`10
`
`JUDGE KAMHOLZ: You accepted DSM's
`
`11
`
`position that that original data was flawed, maybe for
`
`12
`
`different reasons.
`
`13
`
`MR. GOLDMAN: For different reasons, that's
`
`14
`
`right.
`
`15
`
`JUDGE KAMHOLZ: You accepted their position.
`
`16
`
`So, how is it responsive?
`
`17
`
`MR. GOLDMAN: Like I said, there has been
`
`18
`
`issues about the claims and the scope of the claims. We
`
`19
`
`raised in our petition that the claims were very broad and
`
`20
`
`were susceptible to a very broad meaning. In their response,
`
`21
`
`they said, well, you don't have to consider the meaning of
`
`22
`
`the claims, and they're not broad. And, so, we put this data
`
`23
`
`in to show, well, in addition to clea ring the air on the test
`
`24
`
`data, we put that data in, the original test data -- we put that
`
`25
`
`data in to show that, in fact, the claims are broad, and that if
`
`
`
`
`
` 9
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`you take the identical material, replicated from a prior art,
`
`and you test it with the identical equi pment, except you
`
`calibrate the equipment with a different radiometer, you
`
`would get a different result. Very different result.
`
`JUDGE BISK: So, what concerns me is, if you
`
`put in data that's incorrect in your petition, and the Patent
`
`Owner gets one chance to respond to that essentially in that
`
`Patent Owner response, and you have the burden, so really
`
`all they have to do is say, that data is incorrect, and they
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`win. And then on reply you bring in brand new data.
`
`11
`
`You've essentially, if you did this on p urpose, I'm not saying
`
`12
`
`you did.
`
`13
`
`14
`
`MR. GOLDMAN: We didn't.
`
`JUDGE BISK: But somebody could trick them
`
`15
`
`into making a case that -- spending our whole case on
`
`16
`
`something that you will then say, Ah -hah, here is our new
`
`17
`
`date, it's a brand new case and you don' t even get a chance
`
`18
`
`to respond, and maybe they have 20 arguments that they
`
`19
`
`would win on, but we will never get to hear them, because
`
`20
`
`they had a winner. It is correct, they had a winner. That's
`
`21
`
`what really bothers me here. How do we deal with that?
`
`22
`
`MR. GOLDMAN: Well, like I said, they availed
`
`23
`
`themselves of the opportunity with the GPC, and they --
`
`24
`
`where we had all kinds of issues, and, of course, you're not
`
`25
`
`hearing a lot about the GPC anymore, because that was a big
`
`
`
`
`
` 10
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`runaround, but at the end of the day , they asked for more
`
`opportunity to respond to the GPC, and it was provided.
`
`The Board does have additional -- can extend the
`
`deadlines here, to accommodate this, and in the public -- you
`
`know, as a public interest here, too, you're looking at data
`
`that on its face shows that these claims are invalid. Whether
`
`you want to consider it or not, that's another matter, but
`
`you're looking at data that shows that and there's a public
`
`interest that's out there about are you going to let that go
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`and not deal with it.
`
`11
`
`JUDGE McKELVEY: Well, I have another
`
`12
`
`question, though. Based on the testimony that came in with
`
`13
`
`the reply, at some point, Corning figured out something is
`
`14
`
`wrong, and what's -- I have not been able to find, but which
`
`15
`
`you can point me to it, is when did that happen and where
`
`16
`
`does the record support that? It could have happened with
`
`17
`
`the preliminary response, Corning scientists could have said,
`
`18
`
`you know what, there's something in here that's triggered,
`
`19
`
`whoops, it could have happened with the merits re sponse, or
`
`20
`
`it could have happened after some cross examination of a
`
`21
`
`witness, but I can't -- obviously the earlier that Corning
`
`22
`
`knew about this, the faster they could have come in with a --
`
`23
`
`or it could have come in with a request for supplemental
`
`24
`
`evidence.
`
`
`
`
`
` 11
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Now, I voice no opinion on whether that would be
`
`authorized or not, but is there something in the record that
`
`says when this error was discovered?
`
`MR. GOLDMAN: Yeah, well, we put -- first of
`
`all, there was Dr. Dr. Winningham's second declaration, and
`
`he talks about the error in depth.
`
`JUDGE McKELVEY: Yeah, he talks about the
`
`error, but he never says when, if I remember right.
`
`MR. GOLDMAN: Well, I can't remember, but in
`
`10
`
`his deposition that followed that, he was asked repeatedly,
`
`11
`
`and it was after D SM put in their critique, Corning, you
`
`12
`
`know, the evidence is I think pretty clear out there that this
`
`13
`
`was a difficult problem to find, they didn't think there was a
`
`14
`
`problem when they did the work, they didn't think there was
`
`15
`
`a problem when they filed the p apers. What they did do,
`
`16
`
`when Dr. Bowman came in with his critique was go back and
`
`17
`
`look.
`
`18
`
`JUDGE McKELVEY: This is the Patent Owner's
`
`19
`
`response?
`
`20
`
`MR. GOLDMAN: Right, after the petition was
`
`21
`
`granted. And he was asked, you know, and counsel for DSM
`
`22
`
`tried very hard to get him to say it was something other than
`
`23
`
`that, but it wasn't. And the data that we -- that was put in
`
`24
`
`was data that was produced not long before these last reply
`
`25
`
`papers were produced.
`
`
`
`
`
` 12
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE McKELVEY: Well, I can understand the
`
`scientists being -- having some pause about something that
`
`might have been scientifically wrong, because that's
`
`typically not how they think, they want to do it right.
`
`MR. GOLDMAN: Right.
`
`JUDGE McKELVEY: But, and they don't think in
`
`terms of that late evidence may take away a patent unjustly,
`
`or cancel it justly, depending on how you look -- that's not
`
`their background and so forth. So, that's why I'm interested
`
`10
`
`in knowing when he -- but you say the deposition will clear
`
`11
`
`this up.
`
`12
`
`13
`
`MR. GOLDMAN: I think it wil l.
`
`JUDGE McKELVEY: Well, somebody needs to
`
`14
`
`tell me a page and line, because it's kind of like a -- not the
`
`15
`
`shortest deposition I've seen.
`
`16
`
`MR. GOLDMAN: Well, it's not the five -day one,
`
`17
`
`it's the three-hour one.
`
`18
`
`19
`
`JUDGE McKELVEY: It's the three -hour one?
`
`MR. GOLDMAN: Four-hour one. Because the
`
`20
`
`first deposition was before this was realized to be a problem.
`
`21
`
`JUDGE McKELVEY: Well, somebody can tell
`
`22
`
`me, it's at one hour and 32 minutes, that's very helpful. So,
`
`23
`
`some time.
`
`24
`
`MR. GOLDMAN: Now or by the n ext --
`
`
`
`
`
` 13
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE McKELVEY: Well, at the end when you
`
`have rebuttal will be perfectly fine, so if somebody can
`
`eyeball for that and get me an answer.
`
`MR. GOLDMAN: Okay.
`
`JUDGE McKELVEY: You've answered my other
`
`question, which is without the evidence do you win, and you
`
`said you principally rely on it. So, that's fine.
`
`MR. GOLDMAN: Okay, I'm going to save the
`
`rest of my time for rebuttal.
`
`10
`
`MR. MAHONEY: Your Honors, Corning should
`
`11
`
`not be allowed to hit the restart button here. They can't rest
`
`12
`
`on their petition. They should have withdrawn their case as
`
`13
`
`soon as they knew that they had a problem. And let's talk
`
`14
`
`about when they knew. That's something that we've been
`
`15
`
`very interested in, because for us, looking at the statute
`
`16
`
`here, the statutory require ment for petitions is that you have
`
`17
`
`to have a prima facie case of unpatentability in your
`
`18
`
`petition.
`
`19
`
`JUDGE McKELVEY: Now, where does the
`
`20
`
`statute say that? It says you have to have a reasonable
`
`21
`
`likelihood that you will prevail. This is an issue I've had
`
`22
`
`problems with, so don't feel like you're -- if I was there and
`
`23
`
`you were here, you would be asking me this question. I
`
`24
`
`don't have an answer, but maybe you do.
`
`
`
`
`
` 14
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. MAHONEY: Section 312 of the Patent Act
`
`requirements.
`
`JUDGE McKELVEY: Yeah, it says, so , to get
`
`this thing started, there has to be this reasonable likelihood.
`
`All of the sudden I'm hearing in the motion to exclude that
`
`there has to be a prima facie case, and I'm saying, I don't see
`
`where that is.
`
`MR. MAHONEY: Well, the -- they have to show
`
`by a preponderance of the evidence that all the elements are
`
`10
`
`taught in the prior art. And they can't do that. They can't do
`
`11
`
`that.
`
`12
`
`JUDGE McKELVEY: But that sounds to me like
`
`13
`
`you're saying, if they file a petition, and it's authorized and
`
`14
`
`you don't show up, then the case is over. That is the Patent
`
`15
`
`Owner doesn't -- just walks away and says I've got nothing,
`
`16
`
`I'm not coming in at all.
`
`17
`
`MR. MAHONEY: Well, in not submitting any
`
`18
`
`arguments, is that what you're saying?
`
`19
`
`20
`
`JUDGE McKELVEY: Right.
`
`MR. MAHONEY: Well, no, not -- I mean, they --
`
`21
`
`for them -- isn't there a difference in the standard of
`
`22
`
`institution and them actually winning on the merits at this
`
`23
`
`trial? We submit -- we submit that there is.
`
`24
`
`JUDGE McKELVEY: Oh, yeah.
`
`
`
`
`
` 15
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. MAHONEY: And I'm s aying that there's an
`
`order to these proceedings, they have now shown up with
`
`new evidence, they redid -- they did the test once, that first
`
`redone attempt failed, they were outside the claims, and they
`
`redid it again, and we're not conceding that those in validate
`
`our claims either. What we're saying is that there are --
`
`there's an order to these proceedings, there are rules that
`
`require the order, and they should not be allowed to
`
`repackage their original petition with this new test evidence.
`
`10
`
`JUDGE McKELVEY: I mean, let me rephrase
`
`11
`
`this a little bit differently and see if you disagree, you let me
`
`12
`
`know. This is a questioning that there's no question about it.
`
`13
`
`The Board held that they made out a case, of a reasonable
`
`14
`
`likelihood of success. We do that, of course, before you
`
`15
`
`folks, the Patent Owner, could put in any testimony
`
`16
`
`evidence. Now you put it in. At that point, we decide
`
`17
`
`whether they have established unpatentability of the claims.
`
`18
`
`The word "prima facie," you notice, I haven't
`
`19
`
`used. If they have, after all that's considered, cancel the
`
`20
`
`claims; if they haven't, the Patent Owner walks away with its
`
`21
`
`patent.
`
`22
`
`So, if that's the case, why is this word "prima
`
`23
`
`facie" showing up in the motion to exclude? If it wasn't
`
`24
`
`there, I wouldn't be having this a ngst.
`
`
`
`
`
` 16
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. MAHONEY: The prima facie language is in
`
`the Board's rules as it relates to new evidence, okay? And
`
`Section 312 says that the evidence for the grounds of
`
`unpatentability has to be in the petition. And at the
`
`institution stage, you know, you'r e accepting Corning's
`
`percent RAU test at face value. We had not had an
`
`opportunity to respond at that time. So, at that phase of the
`
`case, the evidence isn't tested, so to speak.
`
`JUDGE McKELVEY: Right. Okay, I agree with
`
`10
`
`that.
`
`11
`
`MR. MAHONEY: And so now, now with the
`
`12
`
`recognition, we get into this litigation, we have to compel
`
`13
`
`the documents. The documents that led --
`
`14
`
`JUDGE McKELVEY: Well, don't go to the
`
`15
`
`discovery, just keep right on the merits here.
`
`16
`
`17
`
`MR. MAHONEY: Okay.
`
`JUDGE McKELVEY: So, you get to put your
`
`18
`
`case on, including Dr. Bowman's testimony.
`
`19
`
`MR. MAHONEY: Right. As soon as -- as soon
`
`20
`
`as Dr. Bowman got their data through our discovery motion
`
`21
`
`that we had to get the evidence, okay, he saw it and he
`
`22
`
`immediately recognized, and this was in the summer of last
`
`23
`
`year, he recognized that this relationship here, slide number
`
`24
`
`6, the dose versus exposure time, it needs to be linear, and
`
`25
`
`Corning's was not linear.
`
`
`
`
`
` 17
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Also in the summer, in the July/August time
`
`frame, we asked Corning's witnesses th e question, is dose
`
`versus exposure time supposed to be linear? They admitted
`
`that it was supposed to be linear. However, their data isn't
`
`linear.
`
`So, although Corning's witnesses have said that
`
`they didn't know about the problem until after Dr. Bowman
`
`put in his expert report at the end of August, we have our
`
`doubts about that. And it's because of their testimony during
`
`10
`
`the summer, before Dr. Bowman's report, and also, Dr.
`
`11
`
`Winningham's new declaration that he put in on the reply
`
`12
`
`evidence, he's relying -- for some of the percent RAU test
`
`13
`
`evidence, he's relying on coatings that were made in June of
`
`14
`
`2013.
`
`15
`
`Now, he said he didn't know anything about
`
`16
`
`those, but to answer your question about when this
`
`17
`
`happened, or when they knew about it. It was at least t he
`
`18
`
`end of August, and it may very well have been sooner,
`
`19
`
`during, for example, as you mentioned, their depositions
`
`20
`
`when we were asking about that.
`
`21
`
`JUDGE McKELVEY: Now, when you say his
`
`22
`
`report, we don't have expert reports like you do under the
`
`23
`
`Federal Rules, so you mean his declaration?
`
`24
`
`MR. MAHONEY: I'm sorry, his declaration. His
`
`25
`
`reply declaration.
`
`
`
`
`
` 18
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`JUDGE McKELVEY: All right.
`
`MR. MAHONEY: Correct.
`
`JUDGE McKELVEY: Elsewhere in the record
`
`there's a reference to these expert reports, which I hav e sort
`
`of been construing to mean the deposition or declaration,
`
`depending on them.
`
`MR. MAHONEY: Correct.
`
`JUDGE McKELVEY: Okay.
`
`MR. MAHONEY: So, Corning's new RAU
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`evidence, it's not proper reply evidence, it's not proper
`
`11
`
`supplemental evidence --
`
`12
`
`JUDGE OBERMANN: Along those lines,
`
`13
`
`Counsel, I think you cited the practice guide for support.
`
`14
`
`Which particular of our rules would you say that that
`
`15
`
`submission violated?
`
`16
`
`MR. MAHONEY: It's the -- hold on a second.
`
`17
`
`Your Honor, I believe it's Rule 42.23( b). And it comes in as
`
`18
`
`improper reply evidence, it's redone tests, we don't think
`
`19
`
`that Corning should be allowed to do this, and we don't have
`
`20
`
`an opportunity to properly respond to that evidence.
`
`21
`
`JUDGE McKELVEY: Let's assume that the
`
`22
`
`motion to exclude is denied. What's the answer on the
`
`23
`
`merits to the new evidence?
`
`24
`
`MR. MAHONEY: We don't concede that it
`
`25
`
`anticipates. And look, for example, at -- they had to
`
`
`
`
`
` 19
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`disclose that, right, because they did the test, look, for
`
`example -- okay, so they did three t ests. Test number one,
`
`they admit it's scientifically invalid, those are the tests that
`
`were in their petition. Test number two, fall outside of the
`
`claims. Test number three, they say falls inside of the
`
`claims. That's not inherency. That's not antic ipation.
`
`Where is the inevitability there?
`
`JUDGE McKELVEY: Where is this argument
`
`made in your reply? Or I mean, where do you make this
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`argument?
`
`11
`
`MR. MAHONEY: Well, if we didn't make that
`
`12
`
`argument, I'm making it right now. We did not -- and, Your
`
`13
`
`Honor, I'm not trying to be disrespectful. We didn't have a
`
`14
`
`chance.
`
`15
`
`JUDGE McKELVEY: I'm tempted to agree with
`
`16
`
`you, I can't figure out when you would have made the
`
`17
`
`argument.
`
`18
`
`MR. MAHONEY: That's exactly my point. We
`
`19
`
`did not amend in 47 and 52, so our papers after the reply are
`
`20
`
`basically the motions for observation and the motion to
`
`21
`
`exclude.
`
`22
`
`JUDGE BISK: I'm just curious, you did file
`
`23
`
`supplemental response in this case, right?
`
`24
`
`MR. MAHONEY: Related to the GPCs, limited
`
`25
`
`to the GPCs.
`
`
`
`
`
` 20
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE BISK: Right. But you didn't ask for a
`
`supplemental response on this particular issue, did you?
`
`MR. MAHONEY: We did not, because we
`
`think -- we think that your rules are so clear in the statutory
`
`requirements of a petition, and understandin g what the order
`
`and sequence is for how these IPRs work, we didn't think --
`
`we didn't think that we had to.
`
`If Corning -- what Corning should have done is
`
`when they knew they had a problem, just like their expert
`
`10
`
`recognized they had a problem, they shou ld have withdrawn
`
`11
`
`their petition. They didn't. We've had to go through all of
`
`12
`
`the additional discovery and all of the other things to lead us
`
`13
`
`to this point today to explain to you that -- what's obvious,
`
`14
`
`and admitted, their petition cannot stand.
`
`15
`
`JUDGE BISK: Can I ask about the supplemental
`
`16
`
`response? The Petitioner doesn't appear to be relying on
`
`17
`
`Edwards, so I'm not sure the supplemental response is
`
`18
`
`relevant to this case either. I'm wondering if you would
`
`19
`
`have any response position on that.
`
`20
`
`MR. MAHONEY: Well, the GPC issue started,
`
`21
`
`remember, that they produced to us some late documents.
`
`22
`
`Off the top of my head, I don't recall when they withdrew
`
`23
`
`the Edwards coatings. I thought it was -- I thought it was --
`
`24
`
`JUDGE BISK: But now that they have, does the
`
`25
`
`supplemental response have any relevance here?
`
`
`
`
`
` 21
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`MR. MAHONEY: I think it may, because
`
`example Szum 5(b) I think is in our supplemental response.
`
`JUDGE McKELVEY: I think Judge Bisk is
`
`asking to the extent that supplemental response discusses
`
`Edwards, no reason to get to it, right?
`
`MR. MAHONEY: If they've conceded, that's
`
`right.
`
`said.
`
`JUDGE McKELVEY: That's what I thought he
`
`MR. MAHONEY: Yeah.
`
`JUDGE McKELVEY: So, if there's something
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`else in there. Was that your question?
`
`13
`
`JUDGE BISK: Partially. The supplemental
`
`14
`
`response, though, mentions Szum 5(b), and very cursorily,
`
`15
`
`it's very hard to understand what Szum 5(b) has to do with
`
`16
`
`anything.
`
`17
`
`JUDGE YANG: Right. So, the discussion in the
`
`18
`
`main supplemental response was addressing how Corni ng
`
`19
`
`prepares their oligomers or something along that line. And
`
`20
`
`if I remember it correctly, at the end of that supplemental
`
`21
`
`response, there is a one -page appendix where you listed like
`
`22
`
`five examples you used, or they used. Is that -- do you
`
`23
`
`recall that?
`
`
`
`
`
` 22
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`MR. MAHONEY: May I grab it? I'm looking at
`
`the paper filed by us on December 20th, 2013, Judge Yang,
`
`is that the filing that you're asking about?
`
`JUDGE YANG: Correct.
`
`MR. MAHONEY: Oh, actually, that's Corning's.
`
`JUDGE YANG: I have December 13th, that's
`
`Patent Owner's supplemental response.
`
`MR. MAHONEY: December 13th, okay. Okay, I
`
`have it. Are you looking at page 6?
`
`JUDGE BISK: Yeah.
`
`MR. MAHONEY: Okay, I'm sorry, could you
`
`12
`
`repeat the question?
`
`13
`
`JUDGE YANG: It's not really a question, per se,
`
`14
`
`so we are wondering how relevant this supplemental
`
`15
`
`response is to this specific case. Earlier, I believe Corning
`
`16
`
`has conceded that they are not relying on Edwards, so -- and
`
`17
`
`since this paper, I believe, is filed for -- I think it's the same
`
`18
`
`paper for several cases here, we're not sure if this one still is
`
`19
`
`relevant to this 47.
`
`20
`
`MR. MAHONEY: Well, Your Honor, I think it is,
`
`21
`
`because the -- I mean, to the extent that you would consider
`
`22
`
`any RAU, percent RAU evidence, it would be relevant
`
`23
`
`because oligomer RT-38 was used in the percent RAU test,
`
`24
`
`the oligomer RT-32, likewise, was, and oligomer RT -60,
`
`
`
`
`
` 23
`
`
`
`Case No. IPR2013-00047
`Patent 6,438,306
`
`which is Coady coating Z, those were coatings that were also
`
`used in the percent RAU test.
`
`JUDGE McKELVEY: Counsel, with respect,
`
`there's three types of evidence you want excluded, the old
`
`evidence, the new evidence and some evidence related to
`
`whether they used the right compounds to make their
`
`compositions. Let's talk about the last one first. Why is
`
`that not proper reply? You say they didn't use the same
`
`compound, they come back and they testify, yes, we did,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`because A really is B because it has the same CAS number.
`
`11
`
`Are we all square on what CAS number is?
`
`12
`
`13
`
`MR. MAHONEY: Yes.
`
`JUDGE McKELVEY: The numbers that are
`
`14
`
`assigned to the same compound, it' s a subject you can almost
`
`15
`
`take official notice of. I don't think there's any testimony
`
`16
`
`about what it means, but we all know what it means in
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
