throbber
Trials@uspto.gov Paper 84
`Tel: 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 IPR2013-00047
`Patent 6,438,306 B1
`_______________
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`McKELVEY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`

`

`IPR2013-00047
`Patent 6,438,306 B1
`
`I.
`
`
`INTRODUCTION
`A. Background
`This is a final written decision for IPR2013-00047.
`The petition (Paper 2 (“Pet.”)) challenges claims 1-14 (all the claims)
`of U.S. Patent No. 6,438,306 B1 (Ex. 1001) (“the ʼ306 patent”).
`DSM timely filed a preliminary response on February 20, 2013.
`Paper 10.
`On May 13, 2013, a panel of the Board granted the petition as to
`all proposed grounds of unpatentability urged in the petition. Paper 11
`(“Dec.”).
`The panel found that Corning had shown a reasonable likelihood that
`Corning would prevail with respect to the claims challenged in the petition
`on the following grounds:
`
`Claims Challenged
`1-14
`1-11
`1-9 and 12-14
`
`Reference(s)1
`Edwards2
`Coady
`Szum
`
`Basis
`§ 102
`§ 102
`§ 102
`
`After institution of trial, DSM filed (1) a patent owner response
`(Paper 40; “Response”) and (2) a supplemental response (Paper 65).
`
`
`1 The references are: (1) U.S. Patent No. 5,416,880 (Ex. 1002) (“Edwards”);
`(2) U.S. Patent No. 5,219,896 (Ex. 1003) (“Coady”); and (3) U.S. Patent No.
`5,664,041 (Ex. 1004) (“Szum”).
`
` 2
`
` Corning has abandoned its reliance on Edwards. Paper 54, p. 1 n.1.
`Accordingly, we do not further address Corning’s contentions based on
`Edwards.
`
`
` 2
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`IPR2013-00047
`Patent 6,438,306 B1
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`
`DSM did not file a motion to amend.
`Corning filed (1) a reply to DSM’s response (Paper 54 (“Reply”)) and
`(2) a supplemental reply (Paper 66).
`Both Corning and DSM filed motions to exclude. Paper 69 (DSM)
`and Paper 72 (Corning).
`Both motions to exclude were opposed. Paper 74 (DSM) and
`Paper 76 (Corning).
`Replies were also filed. Paper 79 (DSM ) and Paper 80 (Corning).
`Oral argument took place on February 11, 2014. See Paper 83.
`The Board has jurisdiction. 35 U.S.C. § 6(c).
`This final written decision is entered pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73.
`Corning has failed to show by a preponderance of the evidence that
`any of challenged claims 1-14 of the ʼ306 patent are unpatentable.
`B. Related proceedings
`Corning and DSM are simultaneously involved in nine other inter
`partes reviews based on patents claiming similar subject matter:
`(1) IPR2013-00043; (2) IPR2013-00044; (3) IPR2013-00045;
`(4) IPR2013-00046; (5) IPR2013-00048; (6) IPR2013-00049;
`(7) IPR2013-00050; (8) IPR2013-00052; and (9) IPR2013-00053.
`C. The ʼ306 patent
`The ʼ306 patent is titled “Radiation Curable Resin Composition” and
`
`relates to coated optical fiber having a cured coating prepared from a
`radiation curable composition said to have improved cure speed without
`deteriorating yellowing performance of the cured coating. Ex. 1001,
`1:11-14.
`
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`IPR2013-00047
`Patent 6,438,306 B1
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`
`
`The ’306 patent (2:51-65) explains:
`The present invention provides a coated optical fiber
`comprising a glass optical fiber with a single protective coating
`or a combination of an inner and an outer primary coating
`applied
`thereon and optionally with a colored coating
`subsequently applied thereon wherein the inner primary coating
`or at least a portion of the single coating is prepared from a
`radiation curable composition which when cured as a capillary
`film with a 100 W medium pressure mercury lamp has a
`percentage reacted acrylate unsaturation of at least about 54%
`after exposure to a dose of about 4.4 mJ/cm2 or wherein the
`outer primary coating is prepared from a radiation curable
`composition which when cured as a capillary film with a 100 W
`medium pressure mercury lamp has a percentage reacted
`acrylate unsaturation of at least about 56% after exposure to a
`dose of about 4.4 mJ/cm2.
`Claim 1 of the ʼ306 patent reads (paragraphing added):
`1. Coated optical fiber comprising a glass optical fiber
`
`
`
`
`
`with
`
`
`[1(a)] a single protective coating or
`
`[1(b)] a combination of an inner and an outer primary
`coating [composition] applied thereon and
`
`
`optionally with a colored coating subsequently
`[2]
`applied thereon
`
`
`[2(a)] wherein the inner primary coating or at least a
`portion of the single [protective] coating is prepared from a
`radiation curable composition which when cured as a capillary
`film with a 100 W medium pressure mercury lamp has a
`percentage reacted acrylate unsaturation [(%RAU)] of at least
`about 54% after exposure to a dose of about 4.4 mJ/cm2 or
`
`
`[2(b)] wherein the outer primary coating is prepared from
`a radiation curable composition which when cured has a
`
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`IPR2013-00047
`Patent 6,438,306 B1
`
`
`capillary film with a 100 W medium pressure mercury lamp has
`a percentage reacted acrylate unsaturation [(%RAU)] of at least
`about 56% after exposure to a dose of about 4.4 mJ/cm2.
`
`
`II. ANALYSIS
`
`A. Claim construction
`
`As a step in our analysis for determining whether the challenged
`claims are unpatentable, we determine the meaning of the claims. Paper 11,
`Dec. 4-5.
`
`Claims of an unexpired patent are interpreted using the broadest
`reasonable construction in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012).
`
`The dispositive claim limitations of the ʼ306 patent are limitations
`[2(a)] and [2(b)], as set out in claim 1 reproduced above.
`Corning has failed to prove by a preponderance of the evidence that
`the prior art inherently describes either limitation.
`Under the claim construction Corning proposed in its Petition
`(Pet. 14-16), Corning has failed to prove its case; accordingly, there is no
`occasion for further construction of the %RAU language of limitations [2(a)]
`and [2(b)] in claim 1.
`
`B. The position of the parties
`
`We understand that Corning and DSM agree that both Coady and
`Szum describe elements [1(a)], [1(b)], and [2], as set out in claim 1
`reproduced above.
`
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`IPR2013-00047
`Patent 6,438,306 B1
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`
`We further understand that Corning acknowledges that properties
`[2(a)] and [2(b)], as set out in claim 1 reproduced above, are not explicitly
`described by Coady or Szum ’041.
`
`However, Corning maintains that properties [2(a)] and [2(b)] are
`inherently described in compositions described by Coady (Coating Z) and
`Szum (Examples 4 and 5B). DSM disagrees.
`C. Pre-petition experiments
`
`
`Corning concedes that Coady and Szum do not explicitly describe the
`%RAU limitations set out in paragraphs [2(a)] and [2(b)] of claim 1 of the
`ʼ306 patent.
`
`Corning undertook pre-petition experimental tests in an attempt to
`establish that limitations [2(a)] and [2(b)] are inherently described in the
`prior art.
`However, Corning has abandoned, and no longer relies on, its
`pre-petition experimental work. Paper 83, p. 33:18 to p. 34:5.
`
`Accordingly, we do not address evidence and argument related to the
`sufficiency of Corning’s pre-petition experiments relied upon in the petition.
`
`D. Post-DSM Response experiments
`To overcome perceived deficiencies in its case, with its Reply
`Corning submitted (1) evidence based on post-petition experimental tests
`and (2) testimony of three witnesses who did not testify in support of the
`Petition (hereinafter “new” evidence”).
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`IPR2013-00047
`Patent 6,438,306 B1
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`
`
`In its motion to exclude, DSM asks us not to consider the “new”
`evidence. Paper 69, 1-2.3
`E. Analysis of the “new” evidence
`1. “New” evidence
`
`
`The “new” evidence which DSM asks us not to consider includes
`material we identify as Items 1-3.
`Item 1 relates to pre-petition tests relied upon by Corning in support
`of its petition.
`Since Corning no longer relies on its pre-petition experimental tests,
`we do not need to consider the admissibility of the pre-petition experimental
`tests.
`
`DSM’s motion to exclude will be dismissed as to Item 1.
`Item 2 relates to opinions of Dr. Sogah relating to the appropriateness
`
`of certain chemical substitutions made by Corning when it undertook
`experiments to reproduce Coating Z, as described by Coady. See Ex. 1060
`¶¶ 79-82).
`
`
`3 Challenging evidence as being improper reply evidence through a motion
`to exclude is now disfavored. Liberty Mutual Ins. Co. v. Progressive
`Casualty Ins. Co., CBM2012-00002, Paper 66), 62:1-4 (PTAB Jan. 23,
`2014) (“[w]hile a motion to exclude may raise issues related to admissibility
`of evidence, . . . [it] is not a mechanism to argue that a reply . . . relies on
`evidence necessary to make out a prima facie case.”). We consider DSM’s
`challenge in this case only because we instructed DSM to file a motion to
`exclude. Paper 57, 4-5 (Dec. 9, 2013). A motion to exclude similar to that
`filed by DSM in this case may not be permitted in future cases. The proper
`way to challenge “new” evidence in a reply is to bring it to the Board’s
`attention in a conference call or during oral argument.
`
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`IPR2013-00047
`Patent 6,438,306 B1
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`
`According to DSM, the Sogah opinions (1) raise new issues,
`(2) present new evidence, and (2) improperly rely on patent disclosures to
`prove the truth of matters asserted therein.
`Item 3 relates to “New %RAU Data” presented with Corning’s Reply.
`The “New %RAU Data” refers to evidence relating to Corning’s
`%RAU testing conducted after Corning submitted its Petition and includes
`(1) Paragraphs 33-48, the last two sentences of Paragraph 55, and
`Paragraphs 56-83 of the Responsive Winningham Declaration (Ex. 1027),
`(2) Paragraphs 24-49 of a Pollack Declaration (Ex. 1028), including his
`opinions relating to whether the light-curing systems Corning used for its
`%RAU testing fall within the scope of the claims of the ʼ306 patent,
`(3) Exhibits 1035-1052 and 1058, (4) at least Paragraph 106 of the Sogah
`Declaration (Ex. 1060), and (5) a Reichmanis Declaration in its entirety.
`Paper 69, p. 1 n.2.
`
`2. Petition
`
`The %RAU limitations in the claims of the ʼ306 patent are not
`explicitly described in the Coady or Szum ’041 patents.
`To overcome the lack of an explicit disclosure, with its Petition,
`Corning submitted the direct declaration testimony of (1) Ms. Inna I.
`Kouzmina (Ex. 1006) and (2) Dr. Michael Winningham (Ex. 1005).
`The testimony is said to establish that %RAU limitations are
`inherently described in Coady and Szum.
`The testimony is based in part on pre-petition experimental testing of
`Coady Coating Z. Ex. 1006 ¶ 19; Ex. 1003, Table IV.
`In describing the testing, Kouzmina acknowledged that there are two
`differences between (1) the composition tested and (2) the composition
`
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`IPR2013-00047
`Patent 6,438,306 B1
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`described by Coady: (1) Nippollan-981 was used in place of Permanol
`KM10-1733 (said to be no longer commercially available), and
`(2) Photomer 4066 was used in place of Aronix M-113. Ex 1006 ¶ 20 n.2
`and ¶ 21 n.3.
`Kouzmina further testified with respect to pre-petition experimental
`testing of compositions described in Example 4 and Example 5B of Szum.
`Ex. 1006 ¶¶ 22-28; Ex. 1004, col. 11 (Example 4) and cols. 11-12 (Example
`5B—see Table 1).
`Kouzmina still further described a protocol for testing the reproduced
`Coady and Szum compositions for %RAU. Ex. 1006 ¶¶ 29-40.
`Based on the pre-petition protocol and testing, Kouzmina concluded
`that Coady Coating Z and the compositions of Examples 4 and 5B of
`Szum meet the %RAU limitations set out in the claims of the ʼ306 patent.
`Ex. 1006 ¶40.
`Winningham agreed with the Kouzmina protocol and %RAU test
`results. Ex. 1005 ¶¶ 61-62.
`3. DSM’s Preliminary Response
`DSM timely filed a Preliminary Response. Paper 10.
`A patent owner may present argument and documentary evidence in
`support of a Preliminary Response.
`However, the rules do not authorize the patent owner to “present new
`testimony evidence beyond that already of record . . . .” 37 C.F.R.
`§ 42.107(c).
`In its Preliminary Response, DSM argued that the Kouzmina “tests
`and calculations regarding %RAU are . . . defective” for not following the
`
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`IPR2013-00047
`Patent 6,438,306 B1
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`calculation method laid out in the ’306 patent and for not disclosing the test
`data underlying the calculations. Paper 10, 2, 14-17, 19-20, 22.
`4. Decision to institute
`In due course, a panel entered a decision to institute this inter partes
`review. Paper 11.
`The Board addressed, but on the record presented at that time declined
`to accept, DSM’s preliminary response %RAU arguments. See, e.g.,
`Paper 11, 6, 8, 10-13, 15.
`5. DSM’s Response
`Prior to filing the Response, DSM cross-examined Kouzmina
`(Exs. 2019-23) and Winningham (Exs. 2024-28).
`Thereafter, DSM timely filed a Response. Paper 10.
`In support of its Response, DSM offered the direct declaration
`testimony of Dr. Christopher N. Bowman. Ex. 2029.
`
`Based at least in part on Bowman’s testimony, the Response
`challenged Corning’s %RAU tests results as being “fatally flawed.”
`Response, Paper 40, 8; see also Ex. 2029 ¶¶ 50-66 (%RAU discussion).
`DSM’s challenge addressed inter alia (1) a need for a linear
`relationship between dose and exposure time (Paper 10, 22-25) and
`(2) proportionality of dose versus time (Paper 10, 25-32).
`
`
`6. Corning’s Reply
`
`The rules authorize a petitioner to file a Reply to a patent owner’s
`Response. 37 C.F.R. § 42.23(a); 37 C.F.R. § 42.120.
`In its Reply, Corning states that “[u]pon review of the issues raised by
`DSM, an inquiry was made [by Corning] to determine whether there were
`
`
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`IPR2013-00047
`Patent 6,438,306 B1
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`any potential errors in the way . . . exposure times were determined.”
`Paper 54, 7.
`Exposure conditions are relevant to measuring %RAU.
`Two sources of error are said to have been identified. Paper 54, 7.
`See also Ex. 1027 ¶¶ 52-55 (explaining why additional %RAU testing was
`performed on (1) Coady Coating Z and (2) the compositions of the
`Examples 4 and 5B of Szum).
`In support of its Reply, Corning offered the direct declaration
`testimony of three new witnesses:
`(1) Dr. Clifford R. Pollock (Ex. 1028);
`(2) Ms. Elsa Reichmanis (Ex. 1059); and
`(3) Dr. Dotsevi Y. Sogah (Ex. 1060).
`According to Corning, the testimony directly responds to concerns
`
`expressed by DSM through Bowman.
`Based on the new testimony, Corning attempts to explain why
`(1) additional %RAU testing establishes that the Coady and Szum
`compositions inherently meet the %RAU limitations of the ʼ306 patent
`claims and (2) substitution of ingredients to make the Coady Coating Z
`composition was appropriate.
`DSM cross-examined (1) Pollack (Ex. 2062), (2) Reichmanis
`(Exs. 2076-77) and (3) Sogah (Ex. 2064-65).
`In addition to discussion in papers associated with DSM’s motion to
`exclude, DSM’s request that we not consider the “new” evidence was
`discussed at oral argument with questioning by all judges.
`In considering DSM’s request that we not consider the “new”
`evidence, we limit our analysis to (1) the exhibits and (2) the paragraphs of
`
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`IPR2013-00047
`Patent 6,438,306 B1
`
`the Kouzmina, Winningham, and Sogah declarations specifically identified
`by DSM in its motion to exclude.
`7. DSM position on Item 2
`DSM argues that Sogah’s testimony addressing substitution of
`(1) Nippollan-981 for Permanol KM10-1733 and (2) Photomer 4066 for
`Aronix M-133—used to reproduce Coady Composition Z—should not be
`considered.
`
`Sogah testified that it was appropriate to substitute Nippollan N-981
`for Permanol KM10-1733 because each has the same CAS Registry
`Number 24937-06-2 and generic formula and therefore are the same
`component. Ex. 1060 ¶ 80.
`Sogah also testified based on (1) WO 1992/008747 A1 (Ex. 1062) and
`(2) knowledge of the structure of the polycarbonate diol, that he was able to
`estimate the number of repeating units and that Permanol KM10-1733 has a
`molecular weight of 981. Id.
`Sogah suggested that the 981 in Nippollan N-981 may be a
`designation of molecular weight.
`According to Sogah, it is sometimes industry practice to use numbers
`in product names to designate molecular weight.
`
`Sogah testified that Coady describes Aronix M-113 as having the
`same structure as Photomer 4003. Ex. 1060 ¶ 81; Ex. 1003 (Table IV
`“Photomer 4003***” and “*** [s]ame structure as Aronix M-113”).
`Sogah further testified that the CAS registry number for Photomer
`4066 is the same as that of Photomer 4003.
`
`
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`
`Based on Coady and the CAS numbers, Sogah opined that Photomer
`4066 (used by Corning) is the same as Aronix M-113 (described as having
`been used by Coady). Ex. 1060 ¶ 81.
`We understand CAS registry number to be a unique numerical
`identifier assigned by the Chemical Abstracts Service to chemical substances
`described in the open scientific literature, including organic compounds. See
`Paper 83, 24:8-18.
`
`We find that Sogah has not relied on Coady to prove the truth of
`statements set out therein.
`Rather, Sogah relies on what is described by Coady to explain the
`underlying basis of his opinion that two components with different names
`are the same component.
`The same is true of Sogah’s reliance on the WO 92/008747 A1
`(Ex. 1062).
`The weight to be given the opinion based on Coady and the PCT
`publication is another matter.
`Corning offered Coady to provide underlying support for Sogah’s
`opinion. FED. R. EVID. 703.
`Sogah’s testimony is proper reply testimony. Cf. Liberty Mutual Ins.
`Co., supra n.3 at 65 (“To rebut Mr. Ehsani’s assertions regarding Kosaka’s
`Figures 10 and 11, it would be reasonable for Mr. Andrews’s rebuttal
`testimony to address those same figures.”) (italics added).
`We decline DSM’s request to exclude the Item 2 evidence.
`8. DSM position on Item 3
`According to DSM, the “new” %RAU analysis should not be
`
`considered for at least the following reasons.
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`IPR2013-00047
`Patent 6,438,306 B1
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`First, Corning is relying on the “new” %RAU analysis to make out a
`
`“prima facie” case of unpatentability.
`Second, the “new” %RAU analysis could, and should, have been
`
`presented with the Petition.
`Third, because the “new” %RAU analysis was not presented with the
`
`Petition, DSM has had no opportunity to respond to the evidence that now
`goes to the heart of Corning’s allegations of unpatentability.
`
`
`9. Discussion
`The rationale urged for non-consideration is based on our trial rules,
`including our rule relating to replies. 37 C.F.R. § 42.23(b) (“A reply may
`only respond to arguments raised in the . . . patent owner response.”).
`
`Practice relating to replies is addressed in our Office Patent Trial
`Practice Guide. 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012):
`A reply may only respond to arguments raised in the
`corresponding opposition [, in this case DSM’s response].
`[37 C.F.R.] § 42.23. While replies can help crystalize issues for
`decision, a reply that raises a new issue or belatedly presents
`evidence will not be considered and may be returned. The
`Board will not attempt to sort proper from improper portions of
`the reply. Examples of indications that a new issue has been
`raised in a reply include new evidence necessary to make out a
`prima facie case for the patentability or unpatentability of an
`original or proposed substitute claims, and new evidence that
`could have been presented in a prior filing.
`
`There came a time when Corning says it made an inquiry “to
`
`determine whether there were any potential errors in the way . . . exposure
`times [to ascertain %RAU’s] were determined.” Paper 54, 7.
`Two sources of error are said to have been identified, albeit when the
`errors were identified is not entirely clear. Paper 54, 8; Ex. 1027 ¶¶ 51-55.
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`According to Winningham (Ex. 1027, ¶ 55):
`As a result of the limitations associated with using the
`EPM2000/PM3 meter in energy mode to measure such low
`doses and the error in not factoring in the beam area, the
`exposure times required to achieve the measured 2.9 mJ/cm2
`and 4.4 mJ/cm2 doses as determined using the EPM200/PM3
`meter were overstated.
`
`As a result, “too high a dose was used.” Paper 54, 8.
`
`It was only after DSM raised issues associated with proper %RAU
`
`testing that Corning submitted “new” arguments based on “new” evidence
`with its Reply.
`Corning argues that the “new” evidence addresses points made in
`DSM’s Response.
`But, unexplained by Corning is when DSM was to have an
`opportunity to develop and submit “new” rebuttal evidence.
`Belated submission by Corning of its Item 3 “new” evidence at the
`reply stage in this inter partes review strikes us as prejudicial to DSM.
`
`The reader may wonder: Can any evidence be submitted with a reply?
`The answer is “yes.” See Liberty Mutual Ins. Co., supra n. 3 at 65.
`In the case before us, both Winningham and Kouzmina testified that
`
`the substitution of ingredients in reproducing Coady Coating Z was proper.
`Ex. 1005 ¶ 57 n.3; Ex 1006 ¶¶ 20 n.2 and 21 n.3.
`
`In its Response, DSM challenged Winningham and Kouzmina.
`
`In particular, DSM noted that substitutions were made in reproducing
`Coady Coating Z, yet modulus measurements resulted in different modulus
`numbers. Paper 47, 41.
`
`
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`The implication is that the modulus measurements should have
`resulted in the same modulus.
`
`To respond to a supposed difference in modulus measurements,
`Corning offered rebuttal testimony of Sogah. Paper 54, 14.
`First, Sogah testified that the ingredients substituted for the Coady
`
`listed ingredients have the same CAS Registry Number and therefore are the
`same ingredients. Ex. 1060 ¶ 81.
`Second, Sogah testified that Coady Coating Z modulus is a “Young’s
`
`modulus, secant modulus, or segment modulus.” Id. ¶ 83.
`The modulus reported by Corning is an “equilibrium modulus.” Id.
`Hence, Sogah would have expected reported modulus values to be
`different.
`
`The Sogah testimony responds to testimony relied upon by DSM.
`On the other hand, the Corning Item 3 “new” evidence sought to be
`“excluded” relies on post-petition and post-patent owner response %RAU
`testing using a protocol different from that use for the %RAU testifying
`offered with the Petition.
`It is true that both the “old” evidence and the “new” evidence
`generally relate to %RAU testing.
`However, the basis for establishing %RAU inherency in Corning’s
`Reply is a new protocol (i.e., a new theory) for %RAU testing.
`It does more than merely respond to, or rebut, points made in DSM’s
`Response.
`The new protocol, in effect, restarts the case.
`To permit consideration of the “new” evidence would, in our
`judgment, be unfair to DSM—absent a possible rebuttal period which might
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`have been ordered had Corning timely sought leave to file supplemental
`information.
`We do not believe it to be in the interest of justice at this late stage of
`the case to impose additional financial expense on DSM to respond to the
`“new” evidence it asks us not to consider.
`As will become apparent, our decision not to consider the “new”
`evidence submitted for the first time in Corning’s Reply is dispositive of the
`case on the merits.
`Inter partes review proceedings must be fair to both parties, including
`a patent owner—where properties rights can be extinguished through
`cancellation of patent claims.
`The Director has established rules designed to secure the just, speedy,
`and inexpensive resolution of trials in inter partes review proceedings.
`37 C.F.R. § 42.1(b).
`
`We interpret the rules (as well as our Office Patent Trial Practice
`Guide) in the context of proceedings before the Board. Cf. FirstHealth, Inc.
`v. CareFirst, 479 F.3d 825, 829 (Fed. Cir. 2007) (The TTAB has discretion
`to reasonably interpret the meaning of “excusable neglect” in the context of
`its own regulations. (citing Thomas Jefferson Univ. v. Shalala, 512 U.S.
`504, 512 (1994) (An agency’s interpretation of its own regulation is given
`controlling weight unless it is plainly erroneous or inconsistent with the
`regulation.)).
`
`Based on our interpretation of our rules, we have determined that
`Corning’s “new” evidence in support of its unpatentability position should
`not be considered.
`
`In the context of the facts of this case, we hold that:
`
`17
`
`
`
`

`

`IPR2013-00047
`Patent 6,438,306 B1
`
`
`(1) Corning’s “new” evidence, and arguments based thereon,
`respond to more than the arguments made in DSM’s Response, and
`instead effectively “restarts the case”;
`(2) After the Reply stage of the proceeding, DSM did not
`have a “fair” opportunity, and should not now be required to spend
`additional recourses, to develop and present counter evidence; and
`(3) Corning’s “new” evidence was not properly submitted
`under our rules and will be denied consideration.
`F. Resolution of case
`
`Corning has no viable evidence upon which it can rely to sustain its
`
`burden of establishing that the %RAU limitations of the claims of the ‘306
`patent are inherently described in Coady or Szum.
`
`Based on the evidence entitled to be considered, Corning has not
`established that the %RAU limitation is inherently described by either
`Coady or Szum.
`As a result, Corning has failed to sustain its burden of proof.
`III. CORNING MOTION TO EXCLUDE
`
`Corning has filed a motion to exclude evidence offered by DSM.
`Paper 72.
`
`DSM has opposed. Paper 74.
`
`Corning filed a reply. Paper 80.
`
`Because Corning has failed to make out a case for relief, we have not
`found it necessary to consider the DSM evidence sought to be excluded in
`Corning’s motion to exclude.
`Accordingly, Corning’s motion to exclude will be dismissed.
`
`
`
`
`
`18
`
`

`

`IPR2013-00047
`Patent 6,438,306 B1
`
`JUDGMENT
`IV.
`Upon consideration of the record, and for the reasons given, it is:
`
`ORDERED that Corning’s request for cancellation of claims 1-14 of
`
`the ʼ306 patent is denied;
`
`FURTHER ORDERED that Corning’s motion to exclude is
`dismissed;
`
`FURTHER ORDERED that DSM’s motion to exclude is
`(1) dismissed at to Item 1, (2) denied as to Item 2, and (3) granted as to
`Item 3.
`
`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.
`
`
`
`
`
`
`19
`
`

`

`IPR2013-00047
`Patent 6,438,306 B1
`
`PETITIONER:
`
`Michael Goldman
`Michael.goldman@leclairryan.com
`
`Jeffrey Townes
`Jeffrey.townes@leclairryan.com
`
`Edwin Merkel
`Edwin.merkel@leclairryan.com
`
`
`PATENT OWNER:
`
`Sharon Israel
`sisrael@mayerbrown.com
`
`Joseph Mahoney
`jmahoney@mayerbrown.com
`
`
`
`
`
`
`
`
`20
`
`

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