Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 52
`Entered: November 18, 2013
`
`
`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 IPR2013-00043 (Patent 7,171,103)
`Case IPR2013-00044 (Patent 6,961,508)
`Case IPR2013-00045 (Patent 6,339,666)
`Case IPR2013-00046 (Patent 6,110,593)
`Case IPR2013-00047 (Patent 6,438,306)
`Case IPR2013-00048 (Patent 6,298,189)
`Case IPR2013-00049 (Patent 6,298,189)
`Case IPR2013-00050 (Patent 6,323,255)
`Case IPR2013-00052 (Patent 7,276,543)
`Case IPR2013-00053 (Patent 7,276,543)1
`
`Before GRACE KARAFFA OBERMANN, JENNIFER S. BISK,
`and SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`1 This decision addresses issues that are identical in the ten cases. We
`therefore exercise our discretion to issue one decision to be filed in each
`case. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 52
`Entered: November 18, 2013
`
`
`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 IPR2013-00043 (Patent 7,171,103)
`Case IPR2013-00044 (Patent 6,961,508)
`Case IPR2013-00045 (Patent 6,339,666)
`Case IPR2013-00046 (Patent 6,110,593)
`Case IPR2013-00047 (Patent 6,438,306)
`Case IPR2013-00048 (Patent 6,298,189)
`Case IPR2013-00049 (Patent 6,298,189)
`Case IPR2013-00050 (Patent 6,323,255)
`Case IPR2013-00052 (Patent 7,276,543)
`Case IPR2013-00053 (Patent 7,276,543)1
`
`Before GRACE KARAFFA OBERMANN, JENNIFER S. BISK,
`and SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`1 This decision addresses issues that are identical in the ten cases. We
`therefore exercise our discretion to issue one decision to be filed in each
`case. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`
`
`
`
`
`
`DECISION
`On DSM’s Motion to File Supplemental Information and
`Motion to Compel Compliance with the Decision of June 21, 2013
`37 C.F.R. §§ 42.123(b), 42.120, and 42.52
`
`
`
`On November 8, 2013, counsel for Corning and DSM participated in a
`
`conference call with Judges Bisk and Obermann. DSM initiated the
`
`conference call to request permission to (1) file a Patent Owner’s
`
`Supplemental Response addressing late-produced information supplied by
`
`Corning on October 25, 2013; (2) file a Supplemental Declaration of
`
`Professor Christopher Bowman in support of the requested Patent Owner’s
`
`Supplemental Response; and (3) compel Corning to produce laboratory
`
`protocol and underlying data related to the late-produced information, which
`
`in DSM’s view, falls within the scope of discovery mandated in our decision
`
`of June 21, 2013.
`
`This decision addresses each of these issues.
`
`
`
`1. Patent Owner’s Supplemental Response
`
` DSM asserts, and Corning does not challenge persuasively, the
`
`following facts. On October 25, 2013—two months after DSM filed its
`
`Patent Owner’s Response and one business day before the deposition of
`
`Professor Bowman—Corning produced additional gel permeation
`
`chromatography (“GPC”) spectra that characterize oligomers synthesized in
`
`an attempt to replicate certain prior art. These spectra are dated between
`
`May 2011 and August 2012, and fall within the scope of discovery set forth
`
`in our decision of June 21, 2013, wherein we ordered Corning to produce
`
`“[l]aboratory notebooks and other documents containing protocols followed
`
`
`
`2
`
`
`
`
`
`in creating and testing the compositions and the underlying data for the test
`
`results.” Decision entered June 21, 2013.
`
`In DSM’s view, these late-produced GPC spectra contain information
`
`that goes to the heart of the merits of Corning’s inherency theory; therefore,
`
`as a direct result of Corning’s failure to produce the spectra during the Patent
`
`Owner’s discovery period, DSM was denied an opportunity to address the
`
`late-produced spectra in the Patent Owner’s Response.
`
`Based on the information presented, we determine that the GPC
`
`spectra produced by Corning on October 25, 2013 reasonably could not have
`
`been obtained earlier by DSM, and that consideration of that data is in the
`
`interests of justice. 37 C.F.R. § 42.123(b). We authorize DSM to file, by
`
`December 13, 2013, a Patent Owner’s Supplemental Response that may be
`
`supported by an exhibit consisting of any portion of the deposition transcript
`
`of Professor Bowman. The Patent Owner’s Supplemental Response shall be
`
`limited to addressing the late-produced GPC spectra, as well as any
`
`additional documents produced by Corning in response to this decision.
`
`The Patent Owner’s Supplemental Response shall not exceed five
`
`pages, plus one additional page in which DSM may provide any case-
`
`specific information. DSM shall file the identical Patent Owner’s
`
`Supplemental Response in each of the ten cases in which it is relevant,
`
`varying from the others only by its caption and by the additional page of
`
`case-specific information.
`
`Corning may file a five-page Reply to Patent Owner’s Supplemental
`
`Response, limited to addressing the issues raised therein, by
`
`December 20, 2013. The Reply to Patent Owner’s Supplemental Response
`
`shall not exceed five pages, plus one additional page in which Corning may
`
`provide any case-specific information. Corning shall file the identical Reply
`
`
`
`3
`
`
`
`
`
`to Patent Owner’s Supplemental Response in each of the ten cases in which
`
`the Patent Owner’s Supplemental Response was filed, varying from the
`
`others only by its caption and by the additional page of case-specific
`
`information.
`
`
`
`2. Supplemental Declaration of Professor Bowman
`
` DSM requests permission to file a Supplemental Declaration of
`
`Professor Bowman in support of the requested Patent Owner’s Supplemental
`
`Response. On the one hand, we agree with DSM that Corning’s failure to
`
`produce the additional GPC spectra in a timely manner denied DSM the
`
`opportunity to have Professor Bowman opine upon that information in his
`
`declarations of record. See, e.g., IPR2013-00043 Ex. 2030. On the other
`
`hand, the spectra were provided to DSM one business day prior to Professor
`
`Bowman’s deposition, during which he, presumably, was questioned about
`
`the factual bases for his opinions pertaining to Corning’s inherency theory.
`
`See, e.g., id.
`
`Based on the particular facts presented in this case, we are not
`
`persuaded that the interests of justice, which favor allowing a supplemental
`
`declaration, are greater than the interests of economy and efficiency, which
`
`weigh against allowing such a filing. Specifically, opening the door to
`
`additional testimony and cross-examination at this late stage of the
`
`proceeding is a remedy out of proportion to DSM’s demonstrated need for
`
`such a filing, and would likely derail the schedule set in this case. DSM is
`
`provided an opportunity to argue the relevance of the late-produced GPC
`
`spectra in a supplemental response as discussed above, and may file as an
`
`exhibit thereto any portion of the transcript of Professor Bowman’s
`
`deposition testimony.
`
`
`
`4
`
`
`
`
`
`3. Request to Compel Discovery
`
` DSM seeks to compel Corning to produce additional material related
`
`to the late-produced GPC spectra. Specifically, DSM seeks the laboratory
`
`protocol followed in performing Corning’s GPC analysis of the respective
`
`oligomers as well as the underlying data files. Here again, DSM argues that
`
`the requested information goes to the heart of the merits of Corning’s
`
`inherency theory. In particular, DSM argues that the spectra, produced by
`
`Corning on October 25, 2013, omit a region that identifies low-molecular-
`
`weight unreacted components, or impurities, which materially affect the
`
`performance of the coatings. According to DSM, the presence of peaks in
`
`that region would cast doubt on whether the oligomers were made in
`
`accordance with the disclosure of the prior art.
`
`We agree with DSM that, to the extent that such information exists, it
`
`falls squarely within the scope of discovery compelled in our decision
`
`entered June 21, 2013. During the conference call of November 8, 2013,
`
`upon direct questioning by the Board on this point, counsel for Corning
`
`presented no persuasive argument that the requested information falls
`
`outside the scope of that decision. In this regard, Corning simply alluded to
`
`(1) DSM’s failure to construe Corning’s discovery requests so broadly; and
`
`(2) DSM’s failure to follow up with a specific request for responsive
`
`documents, when the possibility that such documents exist was raised during
`
`a prior deposition.
`
`Corning’s allusions in this regard are not well taken, because neither
`
`of these circumstances in any way discharges Corning’s burden to comply
`
`with the terms of our decision compelling production. Specifically, no
`
`reasonable interpretation of our decision, wherein we ordered Corning to
`
`produce “[l]aboratory notebooks and other documents containing protocols
`
`
`
`5
`
`
`
`
`
`followed in creating and testing the compositions and the underlying data for
`
`the test results,” excludes the documents that are the subject of DSM’s
`
`present request. Decision entered June 21, 2013.
`
`Based on the particular facts presented in this case, we instruct
`
`Corning to produce the laboratory protocols and underlying data sought by
`
`DSM, or certify that none exists, by November 20, 2013. Specifically, by
`
`that date, counsel for Corning is directed to file a certification with the
`
`Board attesting that, upon reasonable search and inquiry, all discoverable
`
`laboratory protocol followed in performing Corning’s GPC analysis of the
`
`respective oligomers, as well as the underlying data files, have been
`
`produced or do not exist.
`
`
`
`4. Discovery Irregularities
`
`By November 20, 2013, upon Corning’s filing of the certification
`
`ordered herein, both parties in this proceeding will have been called upon to
`
`attest to their compliance with discovery ordered by the Board. See
`
`Decision entered November 1, 2013 (ordering DSM to file a certification in
`
`light of evidence that DSM several times delivered discoverable and
`
`responsive documents outside the time set for their production).
`
`It is clear that both parties have failed to discharge their duty to
`
`comply, fully and timely, with outstanding discovery orders during the
`
`course of this proceeding. Regardless of whether these were inadvertent or
`
`intentional failures, the Board intends to impose sanctions against the
`
`responsible parties for any discovery irregularities that occur after the date of
`
`this decision. See 37 C.F.R. § 42.12.
`
`
`
`
`
`
`
`6
`
`
`
`
`
`It is, therefore,
`
`ORDERED that DSM’s request to file a Patent Owner’s Supplemental
`
`Response is granted;
`
`FURTHER ORDERED that the Patent Owner’s Supplemental
`
`Response may be supported by an exhibit consisting of any portion of the
`
`deposition transcript of Professor Bowman;
`
`FURTHER ORDERED that the Patent Owner’s Supplemental
`
`Response shall be limited to addressing the late-produced GPC spectra, as
`
`well as any additional documents produced by Corning in response to this
`
`order;
`
`FURTHER ORDERED that the Patent Owner’s Supplemental
`
`Response shall be filed by December 13, 2013, and shall not exceed five
`
`pages, plus one additional page in which DSM may provide any case-
`
`specific information;
`
`FURTHER ORDERED that DSM shall file the identical Patent
`
`Owner’s Supplemental Response in each of the ten cases in which it is
`
`relevant, varying from the others only by its caption and by the additional
`
`page of case-specific information;
`
`FURTHER ORDERED that Corning may file a five-page Reply to
`
`Patent Owner’s Supplemental Response, limited to addressing the issues
`
`raised therein, by December 20, 2013;
`
`FURTHER ORDERED that the Reply to Patent Owner’s
`
`Supplemental Response shall not exceed five pages, plus one additional page
`
`in which Corning may provide any case-specific information;
`
`FURTHER ORDERED that Corning shall file the identical Reply to
`
`Patent Owner’s Supplemental Response in each of the ten cases in which the
`
`
`
`7
`
`
`
`
`
`Patent Owner’s Supplemental Response was filed, varying from the others
`
`only by its caption and by the additional page of case-specific information;
`
`FURTHER ORDERED that DSM’s request to file a supplemental
`
`declaration of Professor Bowman is denied;
`
`FURTHER ORDERED that DSM’s request to compel discovery is
`
`granted as to all discoverable laboratory protocol followed in performing
`
`Corning’s GPC analysis of the respective oligomers, as well as the
`
`underlying data files; and
`
`FURTHER ORDERED that Corning’s counsel shall file a
`
`certification as described in this decision by November 20, 2013.
`
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`PETITIONER:
`
`Michael L. Goldman
`Jeffrey N. Townes
`LeClairRyan, A Professional Corporation
`Michael.Goldman@leclairryan.com
`Jeffrey.Townes@leclairryan.com
`
`
`PATENT OWNER:
`Sharon A. Israel
`Joseph A. Mahoney
`Mayer Brown LLP
`SIsrael@mayerbrown.com
`JMahoney@mayerbrown.com
`
`
`
`9
`
`
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