Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 57
`Entered: December 9, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORNING INCORPORATED
`Petitioner
`
`v.
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`
`
`
`
`
`
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`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.
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`1 This Order addresses issues that arise in all ten cases. We therefore
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`

`

`
`
`DECISION
`On Request for Rehearing and Other Matters
`37 C.F.R. § 42.71
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`1. DSM’s Request for Rehearing
`
`DSM requests rehearing of the Board’s decisions, entered
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`November 18, 2013, in each of the above-captioned cases, denying DSM’s
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`motion to file a supplemental response declaration of Professor Christopher
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`Bowman with its Supplemental Response. The Board grants the requests to
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`the extent explained below.
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`In its initial motion, DSM requested leave to file a supplemental
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`response and supplemental response declaration by Professor Bowman to
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`address new gel permeation chromatography data that Corning produced to
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`DSM on October 25, 2013. In the November 18, 2013 decisions, we granted
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`DSM’s request for leave to file a supplemental response but denied DSM’s
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`request to file a supplemental response declaration by Professor Bowman.
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`We explained that the interest of justice favors allowing DSM to file a
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`supplemental response declaration by Professor Bowman, but that allowing
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`additional testimony and cross-examination at this stage would be disruptive
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`to the proceedings and was a remedy out of proportion to DSM’s need for
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`the supplemental response declaration.
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`DSM now argues, among other things, that since entry of the Board’s
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`decisions on November 18, 2013, Corning has produced more new gel
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`permeation chromatography data and protocols and submitted a declaration
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`of Dr. Dotsevi Y. Sogah directed to this newly-produced information, in
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`
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`2
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`

`

`
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`support of its Reply to DSM’s Response.2 DSM argues that the late
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`production of these materials prevented Professor Bowman from giving
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`testimony upon them in support of DSM’s Response to the Petition. DSM
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`now seeks leave to file a supplemental response declaration by Professor
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`Bowman directed to “issues raised by [Corning’s] late production” of the
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`data. DSM also seeks an extension of the deadline to file its Supplemental
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`Response and supplemental response declaration from December 13, 2013
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`to December 27, 2013.
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`DSM represents that it intends to file a reply declaration by Professor
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`Bowman in support of its Reply to Corning’s Opposition to DSM’s Motion
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`to Amend, and that Corning may cross-examine Professor Bowman on his
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`supplemental response declaration when it cross-examines him on his reply
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`declaration, so that concerns over economy and efficiency are moot. DSM
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`also seeks to limit briefing by Corning on this subject to motions for
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`observation regarding cross-examination.
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`Upon consideration of the changed circumstances occasioned by
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`Corning’s late production of relevant information, we are now persuaded
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`that DSM has shown sufficient need to justify the authorization of a
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`supplemental response declaration concerning the new information.
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`Professor Bowman’s testimony must be limited, however, to addressing the
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`newly-produced gel permeation chromatography information directly; it may
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`not be directed to other issues “raised” by Corning’s late production of the
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`data.
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`We are also persuaded that DSM’s proposed timing of the
`
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`2 It is not clear to us whether Dr. Sogah’s declaration actually addresses the
`newly-produced information, because DSM does not identify specific
`paragraphs in which the new information is discussed.
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`
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`3
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`

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`supplemental response declaration and cross-examination will not unduly
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`disturb the schedule for these proceedings.
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`We note that, although DSM has filed rehearing requests on the
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`above-described basis in proceedings IPR2013-00050 and -00052, Corning
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`did not file declarations by Dr. Sogah in those cases, and DSM’s Responses
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`in those cases do not appear to address any gel permeation chromatography
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`data. We are not persuaded, therefore, that DSM has demonstrated
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`sufficient need to justify filing a supplemental response declaration in those
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`two cases.
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`We deny DSM’s request for an extension of time. A request for an
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`extension of time requires a showing of good cause. 37 C.F.R. § 42.5(c)(2).
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`DSM does not explain why it requires the additional time, let alone show
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`good cause. Moreover, DSM’s requested due date of December 27, 2013
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`leaves an unreasonably short time—only four business days— for Corning
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`to conduct cross-examination of Professor Bowman and to prepare a motion
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`on observation of cross-examination, before Due Date 4 (January 6, 2014).
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`2. Authorization for DSM to file motion for observation regarding
`cross-examination
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`DSM submitted a request by email (copy attached) for a conference
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`call to seek authorization to file motions for observation regarding cross-
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`examination of certain Corning witnesses. DSM represents that Corning
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`does not oppose the request but wants to be able to reply to the motions.
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`In the interest of efficiency, we authorize DSM to file any motions for
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`observation regarding cross-examination of Corning reply witnesses by Due
`
`Date 4, and we authorize Corning to file replies to them by Due Date 5.
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`3. DSM’s request to expunge certain Corning evidence
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`Also in its email, DSM asked that the declaration of Clifford R.
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`
`
`4
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`

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`
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`Pollock, and certain paragraphs of the responsive declarations of Michael
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`Winningham, be expunged.
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`We dismiss DSM’s request. The appropriate mechanism is a Motion
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`to Exclude Evidence, authorization for which we gave in the Scheduling
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`Orders.
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`It is hereby
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`ORDERED that DSM’s Request for Rehearing is granted to the
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`extent that:
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`1. DSM is authorized to submit a supplemental response declaration
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`of Professor Christopher Bowman with its Supplemental Response
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`in IPR2013-00043, -00044, -00045, -00046, -00047, -00048, -
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`00049, and -00053;
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`2. The deadline for DSM to submit the Supplemental Response and
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`supplemental response declaration of Professor Bowman remains
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`set at December 13, 2013;
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`3. DSM is not authorized to submit a supplemental response
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`declaration of Professor Christopher Bowman with is
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`Supplemental Response in IPR2013-00050 or in IPR2013-00052;
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`4. The scope of Professor Bowman’s supplemental response
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`declaration in each case is limited to testimony upon gel
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`permeation chromatography data and protocols produced to DSM
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`by Corning on or after October 25, 2013;
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`5. If DSM submits any further declaration by Professor Bowman to
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`accompany its Supplemental Response or Reply, DSM shall make
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`Professor Bowman available for cross-examination by Corning
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`before Due Date 4;
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`6. The scope of cross-examination may not exceed that of the direct
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`
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`5
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`

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`
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`testimony in Professor Bowman’s supplemental response
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`declaration and in Professor Bowman’s reply declaration, if any;
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`7. Corning must submit any motion for observation regarding cross-
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`examination of Professor Bowman upon his supplemental
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`declaration and/or reply declaration by Due Date 4; and
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`8. Corning is not authorized to file any further briefing in these
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`proceedings beyond that already authorized in the Scheduling
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`Order or by rule, other than a Reply to each of DSM’s
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`Supplemental Responses;
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`FURTHER ORDERED that DSM is authorized to file any motions for
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`observation regarding cross-examination of Corning reply witnesses by Due
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`Date 4, and Corning is authorized to file replies to them by Due Date 5; and
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`FURTHER ORDERED that DSM’s request to expunge the Pollock
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`Declarations and portions of the Winningham Responsive Declarations is
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`dismissed.
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`6
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`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
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`7
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`
`
`From: Israel, Sharon A. [mailto:SIsrael@mayerbrown.com]
`Sent: Friday, December 06, 2013 12:07 PM
`To: Trials
`Cc: Goldman, Michael; Townes, Jeffrey N.; McGuirk, Richard A.; Merkel, Edwin V.; Mahoney,
`Joseph A.; Palmer, Erick J.; Friesen, Kyle
`Subject: Corning v. DSM IPRs 2013-00043-50 and 52 - Patent Owner request for conference call
`[MB-AME.FID949901]
`
`Dear Patent Trial and Appeal Board:
`
`Patent Owner DSM IP Assets B.V. requests a conference call with the Board
`in IPR 2013-00043-50, and 52 to conditionally request permission to file
`motions for observation on cross-examination of Petitioner’s five new
`declarants, the declarations for whom were filed on November 27,
`2013. Petitioner Corning Incorporated does not oppose the request, but
`stated that it reserves the right to respond to DSM’s observations.
`
`In addition, DSM would like to request that the Declaration of Clifford R.
`Pollock (e.g., Exhibit 1050 in IPR 2013-00044, and also filed in IPR2013-
`00043, 47, 52) and specific paragraphs of the Responsive Declaration of
`Michael Winningham (e.g., Exhibit 1057 in IPR 2013-00044, and also filed
`in IPR2013-00043, 45, 47-50, 52) be expunged from the record as
`inappropriate as reply evidence under 37 C.F.R. § 42.23(b). DSM contends
`that this material is directed solely to new evidence that should have been
`included with Corning’s petitions. Also, while DSM has served objections
`on Corning identifying other documents and testimony that it contends
`exceed the scope of what is permitted on reply, Corning disagrees that its
`submissions exceeds the scope of what is permitted. DSM requests the
`Board’s guidance procedurally on how to address evidence and arguments
`submitted by Corning that DSM contends exceed the scope of what is
`permissible on reply.
`
`We have conferred with counsel for Corning, copied on this email, and
`counsel for both parties are available on Monday, December 9 after 1 PM
`EDT. Patent Owner respectfully requests the Board identify a time for the
`requested conference call.
`
`Respectfully,
`
`Sharon Israel
`_______________________________
`Sharon A. Israel
`Mayer Brown LLP
`
`
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`8
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`sisrael@mayerbrown.com
`700 Louisiana Street, Suite 3400
`Houston, Texas 77002
`www.mayerbrown.com
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