Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 94
`Entered: May 9, 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 IPR2013-00048
`Patent 6,298,189 B1
`_______________
`
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 94
`Entered: May 9, 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 IPR2013-00048
`Patent 6,298,189 B1
`_______________
`
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Case IPR2013-00048
`Patent 6,298,189 B1
`
`
`
`
` INTRODUCTION I.
`
`A. Background
`
`Petitioner Corning Incorporated (“Corning”) filed a petition (Paper 6,
`
`“Pet.”) to institute an inter partes review of claims 1-52 (the “challenged
`
`claims”) of U.S. Patent No. 6,298,189 B1 (Ex. 1001 (the “’189 patent”)).1
`
`The Board instituted trial for the challenged claims on the following grounds
`
`of unpatentability asserted by Corning:
`
`Reference(s) 2
`
`A. Shustack
`
`B. Shustack
`
`C. Szum ’928
`
`§ 102
`
`D. Shustack and
`Jackson
`Combination A, B, C,
`or D; and Chawla
`Combination A, B, C,
`or D; and Hager
`Combination A, B, C,
`or D; and Tortorello
`
`§ 103
`
`4, 8, 12, 16, 40, 48, and 52
`
`§ 103
`
`17-20
`
`§ 103
`
`21-24
`
`§ 103
`
`25-28
`
`
`1 Case IPR2013-00049 concerns claims 53-66 of the ’189 patent.
`2 The petition relies on the following references: U.S. Patent No. 5,352,712
`(Ex. 1003 (“Shustack”)); WO 95/15928 (Ex. 1005 (“Szum ’928”)); U.S.
`Patent No. 4,900,126 (Ex. 1007 (“Jackson”)); U.S. Patent No. 5,696,179
`(Ex. 1008 (“Chawla”)); U.S. Patent No. 5,182,784 (Ex. 1009 (“Hager”));
`U.S. Patent No. 5,847,021 (Ex. 1010 (“Tortorello”)); WO 97/46380
`(Ex. 1011 (“Botelho”)); U.S. Patent No. 4,707,076 (Ex. 1012 (“Skutnik”));
`and U.S. Patent No. 5,408,564 (Ex. 1013 (“Mills”)).
`
` 2
`
`
`
`
`
`Basis
`
`Claims challenged
`
`§ 102
`
`§ 103
`
`1-3, 5-7, 9-11, 13-15, 37-39,
`45-47, and 49-51
`1-3, 5-7, 9-11, 13-15, 37-39,
`45-47, and 49-51
`1, 5, 9, 13, 37, 45, and 49
`
`
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`Case IPR2013-00048
`Patent 6,298,189 B1
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`
`Combination A, B, C,
`or D; and Botelho
`Combination A, B, C,
`or D; and Skutnik
`Combination A, B, C,
`or D; and Mills
`
`§ 103
`
`29-32
`
`§ 103
`
`33-36
`
`§ 103
`
`41-44
`
`Decision to Institute 3-4 (Paper 15, “Dec.”).
`
`After institution of trial, Patent Owner DSM IP Assets B.V. (“DSM”)
`
`filed a Patent Owner Response (Paper 46, “Resp.”), and Corning filed a
`
`Reply to the Patent Owner Response (Paper 65, “Reply”). DSM filed a
`
`Supplemental Response (Paper 74, “Supp. Resp.”) with leave of the Board,
`
`and Corning filed a Supplemental Reply (Paper 75, “Supp. Reply”). DSM
`
`filed a Motion for Observations on Cross-Examination of Corning Reply
`
`Declarants (Paper 78, “Obs.”), and Corning filed a Response to the
`
`Observations (Paper 86, “Obs. Resp.”).
`
`DSM also filed a Motion to Amend Claims (Paper 47, “Motion to
`
`Amend”). In it, DSM proposed claims 67, 68, 69, and 70 to substitute for
`
`patented claims 6, 7, 14, and 15, respectively. Motion to Amend 1-6.
`
`Corning filed an Opposition to the Motion to Amend Claims (Paper 64,
`
`“Opp.”). DSM filed a Reply to the Opposition (Paper 76, “Motion Reply”).
`
`DSM also filed a Motion to Exclude certain of Corning’s evidence
`
`(Paper 79, “PO Motion to Exclude”). Corning filed an Opposition (Paper
`
`85, “PO Excl. Opp.”), and DSM filed a Reply (Paper 89, “PO Excl. Reply”).
`
`Corning filed a Motion to Exclude certain of DSM’s evidence (Paper 82,
`
`“Pet. Motion to Exclude”). DSM filed an Opposition (Paper 84), and
`
`Corning filed a Reply (Paper 90).
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` 3
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`Case IPR2013-00048
`Patent 6,298,189 B1
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`
`Corning relies upon declarations of Dr. Michael Winningham
`
`(Ex. 1014) and Ms. Inna Kouzmina (Ex. 1015) in support of its Petition.
`
`DSM relies upon declarations of Dr. Christopher Bowman (Ex. 2034) and
`
`Dr. Carl Taylor (Ex. 2032) in its Response, along with a deposition of
`
`Dr. Winningham (Exs. 2027-2031) and portions of Ms. Kouzmina’s
`
`deposition (Exs. 2024-26). Corning relies upon declarations of
`
`Dr. Jiann-Wen Woody Ju (Ex. 1035) and Dr. Dotsevi Sogah (Ex. 1068), a
`
`responsive declaration of Dr. Winningham (Ex. 1078), along with
`
`depositions of Dr. Bowman (Exs. 1070-72, 1075-77) and Dr. Taylor
`
`(Exs. 1045-47) and a portion of Ms. Kouzmina’s deposition (Ex. 1044) in its
`
`Reply. DSM relies upon a supplemental declaration of Dr. Bowman in its
`
`Supplemental Response (Ex. 2055). Corning relies upon depositions of
`
`Dr. Winningham (Ex. 1080)3 and Dr. Dotsevi Sogah (Ex. 1079) in its
`
`Supplemental Reply. DSM relies upon depositions of Dr. Winningham (Ex.
`
`2085), Dr. Sogah (Exs. 2073-74), and Dr. Ju (Exs. 2087-88) in its Motion
`
`for Observations on Cross-Examination of Corning Reply Declarants.
`
`Oral argument was conducted on February 11, 2014. A transcript is
`
`entered as Paper 93 (“Tr.”). Both parties indicated during oral argument that
`
`the oral argument in case IPR2013-00045 relates to this proceeding as well.
`
`Tr. 3:12-14; 24:19-21. The transcript for case IPR2013-00044 is entered as
`
`Paper 89 in that proceeding.
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`3 Ex. 1080 is a rough transcript. DSM submitted an official transcript as
`Ex. 2088.
`
` 4
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`Case IPR2013-00048
`Patent 6,298,189 B1
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`Corning has proved that claims 5, 13, 17, 29, 33, 37, 45, and 49 are
`
`unpatentable. Corning has not proved that claims 1-4, 6-12, 14-16, 18-28,
`
`30-32, 34-36, 38-44, 46-48, and 50-52 are unpatentable.
`
`DSM’s Motion to Amend Claims is denied without prejudice.
`
`Corning’s Motion to Exclude Evidence is dismissed.
`
`DSM’s Motion to Exclude Evidence is dismissed-in-part and denied-
`
`in-part.
`
`B. The Invention
`
`The ’189 patent generally relates to radiation-curable coating
`
`compositions for optical glass fibers commonly used in data transmission.
`
`Ex. 1001, 1:18-19. In particular, the patent describes optical glass fibers
`
`coated with two radiation-cured coatings. Id. at 1:26-27. An inner primary
`
`coating contacts the glass surface of the fiber. Id. at 1:28-30. An outer
`
`primary coating overlays the inner coating. Id. For identification purposes,
`
`the outer primary coating may include colorant or, alternatively, a third
`
`colored layer, called an ink coating, which is applied to the outer primary
`
`coating. Id. at 1:53-58. Figure 1, depicting such an optical glass fiber, is
`
`reproduced below.
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` 5
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`Figure 1, above, illustrates a longitudinal cross-sectional view of a
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`coated optical glass fiber 7 coated with an inner primary coating 8 and a
`
`commercially available outer primary coating 9. Id. at 8:8-9, 10:7-9.
`
`To create a cable or ribbon assembly, used in the construction of
`
`multi-channel transmission cables, a plurality of coated optical fibers are
`
`bonded together in a matrix material. Id. at 1:39-47. In order to connect the
`
`fibers of multiple ribbons, the surface of a glass fiber must be accessible.
`
`Id. at 1:53-2:6. This is often accomplished by a process known as “ribbon
`
`stripping”—removing the coatings and the matrix material, preferably as a
`
`cohesive unit. Id. The ’189 patent is directed to a ribbon assembly having
`
`improved ribbon stripping capabilities. Id. at 1:21-23.
`
`As described in the Background of the Invention, the prior art
`
`discloses ribbon assemblies composed of multiple optical glass fibers with
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`both an inner and outer coating and an optional outer ink layer. Id. at 4:64-
`
` 6
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`Case IPR2013-00048
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`5:4. The two compositions used as the inner and outer coatings are often
`
`modified to provide desired properties—providing bare optical glass fibers,
`
`which, when stripped, are substantially free of residue. Id.
`
`Claims 2 and 5, reproduced below, are illustrative of the claimed
`
`subject matter:
`
`2. A system for coating an optical glass fiber
`comprising a radiation-curable
`inner primary
`coating composition and a radiation-curable outer
`primary coating composition wherein:
`said
`inner primary
`coating
`composition
`comprises propoxylated nonyl phenol
`acrylate and an oligomer having at least one
`functional group capable of polymerizing
`under the influence of radiation, said inner
`primary coating composition after radiation
`cure having the combination of properties
`of:
`(a) a fiber pull-out friction of less than 40
`g/mm at stripping temperature;
`(b) a crack propagation of greater than 1.0
`mm at stripping temperature;
`(c) a glass transition temperature of below
`10° C.; and
`(d) sufficient adhesion to said glass fiber to
`prevent delamination in the presence of
`moisture and during handling; and
`said outer primary
`coating
`composition
`comprises an oligomer having at least one
`functional group capable of polymerizing
`under the influence of radiation, said outer
`primary coating composition after radiation
`cure having the combination of properties
`of:
`(e) a glass transition temperature of above
`40° C.; and
`
` 7
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`Case IPR2013-00048
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`(f) a modulus of elasticity of between about
`10 MPa to about 40 MPa at stripping
`temperature;
`and wherein the ratio of the change in length of
`said inner primary coating composition, after
`radiation cure, to the change in length of said
`outer primary coating composition, after
`radiation cure, is less than 2 when said cured
`compositions are heated from 25° C.
`to
`stripping temperature.
`
`
`
`5. A radiation-curable inner primary coating
`composition for an optical glass fiber comprising
`at least one oligomer having at least one functional
`group capable of polymerizing under the influence
`of radiation, said composition, after radiation cure,
`having the combination of properties of:
`(a) a fiber pull-out friction of less than 20 g/mm
`at 90° C;
`(b) a crack propagation of greater than 1.0 mm
`at 90° C;
`(c) a glass transition temperature of below 10°
`C; and
`(d) adhesion to glass of at least 12 g/in when
`conditioned at 95% relative humidity.
`
`
`
` DISCUSSION II.
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Claim terms are also given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art in the context of the
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` 8
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`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). Any special definition for a claim term must be set forth in the
`
`specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`
`definition, limitations are not to be read from the specification into the
`
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`1. “In the presence of moisture” (claims 1-4 and 9-12)
`
`Claims 1-4 and 9-12 require an inner primary coating, or a
`
`composition after cure, that exhibits “sufficient adhesion to [a] glass fiber to
`
`prevent delamination in the presence of moisture and during handling.” We
`
`refer to that property in our analysis as “the claimed adhesion property.”
`
`The parties disagree about the meaning of the term “in the presence of
`
`moisture,” which appears in the limitation relating to the claimed adhesion
`
`property. Corning argues that the term is broad enough to embrace exposure
`
`to 95% relative humidity as disclosed in the ’189 patent for a wet adhesion
`
`test. Pet. 17; see Ex. 1001, 28:50-29:5 (disclosing conditions of wet
`
`adhesion test). DSM counters that “in the presence of moisture” means
`
`exposure to liquid water—that is, 100% relative humidity—as would be
`
`present, for example, in the water soak delamination test described in
`
`the ’189 patent. Resp. 15-18 (citing Ex. 2032 ¶¶ 59-66). That delamination
`
`test involves soaking a cured coating sample in a hot water bath for up to 24
`
`hours. Ex. 1001, 27:21-37 (describing conditions of the water soak
`
`delamination test); 29:20-58 (Table 3). DSM produces evidence that under
`
`conditions of 95% relative humidity, “by definition, there will be no
`
` 9
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`moisture condensation on the surface of the coating because moisture
`
`condenses at 100% relative humidity.” Ex. 2032 ¶ 61; See Resp. 17.
`
`The evidence supports a conclusion that the broadest reasonable
`
`interpretation of the term “moisture” is liquid water—that is, a condition of
`
`100% relative humidity. The written description uses the term “moisture” in
`
`a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying
`
`a “wax/water slurry” to surface of sample film in order “to retain moisture”);
`
`35:17-18 (applying heat to remove “moisture” from samples, suggesting
`
`removal of liquid water). Moreover, where the written description discusses
`
`water in vapor form, the inventors use the word “humidity” or “atmospheric
`
`moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to
`
`“atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189
`
`patent further discloses that a “ribbon assembly can be buried under ground
`
`or water for long distance connections, such as between cities,” which is
`
`consistent with the proposition that an optical fiber coating must endure long
`
`periods of immersion in liquid water without delaminating. Ex. 1001,
`
`67:43-45. In light of the context in which the term “moisture” appears in the
`
`specification, we conclude that the inventors used that term in its ordinary
`
`sense to refer to liquid water.
`
`The ’189 patent, thus, is directed to a coating composition that, after
`
`radiation cure, has sufficient adhesion to glass to prevent delamination in the
`
`presence of liquid water. We decline to resolve what temperature, or length
`
`of time of exposure to liquid water the coating must endure, without
`
`delaminating, in order to satisfy the claimed adhesion property. Resolving
`
`those conditions is not necessary to our analysis, which focuses on whether
`
`Corning’s wet adhesion test, conducted under conditions of 95% relative
`
`
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`10
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`humidity, is probative of the extent to which a cured coating delaminates
`
`from glass when exposed to liquid water.
`
`2. “Stripping temperature”
`
`Corning argues that the ’189 patent describes stripping temperature as
`
`being from about 90°C to about 120°C. Pet. 16 (citing Ex. 1001, 13:32-34).
`
`DSM does not contest this construction.
`
`We do not agree with Corning that the ’189 patent defines the term
`
`“stripping temperature” as “about 90°C to about 120°C.” Rather, the patent
`
`indicates that stripping temperature is “typically” within this range.
`
`Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating
`
`compositions the design ribbon stripping temperatures are usually about
`
`90° C. to about 120° C., but may be different depending on the specific
`
`design parameters for the particular coating composition.”). This disclosure
`
`is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480.
`
`The ’189 patent does refer repeatedly, however, to 90°C as an
`
`exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55.
`
`The ’189 patent also identifies 100°C as an exemplary stripping temperature,
`
`particularly in the context of measuring change in length. Id. at 14:46-47,
`
`18:44-45. Whatever other temperatures this term encompasses, it certainly
`
`encompasses at least the ones specifically identified. See Oatey Co. v. IPS
`
`Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret
`
`claim terms in a way that excludes embodiments disclosed in the
`
`specification.”). The limitation requires no further construction.
`
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`3. “Fiber pull-out friction”
`
`Every challenged claim requires that the inner primary coating, or the
`
`inner primary coating composition after cure, have a fiber pull-out friction of
`
`less than a specified amount at a specified temperature. See, e.g., claims 2
`
`and 5, sec. I.B, supra. The parties do not propose express construction of
`
`this term, but they do disagree as to certain details of the procedure for
`
`testing fiber pull-out friction. E.g., Resp. 31; Reply 3.
`
`The ’189 patent describes a procedure that may be used for testing
`
`fiber pull-out friction:
`
`The fiber pull-out friction test can be performed
`as follows. The sample consists of a bare, clean
`optical fiber, one end of which has been embedded
`in a 250 micron thick sheet of cured inner primary
`coating to be tested. This assembly is mounted in a
`suitable instrument such as a Rheometrics RSA-II
`rheometer, and
`the
`temperature raised
`to a
`representative ribbon stripping temperature (such
`as 90° C.), and the fiber pulled slowly out of the
`sheet at a rate of 0.1 mm/sec. The instrument
`records and plots force vs distance. The plots
`typically show a linear region of negative slope,
`which is the result of a decreasing area of contact
`between fiber and coating, as the fiber is being
`withdrawn. The slope is measured, and is the
`output of the test. Low slope values correspond to
`a low fiber pull-out friction, and vice versa. Three
`test samples should be performed and their average
`used as the final output of the test.
`
`Ex. 1001, 31:35-50. Although this test is not described as being the only
`
`one that can be used to determine fiber pull-out friction, it is specifically
`
`identified in the ’189 patent. Consequently, we construe “fiber pull-out
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`friction” as encompassing at least a fiber pull-out friction measurement
`
`obtained using the procedure disclosed in the above-quoted passage. See
`
`Oatey, 514 F.3d at 1276.
`
`4. Other terms
`
`Corning proposes constructions for several other terms, Pet. 16-18,
`
`none of which DSM contests. We have considered Corning’s arguments but
`
`determine that the limitations discussed need not be construed in a manner
`
`that departs from their ordinary and customary meanings for purposes of this
`
`decision, and do not need to be construed expressly.
`
`B. Reliability of Dr. Winningham’s Testimony
`
`DSM argues that Dr. Winningham’s opinions are unreliable because
`
`he “fails to understand” the legal standards for obviousness. Resp. 55-57.
`
`In particular, DSM argues that Dr. Winningham gave no consideration to the
`
`relevant time period when addressing who is one of skill in the art for
`
`obviousness purposes. Id. DSM quotes the following portion of
`
`Dr. Winningham’s deposition in support of this argument:
`
`Q. Does the time, does the year make any
`difference in terms of who that skilled scientist
`would be in that relevant art?
`A. I’m not making that distinction.
`Q. So at any time?
`A. Yes.
`
`Id. at 56-57 (quoting Ex. 2029, 424:18-23).
`
`DSM argues both that Dr. Winningham’s testimony should be
`
`excluded and given little or no weight. Resp. 45-47; PO Mot. To Exclude 1-
`
`7. We address the admissibility of Dr. Winningham’s testimony below in
`
`our decision on DSM’s motion to exclude evidence. To the extent that
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`DSM’s argument goes to the weight to be accorded Dr. Winningham’s
`
`testimony, it is not persuasive. DSM identifies no particular instances in
`
`which Dr. Winningham’s silence as to the relevant time period for
`
`determining who is one of skill in the art weakens his testimony. We agree
`
`with Corning that the thoroughness of Dr. Winningham’s testimony
`
`outweighs the concern DSM expresses.
`
`We also are not persuaded that Dr. Winningham made the admission
`
`that DSM argues. DSM’s question appears to address whether
`
`Dr. Winningham made any distinctions about the qualifications and
`
`experience of a skilled scientist over time, not whether Dr. Winningham
`
`based his obviousness opinions on the knowledge of that skilled scientist at
`
`the time the invention was made. We do not find Dr. Winningham’s
`
`supposed admission determinative on the issue of whether he failed to
`
`consider the relevant time period in his obviousness opinions.
`
`DSM also argues that Dr. Winningham failed to analyze the
`
`underlying test data as rigorously as an independent expert and instead
`
`trusted Ms. Kouzmina’s statements based on his experience working with
`
`her and confidence in her skills. Resp. 57-59. Corning argues that it was
`
`appropriate for Dr. Winningham to rely on Ms. Kouzmina based on their
`
`long working relationship, that Dr. Winningham had sufficient information
`
`on which to base his opinions, and that Drs. Bowman and Taylor did no
`
`better in reviewing DSM data. Reply 14-15.
`
`DSM’s assertion does not persuade us that all of Dr. Winningham’s
`
`opinions should be accorded no weight for lacking a basis in underlying
`
`data. DSM identifies no evidence that refutes Dr. Winningham’s statement
`
`that his confidence in Ms. Kouzmina’s work is based on their long working
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`relationship. We credit this statement and accord Dr. Winningham’s
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`opinions the weight to which they are entitled.
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`C. Material Property Limitations
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`The crux of Corning’s case-in-chief is that the prior art compositions
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`are made of the same chemical substances as are presently claimed, and that
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`Corning’s testing of those prior art compositions reveals them to possess
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`inherently the claimed material property limitations. See Pet. 4-5. DSM
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`argues, among other things, that Corning improperly tested some of the
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`material property limitations. Resp. 26-35. DSM’s arguments in this regard
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`cut across Corning’s various unpatentability challenges, so we address
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`DSM’s material property limitation arguments first.
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`The Board gives consideration to the arguments, and the evidence
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`cited in support of those arguments, that the parties make. The Board will
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`not scour the record in search of evidence relevant to a particular issue, nor
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`will it attempt to fit evidence together into a coherent explanation that
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`supports an argument. Such activities are the province of advocacy. See
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`Stampa v. Jackson, 78 USPQ2d 1567, 1571 (BPAI 2005) (quoting Ernst
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`Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111-12 (2d Cir. 1999)
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`(“Appellant’s Brief is at best an invitation to the court to scour the record,
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`research any legal theory that comes to mind, and serve generally as an
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`advocate for appellant. We decline the invitation.”)).
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`1. “Fiber pull-out friction”
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`As discussed above in section II.A.3, every challenged claim requires
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`that the inner primary coating, or the inner primary coating composition
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`after cure, have a fiber pull-out friction of less than a specified amount at a
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`specified temperature. Claims 1, 5, 9, and 13 (and claims 17, 21, 25, 29, 33,
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`37, 41, 45, and 49 as they depend from claim 5 or claim 13) require a fiber
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`pull-out friction of less than 20 g/mm, whereas all other challenged claims
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`require a fiber pull-out friction of less than 40 g/mm. Claims 5-8 and 13-16
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`(and the claims dependent from claims 5 and 13) specify a temperature of
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`90°C,4 whereas all other claims specify “stripping temperature.” As
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`discussed above in section II.A.2, we construe “stripping temperature” as
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`encompassing 90°C, because the ’189 patent gives this temperature as an
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`example of a stripping temperature.
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`a. Summary of Parties’ Arguments and Evidence
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`We summarize here the arguments that the parties present on the issue
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`of the fiber pull-out friction testing, along with the supporting evidence the
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`parties cite.
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`In its Petition, Corning’s principal evidence concerning fiber pull-out
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`friction is provided in Ms. Kouzmina’s declaration. Ex. 1015 ¶¶ 33-37.
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`Ms. Kouzmina states that fiber pull-out friction was measured for Shustack
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`Example I and Szum ’928 Example 5B, following the procedure described
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`in the ’189 patent at column 31, lines 35-50. Id. ¶ 33; Pet. 24, 36 (both
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`citing Ex. 1015 ¶ 37). Ms. Kouzmina states that a section of bare, clean
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`optical fiber was embedded in a film of inner primary coating, the film being
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`about 250 microns thick. Ex. 1015 ¶ 34. The film was then cured with
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`ultraviolet light. Id. The cured samples were mounted on a compumotor
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`slide and enclosed in a heating chamber. Id. ¶ 35. The slide was set to a
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`4 Claim 13 specifies the temperature as “at least at 90°C.”
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`speed of 0.1 mm/s, and the instrument recorded and plotted force versus
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`speed. Id. ¶ 36. Ms. Kouzmina then states:
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`The plots typically showed a negative slope as a
`result of the decreasing area of contact between
`fiber and coating, as the coating was withdrawn.
`The slope was measured and was the output of the
`test. The value reported was an average of three
`measurements.
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`Id. The results indicate that Shustack Example I and Szum ’928 Example
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`5B had fiber pull-out friction measurements of 5.6 g/mm, and 6.6 g/mm,
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`respectively. Id. ¶ 37. Corning argues that these results demonstrate that
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`both Shustack Example I and Szum Example 5B meet every version of the
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`“fiber pull-out friction” limitation. Pet. 24-26; 36-37.
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`DSM filed additional evidence describing Corning’s testing procedure
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`and the data underlying Corning’s friction measurements, as part of its
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`Response. In particular, DSM filed the procedure, plots, and results of the
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`testing of Shustack Example I, and the plots for Szum ’928 Example 5B.
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`Exs. 2015, 2042.
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`The plots from Corning’s fiber pull-out friction tests of Shustack
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`Example I and Szum ’928 Example 5B are reproduced below:
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`Ex. 2015, 2.
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`mums-{mm}
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`POfriclionExampleSB
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`Ex. 2042, 1.
`EX. 2042, 1.
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`The graphs plot force along the y axis and distance along the x axis,
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`and each shows results for three samples. Corning’s test procedure is as
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`follows:
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`Samples were prepared based on conditions stated
`in the patent. 15mil wet films were casted with a
`draw down box to cure approximately 250[µ]m
`film. The actual[] film thickness was approx-
`imately 260[µ]m. An arm length of fiber was cut
`from a reel. Approximately 3 inches in from one
`end a 1 inch window strip was made. The fiber
`was taped to a glass microscope slide, so that the
`window strip was approximately one quarter inch
`from end of slide. Another slide was positioned
`opposite of this slide with a one half inch gap,
`allowing the majority of striped fiber to rest on this
`slide. The fiber was lifted up and a drop of coating
`was placed on the slide. The window striped fiber
`was then placed back down on the drop of coating
`and taped to the glass slide. The film was cast
`over the striped fiber to encase the bare glass fiber.
`This film was then cured at 1 J/cm2 UV dose. The
`striped glass fiber encased in film was cut to a 1
`cm gauge length. Samples were mounted on the
`motorized slide for strip force test, with the ‘wet
`pull out’ sample holder. A heating chamber was
`mounted on the motorized slide to enclose the test
`sample. The temperature was controlled at 90°C
`by a temperature controller with a thermal couple.
`The slide was manually controlled by the indexer
`to maintain a speed of 0.1 mm/sec. Data was
`collected using LabNotebook software.
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`Ex. 2015, 1. For Shustack Example I, the slope was “measured from the
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`region of the graph in which the force appears to be in a linear relationship
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`with the displacement.” Id. That region is reported as extending from
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`2.76 mm to 7 mm. Id. The slope in that region is given as -5.625 (average
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`of three samples), which Ms. Kouzmina reported in her declaration as 5.6
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`g/mm. Id.; Ex. 1015 ¶ 37.
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`DSM argues that the plot data underlying the reported friction values
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`indicates that a “cohesive failure” occurred during testing, thereby rendering
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`Corning’s testing unreliable. Resp. 26-31. DSM explains that a cohesive
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`failure is the separation of one portion of a coating from another, so that the
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`pull-out friction test measures the friction between the torn surfaces of the
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`separated coating portions, rather than the friction between the inner primary
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`coating and the optical fiber. Id. at 27-28 (citing Ex. 2032 ¶¶ 77-85).
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`Dr. Taylor states that a properly run fiber pull-out friction test should result
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`in a plot with a “substantial linear region of negative slope.” Ex. 2032 ¶ 80.
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`DSM argues, citing Dr. Taylor, that the plots do not include any
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`“substantially smooth linear region.” Resp. 31 (citing Ex. 2032 ¶¶ 86-90;
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`Exs. 2036-37).5 DSM reasons that because a cohesive failure during pull-
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`out testing would result in a plot lacking a linear region of negative slope,
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`the absence of a linear region from Corning’s data indicates that there was a
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`cohesive failure. Id.
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`Dr. Taylor identifies several factors in Corning’s test procedure that
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`may explain what he perceives as an absence of a substantial linear region in
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`these plots. Resp. 31 (citing Ex. 2032 ¶¶ 86-90). First, Dr. Taylor states that
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`5 Dr. Taylor does not describe Corning’s plots as lacking any “substantially
`smooth linear region.” Instead, he states that they “have no linear region
`from which to measure a slope” and that they lack any “substantial linear
`region.” Ex. 2032 ¶ 86.
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`the Corning employee who performed the tests, Mr. Aaron Gleason, does
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`not mention cleaning the bare optical fiber with a “solvent wipe.” Ex. 2032
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`¶¶ 87, 90 (citing Ex. 2015, 1). According to Dr. Taylor, a bare optical fiber
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`must be cleaned by wiping it with a solvent capable of extracting residue left
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`behind when the original coating on the fiber is stripped off. Ex. 2032 ¶¶ 78,
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`79. Dr. Taylor states that the cleaning step is necessary before the bare fiber
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`is embedded in a test coating, because the residue could interfere with
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`adhesion between the bare fiber and the test coating, thereby lowering the
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`friction measurement. Id. ¶ 79.
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`Second, Dr. Taylor states that Mr. Gleason made no effort to position
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`the bare fiber in the drop of test coating or to define the shape of the coating.
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`Id. ¶¶ 88, 90 (citing Ex. 2015, 1). According to Dr. Taylor, positioning the
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`bare fiber too close to the edge of the test coating could cause tearing during
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`the fiber pull-out friction test. Ex. 2032 ¶ 82. Dr. Taylor states that if the
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`fiber is positioned closer to one edge of the coating than another, the thinner
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`side of the coating will be able to absorb less energy than the thicker side
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`and will be more likely to tear during the test. Id.
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`Third, Dr. Taylor states that a sudden drop in force after an initial
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`maximum indicates that the pulling force caused a tear or cohesive failure in
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`the coating, such that the subsequent friction measurements are artificially
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`low. Id. ¶ 83.
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`Fourth, Dr. Taylor states that Corning used an instrument that was
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`designed for a “pull-out” test, rather than one designed for a fiber pull-out
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`friction test. Id. ¶¶ 89, 90 & n.3. According to Dr. Taylor, Corning’s
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`experimental setup prevented the application of any “normal force” (i.e.,
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`clamping or squeezing) on the test sample. Id. ¶ 90 n.3. Dr. Taylor states
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`that the coating must be squeezed against the fiber to an extent sufficient to
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`ensure that the full surfaces of the coating and the fiber are in contact and
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`therefore contribute to the friction generated during the pull-out; otherwise,
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`the friction measured will be artificially low. I
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