`Tel: 571-272-7822
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`Paper 96
`Entered: July 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`CORNING INCORPORATED
`Petitioner
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`v.
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`DSM IP ASSETS B.V.
`Patent Owner
`_______________
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`Case IPR2013-00048
`Patent 6,298,189 B1
`_______________
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`Before FRED E. McKELVEY, GRACE OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and
`ZHENYU YANG, Administrative Patent Judges.
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`KAMHOLZ, Administrative Patent Judge.
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`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`IPR2013-00048
`Patent 6,298,189 B1
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`I.
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`INTRODUCTION
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`Petitioner Corning Incorporated (“Corning”) requests reconsideration
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`of the Board’s final written decision (“Dec.”), dated May 9, 2014 (Paper 94),
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`to the extent we denied Corning’s request for cancellation of claims 1-4,
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`6-12, 14-16, 18-28, 30-32, 34-36, 38-44, 46-48, and 50-52 of U.S. Patent
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`No. 6,298,189 B1 (the “’189 patent”), which is assigned to Patent Owner
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`DSM IP Assets B.V. (“DSM”). Request for Rehearing 1 (Paper 95
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`(“Req.”)). We have considered Corning’s request, but we decline to modify
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`the final written decision.
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` STANDARD OF REVIEW II.
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`A party challenging a final written decision by way of a request for
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`rehearing must identify specifically all matters the party believes the Board
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`misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging
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`party bears the burden of showing that the decision should be modified. Id.
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` DISCUSSION III.
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`Corning challenges the final written decision with respect to our
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`determinations that Corning failed to demonstrate that the prior art discloses
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`the claimed “ratio of the change in length” and the “modulus of elasticity” of
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`the outer primary coating.
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`A. Ratio of change in length
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`Corning identifies several points for reconsideration, which we
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`consider in turn.
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`IPR2013-00048
`Patent 6,298,189 B1
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`1. Experimental methods
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`Corning argues that we erred in determining that Corning’s petition
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`evidence, as to how it carried out the “change in length” experiments, was
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`sufficient to institute trial yet insufficient to warrant cancellation of the
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`relevant claims. Req. 2-3. According to Corning, if the evidence had been
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`sufficient to institute inter partes review, it should also have been sufficient
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`for Corning to prevail in the final written decision. Id. at 3. Corning argues
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`that it is unfairly prejudiced by this supposed discrepancy, particularly in
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`view of the estoppel that attaches upon the issuance of a final written
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`decision. Id. (citing 35 U.S.C. § 315(e)).
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`This argument is unpersuasive, because the standard for instituting
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`inter partes review is different from the standard for a petitioner to prevail
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`in the final written decision. The standard for institution is set forth in
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`35 U.S.C. § 314(a), which provides as follows:
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`THRESHOLD.—The Director may not authorize an
`inter partes review to be instituted unless the
`Director determines that the information presented
`in the petition filed under section 311 and any
`response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims
`challenged in the petition.
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`The petitioner’s burden to prevail in the final written decision, in
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`contrast, is set forth in 35 U.S.C. § 316(e), which provides as follows:
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`EVIDENTIARY STANDARDS.—In an inter partes
`review instituted under this chapter, the petitioner
`shall have the burden of proving a proposition of
`unpatentability by a preponderance of
`the
`evidence.
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`Patent 6,298,189 B1
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`The standards differ in that institution requires the petitioner to show
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`merely a reasonable likelihood that it would prevail, whereas actually to
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`prevail requires the petitioner to prove its case by a preponderance of the
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`evidence. Compare 35 U.S.C. § 314(a) with 35 U.S.C. § 316(e). Showing a
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`reasonable likelihood of prevailing is less stringent a standard than
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`prevailing by a preponderance of the evidence. It is possible that a case
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`strong enough to show a reasonable likelihood of prevailing, on the
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`incomplete record available at the time the institution decision is made, is
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`insufficient to prove unpatentability by a preponderance of the evidence on
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`the complete record. It is also possible that weaknesses in the petitioner’s
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`case become more fully apparent only when considered in the context of the
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`full record developed during the course of trial.
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`In the present case, consideration of evidence developed and cited
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`during trial highlighted gaps in Corning’s petition evidence, as we discussed
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`in the final written decision. Dec. 52-53. In particular, we determined that
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`paragraph 59 of the declaration of Ms. Inna Kouzmina (Ex. 1015), which
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`was the only source of evidence in the Petition addressing the change-in-
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`length calculation, was entitled to little or no weight, because it lacked a
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`meaningful explanation of the experimental method used. Id. at 51-52. We
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`did not overlook our determination that Corning’s petition evidence was
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`sufficient for instituting inter partes review; rather, we explained that the
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`insufficiency of the evidence was underscored upon consideration of the full
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`record. Id.
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`2. Dr. Winningham’s testimony regarding change-in-length
`experiments
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`Corning argues that we should have given consideration to
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`Dr. Winningham’s testimony in paragraphs 100-104 of his declaration
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`(Ex. 1014). Req. 3 (citing Dec. 52 n.16).
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`This argument is unpersuasive. Although Corning argues that
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`paragraphs 100-104 provide the foundation for paragraphs 128 and 132,
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`which themselves are cited in the Petition (see Pet. 23, 29), Corning still
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`does not identify where in its Petition or other briefing it cited
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`paragraphs 100-104, nor does Corning identify where paragraphs 100-104
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`are cited as foundation for paragraphs 128 and 132. Moreover, we observed
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`in the final written decision that, even if we gave these paragraphs
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`consideration, they would not have been persuasive, because they provide no
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`more detailed explanation of the measurement and calculation procedures
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`than the evidence we did consider. Dec. 52 n.16.
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`3. Witnesses lacking first-hand knowledge
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`Corning argues that we criticized its witnesses’ evidence on the basis
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`that the witnesses did not perform or observe first-hand the experiments
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`reported, and that Ms. Kouzmina had an “incomplete understanding” of how
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`the experiments were performed. Req. 4 (quoting Dec. 53). Corning asserts
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`that this criticism is at odds with our earlier ruling that declaration testimony
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`directed to experimental testing need not come from the person who actually
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`conducted the testing. Req. 4 (citing Paper 55, 4 (Dec. on Mot. for
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`Discovery)).
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`We disagree. Corning notes correctly that our rules do not require
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`that the declarant attesting to testing evidence be the person who actually
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`conducted the test. See 37 C.F.R. § 42.65(b). We did not discount
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`Ms. Kouzmina’s testimony on the basis that she did not perform the tests
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`reported in her declaration. Rather, we gave her testimony full
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`consideration, but we accorded it little weight, because it did not explain the
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`methods Corning employed in conducting the experiments. Dec. 51-52. We
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`noted the fact that Ms. Kouzmina did not have first-hand knowledge of the
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`tests as part of our more general observation that Corning failed to provide
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`convincing evidence of how the change-in-length calculations actually were
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`carried out. See id. at 52-53.
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`4. Rigorousness of testing procedure
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`Corning argues that we dismissed its testing procedure as
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`insufficiently rigorous, and that this was inappropriate because the
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`’189 patent does not describe or claim a measurement procedure for Corning
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`to have followed rigorously. Req. 4. Corning argues that the silence in
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`the ’189 patent justified Corning’s use of a procedure that was endorsed by
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`Dr. Winningham and by Dr. Jiann-Wen Woody Ju (a Corning reply
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`witness). Req. 4-5.
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`This argument is unpersuasive. We did not determine that Corning’s
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`testing procedure was not rigorous. Rather, we determined that Corning had
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`not cited sufficient evidence of rigor. Dec. 51:20-23. We explained that we
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`were unable to understand the calculation process from the petition
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`evidence, or the additional evidence cited during the trial, in sufficient detail
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`to be persuaded of its probative value. Id. at 51-54. The lack of specificity
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`in the ’189 patent as to how to perform the calculation does not excuse
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`Corning from its burden of proof. Furthermore, we did not “substitute [our]
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`independent scientific determination” for Dr. Ju’s testimony. See Req. 5.
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`On the contrary, we considered Dr. Ju’s testimony fully and found it
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`inadequate to support a finding that the procedure followed by Corning was
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`sufficiently rigorous.
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`5. Ms. Kouzmina’s level of understanding
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`Corning argues that we failed to appreciate that Ms. Kouzmina’s
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`direct declaration and cross-examination deposition testimony demonstrated
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`her good understanding of the testing procedure. Req. 5-8 (citing Ex. 1015
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`¶¶ 4, 59; Ex. 1044, 116:14-16, 122:9-11, 123:6-18, 123:24–124:5, 124:9-10,
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`124:12, 126:8–127:7, 129:2-16, 130:6-14, 130:19–131:17, 132:9-15, 133:14-
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`21; Ex. 2025, 806:16-25).
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`This argument is unpersuasive. We summarized what we considered
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`to be all of the significant evidence the parties cited on the issue of change-
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`in-length testing (Dec. 46-51) and explained the reasoning underlying our
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`finding that Ms. Kouzmina did not have a complete understanding of the
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`procedure. Dec. 52-53. A rehearing request is not an opportunity for a party
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`to re-argue its case.
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`Moreover, Corning has not identified where in the record it cited the
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`evidence from Ms. Kouzmina’s deposition that it now relies upon in support
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`of this argument. Corning did not cite any of the above-listed passages from
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`Ms. Kouzmina’s deposition in its Reply (Paper 65), in any subsequent
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`papers, or at oral argument. We cannot have overlooked or misapprehended
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`evidence that was not brought to our attention.
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`6. Basis for Dr. Ju’s testimony
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`Corning argues that we improperly discounted the testimony of its
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`reply witness, Dr. Ju. Req. 8. In particular, Corning argues that we
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`overlooked testimony in paragraph 80 of Dr. Ju’s declaration, in which he
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`stated that his understanding of the change-in-length testing process was
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`based on his review of Ms. Kouzmina’s declaration and portions of her
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`deposition, and upon a video-conference demonstration by Corning’s
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`microscopist, Mr. Earl Sanford. Id. at 8-9 (citing Reply 7 (citing Ex. 1035
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`¶¶ 78-90)).
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`This argument is unpersuasive. We cited paragraph 80 (Dec. 49) and
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`have no reason to doubt that Dr. Ju based his opinion on the sources of
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`information listed there. But Corning does not explain how this testimony
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`overcomes the reasons we gave for finding Dr. Ju’s evidence unpersuasive.
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`See Dec. 53. We discussed, in the final written decision, why both sources
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`of information are insufficient to indicate that Dr. Ju’s understanding of the
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`process reflects what happened during actual testing by Mr. Sanford.
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`Dec. 52-53. First, we determined that Ms. Kouzmina had an incomplete
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`understanding of the procedure. Id. To the extent Dr. Ju relies on
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`Ms. Kouzmina’s evidence, it suffers from the same weakness. Second, we
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`determined that nothing in Dr. Ju’s evidence establishes that the procedure
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`demonstrated to Dr. Ju was the same procedure used to make the
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`measurements reported in Ms. Kouzmina’s declaration. Id. at 53.
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`Corning also argues that we overlooked certain cross-examination
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`deposition testimony by Dr. Ju. Req. 9 (citing Ex. 2090, 202:4-6) (“Q. Is
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`your understanding of the DL over L test that was conducted described in
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`your declaration? A. Yes.”). Corning does not identify where in the record it
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`cited this evidence, and we need not consider it further. But even upon
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`consideration, we determine that it amounts to no more than a confirmation
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`by Dr. Ju that his declaration includes a description of his understanding of
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`the change-in-length test. Corning does not explain how this evidence
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`addresses the problems we discussed in the final written decision.
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`7. Use of talc particles to track points
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`Corning argues that we should credit Dr. Ju’s testimony as to the
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`reliability and accuracy of talc-based measurements, as well as his testimony
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`that Corning’s method was “very good.” Req. 9-10 (citing Ex. 1035
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`¶¶ 87-90; Ex. 2090, 35:2-10, 200:2-9, 202:15–203:5). Corning also argues
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`that Ms. Kouzmina “fully explained” how talc particles can be used for
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`precise measurements. Req. 10 (referring to discussion of Ms. Kouzmina’s
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`deposition testimony, identified above in section III.A.5).
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`We disagree. As we explained in the final written decision, even if
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`we accept Dr. Ju’s (and Ms. Kouzmina’s) testimony as accurate descriptions
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`of the actual measurement process, the cited testimony does not provide
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`enough information about that process to assess its reliability and accuracy.
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`Dec. 53-54. Dr. Ju, through his testimony, assures us that he discussed the
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`method with Mr. Sanford and Ms. Kouzmina (Paper 86 ¶ 11 (citing
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`Ex. 2090, 19:13-19), and that he is satisfied that Corning’s method is
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`adequately reliable and accurate (Reply 7 (citing Ex. 1035 ¶¶ 78-90)). But
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`we require more than a witness’s assurances that his opinions are supported
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`by facts. We require the facts themselves. Dec. 52 (citing 37 C.F.R.
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`§ 42.65(a)). In the evidence Corning cited during the proceeding, neither
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`Dr. Ju nor Ms. Kouzmina actually describes the precise steps carried out for
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`the measurement procedure in sufficient detail to permit us to make a
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`determination as to reliability and accuracy. Dec. 53-54. For this reason, we
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`determined that Corning’s evidence on change-in-length measurements was
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`not credible, and we declined, therefore, to credit that evidence. Dec. 54.
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`Corning’s new reliance on Ms. Kouzmina’s deposition testimony is
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`inappropriate for a rehearing request.
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`Corning also argues that we erred in discounting Dr. Ju’s testimony by
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`raising, on our own initiative, testimony from Dr. Ju’s deposition that he had
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`asked questions of Ms. Kouzmina and Mr. Sanford, concerning how they
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`were sure that they could find a particular pixel using a talc particle, but did
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`not indicate whether he received answers or what those answers were.
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`Req. 10-11 (citing Dec. 53).
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`We did not raise this issue on our own initiative. Corning cited this
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`passage from Dr. Ju’s deposition in its Response to DSM’s Motion for
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`Observations. Paper 86 ¶ 11 (citing Ex. 2090, 19:13-19). We considered
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`this evidence because Corning cited it. We explained that this evidence was
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`not persuasive, by itself, because it does not fill the factual gaps in Corning’s
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`explanation of the change-in-length testing. Dec. 53. Corning does not
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`explain persuasively why that determination was in error.
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`8. Additional issues
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`Corning asserts that we addressed in the final written decision an issue
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`not briefed by the parties, specifically, that it is not clear from the cited
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`evidence whether talc particles can serve as faithful position markers.
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`Req. 11 (citing Dec. 54). Corning argues that we overlooked several pieces
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`of evidence in the record relevant to this issue. Req. 11-12 (citing Ex. 1035
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`¶¶ 87, 89; Ex. 1046, 551:3-18; Ex. 2090, 202:15–203:5).
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`This argument is not persuasive. We addressed this issue for the
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`purpose of illustrating the sorts of questions that the gaps in Corning’s cited
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`evidence on change-in-length testing leave open. Dec. 54. Whether uncited
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`evidence of record addresses the issue is irrelevant. As we explained in the
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`final written decision, we will not scour the record in search of relevant
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`evidence. Dec. 15.
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`B. Modulus of elasticity of the outer primary coating
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`Corning argues that we overlooked Dr. Bowman’s inability to identify
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`any other available oligomer suitable for use in Shustack Examples X and
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`XI, other than EBECRYL® 284 oligomer, the one Corning actually used
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`when it prepared those examples. Req. 14.
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`We disagree. In the final written decision, we explained that evidence
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`that no other suitable oligomer is commercially available was not persuasive,
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`because it “does not address whether any other suitable oligomers exist or
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`have been disclosed by Shustack.” Dec. 44:12-15 (emphasis added).
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`Although our determination was directed to Dr. Sogah’s testimony, the
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`reasoning is equally applicable to Dr. Bowman’s testimony. We declined to
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`credit the evidence of either witness on this point not because we overlooked
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`it, but because it was not probative of what the prior art discloses.
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`IV.
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` CONCLUSION
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`For the reasons given, we determine that Corning has not carried its
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`burden of demonstrating that the Board misapprehended or overlooked any
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`matters in rendering the final written decision. We decline to modify the
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`final written decision.
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`V.
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` ORDER
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`Accordingly, it is
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`ORDERED that the request for rehearing is denied.
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`For PETITIONER:
`Michael L. Goldman
`Jeffrey Townes
`Edwin Merkel
`LeClairRyan, A Professional Corporation
`Michael.Goldman@leclairryan.com
`Jeffrey.Townes@leclairryan.com
`Edwin.Merkel@leclairryan.com
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`For PATENT OWNER:
`Sharon A. Israel
`Joseph Mahoney
`Mayer Brown, LLP
`SIsrael@mayerbrown.com
`JMahoney@mayerbrown.com
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