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`Paper 87
`Entered: March 28, 2014
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`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 No. IPR2013-00049
`Patent 6,298,189
`____________
`
`Held: February 11, 2014
`____________
`
`
`Before: JENNIFER S. BISK, FRED E. McKELVEY, GRACE
`KARAFFA OBERMANN, SCOTT E. KAMHOLZ and ZHENYU
`YANG, Administrative Patent Judges.
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL L. GOLDMAN, ESQ.
`
`
`EDWIN MERKEL, ESQ.
`
`
`LeClairRyan, P.C.
`
`
`70 Linden Oaks, Suite 210
`
`
`Rochester, New York 14625
`
`
`
`and
`
`
`
`
`
`
`
`
`
`
`
`
`
`JEFFREY N. TOWNES, ESQ.
`LeClairRyan, P.C.
`2318 Mill Road, Suite 1100
`Alexandria, Virginia 22314
`
`Case No. IPR2013-00049
`Patent 6,298,189
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`
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`
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`ON BEHALF OF THE PATENT OWNER:
`
`
`SHARON ISRAEL, ESQ.
`
`
`Mayer Brown, LLP
`
`
`700 Louisiana Street, Suite 3400
`
`
`Houston, Texas 77002-2730
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`
`
`and
`
`
`JOSEPH MAHONEY, ESQ.
`
`
`Mayer Brown, LLP
`
`
`71 South Wacker Drive
`
`
`Chicago, Illinois 60606
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`
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`
`
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`The above-entitled matter came on for hearing on Thursday,
`February 11, 2014, commencing at 3:43 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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` P R O C E E D I N G S
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`- - - - -
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`JUDGE BIS K: Let's move on to our next case,
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`which is IPR2013-00049.
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`MR. MERKEL: Thank you, Your Honor, Edwin
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`Merkel again for Petitioner Corning. In this case, we've got
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`a number of grounds that are identified. They all involve
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`the same testing that we've alr eady discussed for IPR 45 and
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`IPR 48. There are only a couple of new formulations.
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`I'd just simply like to point out, since we've
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`already discussed all the testing, and our positions on those,
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`DSM does not attack the combination of coatings from
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`within the Shustack reference, or from within the Szum '928
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`reference. They do not attack the combination of coatings
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`from the Szum '928 in combination with the Shustack
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`reference, that's the third ground there. They do not attack
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`the Szum '928 formulation in c ombination with the Szum
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`'396 formulation.
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`So, we have no other issues to discuss at this
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`point in time, and we would simply like to reserve the
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`remainder of our time for rebuttal.
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`left?
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`JUDGE BISK: Okay.
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`MS. ISRAEL: May I ask how much time we have
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`JUDGE BISK: Yeah, 21 minutes.
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`MS. ISRAEL: Twenty-one minutes, okay. I just
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`want to correct the record. DSM does contest the
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`obviousness of the combinations, and we will rest on our
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`papers, but we do attack the obviousness of the combinations
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`of the references that Mr. Merkel just discussed.
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`Otherwise, once again, we think that the issues
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`are very similar to the ones that we just discussed with
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`respect to the IPR2013-00048, and that, again, this is a
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`failure of proof case, in particular every clai m limitation,
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`Patent 6,298,189
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`among other things, every claim limitation requires change
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`of length when heated is one of the tests, that's just an
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`example of one of the tests that Corning did not meet, and
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`has not met its burden, again, we have a failure of proof, and
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`we will rest on our papers.
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`JUDGE BISK: Can I ask, on this one, in the
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`motion to amend, it says "not in the alternative."
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`MS. ISRAEL: It's contingent. In 49?
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`JUDGE BISK: Yeah. I believe it says they're not
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`proposed in the alternative.
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`MS. ISRAEL: It's contingent.
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`JUDGE BISK: You mean them to be contingent?
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`MS. ISRAEL: It should be contingent.
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`JUDGE KAMHOLZ: On page 1 of your motion to
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`amend, "not in the alternative."
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`MS. ISRAEL: That was an error, it's contingent.
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`JUDGE BISK: Okay. Are you done?
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`MS. ISRAEL: Yes.
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`JUDGE BISK: Obviously you have something to
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`say on that.
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`MR. MERKEL: How is this going to work? Are
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`you going to allow DSM to put in a new paper at this late
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`stage?
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`JUDGE BISK: So, I don't recall in the reply, I
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`don't have the reply right here in front of me. Do they
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`Case No. IPR2013-00049
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`discuss whether it's contingent in their reply, do you
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`remember, in this case? I mean, it's one thing if it's a typo
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`of just one word, but --
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`MR. MERKEL: Well, it doesn't appear that
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`there's anything in the reply to lend any clarity on that issue.
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`JUDGE BISK: It does seem that they've put in a
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`full response on all of the claims.
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`MR. MERKEL: So, if this motion is actually
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`contingent, I guess -- well, at this point, we don't get any
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`say in it.
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`JUDGE BISK: Well, I don't think -- would your
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`opposition have been any different?
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`MR. MERKEL: I was simply going to raise one
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`issue, but if you'll allow me.
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`JUDGE BISK: Well, one issue about what?
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`MR. MERKEL: About their amendment, because
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`I -- it was my -- I would have raised it as part of my main
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`presentation, expecting -- fully expecting that they were
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`going to address their noncontingent amendment.
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`JUDGE OBERMANN: Let me ask you this, if we
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`permit it to be contingent, will you suffer an y prejudice at
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`this point?
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`MR. MERKEL: Only if you -- well, that
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`amendment only comes into play if you decide in our favor,
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`so no.
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`Case No. IPR2013-00049
`Patent 6,298,189
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`JUDGE OBERMANN: As far as the procedure
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`here, and your ability to respond effectively, you're not
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`going to argue any pr ejudice?
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`MR. MERKEL: No. We won't.
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`JUDGE OBERMANN: Thank you, Counsel.
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`JUDGE BISK: Anything else on that case?
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`(No response.)
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`(Whereupon, at 3:49 p.m., the hearing in matter
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`IPR2013-00049 was adjourned.)
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