Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 88
`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 IPR2013-00049
`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(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 88
`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 IPR2013-00049
`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(b)
`
`
`
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Petitioner Corning Incorporated (“Corning”) filed a petition (Paper 2
`
`(“Pet.”)) to institute an inter partes review of claims 53-66 (“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
`Shustack
`
`Shustack
`
`§ 103
`
`Basis Claims challenged
`§ 102
`53, 54, 56, 57, 59, 60,
`62, 63, 65, and 66
`53, 54, 56, 57, 59, 60,
`62, 63, 65, and 66
`53-58, 65, and 66
`53-58, 65, and 66
`59-64
`59-64
`55, 58, 61, and 64
`
`§ 102
`Szum ’928
`§ 103
`Szum ’928
`§ 103
`Szum ’928 and Shustack
`Szum ’928 and Szum ’396 § 103
`Shustack and Jackson
`§ 103
`
`Decision to Institute 2-3 (Paper 13 (“Dec.”)).
`
`After institution of trial, Patent Owner DSM IP Assets B.V. (“DSM”)
`
`filed a Patent Owner Response (Paper 40 (“Resp.”)), and Corning filed a
`
`Reply to the Patent Owner Response (Paper 58 (“Reply”)). DSM filed a
`
`Supplemental Response (Paper 67, “Suppl. Resp.”) with leave of the Board,
`
`and Corning filed a Supplemental Reply (Paper 68, “Suppl. Reply”). DSM
`
`
`1 Case IPR2013-00048 concerns claims 1-52 of the ’189 patent.
`2 This Petition relies on the following references: U.S. Patent No. 5,352,712
`(Ex. 1003 (“Shustack”)); WO 95/15928 (Ex. 1005 (“Szum ’928”)); WO
`96/28396 (Ex. 1006 (“Szum ’396”)); U.S. Patent No. 4,900,126 (Ex. 1007
`(“Jackson”)).
`
`2
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`filed a Motion for Observations on Cross-Examination of Corning Reply
`
`Declarants (Paper 71 (“Obs.”)), and Corning filed a Response to the
`
`Observations (Paper 78 (“Obs. Resp.”)).
`
`DSM also filed a Motion to Amend Claims (Paper 42 (“Motion to
`
`Amend”)). In it, DSM proposed claims 72, 73, 74, and 75 to substitute for
`
`patented claims 59, 60, 62, and 63, respectively. Motion to Amend 1-5.
`
`Corning filed an Opposition to the Motion to Amend Claims (Paper 57).
`
`DSM filed a Reply to the Opposition (Paper 69).
`
`DSM also filed a Motion to Exclude certain of Corning’s evidence
`
`(Paper 72 (“PO Motion to Exclude”)). Corning filed an Opposition (Paper
`
`79), and DSM filed a Reply (Paper 82). Corning filed a Motion to Exclude
`
`certain of DSM’s evidence (Paper 75 (“Pet. Motion to Exclude”)). DSM
`
`filed an Opposition (Paper 77), and Corning filed a Reply (Paper 83).
`
`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. 2027-31) 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) and a responsive
`
`declaration of Dr. Winningham (Ex. 1076), along with depositions of
`
`Dr. Bowman (Exs. 1070-75) 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.
`
`3
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`2052). Corning relies upon depositions of Dr. Winningham (Ex. 10783) and
`
`Dr. Dotsevi Sogah (Ex. 1077) 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 87. Both parties indicated during oral argument that the
`
`oral argument in case IPR2013-00048 relates to this proceeding as well.
`
`Paper 87, 1-2. The transcript for case IPR2013-00048 is entered as Paper 93
`
`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.
`
`Corning has not proved that claims 53-66 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
`
`
`3 Ex. 1078 is a rough transcript. DSM submitted an official transcript as Ex.
`2085.
`
`4
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`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.
`
`
`
`Figure 1, above, illustrates a longitudinal cross-sectional view of a
`
`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
`
`5
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`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
`
`both an inner and outer coating and an optional outer ink layer. Id. at 4:64-
`
`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.
`
`Claim 53, reproduced below, is illustrative of the claimed subject
`
`matter:
`
`53. 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 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 -20° C;
`and
`(d) sufficient adhesion to said glass fiber to prevent
`delamination in the presence of moisture and
`during handling; and
`composition
`coating
`said outer primary
`comprises an oligomer having at least one
`
`6
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`
`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
`(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.
`
`
`
`II. DISCUSSION
`
`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
`
`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).
`
`7
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`
`1. “In the presence of moisture” (claims 53-55 and 59-61)
`
`Claims 53-55 and 59-61 (and multiple dependent claim 65 to the
`
`extent it depends from claim 53 or 59, and multiple dependent claim 66, to
`
`the extent it depends from claims 54, 55, 60, or 61) 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. 15; 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. 16-19 (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
`
`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
`
`8
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`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
`
`humidity, is probative of the extent to which a cured coating delaminates
`
`from glass when exposed to liquid water.
`
`9
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`
`2. “Stripping temperature”
`
`Corning argues that the ’189 patent describes stripping temperature as
`
`being from about 90°C to about 120°C. Pet. 14 (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.
`
`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 40 g/mm at either stripping temperature (claims 53-55 and 59-61)
`
`10
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`or at 90°C (claims 56-58, 62-64). The parties do not propose express
`
`construction of the term “fiber pull-out friction.”
`
`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
`
`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.
`
`11
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`
`4. Other terms
`
`Corning proposes constructions for several other terms, Pet. 14-17,
`
`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. 45-47.
`
`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. (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-
`
`6. We address the admissibility of Dr. Winningham’s testimony below in
`
`our decision on DSM’s motion to exclude evidence. To the extent that
`
`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
`
`12
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`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. 47-49. 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
`
`relationship. We credit this statement and accord Dr. Winningham’s
`
`opinions the weight to which they are entitled.
`
`13
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`C. Material Property Limitations
`
`The crux of Corning’s case-in-chief is that the prior art compositions
`
`are made of the same chemical substances as are presently claimed, and that
`
`Corning’s testing of those prior art compositions reveals them to possess
`
`inherently the claimed material property limitations. See Pet. 4-5. DSM
`
`argues, among other things, that Corning improperly tested some of the
`
`material property limitations. Resp. 28-31. DSM’s arguments in this regard
`
`cut across Corning’s various unpatentability challenges, so we address
`
`various material property limitations first, in the order in which they are
`
`recited in the claims.
`
`The Board gives consideration to the arguments, and the evidence
`
`cited in support of those arguments, that the parties make. The Board will
`
`not scour the record in search of evidence relevant to a particular issue, nor
`
`will it attempt to fit evidence together into a coherent explanation that
`
`supports an argument. Such activities are the province of advocacy. See
`
`Stampa v. Jackson, 78 USPQ2d 1567, 1571 (BPAI 2005) (quoting Ernst
`
`Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111-12 (2d Cir. 1999)
`
`(“Appellant’s Brief is at best an invitation to the court to scour the record,
`
`research any legal theory that comes to mind, and serve generally as an
`
`advocate for appellant. We decline the invitation.”)).
`
`1. “Fiber pull-out friction”
`
`As discussed above in section II.A.3, 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 40 g/mm at either
`
`stripping temperature (claims 53-55 and 59-61) or at 90°C (claims 56-58,
`
`62-64). As discussed above in section II.A.2, we construe “stripping
`
`14
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`temperature” as encompassing 90°C, because the ’189 patent gives this
`
`temperature as an example of a stripping temperature.
`
`Corning’s principal evidence concerning fiber pull-out friction is
`
`provided in Ms. Kouzmina’s declaration. Ex. 1015 ¶¶ 33-37.
`
`Ms. Kouzmina states that fiber pull-out friction was measured for Shustack
`
`Example I and Szum ’928 Example 5B, following the procedure described
`
`in the ’189 patent at column 31, lines 35-50. Id. ¶ 33; Pet. 18, 26 (both
`
`citing Ex. 1015 ¶ 37). Ms. Kouzmina states that a section of bare, clean
`
`optical fiber was embedded in a film of inner primary coating, the film being
`
`about 250 microns thick. Ex. 1015 ¶ 34. The film was then cured with
`
`ultraviolet light. Id. The cured samples were mounted on a compumotor
`
`slide and enclosed in a heating chamber. Id. ¶ 35. The slide was set to a
`
`speed of 0.1 mm/s, and the instrument recorded and plotted force versus
`
`speed. Id. ¶ 36. Ms. Kouzmina then states:
`
`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.
`
`Id. The results indicate that Shustack Example I and Szum ’928 Example
`
`5B had fiber pull-out friction measurements of 5.6 g/mm, and 6.6 g/mm,
`
`respectively. Id. ¶ 37. Corning argues that these results demonstrate that
`
`both Shustack Example I and Szum Example 5B meet both versions of the
`
`“fiber pull-out friction” limitation. Pet. 19; 26-27. DSM does not address
`
`Corning’s fiber pull-out friction measurements in its Patent Owner
`
`Response.
`
`15
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`Upon consideration of Corning’s evidence, we are persuaded that
`
`Corning has shown that Shustack Example I and Szum ’928 Example 5B
`
`each inherently possess a fiber pull-out friction within the scope of every
`
`challenged claim.
`
`2. “Sufficient Adhesion”
`
`As discussed above in section II.A.1, each of claims 53-55 and 59-61
`
`requires 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.” Corning argues that the prior art
`
`compositions disclosed in Shustack (Example I) and Szum ’928 (Example
`
`5B) meet this limitation. Corning bases this argument on the results of wet
`
`adhesion tests carried out under conditions of 95% relative humidity on
`
`coatings prepared according to Shustack Example I and Szum ’928 Example
`
`5B. Pet. 19-20 (citing Ex. 1014 ¶ 121; Ex. 1015 ¶ 51), 27 (citing Ex. 1014 ¶
`
`144; Ex. 1015 ¶ 51).
`
`DSM responds that the wet adhesion test does not evaluate for
`
`delamination, which is caused by exposure to liquid water, and that a
`
`different test—the water soak delamination test—is the only method
`
`disclosed in the ’189 patent for assessing delamination. Resp. 16-18 (citing
`
`Ex. 2032 ¶¶ 59-66). DSM also comes forward with its own test results,
`
`which allegedly show that the Szum coating, in fact, delaminates when
`
`subjected to the conditions of the water soak delamination test disclosed in
`
`the ’189 patent. Resp. 38-39.
`
`A dispositive question thus arises: Does Corning show by a
`
`preponderance of evidence that the Shustack and Szum coatings exhibit
`
`sufficient adhesion to prevent delamination from glass in the presence of
`
`16
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`liquid water? For the reasons set forth below, we answer that question in the
`
`negative. We first address the conditions set forth in the ’189 patent for the
`
`wet adhesion test and the water soak delamination test. We then consider
`
`whether the wet adhesion test, which Corning performed on the Shustack
`
`Example I and Szum ’928 Example 5B coatings, is probative of the claimed
`
`adhesion property. Finally, we explain why an evaluation of DSM’s water
`
`soak delamination test data is not necessary to our analysis.
`
`a. The Wet Adhesion Test
`
`The ’189 patent describes a wet adhesion test for evaluating a cured
`
`coating sample on a glass substrate. Ex. 1001, 28:50-58. The wet adhesion
`
`test is conducted “at a temperature of 23±2° C. and a relative humidity of
`
`50±5% for a time period of 7 days.” Id. at 28:59-61. A portion of the
`
`sample film is then “further conditioned at a temperature of 23±2° C. and a
`
`relative humidity of 95% for a time period of 24 hours.” Id. at 28:62-65.
`
`During that step, “[a] layer of polyethylene wax/water slurry [is] applied to
`
`the surface of the further conditioned film to retain moisture.” Id. at 28:65-
`
`77.
`
`The written description makes plain that the wet adhesion test
`
`assesses a cured coating that is conditioned at 95% relative humidity. Id.
`
`at 28:62-65. Corning acknowledges that fact. See, e.g., Pet. 15 (citing
`
`Ex. 1015 ¶ 107) (“The term ‘wet adhesion’ is described in the ’189 patent at
`
`col. 28, lines 46-51 as adhesion at 95% relative humidity.”). Corning raises
`
`no argument that application of a layer of “wax/water slurry” to the surface
`
`of the coating represents an exposure to 100% relative humidity.
`
`Ex. 1001, 28:65-67; see Reply 6 (stating that the wet adhesion test described
`
`17
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`in the ’189 patent relates to conditioning “at 95% relative humidity—not
`
`liquid water immersion.” (citing Ex. 1001, 28:65-67)).
`
`After conditioning the sample at 95% relative humidity, the sample
`
`that appears “uniform and free of defects” is “peeled back from the glass.”
`
`Ex. 1001, 29:6-10. The wet adhesion test is performed on the peeled-back
`
`sample using a device that includes “a horizontal support and a pulley.” Id.
`
`at 29:1-5. With the glass secured to the horizontal support, a wire is
`
`“attached to the peeled-back end of the sample, run along the specimen and
`
`then run through the pulley in a direction perpendicular to the specimen.”
`
`Id. at 29:9-14. A wet adhesion value is determined by clamping the free end
`
`of the wire “in the upper jaw of the testing instrument,” which is activated
`
`“until the average force value, in grams force/inch,” becomes “relatively
`
`constant.” Id. at 29:14-17. The ’189 patent discloses that “[t]he preferred
`
`value for wet adhesion is at least about 5 g/in.” Id. at 29:17-18.
`
`On this record, we find that the wet adhesion test assesses the
`
`mechanical force required to peel a cured coating away from a glass
`
`substrate, after conditioning the coating at 95% relative humidity.
`
`b. The Water Soak Delamination Test
`
`The ’189 patent also discloses a water soak delamination test in which
`
`“coated microscope slides [are] soaked in [] water.” Id. at 27:32, 43. The
`
`samples are soaked in a beaker of deionized water that is placed in a 60° C.
`
`hot water bath. Id. at 27:43-45. The samples are “observed for delamination
`
`periodically. The time when the first signs of delamination” appear is
`
`recorded. Id. at 27:45-47.
`
`Table 2 in the ’189 patent specification describes a “hot water soak”
`
`in which samples are “aged for 4 hours at 60° C.,” the water bath is “shut-off
`
`18
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`for about 70 hours,” and then the temperature is “brought back to 60° C. for
`
`an additional 48 hours.” Id. at 28:8-10, 14-16. The degree of delamination
`
`observed after the hot water soak is reported in Table 2 as “none” or “delam.
`
`[a]fter 1 hour at 60° C.” Id. at 27:66; 28:8-10. Table 3 similarly reports
`
`results for a delamination test that is described as a “60[°] C Water Soak.”
`
`Id. at 29:45. Delamination results are reported in terms such as “No
`
`Delamination After 24 Hours,” “Slight Delamination After 15 Minutes,” and
`
`“No Delamination After 8 Hours; Slight Delamination After 24 Hours.” Id.
`
`at 29:45-52.
`
`On this record, we find that the water soak delamination test assesses
`
`the ability of a cured coating to withstand the hydrodynamic forces that
`
`cause delamination of a cured coating from a glass substrate in the presence
`
`of liquid water.
`
`c. Corning Fails to Establish that the Szum Coating
`Inherently Exhibits the Claimed Adhesion Property
`
`The ’189 patent discloses that the wet adhesion test evaluates the
`
`force required to peel a coating away from a glass substrate, after the coating
`
`has been conditioned at 95% relative humidity. Ex. 1001, 29:1-18.
`
`The ’189 patent identifies a different test—a water soak delamination test—
`
`for evaluating the extent of delamination that occurs when a cured coating is
`
`exposed to liquid water. Id. at 27:21-37. In DSM’s view, Corning fails to
`
`establish sufficiently that the wet adhesion test, or “[p]eel test,” can “be used
`
`to reliably determine what the results of a delamination test would be.”
`
`Resp. 29. We agree.
`
`Corning prepared the Szum coating and subjected it to substantially
`
`the same wet adhesion test that is described in the written description of
`
`the ’189 patent. Compare Ex. 1015 ¶¶ 48-51 (describing the wet adhesion
`
`19
`
`
`
`Case IPR2013-00049
`Patent 6,298,189 B1
`
`test procedure performed on the Shustack Example I and Szum ’928
`
`Example 5B coatings) with Ex. 1001, 28:50–29:18 (describing a wet
`
`adhesion test procedure performed on an inventive example). The ’189
`
`patent instructs, however, that coating samples are subjected to a water soak
`
`test and “examined for delamination” prior to conducting the wet adhesion
`
`test. Ex. 1001, 28:45-46. Specifically, the wet adhesion test is performed
`
`“[i]n addition” to the water soak delamination test.” Id. at 28:44-48. It is
`
`the delamination test that ascertains “[t]he time when the first signs of
`
`delamination” appear in a coating sample that is immersed in water. Id.
`
`at 27:22-37.
`
`Although the ’189 patent describes a sequence of testing that includes
`
`both a delamination test and a wet adhesion test, Corning comes forward
`
`with no evidence that the Szum coating was subjected to a delamination test.
`
`Id.; see Ex. 1015 ¶¶ 48-50 (Corning’s test procedures). Dr. Winningham
`
`was unaware of any delamination test performed by Corning on the Szum
`
`coating. Resp. 29 (citing Ex. 2029, 469:17–471:17). Corning relies on wet
`
`adhesion values for the Shustack Example I and Szum ’928 Example 5B
`
`coatings that are expressed as a grams-per-inch mechanical force required to
`
`peel each coating away from a glass sub
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
