Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 77
`Entered: May 1, 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 IPR2013-00050
`Patent 6,323,255 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); 37 C.F.R. § 42.73
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 77
`Entered: May 1, 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 IPR2013-00050
`Patent 6,323,255 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); 37 C.F.R. § 42.73
`
`
`
`
`Case IPR2013-00050
`Patent 6,323,255 B1
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`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Petitioner Corning Incorporated (“Corning”) filed a petition (Paper 2,
`“Pet.”) to institute an inter partes review of claims 1-19 (“the challenged
`claims”) of U.S. Patent No. 6,323,255 B1 (Ex. 1001) (“the ’255 patent”).
`The Board instituted trial for the challenged claims on the following grounds
`of unpatentability asserted by Corning:
`References 1
`Basis
`Bishop and Trapasso
`§ 103
`Bishop, Trapasso, and Szum
`§ 103
`Bishop, Trapasso, Jackson,
`§ 103
`and Szum
`§ 103
`Szum and Trapasso
`Szum, Trapasso, and Jackson § 103
`
`Claims challenged
`1-7, 12-17, and 19
`6
`8-11
`
`1-8, 12-14, and 16-19
`9-11
`
`Decision to Institute 2 (Paper 11, “Dec.”).
`After institution of trial, Patent Owner DSM IP Assets B.V. (“DSM”)
`filed a Patent Owner Response (Paper 39, “Resp.”), and Corning filed a
`Reply to the Patent Owner Response (Paper 54, “Reply”). DSM filed a
`Supplemental Response (Paper 60, “Suppl. Resp.”) with leave of the Board,
`and Corning filed a Supplemental Reply (Paper 61, “Suppl. Reply”). DSM
`filed a Motion for Observations on Cross-Examination of Corning Reply
`
`
`1 The references relied upon are: U.S. Patent No. 4,849,462 (Ex. 1002)
`(“Bishop”); U.S. Patent No. 5,664,041 (Ex. 1003) (“Szum”); U.S. Patent No.
`5,554,785 (Ex. 1004) (“Trapasso”); and U.S. Patent No. 4,900,126
`(Ex. 1005) (“Jackson”).
`
` 2
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`Declarants (Paper 63, “Obs.”), and Corning filed a Response to the
`Observations (Paper 68, “Obs. Resp.”).
`DSM also filed a Motion to Amend Claims (Paper 40), which DSM
`later corrected, with leave of the Board, to make clear that the motion is
`contingent on a finding that the claims sought to be replaced are
`unpatentable (Paper 75, “Corr. Mot. to Amend”). In it, DSM proposed
`claims 20, 21, and 22 to substitute for patented claims 1, 15, and 19,
`respectively. Motion to Amend 1. Corning filed an Opposition to the
`Motion to Amend Claims (Paper 53). DSM filed a Reply to the Opposition
`(Paper 62, “Amend Reply”).
`DSM also filed a Motion to Exclude certain of Corning’s Evidence
`(Paper 64, “Mot. to Exclude”). Corning filed an Opposition, (Paper 69,
`“Excl. Opp.”), and DSM filed a Reply (Paper 72, “Excl. Reply”).
`Corning relies upon declarations of Dr. Michael Winningham
`(Ex. 1006) and Ms. Inna Kouzmina (Ex. 1007) in support of its Petition.
`DSM relies upon a declaration of Dr. Christopher Bowman (Ex. 2026) in its
`Response, along with a deposition of Dr. Winningham (Exs. 2021-2025) and
`portions of Ms. Kouzmina’s deposition (Exs. 2018, 2019). Corning relies
`upon a responsive declaration of Dr. Winningham (Ex. 1029), along with a
`deposition of Dr. Bowman (Exs. 1030-1035) and a portion of
`Ms. Kouzmina’s deposition (Ex. 1036) in its Reply. DSM relies upon a
`supplemental declaration of Dr. Bowman in its Supplemental Response (see
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`IPR2013-00052, Ex. 2037).2 Corning relies upon depositions of
`Dr. Winningham (Ex. 1038)3 and Dr. Dotsevi Sogah (Ex. 1037) in its
`Supplemental Reply.
`Oral argument was conducted on February 11, 2014. A transcript is
`entered as Paper 76.
`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 proved that claims 1-19 of the ’255 patent are
`unpatentable.
`DSM’s Corrected Motion to Amend Claims is denied.
`DSM’s Motion to Exclude Corning Evidence is denied-in-part and
`dismissed-in-part.
`
`B. The Invention
`
`The ’255 patent is titled “Radiation-Curable Composition” and
`generally relates to compositions that may be used as, e.g., optical fiber
`coatings and exhibit “reduced discoloration over time and/or high
`
`
`2 The Board denied DSM authorization to file Dr. Bowman’s supplemental
`declaration in this proceeding. Paper 57, 4-5. DSM nevertheless cites to
`this declaration in support of its Supplemental Response argument.
`Suppl. Resp. passim. We exercise our discretion and address Dr. Bowman’s
`supplemental declaration for the limited purpose discussed below. DSM
`also cites to a declaration of Dr. Dotsevi Sogah in its Supplemental
`Response. Supp. Resp. 1 (citing IPR2013-00043, Ex. 1060). We exercise
`our discretion and consider Dr. Sogah’s declaration as well.
`3 Ex. 1038 is a rough transcript. DSM submitted an official transcript as
`Ex. 2035.
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`elongation.” Ex. 1001, 1:4-7. The compositions in particular include “at
`least one transesterified and/or high-purity monomer,” id. at 1:7-9, to which
`is attributed the improved discoloration and elongation properties. Id. at
`3:5-13. It is acknowledged in the ’255 patent that Trapasso discloses
`transesterified monomers having “excellent purity,” but it is asserted that
`Trapasso does not disclose the usefulness of these monomers in making
`optical fiber coatings, nor that they improve the discoloration and elongation
`properties. Id. at 2:20-33. Claims 1 and 17, reproduced below, are the
`independent claims in the ’255 patent and illustrate the claimed subject
`matter:
`
`1. A radiation-curable composition comprising:
`(i) a radiation-curable oligomer; and
`(ii) at least one transesterified monomer, said
`transesterified monomer having a purity level
`of greater than 95% and less than 100 ppm of
`an organotin catalyst;
`(iii) a silane adhesion promoter;
`wherein said composition upon cure has a ΔE
`value of less than 20 when exposed to low
`intensity fluorescent light for a period of ten
`weeks.
`
`
`17. A radiation-curable composition comprising:
`(i) a radiation-curable oligomer; and
`(ii) at least one transesterified monomer having a
`purity level of greater than 95% and less than
`100 ppm of an organotin catalyst, said at least
`one transesterified monomer being selected
`from the group consisting of isodecyl acrylate,
`isobomyl acrylate, and phenoxyethylacrylate;
`wherein said composition upon cure has a ΔE
`value of less than 20 when exposed to low
`
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`intensity fluorescent light for a period of ten
`weeks.4
`
`
`Claims 2-16 depend directly or indirectly from claim 1, and claims
`18-19 depend from claim 17. Claims 2-3 further specify the oligomer.
`Claims 4-11 specify use of the composition in fiber optics. Claims 12 and
`13 further specify the monomer and the silane adhesion promoter,
`respectively. Claim 14 further requires a photoinitiator. Claims 15, 16, 18,
`and 19 specify additional material properties of the composition.
`
`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 also are 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
`
`
`4 The term “isobomyl” in limitation (ii) appears to be a typographical error
`that instead should have read --isobornyl. See, e.g., Ex. 2028, 116:22 (p. 2
`of Amendment dated January 30, 2001).
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`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. “A ΔE value of less than 20 when exposed to low intensity
`fluorescent light for a period of ten weeks” (claims 1, 17)
`
`Corning argues that curing, under any conditions, followed by any ΔE
`test protocol satisfying the recited conditions, meets this limitation. Pet. 21.
`Corning argues, nevertheless, that it followed the curing and ΔE testing
`procedure as specified at column 16, lines 18-37 in the ’255 patent when
`testing the prior art compounds. Pet. 28 (citing Ex. 1007 ¶¶ 18-19). DSM
`argues that the limitation should be construed as encompassing this same
`procedure. Resp. 14-15. The parties agree, therefore, that the scope of this
`limitation at least includes ΔE measurements made by the procedure
`specified in the ’255 patent. Whatever other measurement protocols this
`limitation encompasses, it certainly encompasses at least the one
`measurement protocol that the ’255 patent spells out for curing and
`measuring ΔE. 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.
`
`2. “Transesterified monomer” (claims 1, 17)
`
`Corning argues that the term “transesterified monomer” should be
`construed as “esterified monomer,” because the term “transesterified” refers
`to the process used to make a monomer that contains an ester group, rather
`than to the chemical composition of the monomer. Pet. 23-24. Corning
`argues that either a transesterification or a direct esterification reaction
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`scheme may be employed to make a particular esterified monomer, and that
`the particular reaction scheme selected does not affect the resulting chemical
`composition. Id. at 24 (citing Ex. 1006 ¶ 93). Corning also argues that
`“transesterified monomer” should be construed as encompassing “molecules
`that contain an ester group and an unsaturated group that is capable of
`polymerization.” Id. at 26-27 (citing Ex. 1006 ¶¶ 99, 100).
`DSM argues that the term should be construed to mean “a monomer
`diluent prepared by transesterification.” Resp. 17. DSM does not challenge
`Corning’s position that an esterified monomer made by transesterification is
`indistinguishable from the same esterified monomer made by direct
`esterification. Rather, DSM argues that the two reaction schemes may leave
`behind different impurities in the monomer, such as leftover reactants or
`undesired products, which may affect the monomer’s performance or the
`properties of coating compositions made with it. Resp. 17-18 (citing
`Ex. 2026 ¶¶ 52-58 (citing Ex. 2022, 359:8-360:15; 371:14-372:20)).
`Corning asserts (e.g., Pet. 6), and DSM does not deny, that the ’255
`patent cites Trapasso for its disclosure of transesterified monomers, and
`incorporates Trapasso by reference. We agree with Corning that the ’255
`patent cites Trapasso with favor for its teachings of transesterified
`monomers. See Ex. 1001, 2:20-33; 7:33-35. Trapasso’s transesterified
`monomers are, consequently, certainly within the scope of the claim term
`“transesterified monomers” as that term is used in the ’255 patent. See
`Oatey, 514 F.3d at 1276. No further construction of the term is necessary.
`
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`3. “(Meth)acrylate” (claims 2, 3)
`
`We construed this term as meaning “methacrylate or acrylate” in the
`Decision to Institute. Dec. 5. We based this construction on testimony by
`Dr. Winningham that “the parenthetical ‘meth’ means that the acrylate
`functionality can be present either as a methacrylate or as an acrylate.”
`Ex. 1006 ¶ 23. Neither party has commented on this interpretation. We
`maintain it.
`
`4. “Radiation-curable oligomer” (claims 1, 17)
`
`Corning argues that “radiation-curable oligomer” should be construed
`to encompass “molecules that contain a chain with an unsaturated group
`capable of polymerization.” Pet. 25-26 (citing Ex. 1001, 3:30-42; Ex. 1006
`¶ 98). DSM argues that the term should be given its plain meaning.
`Resp. 20-21 (citing Ex. 2026 ¶ 62). We agree with DSM. All of the
`references underlying the instituted challenges concern oligomers that are
`curable by radiation. No further construction is necessary.
`
`5. “Fiber optic coating composition” (claim 4)
`
`Corning argues that this term should be given no patentable weight
`because it refers solely to an intended use of the claimed compositions.
`Pet. 24-25 (citing Ex. 1006 ¶¶ 94, 95). DSM does not address construction
`of this term in its Response.
`We disagree with Corning that the term is to be accorded no
`patentable weight. It limits the scope of the claim to compositions that are
`capable of being used to form fiber optic coatings. See In re Schreiber, 128
`F.3d 1473, 1477 (Fed. Cir. 1997). Accordingly, we construe “a fiber optic
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`coating composition,” as that term appears in claim 4, to mean “capable of
`being used to form a fiber optic coating.”
`
`6. “inner primary optical fiber coating composition” (claim 5)
`
`Corning argues that this term should be given no patentable weight
`because it refers solely to an intended use of the claimed compositions.
`Pet. 24-25 (citing Ex. 1006 ¶¶ 94, 95).
`DSM argues, citing testimony from Corning’s expert,
`Dr. Winningham, that one of ordinary skill would understand that a
`composition intended for making an inner primary coating would have a
`“relatively low” modulus and glass transition temperature (Tg), because
`inner primary coatings are designed to be soft and compliant, to protect the
`fiber from damage during handling. Resp. 18-20 (citing Ex. 1006 ¶ 15;
`Ex. 2024, 768:15-25). DSM points out that the ’255 patent specifies
`particular ranges for modulus and Tg for compositions that are formulated
`for use as an inner or outer primary coating. Id. at 19-20 (citing Ex. 1001,
`10:58-61; see id. at 11:6-10).
`The limitation imposes at least the requirement that the claimed
`composition be capable of the intended use. See In re Schreiber, 128 F.3d at
`1477. DSM’s arguments, however, do not persuade us that the broadest
`reasonable interpretation in light of the specification should be narrower
`than this. The words “relatively low” introduce imprecision into the
`meaning of the claim, rather than eliminate it, because it is not clear to what
`the properties are compared or how low is low enough.
`
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`The specification passages DSM cites for numerical ranges of
`modulus and Tg do not cure this problem, because they are too imprecise to
`amount to special definitions. The passages are reproduced below:
`[Compositions after cure] having a modulus in the
`lower range, for instance, from 0.1 to 10 MPa,
`preferably 0.1 to 5 MPa, and more preferably 0.5
`to less than 3 MPa are typically suitable for inner
`primary coatings for fiber optics. In contrast,
`suitable compositions for outer primary coatings,
`inks and matrix materials generally have a
`modulus of above 50 MPa, with outer primary
`coatings
`tending
`to have a modulus more
`particularly above 100 up to 1,000 MPa and matrix
`materials tending to be more particularly between
`about 50 MPa to about 200 MPa.
`
`Ex. 1001, 10:58-67.
`Thermal mechanical measurements can be used to
`optimize the glass transition temperature (Tg)
`which may be from 10° C. down to -70° C. or
`lower for compositions formulated for use as inner
`primary coatings and 30° C. to 120° C. or higher,
`more preferably above 40° C., for compositions
`designed for use as outer primary coatings, inks
`and matrix materials.
`
`Id. at 11:6-12.
`First, DSM does not explain which of the several exemplary ranges
`disclosed for modulus of inner primary coatings is applicable to the claim
`construction. Moreover, the specification describes those exemplary ranges
`merely as being “typically suitable.” While this passage can be taken as an
`indication that compositions after cure having moduli in the disclosed ranges
`are within the claim scope, it does not indicate whether moduli outside the
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`range are beyond the claim scope. The passage does not amount to a special
`definition because it lacks reasonable precision. See In re Paulsen, 30 F.3d
`at 1480.
`With regard to Tg, the specification again is imprecise, because it
`states that Tg “may” be in some range. The term “may” indicates that the
`value can, but need not, be in the disclosed range. Moreover, the range is
`not specified unambiguously, because the lower bound is given as “-70° C.
`or lower.” This could mean that there is no lower bound at all. DSM has
`not explained how this ambiguous disclosure amounts to a reasonably
`precise definition. Id.
`For these reasons, we construe “an inner primary optical fiber coating
`composition,” as that term appears in claim 5, to mean “capable of being
`used to form an inner primary optical fiber coating.”
`
`7. “Outer primary optical fiber coating composition” (claim 6)
`
`For reasons analogous to those given above, we construe “an outer
`primary optical fiber coating composition,” as that term appears in claim 6,
`to mean “capable of being used to form an outer primary optical fiber
`coating.”
`
`8. “An elongation at break” (claim 15)
`
`Corning argues that curing under any conditions, followed by an
`elongation at break test protocol satisfying the recited conditions, meets this
`limitation. Pet. 21-22. Corning argues, nevertheless, that it followed the
`curing and elongation-at-break testing procedure as specified at column 15,
`line 5 to column 16, line 15 in the ’255 patent when testing the prior art
`compounds for elongation at break. Pet. 34 (citing Ex. 1007 ¶¶ 21-26).
`
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`DSM argues that the limitation should be construed as requiring that the
`samples be fully cured by ultraviolet radiation, not simply under any
`conditions. Resp. 15-16 (citing Ex. 2026 ¶ 50). DSM argues further that the
`’255 patent describes how to determine cure speed, at column 14, line 50 to
`column 15, line 3. Id. at 16 (citing Ex. 2026 ¶ 50).
`Whatever other measurement protocols this limitation encompasses, it
`certainly encompasses at least the one measurement protocol that the ’255
`patent provides for curing and measuring elongation at break. See Oatey,
`514 F.3d at 1276. DSM has not explained the relevance of the “cure speed”
`disclosure to the construction of the “elongation at break” limitation. The
`limitation requires no further construction.
`
`9. “A modulus of above 50 MPa”; “a modulus in the range of
`0.1 to 10 MPa” (claims 18 and 19, respectively)
`
`The parties agree that these limitations encompass measurements at
`least of tensile modulus, also known as Young’s modulus, as described in
`the ’255 patent. Pet. 23; Resp. 16 (both citing Ex. 1001, 15:5-16:4).
`Whatever other measurement protocols this limitation encompasses, it
`certainly encompasses at least the one measurement protocol that the ’255
`patent provides for curing and measuring tensile modulus. See Oatey, 514
`F.3d at 1276. The limitation requires no further construction.
`
`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. 48-50.
`In particular, DSM argues that Dr. Winningham gave no consideration to the
`relevant time period when making obviousness determinations. Id. DSM
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`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?
`I’m not making that distinction.
`A.
`Q. So at any time?
`A. Yes.
`
`Id. (quoting Ex. 2023, 424:18-23).
`Corning dismisses this argument as “hypertechnical” and argues that
`Dr. Winningham made a thorough analysis of the evidence. Reply 11-12.
`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 weakens his
`testimony. We agree with Corning that the thoroughness of
`Dr. Winningham’s testimony outweighs the relatively minor concern DSM
`expresses. We also are not persuaded that Dr. Winningham made the
`admission in deposition 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 relevant to the issue of whether he
`failed to consider the relevant time period in his obviousness opinions.
`
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`C. Obviousness Based on Bishop
`
`1. Obviousness of claims 1-7, 12-17, and 19 over Bishop and
`Trapasso
`
`Overview of Bishop
`Bishop relates to optical glass fiber coatings curable by ultraviolet
`light. Ex. 1002, 1:11-15. Bishop describes the incorporation of various
`organofunctional silanes to improve adhesion of the coating to glass fiber in
`humid environments, including gamma-mercaptopropyl trimethoxy silane.
`Id. at 1:45-46.5 Bishop describes several coating compositions based on
`“Desolite 950-030,” which is described as containing urethane acrylate
`oligomer, N-vinyl pyrrolidone, phenoxyethyl acrylate, diethoxyaceto-
`phenone, and phenothiazine. Id. at 3:9-12. The urethane acrylate oligomer
`is described as being constituted by polypropylene glycol, among other
`things. Id. at 3:12-20.6 The urethane acrylate oligomer is radiation-curable,
`as may be inferred from Bishop’s disclosure of subjecting the Desolite 950-
`030 coatings to ultraviolet radiation. Id. at 5:40-47. Among the coatings
`based on Desolite 950-030 is one, identified as “Example 4.4” by Corning
`(Pet. 28), which further contains mercaptopropyl trimethoxy silane.
`Ex. 1002, 6:13-18. The diethoxyacetophenone in Desolite 950-030 is
`
`
`5 Bishop’s disclosure of mercaptopropyl trimethoxy silane as a mercapto
`functional silane adhesion promoter in optical fiber coatings is
`acknowledged in the ’255 patent at col. 10, ll. 34-36.
`6 The ’255 patent indicates that oligomers made from polypropylene glycol
`contain polyether groups. Ex. 1001, 3:58-4:11.
`
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`identified as a photoinitiator, id. at 4:38-39, and Bishop discloses that
`photoinitiators may be used in mixtures, id. at 4:43-44.
`Overview of Trapasso
`Trapasso discloses the use of organotin-catalyzed transesterification
`reactions for producing acrylate ester monomers, including phenoxyethyl
`acrylate. Ex. 1004, 1:11-21; 16:15-34. Trapasso explains that the esters
`have many commercial applications, including as UV coatings and as
`reactive diluents for radiation curable oligomers. Id. at 1:22-35. Trapasso
`discloses that the acrylate ester monomers, thus prepared, have purity levels
`greater than about 95% (id. at 5:20-30) and contain less than 100 ppm of
`organotin catalyst (id. at 11:24-27). Trapasso also discloses that the high-
`purity transesterified esters have lower color and enhanced cure rates
`compared to esters made by direct esterification. Id. at 3:18-21; 5:33-35.
`Analysis
`Corning contends that claims 1-7, 12-17, and 19 would have been
`obvious over Bishop’s Example 4.4 modified by Trapasso’s disclosure of
`high-purity transesterified phenoxyethyl acrylate. Pet. 32. We address the
`challenged claims in turn.
`a. Claim 1
`Corning argues that Bishop’s Example 4.4 inherently possesses all the
`material property limitations required by claim 1, as demonstrated by testing
`recounted in Ms. Kouzmina’s declaration. Pet. 28-29. According to
`Corning, Trapasso suggests the desirability of using high-purity
`transesterified phenoxyethyl acrylate esters, which have known commercial
`uses as, e.g., reactive diluents for radiation curable oligomers, due to their
`lower color and improved cure rate. Pet. 30-31 (citing, inter alia, Ex. 1004,
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`3:18-30). Corning concludes that one of ordinary skill in the art would have
`found it obvious to use Trapasso’s high-purity esters in Bishop’s optical
`coating compositions to obtain these benefits. Pet. 31.
`With regard to the requirement in claim 1 that the composition when
`cured have “a ΔE value of less than 20 when exposed to low intensity
`fluorescent light for a period of ten weeks,” Corning acknowledges that the
`references do not disclose this property, and instead, argues that the evidence
`in Ms. Kouzmina’s declaration demonstrates it to be inherent in Bishop’s
`Example 4.4. Pet. 28-29. Ms. Kouzmina states that Example 4.4 was
`prepared “pursuant to the instructions contained in Bishop.” Ex. 1007 ¶ 5.
`The phenoxyethyl acrylate used was prepared by direct esterification without
`organotin catalyst, not by transesterification, and the resulting monomer had
`a purity of about 90.4%. Ex. 1007 ¶ 7 n.3. Ms. Kouzmina states that color
`change tests were conducted on the Example 4.4 composition “in accordance
`with the procedures set forth in the ’255 patent at 16:16–38.” Ex. 1007 ¶ 18.
`The procedure is summarized in paragraph 19 of the Kouzmina Declaration.
`Results are presented in Table A and show that Example 4.4 had a ΔE value
`of 8.3 (average of three samples). Ex. 1007 ¶ 20.
`Corning acknowledges that the Example 4.4 composition as made and
`tested does not satisfy the claim limitation that the monomer have a purity
`level of greater than 95%. Pet. 29. Corning contends, however, that because
`the resulting composition already satisfies the ΔE limitation, and because
`Trapasso’s high-purity monomer has a lower color than that used in
`Example 4.4, the composition that would result from modifying Example 4.4
`to include Trapasso’s high-purity monomer would be expected to continue
`to satisfy the ΔE limitation. Pet. 31. Corning further supports the argument
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`that there would have been a reasonable expectation of success with
`evidence from Dr. Winningham that “[s]killed scientists would have
`recognized that the beneficial properties Trapasso sets forth with regard to
`its esterified products have a clear benefit in coatings for optical fibers.”
`Ex. 1006 ¶ 107.7
`DSM makes several arguments in response: (1) the different
`impurities that result from transesterification compared to direct
`esterification may have affected Corning’s measured ΔE values, such that
`Corning’s test results indicate nothing about whether the asserted
`combination of Bishop and Trapasso would have possessed the claimed ΔE
`value (Resp. 24-30); (2) one of ordinary skill would not have had reason to
`combine Bishop and Trapasso (Resp. 30-32); and (3) one of ordinary skill
`would not have had a reasonable expectation of success to achieve the
`claimed compound from combining Bishop and Trapasso (Resp. 32-35).
`We address these arguments in turn.
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`7 Dr. Winningham states that a “skilled scientist in the art of fiber optic
`coatings is a person with at least a masters degree in chemistry or material
`science and engineering, and 5 years of experience in the research,
`development, or manufacture of optical fiber coatings.” Ex. 1006 ¶ 8.
`Dr. Bowman states that a person of ordinary skill would have a B.S. degree
`in chemistry, chemical engineering, materials science, or a related field, and
`3-5 years’ post-graduate experience, including experience in
`photopolymerization, molecular synthesis, polymer characterization,
`polymer chemistry, and optical fibers. Ex. 2026 ¶ 42. We adopt
`Dr. Bowman’s description of the level of one of ordinary skill, because it is
`reasonable and is not challenged by Corning.
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`(1) Impurities
`DSM argues that Bishop’s Example 4.4 does not disclose expressly
`the “transesterified monomer” and “monomer has a purity level of greater
`than 95%” limitations of claim 1. Resp. 24-25. DSM argues further that
`Corning’s experts did not know what impurities contaminated their
`reproduction of Bishop’s Example 4.4. Id. at 25 (citing Ex. 2026 ¶ 77;
`Ex. 2022, 370:13-24; Ex. 2017, 266:6-17). According to DSM,
`Dr. Winningham acknowledged that there may have been color bodies and
`unreactive diluents present, as a result of using a monomer prepared by
`direct esterification, and that those impurities may have been different from
`the impurities that would have been introduced by using a monomer
`prepared by transesterification. Id. (citing Ex. 2022, 369:11–372:20;
`Ex. 2026 ¶ 77 (quoting Ex. 2022, 364:3–365:7)). DSM argues that
`Corning’s test data does not show that Bishop, or Bishop modified to
`include Trapasso’s transesterified monomer, meets the claimed ΔE value,
`because Corning did not show that its reproduction necessarily contained the
`same contaminants that the claimed composition would have. Id. at 25-26
`(citing Ex. 2026 ¶ 78).
`DSM also argues that Corning has not established that the monomer it
`used in preparing samples for testing accurately reflects the purity and
`composition of the monomer as it existed at the time of invention in 1998.
`Resp. 26 (citing Ex. 2026 ¶ 79).
`Corning argues, in reply, that creating and testing the composition
`resulting from the combination of Bishop and Trapasso would not have been
`appropriate, because such a composition did not actually exist in the prior
`art. Reply 2-3. Corning argues that it demonstrated that Bishop’s Example
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`4.4 satisfied the ΔE value claimed and that, pursuant to Dr. Winningham’s
`testimony, one of ordinary skill would reasonably expect it to continue to
`satisfy the ΔE value once modified to include a monomer prepared by
`transesterification. Reply 3-4. Regarding DSM’s argument that the
`monomers Corning used might not have resembled those available in 1998,
`Corning cites Dr. Winningham’s responsive declaration as evidence that
`(a) Corning used phenoxyethyl acrylate and isobornyl acrylate monomers
`supplied by Sartomer in preparing its samples, and (b) Dr. Winningham
`contacted a representative of Sartomer, who confirmed that these monomers
`are made the same way now (November 2013) as they were then. Reply 4-5
`(citing Ex. 1029 ¶¶ 30-32). DSM dismisses this evidence as based on
`inadmissible hearsay (Paper 63 ¶ 3).
`DSM’s argument that impurities make Corning’s ΔE measurements
`unreliable is not persuasive, because it fails to address Corning’s basic
`proposition of unpatentability. Corning’s principal evidence of the
`obviousness of combining Bishop and Trapasso comes from Trapasso itself:
`that Trapasso recognized the use of monomers as diluents in radiation-
`curable coating compositions, identified various benefits of the substitution
`of transesterified monomers for direct-esterified monomers, and addressed
`the same particular monomers as Bishop, including phenoxyethyl acrylate.
`See Pet. 30-31 (citing, inter alia, Ex. 1004, 3:18-30). Corning uses the ΔE
`testing data not for showing a rationale to combine, but rather in partial
`support of its argument that one of ordinary skill would have had a
`reasonable expectation of success. See Pet. 30-31. Corning also relies on
`the fact that Trapasso describes
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