Paper 88
`Trials@uspto.gov
`571-272-7822 Entered: May1, 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 IPR2013-00052
`Patent 7,276,543 B2
`____________
`
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`Trials@uspto.gov
`571-272-7822 Entered: May1, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CORNING INCORPORATED
`Petitioner
`
`v.
`
`DSM IP ASSETS B.V.
`Patent Owner
`____________
`
`Case IPR2013-00052
`Patent 7,276,543 B2
`____________
`
`
`Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
`JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`Case IPR2013-00052
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`I.
`
`INTRODUCTION
`A.
`Background
`Pursuant to 35 U.S.C. §§ 311-319, Corning Incorporated (“Corning”)
`petitioned for an inter partes review of claims 1-34 of U.S. Patent No.
`7,276,543 B2 (“the ’543 patent”). Paper 3 (“Pet.”). On May 2, 2013, the
`Board denied the petition as to claims 1-10 but instituted trial for claims 11-
`34 on several grounds of unpatentability. Paper 13 (“Dec.”). Thereafter,
`Patent Owner DSM IP Assets B.V. (“DSM”) filed a Response (Paper 43
`(“PO Resp.”)), and Corning filed a Reply (Paper 56 (“Reply”)). Later, DSM
`filed a Supplemental Response (Paper 67 (“Supp. Resp.”)), and Corning
`filed a Reply thereto (Paper 68 (“Supp. Reply”)).1
`Oral hearing was held on February 11, 2014. See Paper 87 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c) and issues this final
`written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Corning has proved by a preponderance of the evidence that
`claims 11-23 and 26-31 of the ’543 patent are unpatentable. It, however, has
`failed to meet its burden of proof regarding the unpatentability of claims 24,
`25, and 32-34.
`B.
`Related Proceedings
`Corning and DSM simultaneously are involved in nine other inter
`partes reviews based on patents claiming similar subject matter:
`IPR2013-00043, IPR2013-00044, IPR2013-00045, IPR2013-00046,
`
`
`1 The Board authorized these filings in resolving certain discovery disputes.
`Paper 54.
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`2
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`IPR2013-00047, IPR2013-00048, IPR2013-00049, IPR2013-00050, and
`IPR2013-00053.2
`C.
`The ’543 Patent
`The ’543 patent relates to an optical fiber coating prepared from a
`radiation curable composition. Ex. 1001, Abstract; see also id. at 1:16-18.
`The composition comprises an oligomer, a reactive diluent, and a plurality of
`free radical photoinitiators with certain absorption characteristics. Id. at
`3:11-44.
`Claim 11, the sole independent claim in this proceeding, reads:
`11. A radiation-curable composition comprising
`(A)
`an oligomer,
`(B)
`a reactive diluent, and
`(C)
`a photoinitiator package of at least two free radical
`photoinitiators having an overall absorption spectrum in
`methanol which is the sum of the absorption spectra of each
`individual photoinitiator wherein said overall absorption
`spectrum has a minimum value of a molar extinction coefficient
`(ε) in a range between 280 nm (λ1) and 320 nm (λ2) of at least
`about 525 lmol-1cm-1 or wherein said overall absorption
`spectrum has an average value of ε in a range between 280 nm
`(λ1) and 320 nm (λ2) of at least about 980 lmol-1cm-1.
`Ex. 1001, 27:45-57.
`
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`2 IPR2013-00053 addresses claims 35-57 of the ’543 patent.
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`§ 103
`§ 102
`§ 103
`§ 103
`§ 103
`
`Szum ’041 and Ciba
`Snowwhite
`Snowwhite, Fouassier, and Levy
`Snowwhite and Zahora
`Szum ’041, Snowwhite, and Zahora
`
`Reviewed Grounds of Unpatentability
`D.
`The Board instituted trial on the following grounds of unpatentability:
`Reference(s)3
`Claim(s) Challenged
`Basis
`11-14, 16-21, 26, 27,
`§ 102
`Szum ’041
`29, 30, and 32-34
`24 and 25
`11-22 and 26-30
`23
`31
`31
`
`
`II. ANALYSIS
`A.
`Claim Construction
`In the Decision to Institute, the Board adopted Corning’s
`interpretation of several terms. Dec. 5-6. After the institution of the trial,
`the parties disputed the construction of “percentage reacted acrylate
`unsaturation (%RAU)” only. Pet. 16-17; PO Resp. 16-18; Reply 2-7. As we
`dispose of all issues on other grounds, we do not need to reach any claim
`construction in this Final Decision.
`
`
`3 Szum, U.S. Patent No. 5,664,041 (Ex. 1002) (“Szum ’041”); Ciba-Geigy
`Corp., Photoinitiators for UV Curing: A Formulator’s Guide (Ex. 1006)
`(“Ciba”); Snowwhite et al., Int’l Pub. No. WO 98/47954 (Ex. 1003)
`(“Snowwhite”); JEAN-PIERRE FOUASSIER, PHOTOINITIATION,
`PHOTOPOLYMERIZATION, AND PHOTOCURING: FUNDAMENTALS AND
`APPLICATIONS 71-72 (1995) (Ex. 1011) (“Fouassier”); Levy, U.S. Patent No.
`6,042,943 (Ex. 1012) (“Levy”); Zahora et al., Int’l Pub. No. WO 98/50317
`(Ex. 1004) (“Zahora”).
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`B. Unpatentability Analysis
`1.
`Claims 11-23 and 26-31
`In instituting this inter partes review, the Board concluded that
`“Corning has demonstrated that there is a reasonable likelihood of prevailing
`on its challenge to the patentability” of claims 11-23 and 26-31. See Dec. 8-
`12, 18-20, 22; see also 35 U.S.C. § 314(a). After the Board institutes a
`review, the patent owner “may file a response to the petition addressing any
`ground for unpatentability not already denied.” See 37 C.F.R. § 42.120(a).
`In its Scheduling Order, the Board cautioned DSM that “any arguments for
`patentability not raised in the response will be deemed waived.” Paper 14,
`2.
`
`In its Patent Owner’s Response, DSM chose “not to substantively
`respond to Corning’s Petition with respect to claims 11-23 and 26-31.”4 PO
`Resp. 3. In its Supplemental Response, however, DSM asserted that
`“Corning’s GPC [gel permeation chromatography] data does not prove that
`Corning properly synthesized the prior art oligomers.” Supp. Resp. 5. Even
`though DSM did not state so explicitly, this allegation relates to DSM’s
`patentability argument for claims 11-23 and 26-31. After all, if DSM’s
`contentions bear out, Corning’s test data using the oligomers of questionable
`quality could not serve as the basis to prove unpatentability of any claim.
`According to Professor Bowman, the expert for DSM, when
`synthesizing an oligomer, the presence of a significant amount of low
`
`
`4 DSM stated that it instead submitted a Motion to Amend under 37 C.F.R.
`§ 42.121. PO Resp. 3. The record, however, does not include any Motion to
`Amend in this proceeding.
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`molecular weight starting materials would indicate an incomplete synthesis.5
`Ex. 2037 ¶ 7. In addition, unreacted starting materials also can impact
`detrimentally the functional properties of the resulting coating composition.
`Id. In Professor Bowman’s view, the starting materials of Corning’s sample
`co-eluted with the tracer, which made it “difficult, if not impossible, to
`determine from these [GPC] spectra whether the oligomer functionalization
`reaction is complete in Corning’s oligomer compositions.” Id. ¶ 12.
`Professor Bowman estimated “there might be 30 or 40 percent of small
`molecular weight compounds that are present in those [Corning oligomers].”
`Ex. 1039, 171:16-19.
`Corning disagreed. Professor Sogah, an expert for Corning,
`explained: “The main purpose of analyzing a GPC chromatogram that is run
`on a GPC designed to assess oligomer formation is to see if oligomer peaks
`appear in the high molecular-weight region of the chromatogram.” Ex. 1071
`¶ 56. Thus, a skilled polymer chemist would not analyze the low molecular-
`weight region to confirm oligomer formation. Id. ¶ 57. “Even if a skilled
`scientist were to focus on the low molecular-weight region of the GPC
`chromatogram[,] there is no information available in the Corning GPC
`chromatograms in this region to indicate that the oligomer has not been
`properly formed.” Id. ¶¶ 58-60. In Professor Sogah’s opinion, given the
`highly reactive nature of the reagents used in the oligomer formation,
`
`5 The Board denied DSM authorization to file Dr. Bowman’s supplemental
`declaration in this proceeding. Paper 59, 4-5. DSM nevertheless cited to
`this declaration in support of its Supplemental Response argument.
`Suppl. Resp. passim. We exercise our discretion and consider
`Dr. Bowman’s supplemental declaration for the limited purpose discussed
`herein.
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`together with the long reaction time Corning used to prepare the oligomers,
`it would be “highly unlikely” that the unreacted starting materials would
`be present in amounts of 30-40%, as Professor Bowman alleged. Id.
`¶¶ 64-66. Professor Sogah further pointed out:
`Additionally, oligomers in general are fairly viscous, to the
`point that this viscosity is observable to the naked eye. Having
`30-40% unreacted HEA [the starting material], or any other
`liquid, in the final product of an oligomer synthesis would
`certainly affect the viscosity of the resulting product. A skilled
`chemist with experience synthesizing oligomers would
`immediately recognize that such a resulting product does not
`have the viscosity and other physical attributes associated with
`a typical oligomer. For example, HEA is volatile and has a
`very strong, pungent odor which a skilled chemist would almost
`certainly notice when handling this material. For all the reasons
`stated above, I think it would be highly unlikely that a skilled
`chemist with experience in synthesizing oligomers would be
`confused into thinking that the final “oligomer” product being
`synthesized actually contained 30-40% small molecular weight
`compounds, such as unreacted HEA.
`Id. ¶ 68.
`We find Professor Sogah’s explanation more persuasive. First, after
`Corning submitted Professor’s Sogah’s declaration rebutting Professor
`Bowman’s opinion, DSM cross-examined Professor Sogah for two days.
`See Exs. 2060, 2061. In its Motion for Observations on Cross-Examination
`of Corning Reply Declarants, DSM called to our attention several deposition
`testimony excerpts from other Corning experts. See Paper 70. Had DSM
`found any support for its allegation that Corning improperly prepared the
`oligomer samples, it could have pointed it out to us. See Office Patent Trial
`Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48,756, 48,767-68
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`(Aug. 14, 2012). It did not do so. In fact, DSM did not call to our attention
`any testimony from Professor Sogah.
`More importantly, DSM’s scientists do not appear to have given
`much weight to the low-molecular-weight region of the GPC spectrum. See
`Ex. 1039, 144:6–147:22. Indeed, when a DSM’s scientist presented the
`oligomer test data to Professor Bowman, she did not include data of the low-
`molecular-weight region. See id. at 146:12-15 (“So the one that I’m sure
`had been done before it was the di -- the diisocyanate diacrylate. They had
`run that before. She thought she knew where it should show up, but couldn’t
`pull out that data.”); id. at 146:20-25 (“And I think the same thing was true
`of the lauryl acrylate as was true of the diisocyanate diacrylate. She knew
`from her experience where it would show up, but I again indicated I needed
`more than her experience, that I wanted see that run as a sample itself . . . .”).
`This testimony confirms Professor Sogah’s position, i.e., when analyzing a
`GPC chromatogram to assess oligomer formation, a skilled polymer chemist
`would focus on the oligomer peaks in the high-molecular-weight region, and
`not the peaks of the starting materials or tracer in the low-molecular-weight
`region. Ex. 1071 ¶¶ 56-57.
`We find that Corning has established that it properly prepared the
`oligomer it used for testing. DSM has not presented enough evidence to
`lead us to doubt the quality of Corning’s oligomer preparation. Based on the
`record developed at trial, we find a preponderance of evidence supporting
`unpatentability of claims 11-23 and 26-31. See 35 U.S.C. § 316(e).
`Specifically, we are persuaded by the data and testimony Corning presented
`in support of its position that Examples 4 and 5B of Szum ’041 inherently
`anticipate claims 11-14, 16-21, 26, 27, 29, and 30. See Pet. 18-26; Ex. 1013
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`¶¶ 106-29, 135; Ex. 1014 ¶¶ 35-39. Also, Corning presented persuasive data
`and testimony supporting its position that Example C of Snowwhite
`inherently anticipates claims 11-22 and 26-30. See Pet. 48-54; Ex. 1013
`¶¶ 209-28, 231; Ex. 1014 ¶¶ 35-39. Further, Corning presented data and
`testimony sufficient to support its position that the combination of
`Snowwhite, Fouassier, and Levy renders claim 23 obvious, and that the
`combination of Snowwhite and Zahora (or the combination of Szum ’041,
`Snowwhite, and Zahora) renders claim 31 obvious. See Pet. 30-31, 55-58;
`Ex. 1013 ¶¶ 233-46.
`Besides the unconvincing challenge of Corning’s adequate oligomer
`sample preparation, DSM did not present any other evidence or argument to
`rebut the unpatentability assertions. Therefore, Corning has satisfied its
`burden of proving unpatentability of claims 11-23 and 26-31.
`2.
`Claims 32-34
`Claims 32-34 depend from claim 11 and further limit the radiation-
`curable composition, “when cured at a dose of about 4.4 mJ/cm2,” to have a
`%RAU of at least 56%, 60%, and 66%, respectively. Ex. 1001, 28:65–29:6.
`In its Petition, Corning alleged that Examples 4 and 5B of Szum ’041
`anticipate claims 32-34. Pet. 26-27. Specifically, Corning presented
`the testimony of Ms. Kouzmina, a Corning employee, stating that she
`prepared the compositions disclosed in Examples 4 and 5B of Szum ’041
`and tested these samples for %RAU. Ex. 1014 ¶¶ 23-34. According to
`Ms. Kouzmina, when cured at a dose of about 4.4 mJ/cm2, Example 4 has a
`%RAU of 78% and Example 5B has a %RAU of 73%. Id. ¶ 34.
`Dr. Winningham, Corning’s expert, did not examine independently the
`underlying test procedures. Ex. 2087, 1096:24–1099:15. Instead, trusting
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`the work of Ms. Kouzmina, Dr. Winningham opined that Examples 4 and 5B
`of Szum ’041 disclose the %RAU recited in claims 32-34. Ex. 1013 ¶¶ 132-
`35. Crediting both the Kouzmina and the Winningham declarations, the
`Board instituted review of claims 32-34. Dec. 8-9.
`In the Patent Owner’s Response, DSM contended that “Corning’s
`%RAU measurements are scientifically invalid and therefore cannot
`establish that Examples 4 and 5B of Szum ’041 anticipate claims 32[-]34 of
`the ’543 patent.” PO Resp. 32-42. Specifically, Professor Bowman testified
`that “assuming constant intensity of the incident light,” “a plot of dose
`versus exposure time will be linear (i.e., will yield a straight line) with an
`intercept at the origin of the graph.” Ex. 2029 ¶ 55. Corning’s technician,
`however, improperly conducted the %RAU tests based on a substantially
`nonlinear calibration data. Id. ¶ 58. According to DSM, Ms. Kouzmina, the
`Corning declarant who supervised the %RAU tests and testified about the
`results, “did not know whether the relationship between dose and exposure
`time should be linear.” Id. ¶ 59. In providing his expert opinion,
`Dr. Winningham relied on Ms. Kouzmina’s incorrect dose calibration data
`without any examination. Id. ¶ 60. Thus, even though he understood the
`linear relationship between dose and exposure, Dr. Winningham did not
`catch “the fundamental error” in Corning’s data. Id.
`In its Reply, Corning conceded that its original %RAU calculation, on
`which it relied to support the Petition for review of claims 32-34, was
`erroneous. Reply 7-8. Corning found “a then-unknown limitation inherent
`in the [light] meter and a calculation error.” Id. These two errors caused an
`overstated exposure time and thus, instead of 4.4 mJ/cm2 required in claims
`32-34, “too high a dose was used.” Id.
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`Corning then argued that Examples 4 and 5B of Szum ’041 anticipate
`the ’543 patent claims based on its “renewed %RAU calculations.” Id.
`at 8-12. Corning submitted Dr. Winningham’s Responsive Declaration and
`several new expert declarations together with its Reply. See Exs. 1037,
`1038, 1069, 1071. According to these experts, Corning prepared a new
`batch of coating samples according to the formulations in Examples 4 and
`5B of Szum ’041 (Ex. 1037 ¶¶ 33, 34, 39-48), determined the exposure
`times required to achieve 4.4 mJ/cm2 (id. ¶¶ 56-68), conducted FTIR
`analyses (id. ¶¶ 70-77), and calculated %RAU (id. ¶¶ 78-83). Corning
`performed the tests using two different light meters: when using
`EPM2000/PM3, the light meter used in the original tests to support the
`Petition, the %RAU fell outside of the range recited in claims 32-34; but
`when using ILT1400/XRL140B, a new light meter first used in the tests to
`support the Reply, the %RAU fell within the range recited in claims 32-34.
`Reply 10.
`We decline to consider Corning’s “renewed” %RAU data because
`they are improper reply evidence and because considering the data at this
`late stage would not serve the interest of justice. “A reply may only respond
`to arguments raised in the corresponding opposition or patent owner
`response.” 37 C.F.R. § 42.23(b). When DSM challenged the soundness of
`Corning’s methodology, a proper reply could have included, for example,
`Corning’s rebuttal to contradict DSM’s allegation and any supporting
`evidence to confirm the veracity of Corning’s original %RAU data. These
`options were not available to Corning because it, in fact, discovered errors in
`that testing. Reply 7-8. Instead, Corning provided new evidence of %RAU
`data of an entirely new batch of samples tested under a new protocol,
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`including using a new light meter. Id. at 8-10. Such evidence, and
`Corning’s argument relying on such evidence, exceeded the proper scope of
`a reply.
`Corning insisted that its new reply evidence, or at least the portion
`using the new ILT1400/XRL140B meter, was in response to
`Professor Bowman’s criticism of Corning’s test procedure. See Tr. 6:12-24.
`We disagree. “Examples of indications that a new issue has been raised in a
`reply include new evidence necessary to make out a prima facie case for the
`patentability or unpatentability of an original or proposed substitute claim,
`and new evidence that could have been presented in a prior filing.” Trial
`Practice Guide, 77 Fed. Reg. at 48,767. Corning’s reply evidence falls
`squarely into this category.
`Corning conceded that it could not rely on the original %RAU data in
`the Petition to support its position that Szum ’041 inherently anticipates
`claims 32-34. See Tr. 5:14-21. Thus, Corning’s “renewed” %RAU data in
`the Reply becomes necessary to make its case for unpatentability of claims
`32-34.
`Corning could have presented the “renewed” %RAU data with its
`original Petition. In none of its papers and at no time at the oral argument
`did Corning contend or offer any evidence to show otherwise. Indeed, it was
`Corning who decided to challenge DSM’s patent. In theory, Corning, unlike
`DSM, had unlimited time to test the prior art compositions, because the
`parties do not appear to have engaged in any ongoing litigation involving the
`’543 patent. See 35 U.S.C. §§ 315(a)(1), 315(b). In reality, DSM asserted,
`and Corning did not dispute, that Corning had two years to prepare for this
`patent challenge. PO Resp. 5. Moreover, the problems with Corning’s
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`original %RAU data lie in the first, calibration step. Id. at 36-43; see also
`Reply 7-8. Corning blamed the breadth of claims 32-34 for its testing error.
`But proper calibration of a light meter to determine the exposure times
`needed to reach the doses recited in the claims is fundamental and does not
`depend on Corning’s understanding, or for that matter, our construction, of
`any claim language. To be sure, Corning was able to discover and correct
`the errors,6 and present a new set of data, even though the parties did not
`agree on, and we did not resolve, any claim construction issue.7
`Because Corning belatedly presented the “renewed” %RAU data to
`make its case of inherent anticipation, we decline to consider the portion of
`the Reply on this issue. See Trial Practice Guide, 77 Fed. Reg. at 48,767.
`This approach is consistent with those of federal courts, which generally do
`not consider new evidence presented at the end of a briefing schedule when
`the other party no longer has an opportunity to respond. See, e.g.,
`Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897, 909 (Fed. Cir. 2011)
`(holding that the district court acted within its discretion when it did not
`consider supplementary declarations submitted for the first time in a reply
`brief because the other party did not have an opportunity to respond). Here,
`Corning included the “renewed” %RAU data evidence in its reply papers.
`Even though DSM had a chance to, and in fact, did, cross-examine some
`Corning experts, it had no further briefing opportunity to challenge
`
`6 For purposes of this decision, we assume, without deciding, that Corning’s
`calibration and calculation for its “renewed” %RAU data are procedurally
`proper.
`7 In fact, for the purpose of instituting this trial, the Board adopted Corning’s
`interpretation of several terms, including “percentage reacted acrylate
`unsaturation (%RAU).” See supra Section II.A.
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`Corning’s evidence—at that time, DSM could file only observations on
`cross-examinations, an avenue not designed for submitting substantive
`argument. See Trial Practice Guide, 77 Fed. Reg. at 48,768. It would be
`manifestly unfair to allow Corning to substitute new %RAU data in the
`Reply when DSM had no briefing opportunity to address any issues with the
`new evidence.
`Certainly, our consideration of Corning’s newly presented evidence
`would cause undue prejudice against DSM. Corning faulted DSM for not
`seeking an opportunity to address the new Reply evidence. See Transcript of
`Oral Hearing at 8:1-10, Corning Inc. v. DSM IP Assets B.V., IPR 2013-
`00047 (PTAB Feb. 11, 2014) (Paper 83).8 According to Corning, DSM
`previously asked for supplemental briefing, so it should have done the same
`here. Id. Corning also offered to not object if DSM were to supplement its
`briefing on the “renewed” %RAU after the hearing. See Tr. 7:15-22. As a
`threshold matter, we would not consider Corning’s offer, because Corning
`never raised this position before oral argument and because it is within the
`Board’s discretion to decide whether to allow DSM the opportunity to
`supplement its filing. See Trial Practice Guide, 77 Fed. Reg. at 48,767-68.
`More importantly, DSM did not bear the burden to respond to
`Corning’s “renewed” evidence. During the hearing, counsel for DSM
`argued that requiring DSM to respond to the “renewed” %RAU data would
`
`8 In IPR 2013-00047, Corning submitted the same new evidence of %RAU
`data. At the hearing, the parties argued the same issue, i.e., whether the
`Board should consider the new evidence, mainly during the earlier time
`allotted for IPR 2013-00047. See Transcript of Oral Hearing at 5:15-21,
`Corning Inc. v. DSM IP Assets B.V., IPR 2013-00047 (PTAB Feb. 11, 2014)
`(Paper 83).
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`amount to conducting a de facto new inter partes review on claims 32-34.
`See Tr. 9:18-21. We agree. DSM already had expended resources on expert
`analyses and attorney argument addressing the deficiency of Corning’s
`original data. The Board will not press DSM to expend additional resources
`to have an expert analyze Corning’s new data together with hundreds of
`paragraphs of new expert declarations, or to have its attorney make a
`supplemental submission—not when DSM did not cause Corning’s testing
`errors; not when Corning itself never sought authorization to supplement the
`“renewed” evidence;9 and not when doing so less than three months before
`the statutory deadline for issuance of the final decision would place a
`strenuous burden on DSM.10 In addition, allowing the parties to address
`Corning’s new reply evidence at this late stage would impede the Board’s
`objective to “secure the just, speedy, and inexpensive resolution of every
`proceeding.” See 37 C.F.R. § 42.1(b).
`We applaud Corning’s candor in admitting the errors in its testing
`results. We also appreciate its argument that revoking unpatentable claims
`would serve the public interest.11 See Tr. 7:4-6. But, federal courts may
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`9 Corning never so moved, and we express no opinion on whether the Board
`would have granted such a motion.
`10 Because the Board instituted the instant review on May 2, 2013 (see Dec.),
`it shall issue the final decision on or before May 2, 2014, less than three
`months after the oral hearing held on February 11, 2014. See 35 U.S.C.
`§ 316(a)(11).
`11 DSM contended that even Corning’s “renewed” %RAU data would not
`support unpatentability of claims 32-34. See Transcript of Oral Hearing at
`19:21–20:7, Corning Inc. v. DSM IP Assets B.V., IPR 2013-00047 (PTAB
`Feb. 11, 2014) (Paper 83). Without the benefit of any critical review of the
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`exclude evidence when a party fails to timely disclose information or
`supplement an earlier disclosure during discovery. See, e.g., O2 Micro Int’l
`Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1368 (Fed. Cir. 2006)
`(concluding that the district court did not abuse its discretion in excluding
`untimely supplemental expert declarations). They do so despite the fact that
`some excluded evidence may invalidate a patent claim. See, e.g., Vehicle IP,
`LLC v. Werner Enters., Inc., CV10-503, 2013 WL 4786119, *2-3 (D. Del.
`Sept. 9, 2013) (excluding invalidity theory based on untimely disclosed prior
`art). To reach consistent and fair outcomes in performing its duties, the
`Board similarly must follow set rules and conduct its proceedings in an
`orderly fashion.
`Overall, the balance of various interests tips against Corning, and the
`Board declines to entertain Corning’s “renewed” %RAU data. Because
`Corning conceded that it could not prevail based on the original %RAU data
`submitted with the Petition, and we find that it cannot rely on the new
`evidence advanced in the Reply, it failed to prove by a preponderance of the
`evidence that claims 32-34 are unpatentable.
`3.
`Claims 24 and 25
`Claims 24 and 25 depend from claim 11. Claim 24 further limits
`compound (C) to comprise “five different -cleavage homolytic free radical
`photoinitiators, wherein each photoinitiator is individually present in an
`amount between 0.05 and 4.0 wt. % relative to the total amount of the
`coating composition.” Ex. 1001, 28:36-41. Claim 25 depends from
`
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`data by DSM’s expert and further briefing on this issue, it is unclear whether
`Corning would have satisfied its burden to prove unpatentability.
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`claim 24 and requires that “each photoinitiator is present in an amount
`between 0.1 and 2.5 wt. % relative to the total amount of the coating
`composition.” Id. at 28:42-45.
`According to Corning, claims 24 and 25 would have been obvious
`over the combination of Szum ’041 and Ciba. Pet. 27-30. Specifically,
`Corning asserted that Examples 4 and 5B of Szum ’041 satisfy each and
`every limitation of claim 11. Id. at 27. Each composition contains,
`however, only two, not five, -cleavage homolytic free radical
`photoinitiators in the range of the recited amount, as claims 24 and 25
`require. Id. at 27-28. Ciba “describes five different photoinitiators having
`different uses: a primary initiator, a surface cure initiator, a through cure
`initiator, an initiator with a good short wavelength absorption, and an
`initiator with a good long wavelength absorption.” Id. at 29 (citing Ex.
`1006, 15). Thus, “it would have been obvious to use five different
`photoinitiators in Szum’s compositions, as required by claim 24, to achieve
`the well known benefits associated with multiple photoinitiators.” Id.
`In response, DSM contended that a person of ordinary skill in the art
`would not have been motivated to combine five photoinitiators into a single
`composition. PO Resp. 25-30. Professor Bowman testified that it is
`“generally desired to use the smallest number of the most efficient
`photoinitiators possible and no more than necessary to achieve an effective
`cure.” Ex. 2029 ¶ 43. According to Professor Bowman, using too many
`photoinitiators or too much total photoinitiator likely will cause problems.
`Id. As a result, “a person of ordinary skill in the art would not select five
`different photoinitiators in the specifically claimed amounts merely because
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`the photoinitiators can be described in five different ways—especially given
`the cost concerns as expressly mentioned in Ciba.” Id. ¶ 48.
`DSM also contended that the combination of Szum ’041 and Ciba
`does not disclose each and every limitation of claims 24 and 25. PO Resp.
`24-25. Specifically, claim 11, from which claims 24 and 25 depend,
`requires the photoinitiator package exhibit certain absorption characteristics
`between 280 nm and 320 nm. Ex. 1001, 27:48-57. Corning, however, did
`not present any credible evidence to show that “when the photoinitiator
`packages of Examples 4 and 5B are modified to include three additional
`photoinitiators as Corning suggests, this combination of five photoinitiators
`meets the claimed absorption characteristics.” PO Resp. 24.
`In its Reply, Corning provided no rebuttal on either issue. In fact,
`besides reciting the claim language, the only sentence addressing the
`unpatentability of claims 24 and 25 reads:
`For the reasons explained in the Petition for Inter Partes
`Review and adopted by the Board in the Decision Instituting
`Inter Partes Review, it would have been obvious from Ciba to
`add five additional alpha-cleavage homolytic free radical
`photoinitiators to Examples 4 and 5B of Szum.
`Reply 13-14.
`Based on the record developed at trial, we conclude that Corning has
`not met its burden to prove claims 24 and 25 obvious by a preponderance of
`evidence. First,
`[A] patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was,
`independently, known in the prior art. Although common sense
`directs one to look with care at a patent application that claims
`as innovation the combination of two known devices according
`to their established functions, it can be important to identify a
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`reason that would have prompted a person of ordinary skill in
`the relevant field to combine the elements in the way the
`claimed new invention does.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, Corning
`argued that “it was well known to include multiple photoinitiators in
`radiation-curable compositions, for instance, to improve cure speed and
`optimize performance properties.” Pet. 28. Having initially found this
`reasoning persuasive, we instituted this review. After institution, DSM,
`however, came forward with evidence showing other considerations at play.
`See PO Resp. 26-30. Indeed, Professor Bowman explained why one skilled
`in the art would not have had a reason to use five photoinitiators and in the
`amount as claims 24 and 25 require. See, e.g., Ex. 2029 ¶¶ 46-48. He refers
`to express teachings in Ciba to support his opinion. For example, “a
`frequent cause of insufficient through-cure is too much photoinitiator in the
`composition, and as Ciba expressly teaches, this problem can often be
`rectified by using lower levels of photoinitiators.” Id. ¶ 47; see also id. ¶ 48
`(pointing to the cost concerns expressed in Ciba). We find
`Professor B
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