Trials@uspto.gov Paper 66
`571-272-7822 Entered: May 1, 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 IPR2013-00053
`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 IPR2013-00053
`Patent 7,276,543 B2
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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 35-57 of U.S. Patent No.
`7,276,543 B2 (“the ’543 patent”). Paper 3 (“Pet.”). On May 2, 2013, the
`Board instituted trial for all the challenged claims on all the asserted grounds
`of unpatentability. Paper 13 (“Dec.”). Thereafter, Patent Owner DSM IP
`Assets B.V. (“DSM”) filed a Response (Paper 41 (“PO Resp.”)) and Corning
`filed a Reply (Paper 50 (“Reply”)).
`Oral hearing was held on February 11, 2014. See Paper 65 (“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
`35, 39, 44, and 53-57 of the ’543 patent are unpatentable. It, however, has
`failed to meet its burden of proof regarding the unpatentability of claims 36-
`38, 40-43, and 45-52.
`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, IPR2013-00047,
`IPR2013-00048, IPR2013-00049, IPR2013-00050, and IPR2013-00052.1
`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.
`
`
`1 IPR2013-00052 addresses claims 11-34 of the ’543 patent.
`2
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`Patent 7,276,543 B2
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`The composition comprises an oligomer, a reactive diluent, and a plurality of
`free radical photoinitiators with certain absorption characteristics. Id. at
`3:11-44. According to the Specification:
`Surprisingly, the coated optical fiber of the present invention
`has good properties even if produced at extremely high line
`speeds whereas other coated optical fibers have inferior quality.
`In particular, the radiation curable composition according to the
`present invention overcomes all the drawbacks of the prior art
`composition by choosing combinations and amounts of
`photoinitiators in such a way that an improved cure speed can
`be obtained without substantially deteriorating mechanical
`properties and yellowing characteristics (including
`initial
`yellowing and yellowing upon aging).
`Id. at 3:45-55.
`D.
`Illustrative Claim
`Claim 35, the sole independent claim under review in this case, reads:
`35. A radiation-curable composition comprising:
`(A) an oligomer;
`(B) a reactive diluent, and;
`(C) at least three free radical photoinitiators wherein
`(i) at least one of the photoinitiators has an absorption
`spectrum in acetonitrile having a difference between two
`absorption maxima in the range between 240 and 360 nm of
`at least about 15 nm, and wherein
`(ii) considering at least two of the photoinitiators (1
`and 2), the difference between the absorption maximum of
`the absorption spectrum in acetonitrile of photoinitiator 1
`and the absorption maximum of the absorption spectrum in
`acetonitrile of photoinitiator 2 in the range between 280 and
`320 nm is at least about 5 nm.
`
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`Case IPR2013-00053
`Patent 7,276,543 B2
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`
`Reviewed Grounds of Unpatentability
`E.
`The Board instituted trial on multiple grounds of unpatentability,
`including anticipation and obviousness based on Zahora,2 either alone or in
`combination with other references. Dec. 14-24. We also instituted trial to
`review whether Murphy3 anticipates claims 35, 39, 44, and 53-57, and
`whether Murphy, either alone or in combination with other references,
`renders claims 40-43, 45-49, and 55 obvious. Id. at 11-13, 16-24.
`
`II. ANALYSIS
`A.
`Claim Construction of “Absorption Maximum”
`In the Decision to Institute, the Board agreed with DSM and rejected
`Corning’s proposed claim construction of “absorption maximum” as
`unreasonably broad in light of the Specification. Dec. 6. Based on the
`language in the Specification, the Board explained that
`[A]n absorption maximum does not include a “wavelength with
`the highest absorbance on either side of [the identified valley
`within the range of 240 and 360 nm]” unless that wavelength is
`also “a point on the curve wherein the tangent to the curve is
`parallel with the horizontal axis.”
`Id. After the institution of the trial, the parties did not further brief this
`issue. The Board hereby adopts its previous construction.
`B. Unpatentability over Zahora
`Corning asserted that Zahora anticipates claims 35-39, 44, and 50-57,
`and renders claims 40-43, 45-48, 55, and 56 obvious, either alone or together
`with other prior art. See Pet. 15-40. According to Corning, the
`
`2 Zahora et al., Int’l Pub. No. WO 98/50317 (Ex. 1004).
`3 Murphy et al., Int’l Pub. No. WO 01/47823 A2 (Ex. 1005).
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`photoinitiator packages in Example VII and Carrier System AA in Zahora
`both contain Irgacure 819 and Irgacure 907. Id. at 16, 18. Irgacure 907
`exhibits its absorption maxima at 240 nm and 302 nm, the difference of
`which (62 nm) meets the requirement for claim element (c)(i) of claim 35.
`Id. at 17.
`DSM responded that based on the Board’s construction of “absorption
`maximum,” “neither Irgacure 819 nor Irgacure 907 exhibits an absorption
`maximum at 240 nm.” PO Resp. 17.
`Corning conceded that, based on the Board’s construction of the term
`“absorption maximum,” Zahora does not anticipate, and Zahora in
`combination with other references would not have rendered obvious, claims
`35-48 and 50-57 of the ’543 patent. See Reply 15 n.3; see also Tr. 2:28–
`3:15. Thus, Corning has failed to prove unpatentability of claims 35-48 and
`50-57 of the ’543 patent based on Zahora.
`C. Unpatentability over Murphy
`Murphy claims priority to a U.S. patent application filed on December
`23, 1999. Ex. 1005. The effective filing date of the ’543 patent is December
`30, 1999. Ex. 1001, 1:7-8.
`1.
`Anticipation under 35 U.S.C. § 102(e)
`Corning alleged that Murphy qualifies as prior art against the ’543
`patent under 35 U.S.C. § 102(e). Pet. 9. According to Corning, examples 8-
`13 and a-d of Murphy meet all the limitations recited in claims 35, 39, 44,
`and 53-57, and thus, anticipate these claims. Id. at 40-46.
`DSM did not dispute that Murphy meets all the limitations recited in
`the challenged claims. Nor did it dispute that the effective filing date of
`Murphy is December 23, 1999. PO Resp. 41. Instead, it contended that
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`Murphy could not qualify as § 102(e) prior art, because the inventors of the
`’543 patent made the claimed invention through an actual reduction to
`practice before December 23, 1999. Id. at 41-55. As evidence, DSM
`submitted a “Rule 37 C.F.R. § 1.131 Declaration of Timothy E. Bishop,”
`one of the co-inventors of the ’543 patent. Ex. 2041. DSM also attached
`Exhibits A, B, and C to the Bishop Declaration as proof to antedate
`Murphy.4
`In its Reply, Corning attacked the Bishop Declaration as facially
`defective because only one inventor signed it. Reply 3. It also argued that,
`for various reasons, the Bishop Declaration was “substantively insufficient
`to establish an actual reduction to practice.”5 Id. at 4-6. We address the
`pertinent issues arising from these arguments in turn.
`As a prelude, we clarify two issues in antedating a reference in an
`inter partes review. First, though the patent owner bears the burden of
`production in antedating a reference, the burden of persuasion to prove
`
`4 DSM should have submitted these exhibits with appropriate exhibit
`numbers. See 37 C.F.R. § 42.63(c).
`5 Corning further argued that the Bishop Declaration “is substantively
`insufficient to establish a complete conception and continuous diligence to
`its later reduction to practice.” Reply 6. It is true that DSM could antedate
`Murphy by showing that the inventors of the ’543 patent were the first to
`conceive of the invention and then exercised reasonable diligence in
`reducing that invention to practice. See Mycogen Plant Sci. v. Monsanto
`Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001). It is also true that DSM
`mentioned “the inventors at all times continuously and diligently worked to
`achieve actual reduction to practice of their inventive concept.” PO Resp.
`41. But it did so in passing without attempting to antedate Murphy through
`the conception-and-diligence route. At oral argument, counsel for DSM
`confirmed that DSM would only rely on the prior-actual-reduction-to-
`practice theory to antedate Murphy. Tr. 31:3-11.
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`unpatentability of the challenged claims remains with the petitioner. See
`35 U.S.C. § 316(e); cf. Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897,
`907-08 (Fed. Cir. 2011) (explaining that in a district court proceeding, a
`challenger of a patent bears the burden to prove invalidity even though the
`patentee bears the burden of production in antedating a reference).
`Second, 37 C.F.R. § 1.131 and practice under this rule do not control
`an antedating effort in an inter partes review. Rule 131 applies “[w]hen any
`claim of an application or a patent under reexamination is rejected.”
`37 C.F.R. § 1.131(a). This inter partes review is neither examination nor
`reexamination; and no claim has been “rejected.” Most significantly, in
`examination and reexamination (both ex parte and inter partes), no
`discovery is allowed. So requiring all inventors’ signatures on a Rule 131
`declaration provides, to a certain degree, a safeguard against, for example, a
`single inventor’s inaccurate memory. In contrast, an inter partes review
`provides for discovery, albeit limited, as an integral part of the proceeding.
`See 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51. With the opportunity to cross-
`examine declarants and affiants, a petitioner is better equipped to sift out
`facts from wishful thinking.
`With that distinction, we reject Corning’s proposition that to
`successfully antedate a prior art reference in an inter partes review, a patent
`owner must gather the signatures of all inventors for a declaration.
`Cf. Stamps.com, 437 F. App’x at 907-08 (analyzing a declaration by one of
`the co-inventors as antedating evidence in an invalidity dispute before a
`district court). Instead, we review the record as a whole and determine the
`sufficiency of a patent owner’s antedating effort after evaluating all relevant
`admissible evidence and argument.
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`As mentioned earlier, because DSM attempts to disqualify Murphy as
`prior art, it bears the burden of production on this issue. DSM offered the
`Bishop Declaration and the exhibits attached thereto as evidence of actual
`reduction of practice.6 The evidence, however, does not demonstrate
`sufficiently the prior actual reduction to practice by the inventors of the ’543
`patent.
`a.
`Exhibit A
`Reduction to practice is a question of law predicated on subsidiary
`factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002).
`To establish an actual reduction to practice, the inventor must prove that:
`(1) an embodiment of the invention was constructed that meets all the
`limitations of the claim-at-issue; and (2) the inventor appreciated that the
`invention would work for its intended purpose. Cooper v. Goldfarb, 154
`F.3d 1321, 1327 (Fed. Cir. 1998).
`In his declaration, Mr. Bishop explained that “[t]he inventions
`disclosed in the ’543 patent arose from a research and development project
`initiated by DSM Desotech to develop optical fiber coating compositions
`exhibiting faster cure speeds.” Ex. 2041 ¶ 6. Mr. Bishop was the technical
`team leader for this project. Id. Mr. Bishop testified that “on January 7,
`1999, we7 developed a radiation-curable composition identified as 7D2-15.
`This composition comprised an oligomer (e.g., H-T-PTGL1000-T-H),
`
`
`6 Even though Corning challenged those exhibits as unauthenticated and
`uncorroborated (Reply 5), it did not move to exclude them. Thus, in our
`analysis, we consider all three exhibits, assigning proper weight to each.
`7 Presumably, the word “we” here referred to the inventors of the subject
`matter of the challenged claims.
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`reactive diluents (e.g., BPAEDA and SR-504), and at least three
`photoinitiators . . . .” Id. ¶ 9. He further testified that Exhibit A attached to
`his declaration included “the formulation for 7D2-15.” Id.
`Exhibit A contains three unnumbered pages.8 Mr. Bishop testified
`that page two of the exhibit is a photocopy “from Max Khaksari’s
`notebook.” Ex. 1025, 61:12-19. Mr. Khaksari was a technician that
`reported to Mr. Bishop at DSM. Id. at 62:12-18. Mr. Khaksari signed the
`notebook page on January 7, 1999 (id. at 68:25–69:3), even though he
`recorded additional data afterwards (id. at 74:4-11).9 On April 7, 2000, two
`other people, presumably DSM employees, signed in the boxes labeled
`“Disclosed To and Understood By” and “Witness,” respectively. Id. at
`71:2–72:7. Mr. Bishop explained that one of the three formulations on that
`page, labeled as 0185-142B, is 7D2-15. Id. at 56:23–57:16. The other two
`compositions on the page, 0185-142A and 0185-142C, are control samples
`and not other embodiments of the claimed invention. Id. at 57:17-24;
`Ex. 2041 ¶¶ 12-13.
`Page one of Exhibit A is a photocopy of the same page from
`Mr. Khaksari’s notebook. Ex. 1025, 62:6-11. According to Mr. Bishop, in
`early 1999, he made a photocopy of the notebook page (page two of
`Exhibit A) before Mr. Khaksari added more information onto the page. Id.
`
`
`8 We encourage parties to number or otherwise provide means to identify
`pages in exhibits submitted to the Board.
`9 Mr. Bishop testified that DSM “didn’t have a requirement that you had to
`sign the page when all the work was done.” Ex. 1025, 70:22-25. Instead, he
`thought Mr. Khaksari signed the page “when he had started the work.” Id.
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`at 66:22–68:24; 72:8–74:3. Mr. Bishop then made notes on his photocopy
`of the notebook page (instead of the original notebook page). Id.
`According to Mr. Bishop, “[t]he exact formulation of 7D2-15 is
`provided in Table 1, Example 1 of the ’543 patent.” Ex. 2041 ¶ 9. We,
`however, have not been able to confirm this statement. As shown in the
`following table, ingredients and amounts thereof of the composition in
`Table 1, Example 1 of the ’543 patent appear different from those of
`7D2-15.
`
`Photoinitiators
`
`Amount (%)
`Ingredient
`Example 1
`7D2-15
`34.8
`None
`Oligomer 1
`55.010
`55.0
`Diacrylate diluent
`6.2
`none
`Monoacrylate diluent
`None
`41.0
`98-116 unfinished (98C06593)
`0.5
`0.5
`Lucirin TPO
`0.5
`0.5
`Irgacure 819
`1.0
`1.0
`Irgacure 184
`1.0
`1.0
`Durocur 1173
`0.5
`0.5
`Irgacure 907
`0.5
`0.5
`Irganox1035
`Specifically, the composition in Table 1, Example 1 of the ’543 patent
`contains 6.2% monoacrylate diluent (Ex. 1001, 19:32), while the formulation
`for 7D2-15 on the first two pages of Exhibit A does not show such an
`ingredient. We note that Mr. Bishop testified that SR-504 is a monoacrylate
`diluent. Ex. 2041 ¶ 9; Ex. 1025, 43:4-8. We also observe that on the first
`page of Exhibit A, Mr. Bishop appears to have made notes about the amount
`
`
`10 The formulation of 7D2-15 in Exhibit A lists 55% BPAEDA. Mr. Bishop
`testified that BPAEDA is a diacrylate diluent. Ex. 2041 ¶ 9; Ex. 1025,
`41:17–42:24.
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`of SR-504 for 0185-142A and 0185-142C. He did not, however, make any
`such note for 0185-142B. Equally troubling is the absence of any indication
`of an oligomer in the formulation of 7D2-15. In fact, no component listed in
`the formulation of 7D2-15 amounts to 34.8% in weight, as shown in Table 1,
`Example 1 of the ’543 patent. Instead, the formulation of 7D2-15 contains
`41% of “98-116 unfinished,” an ingredient DSM simply failed to explain.
`We also do not find any component in Table 1, Example 1 of the ’543 patent
`that amounts to 41% of the composition weight.
`Mr. Bishop testified that 7D2-15 contains an oligomer,
`H-T-PTGL1000-T-H. Ex. 2041 ¶ 9. When cross-examined on this point
`during his deposition, he stated that he knew the oligomer in 7D2-15 was the
`same as oligomer 1 in Table 1, Example 1 of the ’543 patent “[b]ecause it’s
`my example.” Ex. 1025, 39:24–40:8.
`It is well settled that an inventor’s testimony alone is insufficient to
`establish an earlier actual reduction to practice. Medichem, S.A. v. Rolabo,
`S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006). Instead, the party seeking to
`prove an actual reduction to practice must proffer evidence corroborating
`that testimony. Id. “Sufficiency of corroboration is determined by using a
`‘rule of reason’ analysis, under which all pertinent evidence is examined
`when determining the credibility of an inventor’s testimony.” Id. (citation
`omitted). We note that Mr. Bishop no longer works for DSM. Ex. 1025,
`12:4-5. Thus, he does not appear to have any financial interest in this matter
`and we have no reason to doubt his credibility. Nevertheless, the law plainly
`requires that evidence of corroboration must not depend solely on the
`inventor himself. Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981).
`Rather, corroboration may be testimony of a witness, other than the inventor,
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`to the actual reduction to practice, or it may consist of evidence of
`surrounding facts and circumstances independent of information received
`from the inventor. Id. Here, the notebook page, a piece of otherwise
`qualifying contemporaneous documentary evidence, cannot provide the
`essential corroboration because Mr. Khaksari did not record the identity,
`amount, or even the existence of the monoacrylate diluent and oligomer.
`DSM may have been able to cure this defect by offering the testimony of a
`non-inventor, such as Mr. Khaksari. It did not do so.
`At the hearing, when the panel inquired about the identity of the
`oligomer in 7D2-15, counsel for DSM pointed to BPAEDA. Tr. 16:18–
`21:8. This position directly contradicts Mr. Bishop’s testimony that
`BPAEDA is a diluent. See Ex. 2041 ¶ 9; Ex. 1025, 41:17–42:24. Even if
`we were to entertain this (plainly erroneous) argument that BPAEDA is the
`oligomer in 7D2-15, the formulation of 7D2-15 would still differ
`significantly from that of Table 1, Example 1 of the ’543 patent, because
`7D2-15 contains 55% of BPAEDA while Table 1, Example 1 contains
`34.8% of oligomer 1.
`Each of claims 35-57 requires an oligomer as an essential component.
`Because Exhibit A does not corroborate Mr. Bishop’s testimony that the
`composition of 7D2-15 contains an oligomer, DSM has not proved that it
`constructed an embodiment that met all the limitations of the
`claims-at-issue.11 In other words, DSM failed to establish an actual
`reduction to practice to antedate Murphy through Exhibit A.
`
`
`11 As a result, we do not need to evaluate the unnumbered page three of
`Exhibit A, despite DSM’s argument that it allegedly showed “7D2-15
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`b.
`Exhibit B
`DSM also attached Exhibit B to the Bishop Declaration. Exhibit B
`includes the formulations of 7D2-15 and 7D2-19. Ex. 2041 ¶¶ 11-12. We
`are satisfied that the ingredients and amounts thereof listed under 7D2-15 in
`Exhibit B match those of Table 1, Example 1 of the ’543 patent. We also
`observe that 7D2-19 “comprised an oligomer (e.g., H-T-P410-T-H), reactive
`diluents (e.g., CN120Z and SR-504), and at least three photoinitiators (e.g.,
`Irgacure 819, Irgacure 184, Irgacure 907, Lucirin TPO, and Darocur 1173).”
`Id. ¶ 12. Thus, each of 7D2-15 and 7D2-19 of Exhibit B appears to embody
`the claimed invention. Nevertheless, Exhibit B falls short of establishing
`prior reduction to practice.
`First, Mr. Bishop testified that Exhibit B “is a true and correct copy of
`a table created in April 1999.” Id. ¶ 11. But he never explained who created
`this table, how it was created, or who prepared and tested the compositions
`listed in Exhibit B.
`More importantly, DSM has failed to demonstrate that the inventors
`of the challenged claims determined that the invention would work for its
`intended purpose in or before April 1999, the date of Exhibit B. See Cooper,
`154 F.3d at 1327. In certain cases, as in this one, determining that the
`invention works for its intended purpose requires testing. See Mahurkar v.
`C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). “[W]hen testing is
`necessary to establish utility, there must be recognition and appreciation that
`the tests were successful for reduction to practice to occur.” Estee Lauder
`
`
`exhibited a faster cure speed than the comparator formulation.” Ex. 2041
`¶ 10.
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`Inc. v. L’Oreal, S.A., 129 F.3d 588, 594-95 (Fed. Cir. 1997). The
`Specification of the ’543 patent explains that the object of the claimed
`invention is to provide a coating composition with “a fast cure speed without
`impairing mechanical properties and aging characteristics of the coating.”
`Ex. 1001, 2:44-48. Mr. Bishop testified that both 7D2-15 and 7D2-19
`“exhibited an increased cure speed.” Ex. 2041 ¶¶ 9, 12. He, however, did
`not point to any data in Exhibit B to corroborate that statement.
`Mr. Bishop confirmed that he “actually had a good idea that they
`would achieve high cure rates before the testing, but you don’t know until
`you test them.” Ex. 1025, 29:20-22 (emphasis added). One way to quantify
`cure speed is “a chart of FTIR Cure Behavior.” Id. at 77:21-23. In fact,
`DSM provided such a chart on the third unnumbered page of Exhibit A to
`“demonstrate that [the alleged] formulation 7D2-15 exhibited a faster cure
`speed than the comparator formulation (i.e., 0185-142A).” Ex. 2041 ¶ 10;
`see also Ex. 1025, 77:14–79:9. DSM, however, did not provide any similar
`data for the formulations in Exhibit B, and we cannot consider the chart in
`Exhibit A when evaluating Exhibit B. The chart was dated January 14,
`1999, three months before Exhibit B was created. Ex. 2041 ¶¶ 10-11. In
`addition, the chart is “of FTIR Cure Behavior of the three coatings on Pages
`1 and 2” of Exhibit A. Ex. 1025, 77:14-20. As explained earlier, the 7D2-
`15 formulation shown on those two pages lacks an oligomer. See supra
`Section II.C.1.a. As a result, that formulation differs from the one in
`Exhibit B.
`In sum, DSM has failed to demonstrate that in April 1999, the
`inventors tested and determined that 7D2-15 or 7D2-19, as shown in
`Exhibit B, worked for the intended purpose of the claimed invention, i.e.,
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`exhibited an increased cure speed. See Mycogen, 243 F.3d at 1335
`(emphasizing that “reduction to practice cannot be established nunc pro tunc.
`There must be contemporaneous recognition and appreciation of the
`invention” (citation omitted)). Thus, DSM failed to establish an actual
`reduction to practice to antedate Murphy through Exhibit B.
`c.
`Exhibit C
`Exhibit C relates to the formulation of 7D2-24, yet another alleged
`embodiment of the claimed invention. Ex. 2041 ¶ 13. We have been able to
`confirm that “[t]he exact formulation of 7D2-24 is provided in Table 1,
`Example 2 of the ’543 patent.” Id. Still, Exhibit C fails to establish prior
`reduction to practice for the same reasons we explained for Exhibit B.
`Mr. Bishop testified that Exhibit C “is a true and correct copy of a
`document that was created for our November 11, 1999 Technical Exchange
`Meeting.” Id. We recognize Mr. Bishop’s name appears on this document.
`But Mr. Bishop did not state, and DSM identifies no credible evidence, that
`he created this document. Similarly, Mr. Bishop did not explain who
`prepared and tested the compositions listed in Exhibit C. Just like in
`Exhibit B, DSM offered no underlying notebook pages and no testimony
`from any non-inventor as corroborating evidence. In addition, assuming the
`Technical Exchange Meeting was actually held, DSM offered no attendee to
`testify about the matter either. And just like in Exhibit B, DSM has failed to
`demonstrate that in November 1999, the inventors tested and determined that
`7D2-24 worked for the intended purpose of the claimed invention, i.e.,
`exhibited an increased cure speed. Therefore, DSM failed to establish an
`actual reduction to practice to antedate Murphy through Exhibit C.
`
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`Case IPR2013-00053
`Patent 7,276,543 B2
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`d.
`Conclusion
`We have no reason to doubt that Mr. Bishop testified truthfully.
`Nevertheless, after considering his declaration, Exhibits A, B, and C
`attached thereto, and his deposition testimony, we conclude that DSM has
`not corroborated adequately this inventor’s testimony of prior reduction to
`practice. In other words, DSM has failed to antedate Murphy as § 102(e)
`prior art. DSM did not dispute that Murphy meets all the limitations recited
`in the challenged claims. As a result, Murphy anticipates claims 35, 39, 44,
`and 53-57.
`2.
`Obviousness under 35 U.S.C. § 103
`In addition to anticipation, Corning alleged that Murphy, in
`combination with other references, renders claims 40-43 and 45-49
`obvious.12 Pet. 46-56. DSM did not dispute that these claims would have
`been obvious if the references are combined. Instead, it contended that,
`under § 103(c), Murphy does not qualify as prior art for an obviousness
`rejection because
`[A]t the time of the invention, the subject matter of the
`challenged claims of the ’543 Patent and Murphy were
`commonly owned as they were, at the time of the invention,
`either assigned to DSM N.V. or subject to an obligation of
`assignment to DSM Desotech, Inc., which was at the time of
`the invention, and still is, a wholly owned subsidiary of DSM
`N.V.
`
`
`12 Corning also alleged that Murphy alone renders claim 55 obvious. Pet.
`56-57. Because we conclude Murphy anticipates claim 55, we do not
`address the obviousness issue.
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`Case IPR2013-00053
`Patent 7,276,543 B2
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`PO Resp. 56-57.13 As support, DSM provided various exhibits, including
`patent assignment documents, employment agreements, and several
`declarations. See Exs. 2031-40, 2042-47, 2049, 2051, 2060.
`Corning disputed the sufficiency of the DSM exhibits. Reply 7-15.
`According to Corning, DSM failed to prove common ownership of Murphy
`and the ’543 patent through the assignment documents. Id. at 9-10. Corning
`also argued that the employment agreements and the declarations failed to
`establish that the inventors of both Murphy and the ’543 patent were under
`an obligation to assign the inventions to DSM. Id. at 10-15. In support,
`Corning submitted numerous email communications between DSM in-house
`counsel and counsel for John Southwell, one of the co-inventors of the ’543
`patent. Exs. 1027-39.14
`a. Motion to Exclude
`Before discussing the substantive issue of Murphy’s qualification as
`prior art under § 103(c), we address the preliminary matter of DSM’s
`Motion to Exclude Corning’s Evidence. See Paper 55 (“Mot. to Exc.”).
`DSM asked us to exclude Exhibits 1027-39 because they “contain
`inadmissible hearsay and inadmissible hearsay within hearsay.” Id. at 1. In
`
`
`13 Citing MPEP § 706.02(l)(2), DSM argued that “[o]wnership by a wholly
`owned subsidiary is sufficient to establish common ownership for the
`purposes of § 103(c).” PO Resp. 59. Corning did not dispute this issue.
`Reply 10. For the purpose of this decision, we adopt DSM’s position on this
`issue.
`14 Corning filed these exhibits under seal because DSM produced them as
`confidential under the protective order. See Paper 51. At the hearing,
`counsel for DSM stated that DSM had “no objection to lifting the seal.”
`Tr. 30:7-16; see also id. at 24:21–25:2. We therefore dismiss Corning’s
`Motion to Seal.
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`Case IPR2013-00053
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`the exhibits-at-issue, counsel for Mr. Southwell (a named inventor of the
`’543 patent) represented to counsel for DSM that Mr. Southwell disputed his
`obligation to assign his rights to the claimed invention in the ’543 patent to
`DSM at the time of the invention. Exs. 1027-39. According to DSM, these
`exhibits should be excluded as hearsay, because Corning offered them to
`prove the truth of the matters asserted. Mot. to Exc. 1-4. DSM also asked
`us to exclude Exhibit 1039, because Corning offered the exhibit to prove the
`truth of the matter asserted therein, i.e., “[t]here is also a serious concern
`about the authenticity of Exhibit 2041, Attachment A.” Id. at 4 (quoting
`Reply 15). Further, DSM pointed out that Corning questioned the
`authenticity of Exhibit 2041, Exhibit A, based on attorney argument, rather
`than proper expert analysis of handwriting samples. Id. at 5. As a result,
`DSM asked us to the exclude this argument on page 15 of the Reply.
`Corning countered that it did “not offer[] the e-mails at issue as proof
`that Mr. Southwell did not have an obligation to assign the claimed
`invention when it was made.” Paper 59, 5. Instead, according to Corning,
`“[t]hese e-mails show that DSM was on notice at the time of the e-mail
`exchanges that there were issues concerning Mr. Southwell’s supposed
`obligation, which issues DSM has not dealt with sufficiently to satisfy its
`burden of proof.” Id. at 5-6. Corning also argued that “the statements by
`DSM’s counsel are admissions of a party opponent through the party’s
`agent, which are also not hearsay.” Id. at 6. In addition, Corning contended
`that the statements by counsel for Mr. Southwell to counsel for DSM
`“simply reflect[ed] Mr. Southwell’s statement of belief” and thus, should be
`admissible under Federal Rule of Evidence 803(3). Id. at 7. Regarding the
`argument on page 15 of the Reply that DSM challenged, Corning argued that
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`“there is nothing in the rules and DSM has cited no support for the
`proposition that Corning’s argument on the similarity of the handwriting at
`issue is subject to exclusion.” Id. at 7-8.
`We find Corning’s arguments unconvincing. Nevertheless, we deny
`DSM’s Motion to Exclude. Similar to a district court in a bench trial, the
`Board, sitting as a non-jury tribunal with administrative expertise, is well-
`positioned to determine and assign appropriate weight to evidence presented.
`See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)
`(“One who is capable of ruling accurately upon the admissibility of evidence
`is equally capable of sifting it accurately after it has been received . . . .”).
`Thus, in this inter partes review, the better course is to have a complete
`record of the evidence to facilitate public access as well as appellate review.
`See id. (“If the record on review contains not only all evidence which was
`clearly admissible, but also all evidence of doubtful admissibility, the court
`which is called upon to review the case can usually make an end of it,
`whereas if evidence was excluded which that court regards as having been
`admissible, a new trial