Corning Incorporatedv.DSM IP ASSETS B.V.

Patent Trial and Appeal Board

Aug 12, 2014

10421946 (P.T.A.B. Aug. 12, 2014)

Trials@uspto.gov Paper 101
Tel: 571-272-7822 Entered: August 12, 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 IPR2013-00043 (Patent 7,171,103 B2)
Case IPR2013-00044 (Patent 6,961,508 B2)
_______________

Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON CORNING’S
REVISED REQUESTS FOR REHEARING
37 C.F.R. § 42.71(d)(2)

IPR2013-00043 (Patent 7,171,103 B2)
IRP2013-00044 (Patent 6,961,508 B2)

2
I. INTRODUCTION
Final Written Decisions in the above-identified inter partes review
proceedings were entered on May 1, 2014. IPR2012-00043 (“IPR 43”),
Paper 95; IPR2013-00044 (“IPR 44”) Paper 92.
Petitioner Corning timely filed Requests for Rehearing. IPR 43,
Paper 98; IPR 44, Paper 95.
The Board ordered Corning to re-present the Requests for Rehearing
in a proper form. IPR 43, Paper 99; IPR 44, Paper 96.
Corning timely presented Revised Requests for Rehearing. IPR 43,
Paper 100; IPR 44, Paper 97.
The Board then invited Patent Owner DSM to file Responses to the
Revised Requests for Rehearing. IPR 43, Paper 101; IPR 44, Paper 98.
DSM timely filed its Responses. IPR 43, Paper 102; IPR 44,
Paper 99.
We now address Corning’s Revised Requests for Rehearing.
We do not consider Corning’s original Requests for Rehearing.
Many of the arguments presented in Corning’s Revised Requests for
Rehearing amount to an attempt by Corning to re-argue its case. It is not
appropriate to use a request for rehearing to re-argue a case. Nevertheless,
we address below issues raised in the Requests for Rehearing.
II. Analysis
A. Corning Revised Request for Rehearing IPR 43
1. “Cure dose” limitation
Corning maintains that we overlooked a need to construe the “cure
dose” limitation of the claims. IPR 43, Paper 100, 1-2.
IPR2013-00043 (Patent 7,171,103 B2)
IRP2013-00044 (Patent 6,961,508 B2)

3
Corning reasons that construction of the “cure dose” limitation “is a
critical aspect . . . that must be performed before determining validity.”
IPR 43, Paper 100, 2. We note that “patentability,” not “validity,” is an
issue in an inter partes review proceeding.
The “cure dose” limitation in claim 1 of US Patent 7,171,103 B2
(“ʼ103 patent”) involved in IPR 43 reads: “a cure dose to attain 95% of the
maximum attainable modulus of less than 0.65 J/cm
2
.” IPR 43, Ex. 1001,
col. 13:19-20.
As noted in DSM’s Response, we “held that Corning failed to prove
by a preponderance of the evidence that [the coating compositions described
in Szum ʼ157 (WO 98/21157)] Examples 10-1 and 10-2 inherently possess
the claimed “95%” cure dose limitation.” IPR 43, Paper 102, 8. In other
words, it does not matter what “cure dose” means because Corning through
its witnesses Ms. Kouzmina and Dr. Winningham failed to establish that the
compositions Corning made attained the “95%” property. Whatever
Corning did to administer a cure dose becomes irrelevant, because the
products tested were not proved to possess the property that the cure dose is
supposed to impart. Hence, there is no occasion to construe what Corning
would have had to do to establish that the Szum ʼ157 examples meet the
claimed “95%” “cure dose” limitation.
2. R
2
value
According to Corning, the Board incorporated R
2
values into the
claim. IPR 43, Paper 100, 2-5.
Corning’s rehearing argument misses the mark.
Our consideration and discussion of R
2
values relates to assessing the
credibility of DSM’s witness Bowman vis-à-vis the credibility of Corning’s
IPR2013-00043 (Patent 7,171,103 B2)
IRP2013-00044 (Patent 6,961,508 B2)

4
witnesses. R
2
values were not incorporated into the claims. Rather, as
explained in our Final Written Decision, our evaluation of R
2
values formed
part of our analysis crediting Bowman over Corning’s witnesses.
3. Data without R
2
values
Corning argues that its data alone supports a finding that Szum ʼ157
Example 10-2 inherently describes a cure dose limitation within the scope of
claims of the involved patents. IPR 43, Paper 100, 6-8.
The argument is said to have been raised on page 25 of the IPR 43
Petition (Paper 2) and pages 4-7 of the IPR 43 Reply (Paper 64). Paper 100,
6.
Corning’s argument relies on Ms. Kouzmina’s testing and testimony
and Dr. Winningham’s testimony. In entering a Final Written Decision, we
did not credit that testing and testimony. Instead, we credited the testimony
of DSM’s witness Dr. Bowman. Nothing in the Requests for Rehearing
convinces us that we should reevaluate our credibility assessment.
4. Following the test procedure
On page 8 of the IPR 43 Request for Rehearing, Corning states that
“nowhere in the [Final Written] Decision does the Board acknowledge that
Corning followed the exact procedure set forth in the ʼ103 patent when
conducting its cure does tests on the prior art coatings.”
Assuming arguendo that Corning followed the procedure set out in
the ʼ103 patent, we agree with DSM that “[t]he results must still be
scientifically valid.” IPR 43, Paper 102, 13. In this respect, we found that
the results were not scientifically valid based essentially on the credible
testimony of Dr. Bowman.
IPR2013-00043 (Patent 7,171,103 B2)
IRP2013-00044 (Patent 6,961,508 B2)

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5. DSM test data
On page 10 of the IPR 43 Request for Rehearing, Corning suggests
that we relied on DSM testing in reaching our finding that Corning failed to
establish factually that the Szum ʼ157 examples inherently describe the
“cure dose” limitation.
We agree with DSM (IPR 43 Paper 102, 14) that Corning’s failure to
prove its case was in no way dependent on any faulty testing done by DSM.
Our analysis of DSM testing was undertaken solely because Corning
questioned the validity of DSM testing and because that testing was an issue
raised in the proceedings. However, as noted in the Final Written Decision,
Corning had the burden of proof and we found that it had failed to establish
that Szum ʼ157 Examples 10-1 and 10-2 inherently describe the “cure dose”
limitation. IPR 43, Paper 100, 25.
6. Dr. Bowman’s testimony
On page 12 of IPR 43 Request for Rehearing, Corning argues that we
improperly credited Dr. Bowman’s R
2
assessment.
We disagree for the reasons given in the Final Written Decision.
Moreover, we agree generally with DSM’s response to Corning’s argument
as presented in DSM’s Opposition. Paper 102, 2:7 through 6:10.
On page 14, Corning says that Dr. Bowman has not been consistent.
According to Corning, Dr. Bowman sometimes took into account the (0,0)
point and other times he did not. As noted by DSM, to make the argument
Corning had to rely on evidence filed in connection with IPR2013-00047.
IPR 43 Paper 102, 6.
In effect, Corning at the rehearing stage attempts in IPR 43 to
incorporate by reference evidence and argument presented in IPR2013-
IPR2013-00043 (Patent 7,171,103 B2)
IRP2013-00044 (Patent 6,961,508 B2)

6
00047. Incorporation of evidence and argument from one IPR into another
IPR is not permitted. Moreover, Corning fails to tell us where it raised the
argument in its Petition or Reply. Therefore, we do not consider the
IPR2013-00047 evidence. However, even if the evidence were to be
considered, as DSM points out, in IRP2013-00047 Dr. Bowman included a
(0,0) data point because that data point represented actual data. IPR2013-
00047, Ex. 2029, Table 1. In the case of IPR 43, the (0,0) point is not based
on actual data. There is no inconsistency in Dr. Bowman’s approach.
B. Corning Revised Request for Rehearing IPR 44
Corning’s IPR 44 Revised Request for Rehearing (IPR 44 Paper 95)
appears to be essentially the same as Corning’s IPR 43 Revised Request for
Rehearing (IPR 43 Paper 100) (except for listings of claims of US Patent
6,961,508 patent in place of the claims of the ʼ103 patent involved in
IPR 43).
III. Order
Upon consideration of Corning’s Revised Request for Rehearing in
IPR 43 (IPR 43, Paper 100) and Corning’s Revised Request for Rehearing in
IPR 44 (IPR 44, Paper 95), it is
ORDERED that the Revised Requests for Rehearing are denied.
FURTHER ORDERED that the time for seeking judicial review
begins to run with entry of this Decision. 37 C.F.R. § 90.3(b); IPR 43,
Paper 103.
IPR2013-00043 (Patent 7,171,103 B2)
IRP2013-00044 (Patent 6,961,508 B2)

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For PETITIONER:

Michael L. Goldman
Jeffrey N. Townes
Edwin V. Merkel
LeClairRyan, A Professional Corporation
Michael.Goldman@leclairryan.com
Jeffrey.Townes@leclairryan.com
Edwin.Merkel@leclairryan.com

For PATENT OWNER:

Sharon A. Israel
Joseph A. Mahoney
Mayer Brown LLP
SIsrael@mayerbrown.com
JMahoney@mayerbrown.com