Corning Incorporatedv.DSM IP ASSETS B.V.Download PDFPatent Trial and Appeal BoardAug 12, 201410421946 (P.T.A.B. Aug. 12, 2014) Copy Citation 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) 5 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) 7 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 Copy with citationCopy as parenthetical citation