CORNING INCORPORATED v DSM IP ASSETS B.V.

Patent Trials and Appeals Board

May 1, 2014

10421946 - (D) (P.T.A.B. May. 1, 2014)

Trials@uspto.gov Paper 92
Tel: 571-272-7822 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 IPR2013-00043 (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.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)

IPR2013-00043 (Patent 7,171,103 B2)
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I. INTRODUCTION
A. Background
Petitioner, Corning Incorporated (“Corning”) filed ten petitions in
November of 2012, challenging patents owned by DSM Assets B.V.
(“DSM”).
All ten petitions were at least partially granted, and therefore,
progressed into the trial phase of an inter partes review.
This is the final written decision for IPR2013-00043 and
IPR2013-00044, both of which raise common issues.
1. IPR2013-00043
The petition in IPR2013-00043 (Paper 3) challenges claims 1-18
(all of the claims) of U.S. Patent No. 7,171,103 B2 (Ex. 1001 (“the ’103
patent”)).
Patent Owner, DSM, filed a preliminary response on February 21,
2013. Paper 13 (“Prelim. Resp. 43”).
On May 13, 2013, the Board granted the petition as to all of the
proposed grounds. Paper 14.
The Board found that there was a reasonable likelihood that Corning
would prevail with respect to the claims challenged in the petition on the
following grounds:
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Claims Challenged Basis Reference(s)1
1-15 § 102 Szum ’157
1-15 § 103 Szum ’157 and Szum ’041
16 and 17 § 103 Szum ’157 and Yamazaki
16 and 17 § 103 Szum ’157, Szum ’041, and Yamazaki
18 § 103 Szum ’157, Yamazaki, and Winningham
18 § 103 Szum ’157, Szum ’041, Yamazaki, and
Winningham
After institution of trial, DSM filed a patent owner response (Paper 43
(“PO Resp. 43”)) and a supplemental response (Paper 75).
DSM also filed a motion to amend claims submitting proposed new
claim 19 for claim 12. Paper 45.
Corning filed (1) a reply to the patent owner response (Paper 64), (2) a
supplemental reply (Paper 76), and (3) an opposition to DSM’s motion to
amend (Paper 63).
DSM then filed a reply in support of its motion to amend. Paper 77.
2. IPR2013-00044
The petition in IPR2013-00044 (Paper 2) challenges claims 1-22 (all
of the claims) of U.S. Patent No. 6,961,508 B2 (Ex. 1001 (“the ’508
patent”)).
DSM filed a preliminary response on February 21, 2013. Paper 11.
On May 13, 2013, the Board granted the petition as to all of the
proposed grounds. Paper 12.

1 The references are: (1) WO 98/21157 (Ex. 1002) (“Szum ’157” also
referred to in the record as “Szum ʼ21157”); (2) U.S. Patent No. 5,664,041
(Ex. 1003) (“Szum ’041”); (3) EP 0 874 012 A1 (Ex. 1004) (“Yamazaki”);
and (4) WO 01/49625 A1 (Ex. 1005) (“Winningham”).
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The Board found that there was a reasonable likelihood that Corning
would prevail with respect to the claims challenged in the petition on the
following grounds:
Claims Challenged Basis Reference(s)2
1-8, 10-13, and 15-22 § 103 Szum ’157 and Szum ’041
9 and 14 § 103 Szum ’157, Szum ’041, and Edwards
After institution of trial, DSM filed (1) a patent owner response
(Paper 42), and (2) a supplemental response (Paper 71).
DSM also filed a motion to amend claims by submitting proposed
new claim 19 for claim 12. Paper 44.
Corning filed (1) a reply to the patent owner response (Paper 60), (2) a
supplemental reply (Paper 72), and (3) an opposition to DSM’s motion to
amend (Paper 59).
DSM then filed a reply in support of its motion to amend. Paper 73.
3. Summary
Oral argument for both cases took place on February 11, 2014. See
IPR2013-00043, Paper 94; IPR2013-00044, Paper 91 (Transcripts of Oral
Argument).
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.

2 The references are: (1) WO 98/21157 (Ex. 1002) (“Szum ’157” also
referred to in the record as “Szum ʼ21157”); (2) U.S. Patent No. 5,664,041
(Ex. 1003) (“Szum ’041”); and (3) U.S. Patent No. 5,416,880 (Ex. 1004)
(“Edwards”).
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Corning has failed to show by a preponderance of evidence that any of
challenged claims 1-18 of the ’103 patent and challenged claims 1-22 of the
’508 patent are unpatentable.
Because we do not find any of the challenged claims unpatentable, we
need not consider DSM’s motions to amend claims, and therefore, the
motions to amend claims in both IPR2013-00043 and IPR2013-00044 are
dismissed as moot.
B. Related Proceedings
Corning and DSM are simultaneously involved in eight other inter
partes reviews based on patents claiming similar subject matter:
(1) IPR2013-00045; (2) IPR2013-00046; (3) IPR2013-00047;
(4) IPR2013-00048; (5) IPR2013-00049; (6) IPR2013-00050;
(7) IPR2013-00052; and (8) IPR2013-00053.
C. The ʼ103 Patent
The ’103 patent is titled “Coated Optical Fibers” and relates to coated
optical fibers having primary and secondary coatings and to radiation-
curable primary coating compositions. Ex. 1001, 1:14-16.
The patent explains that the “soft ‘cushioning’ ” primary coating is
usually in contact with the fiber, while the “relatively hard” secondary
coating surrounds the primary coating. Id. at 1:23-26.
The coatings confer “microbending” resistance on the optical fiber,
thereby helping to reduce attenuation of optical power along the fiber. Id. at
1:27-29.
The patent is directed, in particular, to coated optical fibers in which
the primary coating provides “good microbending resistance,” and
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simultaneously, has a “high cure speed” that will not unduly limit production
rates. Id. at 1:34-37.
Claims 1 and 16, reproduced below, illustrate the claimed subject
matter (dispositive limitation in italics):
1. An inner primary coating composition having:
(a) an in-situ modulus (after cure) of less than 0.6 MPa;
(b) a cure dose to attain 95% of the maximum attainable
modulus of less than 0.65 J/cm2; and
(c) a modulus retention ratio (after cure) of at least 0.6
after hydrolytic aging; wherein said composition
comprises:
(i) 20–98 wt. % relative to the total weight of the
composition of a radiation curable urethane (meth)
acrylate oligomer having polyether polyol
backbone;
(ii) 0–80% wt. % relative to the total weight of the
composition of one or more reactive diluents;
(iii) 0.1–20 wt. % relative to the total weight of the
composition of one or more photoinitiators; and
(iv) 0–5 wt. % relative to the total weight of the
composition of additives.
16. A coated optical fiber comprising:
(a) an optical fiber;
(b) a primary coating obtained by curing the coating
composition according to claim 1;
(c) a secondary coating, wherein said secondary coating
has:
(i) a Tg of about 60° C. or higher;
(ii) an elongation at break of at least 20%; and
(iii) a tensile modulus of at least 500 MPa.
D. The ’508 Patent
The ’508 patent is titled “Coated Optical Fibers” and relates to coated
optical fibers having primary and secondary coatings and to radiation-
curable, primary coating compositions. 44 Ex. 1001, 1:12-16.
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The patent explains that the “soft ‘cushioning’ ” primary coating is
usually in contact with the fiber, while the “relatively hard” secondary
coating surrounds the primary coating. Id. at 1:19-26.
The coatings confer “microbending” resistance on the optical fiber,
thereby helping to reduce attenuation of optical power along the fiber. Id. at
1:23-26.
The patent is directed, in particular, to coated optical fibers in which
the primary coating provides “good microbending resistance” and
simultaneously has a “high cure speed” that will not unduly limit production
rates. Id. at 1:30-34.
Claims 1 and 20, reproduced below, illustrate the claimed subject
matter (dispositive limitations in italics):
1. A coated optical fiber comprising:
(i) an optical fiber;
(ii) a primary coating; and
(iii) a secondary coating;
wherein
(a) said coated optical fiber has an attenuation
increase of less than 0.650 dB/km at 1550 nm;
(b) said primary coating has a modulus retention ratio
after hydrolytic aging of at least 0.5 and/or a glass
transition temperature (Tg) below –35° C.; and
(c) said primary coating is obtained by curing a
primary coating composition having a cure dose to
attain 95% of the maximum attainable modulus of
less than 0.65 J/cm2.
20. An inner primary coating composition having:
(a) an in-situ modulus (after cure) of less than 0.6 MPa;
(b) a cure dose to attain 95% of the maximum attainable
modulus of less than 0.65 J/cm2; and
(c) a modulus retention ratio (after cure) of at least 0.6
after hydrolytic aging.
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II. ANALYSIS
A. Claim Construction
As a step in our analysis for determining whether the challenged
claims are unpatentable, we determine the meaning of the claims.
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent. See
37 CFR § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012).
The dispositive claim limitation in the ʼ103 patent is limitation (b) of
claim 1: “a cure dose to attain 95% of the maximum attainable modulus of
less than 0.65 J/cm2.”
The dispositive claim limitation in the ʼ508 patent is limitation (c) of
claim 1: “said primary coating is obtained by curing a primary coating
composition having a cure dose to attain 95% of the maximum attainable
modulus of less than 0.65 J/cm2.”
Corning has failed to prove that prior art compositions inherently
attain 95% of the maximum attainable modulus at a cure dose of less than
0.65 J/cm2.
DSM has failed to prove that the prior art compositions do not attain
95% of the maximum attainable modulus at a cure dose of less than 0.65
J/cm2.
Accordingly, there is no occasion to construe further the language of
limitation (b) of claim 1 of the ʼ103 patent or limitation (c) of the ʼ508
patent, hereinafter the “95% limitations.”
B. Testimony and documentary evidence
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The testimony and documentary evidence relevant to the “95%
limitations” in both IPRs are essentially the same.
We discuss the testimony and evidence, citing to the evidence of
record in IPR2013-00043.
Nevertheless, Table 1, reproduced below, correlates chronologically
by exhibit number the common testimony and documentary evidence
submitted, and upon which we have relied in deciding both IPR2013-00043
and IPR2013-00044.
Table 1
Description of testimony or
document
Ex. number in
IPR2013-00043
Ex. number in
IPR2013-00044
U.S. Patent 5,416,880 “Edwards” None 1004
ʼ508 Patent None 1001
ʼ103 Patent 1001 None
WO 98/21157 “Szum ʼ157” 1002 1003
U.S. Patent 5,664,041 “Szum ʼ041” 1003 1002
Winningham declaration 1006 1005
Kouzmina declaration 1007 1006
Reichmanis declaration 1028 1026
Bowman cross-examination 1033 1031
Anderson 1038 1036
Schmid 1047 1045
Chawla 1050 1048
Kouzmina cross-examination 2022 2021
Kouzmina cross-examination 2024 2022
Winningham cross-examination 2028 2027
Bowman declaration 2030 2029
Dose-segment modulus data 2049 2048
Dose-segment modulus data 2050 2049
Dose-segment modulus data 2051 2050
Dose-segment modulus data 2052 2051
Curve fit and statistical analysis 2053 2052
Proc. of the Int’l Soc. for Optical Eng’g 2058 2057
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In support of its petitions, Corning offered the testimony of Ms. Inna
I. Kouzmina (Ex. 1007).
According to Kouzmina, compositions were made in accordance with
Example 10-1 and Example 10-2 as described by Szum ʼ157 (Szum ʼ157,
118:10-21; Table 15).
Kouzmina also testified (Ex. 1007 ¶ 29) concerning “[t]ests . . .
conducted on primary coatings as described in Example 10-1 and
Example 10-2 of Szum [ʼ157], to measure the cure dose to attain 95% of the
maximum attainable modulus of the cured coatings in accordance with
procedures set forth in the ʼ103 patent at 9:21-43.”
Kouzmina explains (Ex. 1007 ¶ 30):
Specifically, cure dose was determined by Dose vs.
Modulus curve analysis. Six radiation-cured sample films of
each composition were prepared, with each sample film being
obtained by applying and curing, at room temperature under a
nitrogen atmosphere, a composition having a thickness of
approximately 75 microns on a glass plate. Each composition
was cured with a different dose: 0.2, 0.3, 0.5, 0.75, 1.0, and 2.0
J/cm2 respectively. Six specimens were cut from the center
portion of each prepared sample film. MTS Tensile Tester of
MTS Systems Corporation was used to measure the 2.5%
secant modulus of each specimen. The dose-modulus curve
was then created by plotting the modulus values vs. the dose
and by fitting a curve through the data points. The “cure dose”
of the coating composition was determined to be the dose at
which 95% of the ultimate secant modulus was attained.
The experimental cure dose to attain 95% of the maximum attainable
modulus is described in Kouzmina Table B (Ex. 1007 ¶ 31):
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In a light most favorable to Corning, we will assume the “modulus”
mentioned in paragraph 31 and Table B is a secant modulus.
In support of its petitions, Corning also offered the testimony of
Dr. Michael Winningham (Ex. 1006).
According to Winningham (id. ¶ 92):
Element (b) of [ʼ103 patent] claim 1 requires the primary
coating composition to have “a cure dose to attain 95% of the
maximum attainable modulus of less than 0.65 J/cm2.” The
primary coating composition[s] of Examples 10-1 and 10-2 of
Szum [ʼ157] have a cure dose of 0.37 J/cm2 and 0.22 J/cm2,
respectively, to attain 95% of the maximum attainable modulus.
Kouzmina Decl. [Ex. 1007] ¶ 31. Thus, the limitation of
element (b) of claim 1 is met by the disclosure of Szum [’157].
Kouzmina’s cross-examination reveals that she oversaw, but did not
personally conduct, the experimental work reported in her direct testimony.
Kouzmina testified that (1) she instructed two Corning scientists to
make oligomers per information described in the prior art (presumably
including Szum ʼ157), and (2) asked them to make compositions described
in the prior art and report back to her when their experimental work was
done. Ex. 2022, 433:17–435:2.
In due course, the two scientists “generated results and reported
back . . . those results [to Kouzmina].” Id. at 484:21-23.
When asked how she knew the two Corning scientists accurately
made the oligomers, Kouzmina testified that “I had their notes and they
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reported to me for this project, so I have their information.” Id. at
436:20-22.
What Kouzmina means by “notes” is not clear; we will assume that
the “notes” are laboratory-like notebooks and related documents.
When asked “[w]hat level of scrutiny did you give the oligomer
synthesis,” Kouzmina responded “I . . . instructed the [Corning scientists]
making oligomers to follow the . . . prior art as closely as possible. And I
trusted their judgment on executing this.” Ex. 2024, 866:25–867:8.
Winningham testified that he did not “review any lab notebooks” and
“I don’t recall seeing any other data.” Ex. 2028, 690:18-19.
Data and other documents related to Corning’s tests did not
accompany the Petition.
As a result of “additional discovery” (37 C.F.R. § 41.150(c)), DSM
obtained some laboratory notebooks and other documents. PO Resp. 43, 9.
After analysis of all the evidence available to it, DSM challenges the
accuracy of the “Results” set out in Table B. Id. at 20-21.3
In support of its response, DSM submitted the direct declaration
testimony of Dr. Christopher N. Bowman. Id. at 21.

3 On page 20, footnote 2, of the patent owner’s response (PO Resp. 43),
DSM attempts to incorporate by reference arguments made in its preliminary
response (Prelim. Resp. 13). We decline to consider arguments incorporated
by reference. Incorporation by reference is an unacceptable means of
permitting a party to exceed page limits set out in the rules. 37 C.F.R.
§ 42.24; see also DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir.
1999) (“[A]doption by reference amounts to a self-help increase in the
length of the appellate brief.” “[I]ncorporation [by reference] is a pointless
imposition on the court’s time. A brief must make all arguments accessible
to the judges, rather than ask them to play archaeologist with the record.”).
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DSM’s challenge is based on two rationales: (1) its own counter-
testing (id. at 21-25); and (2) Corning’s cure dose analysis, which is said to
be statistically invalid (id. at 26-28).
Bowman testified that he understood that DSM prepared compositions
described in Examples 10-1 and 10-2 of Szum ʼ157. Ex. 2030 ¶ 71.
Bowman further testified that DSM determined cure doses to attain
95% maximum attainable modulus of the compositions described in
Examples 10-1 and 10-2 of Szum ʼ157. Id. ¶¶ 113-14.
According to Bowman (Ex. 2030 ¶ 114):
Six sample films of each of Szum ’157 Examples 10-1
and 10-2 were prepared on a plate and exposed to a dose of 0.2
J/cm2, 0.3 J/cm2, 0.5 J/cm2, 0.75 J/ cm2, 1.0 J/ cm2, and 2.0
J/cm2, respectively, from a 600 W “D”-lamp under a blanket of
nitrogen to ensure maximum cure at each dose. Prior to
exposure of the samples, the dose was measured three times
using a calibrated ILT490 broadband UVA/UVB radiometer
from International Light Technologies, which is calibrated at
least once every six months, to confirm proper dosage. After
each sample was exposed to the relevant dose, it was
conditioned at about 23±1ºC and at a relative humidity of about
50% for sixteen to twenty-four hours. The center of each
sample was then cut into specimens having a width of 12.7 mm.
The thickness of each specimen was measured at five different
locations to confirm that each specimen exhibited uniform
thickness. This data, as well as the average thickness of each
specimen, is summarized in Exhibits 2049-2052.
Exhibits 2049-52 describe DSM “mean” thickness data as follows:
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Exhibit Mean thickness Segment or Secant Modulus
2049 0.086 Segment
2050 0.090 Secant
2051 0.095 Segment
2052 0.099 Secant
DSM’s average segment and secant moduli of reproduced Examples
10-1 and 10-2 as a function of cure dose (J/cm2) are reported in Table 3 of
Bowman’s declaration (Ex. 2030 ¶ 115).
Table 3

Error in Table 3 is reported as one standard deviation.
Data described in Table 3 and Exhibits 2049-52 was used to plot
segment and secant modulus (MPa) as a function of dose (J/cm2) curves.
An example of a DSM curve of segment modulus as a function of
dose for Szum ʼ157 Example 10-1 is set out below (Ex. 2030).
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Depicted is a graph of segment modulus v. dose
for Szum ʼ157 Example 10-1
According to Bowman (id. ¶ 117):
After curve-fitting, the cure dose to attain 95% of the maximum
attainable segment modulus was determined to be 0.74 J/cm2
with a 95% confidence interval ranging from 0.72 J/cm2 to 0.76
J/cm2. R2 for the fit was 0.9786 based on the average segment
modulus at each dose and 0.9640 based on all data points at
each dose. (See Ex. 2053[, 2 of 11 and 11 of 11]).
Bowman explains the significance of “R2” as follows (Ex. 2030
¶ 122):
In statistics, R2 is known as the coefficient of determination.
In a curve fitting analysis, R2 is a measure of the correlation
between the fitted curve and the observed data. R2 generally
falls within a range of 0 to 1. An R2 value close to 1 indicates a
strong correlation between the fitted curve and the observed
data, which means that the fitted curve accurately reflects the
behavior of the observed data. When R2 is closer to 1, the fitted
curve can be used to accurately predict the behavior of a
system. In contrast, an R2 value close to 0 indicates very little
correlation between the fitted curve and the observed data,
which means that the fitted curve does not accurately reflect the
behavior of the observed data. When R2 is closer to 0, the fitted
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curve cannot be used to accurately predict the behavior of a
system.
A summary of DSM cure dose data for segment and secant moduli for
Szum ʼ157 appears in Table 4 of Bowman’s declaration testimony (id.
¶ 117).
Table 4

According to the data in Table 4, DSM did not obtain 95% of the
maximum attainable modulus with a dose of less than 0.65 J/cm2 in
reproducing Szum ʼ157 Examples 10-1 and 10-2. Ex. 2030 ¶ 118.
Bowman therefore found that Examples 10-1 and 10-2 cannot
inherently describe subject matter within the scope of claim 1 of the ’103
patent. Id. ¶ 119.
Bowman also addressed the statistical validity of Corning’s
experimental results. Id. ¶ 120.
Unlike DSM, Corning did not provide underlying data with its
petition to support cure doses reported by Kouzmina and Winningham.
Bowman Table 5, reproduced below, compares cure dose measured
by Corning and DSM for secant modulus. Id.
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Table 5

While Corning believes its cure dose falls within the scope of claim 1
of both the ’103 patent and the ʼ508 patent, the DSM cure dose does not.
Through additional discovery, DSM was able to obtain the underlying
data said to support Corning’s cure dose “results.”
According to Bowman, the underlying data “does not support the
conclusion that Examples 10-1 or 10-2 exhibit a cure dose that necessarily
falls within the scope of the claims of the ʼ103 patent.” Ex. 2030 ¶ 120.
Bowman Table 6, reproduced below, summarizes Corning’s
underlying data produced to support its cure dose values. Id. ¶ 121.
Bowman Table 6

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Bowman Figure 5, reproduced below, represents a curve fit for
secant modulus (MPa) versus dose (J/cm2) for Example 10-1 of Szum ʼ157.
Id. Fig. 5.

Bowman Fig. 5 depicts a plot of secant modulus v. dose
for Szum ʼ157 Example 10-1
The R2 fitting reported by Corning is said to be 0.9765. Ex. 2030, 57.
Bowman testified that upon review of the Corning R2 values, “I was
immediately suspicious . . .” (id. ¶ 122), apparently because the “dose data
. . . looks relatively constant” (id. ¶ 123).
Bowman asked DSM to independently analyze Corning’s data using
essentially the same approach used by DSM to analyze cure dose data of its
experiments. Id. ¶ 124.
Bowman Table 7, reproduced below, compares Corning’s R2 values
vis-à-vis DSM’s R2 values.
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Bowman Table 7

As a result of Corning’s relatively lower R2 values, which Bowman
characterizes as “significantly low R2 values,” Bowman opines (Ex. 2030
¶ 126 (footnote omitted)):
Upon seeing such low R2 values, a person of ordinary skill in
the art would have immediately recognized that . . . Corning’s
data was subject to some type of systematic or experimental
error (e.g., the use of a malfunctioning or uncalibrated
radiometer) . . . . Accordingly, Corning’s data set cannot
eliminate systematic and experimental errors as an explanation
as to why its data does not conform to the modulus-dose
behavior predicted by Equation 1 [(see Ex. 2030 ¶ 116)] and as
typically observed. (Ex. 2058).
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Figure 1 of Exhibit 2058, reproduced below, shows equilibrium
moduli ranging from about 65 to about 100% as a function of cure dose.

Depicted is a curve of modulus as a function of cure energy.
Corning’s modulus curves show moduli ranging from (1) about
0.85 to about 1.2 MPa as a function of cure dose (Ex. 2030 Fig. 5), and
(2) about 0.60 to about 0.65 MPa as a function of cure dose (Id. Fig. 6) for
the compositions of Examples 10-1 and 10-2 of Szum ’157, respectively.
According to Bowman, “[a]s indicated by Figure 1 in Exhibit 2058, as
early as 1993, data for modulus as a function of dose was readily obtained[,]
and data over a broad range of modulus values are indicated.” Id. ¶ 131.
Corning has not pointed to any evidence that Winningham conducted
any independent analysis of Corning’s curve fitting. Cf. Ex. 2028, 761:19 –
762:9 (discussing, on cross-examination, an “Exhibit 130” and “Exhibit
131”—exhibits we have not found in the record and, in any event, would not
be properly numbered exhibits).
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In reply to Bowman’s curve-fitting analysis, Corning submitted
testimony of Dr. Elsa Reichmanis. Ex. 1028.
Corning relies on Reichmanis to make two points: (1) Corning’s
curve-fitting is based on a proper analysis, while DSM’s curve-fitting is not;
and (2) the difference in cure dose may be a result of the thickness of the
films tested on behalf of Corning vis-à-vis those tested on behalf of DSM.
A first observation by Reichmanis is that Corning’s modulus versus
dose curves generally have the same overall appearance as typical modulus
versus dose curves—steep initial rise then a generally leveling off. See, e.g.,
id. ¶ 74 (referring to Ex. 1047 Fig. 4.13), ¶ 79 (referring to Ex. 1050 Fig. 6).
Reichmanis therefore “find[s] nothing peculiar or suspicious about
Corning’s modulus versus dose curves for Examples 10-1 and 10-2.”
Ex. 1028 ¶ 80.
A second observation is that Bowman, in determining R2 values,
excluded the origin (data point 0,0) from the calculation. Id. ¶ 83.
Reichmanis testified that “I have reviewed Corning’s recalculation of
its own R2 values by excluding the origin (data point 0,0) from the
calculation and I observed that they obtained R2 values similar to what DSM
obtained.” Id.
According to Reichmanis, “it makes [no] statistical sense to exclude
the origin (data point 0,0) from the data.” Id. ¶ 84.
Reichmanis points to no credible underlying data to support her
testimony.
Reichmanis notes that (id. ¶ 85):
Regardless, the issues raised by DSM and Dr. Bowman
regarding Corning’s R2 values are not dispositive, because what
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matters is what dose is required to attain 95% of the maximum
attainable modulus and not how well the curve fits to the data.
For example, if one digitizes the above modulus vs. dose curve
from . . . Ex. 1050 [(presumably referring to Figure 6)] . . . and
calculates the R2 with the origin (0,0), the adjusted R2 is
approximately 0.994, and without the point of origin (0,0), the
adjusted R2 is approximately 0.163. What I view in terms of
Corning’s data and their modulus vs. dose curves are entirely
consistent with what I would expect for coatings that have a
cure dose to attain 95% of the maximum attainable modulus of
0.37 J/cm2 and 0.22 J/cm2, respectively.
Reichmanis does not explain what recalculation of R2 (presumably
Figure 6 of Exhibit 1050) has to do with R2 values associated with curve-
fitting of Corning’s and DMS’s reproductions of Szum ʼ157 Examples 10-1
and 10-2.
Moreover, unlike Bowman, who called attention to DSM calculations
(see, e.g., Ex. 2053), Reichmanis does not call our attention to
documentation underlying her calculation of adjusted R2.
C. Discussion
1. Arguments considered
In resolving this case on the merits, we consider only the arguments
made in the Petition, the Response, and the Reply.
We find that:
(1) Corning has not established by a preponderance of the
evidence that Examples 10-1 and 10-2 inherently describe an inner
primary coating meeting the “95% limitation” required by paragraph
(b) of claim 1 of the ʼ103 patent or paragraph (c) of claim 1 of the
ʼ508 patent, and
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(2) DSM has not established by a preponderance of the
evidence that Examples 10-1 and 10-2 do not meet the required “95%
limitation”.
Accordingly, we do not find it necessary to consider DSM’s
Supplemental Response (Paper 75) or Petitioner’s Reply thereto (Paper 76).
In reaching our decision that Corning has failed to establish inherency
as to the “95% limitation,” we have assumed that both Corning and DSM
accurately reproduced the coatings of Szum ’157. In light of our findings, it
is not necessary to determine whether the coatings were accurately
reproduced.
2. Corning’s proofs
On the factual issue of whether Corning has established that Szum
ʼ157 inherently describes a coating having the required cure dose, there is
conflicting testimony of Bowman and Reichmanis.
Both witnesses appear to be qualified scientists.
We have no reason to question the good faith of either witness and we
believe they have testified faithfully to their respective opinions.
Nevertheless, to the extent that there is a conflict between the two
witnesses with respect to Corning’s cure dose proofs, we credit Bowman
over Reichmanis.
The Bowman testimony is detailed and supported by underlying data,
while the Reichmanis testimony is general and is not credibly supported by
underlying data. 37 C.F.R. § 42.65(a), (b)(5).
Corning argues that Bowman ignored the origin (0,0 data point).
At a dose of zero (0) J/cm2, Bowman tells us that the modulus would
be “close to zero.” Ex. 1034, 1097:25.
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Reichmanis believes the origin should be included in any R2
determination and maintains that the only thing that counts is the cure dose
(not the R2 value). Ex. 1028 ¶¶ 84-85.
Fitting data points to a curve is important.
The data points, when properly fitted to a curve, permit one skilled in
the art to determine whether 95% of the maximum attainable modulus is
attainable at the relevant cure dose for a given composition.
According to the ʼ103 patent, cure doses of 0.2, 0.3, 0.5, 0.75, 1.0, and
2.0 J/cm2 are to be employed. ’103 patent 9:58-60; see also ’508 patent
7:58-59.
A “dose-modulus curve was then created by plotting the modulus
values vs. the dose and by fitting a curve through the data points.”
’103 patent 9:39-41.
The ’103 patent and the ’508 patent do not indicate that the data
points are to include the origin (0,0 data point).
Reichmanis provides no credible explanation as to why the origin
should be included in the face of the explicit disclosure of the ʼ103 patent
and the ʼ508 patent.
Once the data points are curve-fitted, the “maximum” modulus
surfaces at the point where the curve flattens out. See, e.g., Ex. 2030, Fig. 1
(essentially between a dose of 1.00 and 2.00 J/cm2).
At a dose of 0.2, the modulus is essentially 0.5.
Once one skilled in the art has a properly fitted curve, determination
of 95% of the maximum modulus is possible.
As seen visually in Figure 1, the maximum appears to be at a modulus
of about 0.95 MPa.
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As shown in Figure 1, the cure dose required to obtain 95% of the
maximum attainable modulus was determined to be from 0.72 to 0.76
J/cm2—a value outside the limits of claim 1 of the ʼ103 patent and claim 1 of
the ʼ508 patent.
Corning has failed to establish that the properties of the compositions
of Examples 10-1 and 10-2 of Szum ’157 fall within the scope of the claims
of either patent.
3. DSM’s counter-tests
DSM is under no burden to establish that Examples 10-1 and 10-2 do
not inherently describe coatings meeting the 95% limitation.
We address the DSM’s counter-proofs to complete our analysis
because those proofs have been addressed by DSM and Corning.
On the factual issue of whether DSM has established that Szum ʼ157
does not inherently describe a coating having the required 95% cure dose,
there is conflicting testimony of Bowman and Reichmanis.
The ʼ103 patent indicates that cure dose tests should be performed on
a sample having a thickness of “approximately 75 microns.” ’103 patent
9:28-29; ʼ508 patent 7:53-57.
As noted earlier, both witnesses appear to be qualified scientists.
Again, we have no reason to question the good faith of either witness,
and we believe they have testified faithfully to their respective opinions.
Nevertheless, to the extent that there is a conflict between the two
witnesses with respect to DSM’s cure dose proofs, on this factual issue, we
credit Reichmanis over Bowman.
Reichmanis testified that the cure dose may be a function of sample
thickness. See Ex. 1028 ¶ 56 (“[A]s the thickness of the coatings increases,
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the dose required to cure the coatings to a given degree also increases.”
(citing Ex. 1038, 516 (“[L]ogic would predict that thicker films would be
cured to a lesser extent, at a given dose, than thinner films.”)).
Reichmanis graphically illustrates the point, explaining (Ex. 1028
¶¶ 57, 58; Fig. 2):
Less light (i.e., fewer photons) in the deeper portions of the
thicker film means that fewer photoinitiators are being activated
by light to release free-radicals, resulting in fewer free-radical
induced polymerization reactions. Consequently, thicker films
will be cured to a lesser extent at a given dose than thinner
films.

Depicted are thin and thick films showing free-radical
polymerizations in both
As is apparent in the thinner film (left side), a cure dose may react
with a larger percentage of monomers than in the thicker film (right side).
Bowman acknowledged that DSM did not use a coating having a
thickness of 75 microns: “I noticed it was 100 microns. I didn’t correlate
the 100 microns [used by DSM] to the 75 microns [described by the ’508
patent] and notice the difference.” Ex. 1033, 866:2-4.
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Reichmanis makes out a plausible factual basis for finding that cure
dose may be a function of thickness, and Bowman has not provided a
credible, scientifically based rationale to overcome Reichmanis’ plausible
basis.
DSM has failed to establish that Examples 10-1 and 10-2 do not
inherently describe the 95% limitation in claim 1 of the patents.
4. Decision on the 95% limitations
Corning has the burden of proof, and has failed to sustain its burden of
establishing by a preponderance of evidence that the prior art inherently
describes the 95% limitation.
While DSM does not have any burden to disprove inherency, it failed
to establish that the relevant limitation is not inherent..
A preponderance of evidence has not emerged on the factual question
of whether Szum ’157 Examples 10-1 and 10-2 inherently describe a
composition within the scope of the claims of the ʼ103 and ʼ508 patents.
Hence, the party with the burden of proof necessarily loses. Yamaha
Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir.
1988).
5. Decisions on other issues
Corning’s obviousness challenges fall with its failure to establish that
the prior art inherently describes the 95% limitation—a limitation of all the
claims of both patents.

III. MOTIONS TO AMEND
In IPR2013-00043, DSM has filed a Motion to Amend (Paper 45)
contingent on claim 12 of the ʼ103 patent being held unpatentable.
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In IPR2013-00044, DSM has filed a Motion to Amend (Paper 44)
contingent on claim 17 of the ʼ508 patent being held unpatentable.
Since claim 12 of the ʼ103 patent and claim 17 of the ʼ508 patent have
not been held unpatentable, there is no occasion to reach or decide the
motions to amend.

IV. JUDGMENT
Accordingly, it is
ORDERED that Corning’s request in IPR2013-00043 for cancellation
of claims 1-18 of the ’103 patent is denied;
FURTHER ORDERED that Corning’s request in IPR2013-00044 for
cancellation of claims 1-22 of the ’508 patent is denied;
FURTHER ORDERED that the Motion to Amend in IPR2013-00043
is dismissed as moot;
FURTHER ORDERED that the Motion to Amend in IPR2013-00044
is dismissed as moot; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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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