- Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCSome claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01557 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under § 103; claims 41, 45, 46, and 49 were not shown unpatentable because the combinations did not disclose an indicator reporting the …
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. Claim 1 Claim 1 is not as narrow as Patent Owner would have us believe. It covers reducing “particulate matter” (i.e., “small particles of solid or liquid suspended in a gas”). These are precisely the “particulate matters” described by MECA. See Ex. 1008A, Figure 6, renumbered page 15—discussed in more detail above.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter reduced particulate matter to very low levels. Ex. 1008A, renumbered page 15, Figure 6. Patent Owner is using a known filter for its intended purpose to obtain an expected result—reduction in particular matter.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Conclusion We hold that Petitioner has established by a preponderance of the evidence that the subject matter of claim 1 would have been obvious to a person having ordinary skill in the art. Patent Owner has not argued the separate patentability of dependent claims 5, 9, and 39. Accordingly, those claims fall with claim 1. We hold that Petitioner has not established by a preponderance of the evidence that the subject matter of claim 41 would have been obvious.” slip op. at 30
Patent outcomesUS 7,951,346 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,951,346 - Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentablePTAB · May 9, 2014 · IPR2013-00048 · APJ Scott E Kamholz · IPR · Final written decision
Claims 5, 13, 17, 29, 33, 37, 45, and 49 are unpatentable; the remaining challenged claims are not shown unpatentable, principally because key material-property limitations were not proved.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The evidence supports a conclusion that the broadest reasonable interpretation of the term “moisture” is liquid water—that is, a condition of 100% relative humidity. The written description uses the term “moisture” in a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:17-18 (applying heat to remove “moisture” from samples, suggesting removal of liquid water). Moreover, where the written description discusses water in vapor form, the inventors use the word “humidity” or “atmospheric moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to “atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189 patent further discloses that a “ribbon assembly can be buried under ground or water for long distance connections, such as between cities,” which is consistent with the proposition that an optical fiber coating must endure long periods of immersion in liquid water without delaminating. Ex. 1001, 67:43-45. In light of the context in which the term “moisture” appears in the specification, we conclude that the inventors used that term in its ordinary sense to refer to liquid water. The ’189 patent, thus, is directed to a coating composition that, after radiation cure, has sufficient adhesion to glass to prevent delamination in the presence of liquid water. We decline to resolve what temperature, or length of time of exposure to liquid water the coating must endure, without delaminating, in order to satisfy the claimed adhesion property. Resolving those conditions is not necessary to our analysis, which focuses on whether Corning’s wet adhesion test, conducted under conditions of 95% relative humidity, is probative of the extent to which a cured coating delaminates from glass when exposed to liquid water.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We do not agree with Corning that the ’189 patent defines the term “stripping temperature” as “about 90°C to about 120°C.” Rather, the patent indicates that stripping temperature is “typically” within this range. Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating compositions the design ribbon stripping temperatures are usually about 90° C. to about 120° C., but may be different depending on the specific design parameters for the particular coating composition.”). This disclosure is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480. The ’189 patent does refer repeatedly, however, to 90°C as an exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55. The ’189 patent also identifies 100°C as an exemplary stripping temperature, particularly in the context of measuring change in length. Id. at 14:46-47, 18:44-45. Whatever other temperatures this term encompasses, it certainly encompasses at least the ones specifically identified. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”). The limitation requires no further construction.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“plots is whether they exhibit a linear region of negative slope. Corning argues that they do, and the description in Exhibit 2015 that a region of the Shustack Example I plot showing a “linear relationship” was used to calculate slope bears out this argument. See Ex. 2015, 1. DSM, in contrast, argues that Corning’s plots lack “a substantially smooth linear region” but offers little evidence to support this assertion beyond Dr. Taylor’s statements that the plots “have no linear region from which to measure a slope” and that they lack any “substantial linear region.” See Resp. 31; Ex. 2032 ¶ 86. Dr. Taylor gives no credible explanation for the basis on which he reaches these conclusions. Even if Dr. Taylor provided some underlying facts or data for this conclusion, Dr. Taylor’s statements do not support DSM’s argument that there is no substantially smooth linear region. As between the conflicting evidence on this point, we credit Corning’s evidence, particularly from Exhibit 2015, in which Corning’s Mr. Gleason identifies the region of linear relationship as extending between displacements of 2.76 mm and 7 mm. DSM does not explain why this determination is invalid. We agree with Corning that the plots for Shustack Example I show a linear region of negative slope from 2.76 mm to 7 mm. To be sure, the signal is noisy, and the plots are jagged, but that does not mean that a linear relationship is not discernible in that region.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundNot shown unpatentable
“For these reasons, we credit Corning’s testing evidence over DSM’s. We are persuaded that Corning has shown that Shustack Example I and Szum ’928 Example 5B each inherently possess a fiber pull-out friction within the scope of every challenged claim. 2. “Sufficient Adhesion” As discussed above in section II.A.1, each of claims 1-4 and 9-12” slip op. at 27
Patent outcomesUS 6,298,189 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,298,189 - Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentablePTAB · May 1, 2014 · IPR2013-00053 · APJ Zhenyu Yang · IPR · Final written decision
Claims 35, 39, 44, and 53-57 are unpatentable as anticipated by Murphy; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“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.” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedNot shown unpatentableDecided for petitioner
“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).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“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 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” slip op. at 5
- ExcludeMotion to exclude, deniedDenied
“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 or rehearing cannot be avoided.”).” slip op. at 19
Patent outcomesUS 7,276,543 mixedClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,276,543 - Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentablePTAB · May 1, 2014 · IPR2013-00052 · APJ Zhenyu Yang · IPR · Final written decision
Claims 11-23 and 26-31 are unpatentable; Corning did not prove claims 24, 25, and 32-34 unpatentable because its obviousness showing was insufficient and its renewed %RAU data was improper reply evidence.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“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 (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 lowmolecular-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” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureUnpatentableUnpatentable
“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 ¶¶ 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.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“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, 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.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“[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 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 Bowman’s opinion credible, especially given that both the opinion and the evidence referred to therein stand unrebutted by Corning. A second independent basis supports our conclusion that Corning has” slip op. at 18
Patent outcomesUS 7,276,543 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,276,543
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.