- Flir Systems, Inc. v. Leak Surveys, Inc.All claims unpatentablePTAB · Sep 3, 2015 · IPR2014-00411 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1–28 and 30–58 of the ’813 patent and claims 1–7 and 9–20 of the ’496 patent are unpatentable as obvious over the listed prior-art combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction of “leak” deviates from the ordinary meaning of the term. PO Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention fails to recognize and distinguish the express teaching that chemicals of interest from flares, exhausts, vents or blow off valves are expressly described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed, one portion of the specification that LSI relies on to distinguish known versus unknown emissions, indicates that the invention is used to survey known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We are not persuaded by LSI’s arguments. The case LSI relies on, Virginia Innovation, is neither binding authority nor persuasive authority. The facts in Virginia Innovation can be distinguished from the facts of the present case, as the prior art in question in Virginia Innovation was not sufficiently shown to be generally on sale to the interested public, and was instead “restricted” to members of a publishing organization, which required membership dues for access. See 983 F. Supp. 2d at 737–38. Indeed, the district court in Virginia Innovation noted that there was no evidence that the document was available for sale to the general public outside of the publishing organization members. Id. In the present case, no membership fee or organization membership is required for access to the Merlin User’s Guide, which testimony shows was available and sold to the interested public as early as late 2000. See Ex. 1026 ¶¶ 17–19; Ex. 1024 ¶¶ 12–14; Ex. 1016 ¶ 12. Based on the complete record, we find by a preponderance of the evidence that distribution of the Merlin User’s Guide with the sale of the Merlin MID camera shows sufficient public accessibility and distribution. The cost to obtain the camera does not negate the evidence that the camera and accompanying user’s guide was available to the interested public. The testimony evidence shows that the Merlin User’s Guide was available for sale and distribution to the interested as early as 2000. Thus, FLIR has shown by a preponderance of the evidence that the Merlin User’s Guide was a publicly available printed publication.” slip op. at 22
- Skill levelSkill level board ownDecided for patent owner
“relevant experience with passive IR (infrared) systems in addition to the requisite engineering or physics education. Paper 2, 10–11 (IPR ’065); Reply 19–20. LSI contends that in addition to the requisite physics or optical science/engineering education a person of ordinary skill the art would have experience developing IR camera systems generally. PO Resp. 22. LSI’s contention is that FLIR’s definition of a person of ordinary skill is too narrowly focused on passive IR systems and is evidence of hindsight bias. PO Resp. 23. LSI’s arguments are contradictory and confusing; asserting not only that FLIR’s person of ordinary skill in art is overly narrow and defined as a “specialist in the [’813 and ’496 patents’] specific solution to the problem being solved,” but also that FLIR’s artisan “would not [] have been familiar with the technical problem being addressed by the invention.” PO Resp. 22 (emphasis omitted). Regardless, FLIR argues that the invention would have been obvious under either FLIR’s or LSI’s proposed person of ordinary skill in the art. Reply 20. Based on the full record, we find that the level of ordinary skill in the art is evidenced by the prior art references and the type of problems and solutions described in the ’813 and ’496 patents (Ex. 1001, 1:25–2:34), and includes experience in imaging of chemical gases using IR camera systems generally in addition to the requisite engineering, physics or optical science education. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, and apart from any differences of opinion between FLIR and LSI on the precise background and knowledge of one skilled in the art, the prior art itself is highly indicative of the level of skill. See id. (“the level of ordinary skill in the art . . . was best determined by appeal to the references of record”). In any event, we do not find that a person of ordinary skill’s understanding of the teachings of the prior art would differ if an ordinarily skilled artisan possessed knowledge of both active and passive IR systems rather than knowledge of passive IR systems alone. See PO Resp. 22–24.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the full record, we find, by a preponderance of the evidence, that FLIR has provided articulated reasons with rational underpinnings for the proposed combinations of prior art. FLIR’s evidence shows that combinations of the Merlin Brochure with Strachan or the Merlin User’s Guide with Kulp is the combination of known elements that yield predictable results. See Paper 2, 17–18 (citing Ex. 1006 ¶ 55), 20–21 (citing Ex. 1006 ¶ 60) (IPR ’065); Paper 2, 37–38 (citing Ex. 1006 ¶ 81) (IPR ’411). In addition, we find by a preponderance of the evidence that the prior art demonstrates that it would have been an obvious design choice to one skilled in the art to replace the filters disclosed in Strachan and Kulp to target hydrocarbon gases of interest using the camera disclosed in the Merlin Brochure and Merlin User’s Guide. Paper 2, 38–39 (citing Ex. 1006 ¶¶ 81– 82) (IPR ’411). Accordingly, we do not agree with LSI that FLIR’s expert testimony is conclusory. PO Resp. 23, 61, 67–68.” slip op. at 39
Patent outcomesUS 8,426,813 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,426,813 - Merial Limited v. VirbacRehearing grantedPTAB · Apr 15, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing
Rehearing was granted and review instituted on claims 1–15 under § 103 over Huet ’333 combined with Saito and over Huet ’333 combined with Sirinyan.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree with Petitioner that we overlooked the significance of that portion of Huet ʼ333 indicating that use of a cosolvent is optional. Upon consideration of the Petition for Rehearing1 and the Response, we grant the Petition for Rehearing and order institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“solvent must include any C1-C4 alcohol. The cosolvent, which can be absolute ethanol, isopropanol, or methanol (Ex. 1005, 6:19–20), is optional (Ex. 1005, 10:45).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We recognize in circumstances similar to those present in this case that it often is questioned why one skilled in the art would “pick and choose” particular ingredients (solvents and crystallization inhibitors in this case) where a reference describes several alternatives. There is an answer. First, the entire disclosure of Huet ʼ333 is in the public domain. One skilled in the art should be free to use any combination described by Huet ʼ333 in proportions that Huet ʼ333 characterizes as being within the skill of the art. Claim 1 of the ’799 patent presumptively removes from that public domain a portion of what is described by Huet ʼ333. Absent some unexpected result obtained by the subgenus of claim 1 of the ʼ799 patent vis-à-vis the broader genus described by Huet ʼ333, it is likely that the subject matter of claim 1 of the ʼ799 patent would have been obvious within the meaning of 35 U.S.C. § 103(a). Patent Owner, in responding on the merits, is free to present evidence of unexpected results.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,501,799 - 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.No claims unpatentablePTAB · May 9, 2014 · IPR2013-00049 · APJ Scott E Kamholz · IPR · Final written decision
Corning failed to prove claims 53–66 unpatentable because it did not establish the claimed change-in-length property and other required limitations for the asserted grounds.
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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“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 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“excluded and given little or no weight. Resp. 45-47; PO Mot. To Exclude 1- 6. We address the admissibility of Dr. Winningham’s testimony below in our decision on DSM’s motion to exclude evidence. To the extent that DSM’s argument goes to the weight to be accorded Dr. Winningham’s testimony, it is not persuasive. DSM identifies no particular instances in which Dr. Winningham’s silence as to the relevant time period for determining who is one of skill in the art weakens his testimony. We agree with Corning that the thoroughness of Dr. Winningham’s testimony outweighs the concern DSM expresses. We also are not persuaded that Dr. Winningham made the admission that DSM argues. DSM’s question appears to address whether Dr. Winningham made any distinctions about the qualifications and experience of a skilled scientist over time, not whether Dr. Winningham based his obviousness opinions on the knowledge of that skilled scientist at the time the invention was made. We do not find Dr. Winningham’s supposed admission determinative on the issue of whether he failed to consider the relevant time period in his obviousness opinions.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“In sum, two independent reasons support our determination that the wet adhesion test results advanced by Corning fail to show adequately that the Szum coating has “sufficient adhesion . . . to prevent delamination in the presence of moisture” within the meaning of the challenged claims. First, the wet adhesion test assesses a property of the coating after conditioning at 95% relative humidity, which is not “in the presence of moisture.” Second, Corning identifies no persuasive evidence from which we reasonably can discern that the wet adhesion test evaluates for “delamination.”” slip op. at 24
Patent outcomesUS 6,298,189 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,298,189 - Corning Incorporated v. DSM IP Assets B.V.All claims unpatentablePTAB · May 1, 2014 · IPR2013-00050 · APJ Scott E Kamholz · IPR · Final written decision
Claims 1–19 are unpatentable under § 103; the Board denied DSM’s contingent motion to amend proposed claims 20–22 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“7 Dr. Winningham states that a “skilled scientist in the art of fiber optic coatings is a person with at least a masters degree in chemistry or material science and engineering, and 5 years of experience in the research, development, or manufacture of optical fiber coatings.” Ex. 1006 ¶ 8. Dr. Bowman states that a person of ordinary skill would have a B.S. degree in chemistry, chemical engineering, materials science, or a related field, and 3-5 years’ post-graduate experience, including experience in photopolymerization, molecular synthesis, polymer characterization, polymer chemistry, and optical fibers. Ex. 2026 ¶ 42. We adopt Dr. Bowman’s description of the level of one of ordinary skill, because it is reasonable and is not challenged by Corning.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner
“We find Dr. Sogah’s explanation more persuasive. First, after Corning submitted Dr. Sogah’s declaration rebutting Dr. Bowman’s opinion, DSM cross-examined Dr. Sogah extensively, see Ex. 1037, but did not call our attention to any of his deposition testimony in its Motion for Observations on Cross-examination of Corning Reply Declarants. See Paper 63. More importantly, DSM’s scientists do not appear to have given much consideration to the low-molecular-weight region of the GPC spectrum. See Ex. 1030, 144:6-147:22. Indeed, when DSM’s scientist presented the oligomer test data to Dr. Bowman, she did not include data of the low-molecular-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 . . . .”). Dr. Bowman’s account confirms Dr. 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. 1060 (IPR2013-00043) ¶¶ 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.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We agree with Corning on this point. The disadvantages DSM identifies are both speculative and not supported by credible evidence. Dr. Bowman’s opinion as to the disadvantages of transesterification repeats DSM’s attorney argument word-for-word. Compare Resp. 30-31 with Ex. 2026 ¶ 91. Dr. Bowman does not disclose underlying facts or data on which his opinion is based; we give it, therefore, little weight. See 37 C.F.R. § 42.65(a). The mere existence of disadvantages resulting from a modification, moreover, does not refute the obviousness of the modification, especially when the prior art indicates that the modification also offers an advantage. Tradeoffs regarding features, costs, manufacturability, or the like, do not necessarily prevent the combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). The disadvantages DSM asserts, when set against the advantages disclosed in Trapasso that Corning identifies, show at most that the choice of transesterification may involve a trade-off of advantages and disadvantages. This trade-off does not amount to a teaching away. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d at 1165. We agree with Corning, as well, that the rationale put forward for combining references need not follow the inventor’s reasoning for making the invention. See In re Fulton, 391 F.3d at 1202. In this case, Corning has identified credible reasons—set forth in Trapasso itself—for making the proposed substitution. The prior art need not have appreciated properties that would have resulted from the combination and that the inventor touts as particular benefits of the invention. In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). Although an appreciation in the prior art of the resulting properties may bolster a finding of obviousness, it is not necessary. In re Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (en banc).8” slip op. at 22
- 112 supportMotion to amend, deniedDenied
“Aside from bare assertions that this disclosure supports the proposed limitation, DSM makes no credible argument for how the measurement of this property in one example demonstrates possession of the genus of compositions encompassed by the “modulus of 1.4 MPa or less” limitation. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (“[T]he specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.”). DSM has not explained how a single example is sufficient basis on which to base the proposed claim. Other examples in the ’255 also exhibit a modulus of less than 1.4 MPa. In particular, Examples 2 and 3 in Table 2 are reported as having moduli of 0.9 MPa and 1.1 MPa, respectively. Corr. Mot. to Amend 4; Ex. 1001, 14:19-42. DSM argues that one of ordinary skill would recognize the benefits of coatings having moduli in the range of 1.4 MPa to 0.9 MPa. Corr. Mot. to Amend 5. But Examples 1, 2, and 3 do not provide sufficient written description support for the proposed limitation, because more than half the claimed modulus range is not exemplified. At best, Examples 1, 2, and 3 might support a limitation of 0.9 MPa to 1.4 MPa (though we do not make such a determination), but not the full scope of the proposed modulus limitation set out in the substitute claims. See Ariad, 598 F.3d at 1349. Nor do the “typically suitable” modulus ranges Dr. Bowman cites from the ’255 patent provide adequate written description for the proposed substitute claims. See Ex. 2026 ¶ 130, 154. The disclosed ranges are 0.1 to 2,000 MPa or more; 0.1 to 10 MPa; 0.1 to 5 MPa; and 0.5 to less than 3 MPa. Id. None of these ranges specifies the 1.4 MPa upper limit of the proposed substitute claim. Nor do any of the ranges indicate that the range has no lower limit; they all instead specify a non-zero lower limit. DSM has not explained persuasively how any of these ranges show possession of a composition having a modulus in the proposed range. See In re Ruschig, 379 F.2d 990, 995 (CCPA 1967) (explaining need for “blaze marks” in the specification to single out written description for claims narrowed by amendment). Nor has DSM explained persuasively how the generic disclosure, in” slip op. at 46
Patent outcomesUS 6,323,255 unpatentable§ 103 obviousnessPatents in suitUS 6,323,255 - 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.