• Runway Safe Group AB v. Earthstone International LLC And W. Gene RamseySome claims unpatentable
  PTAB · Feb 17, 2021 · IPR2019-01490 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1–11 and 13–16 are unpatentable as obvious; claim 12 was not shown unpatentable because the asserted grounds did not establish its interconnected open porosity limitation.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. After considering the parties’ arguments and supporting evidence, we conclude that Petitioner has proven by a preponderance of the evidence that claims 1–11 and 13–16 of the ’671 patent are unpatentable. 35 U.S.C. § 316(e). Petitioner has not met that burden with respect to claim 12.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “any of Narmo, Hojaji, and Ramsey. Resp. 8, 16–17. On this record, we conclude it would have been obvious to the person of ordinary skill in the art to combine the teachings of ACRP and Narmo, Hojaji, or Ramsey, as asserted by Petitioner. Moreover, we also conclude such combinations merely use specific foamed glass compositions in structures already using foamed glass compositions and that the skilled artisan would have reasonably expected to successfully do so. See Ex. 1002 ¶¶ 78, 81, 84. The simplicity of the technology and the reasonably high level of skill in the art support such a conclusion.” slip op. at 57

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “disclosed foamed glass aggregate bodies to have an “interconnected open porosity” is based on an allegation of inherency, where the open porosity forms because of weathering. See Pet. 38–39 (citing Ex. 1002 ¶ 75). Similar to our conclusion regarding Ground 6, we also find that Petitioner has not demonstrated that the subject matter of claim 12 would have been obvious over ACRP. We are directed to no evidence of record that the interconnected open porosity limitation would necessarily be present or would be the natural result of weathering, as asserted by Petitioner. See Endo Pharm., 894 F.3d at 1381. To the extent that Petitioner’s argument is premised on a KSR “obvious to try” rationale, as with Ground 6, we find Petitioner presents no evidence that a person of ordinary skill in the art would have had any reason to pursue the claimed interconnected open porosity, no evidence of a design need for such a structure, and no evidence of market pressure to solve any problem relating to foamed glass porosity. KSR, 550 U.S. at 421. Indeed, Petitioner failed to clearly articulate any obvious to try rationale in the Petition.” slip op. at 74

  • Strike new argumentNew argument consideredDenied

    “III. PARTIES’ MOTIONS TO STRIKE OR EXCLUDE Petitioner filed a Motion to Strike Patent Owner’s Sur-Reply for” slip op. at 77

  Patent outcomesUS 9,382,671 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,382,671
• L’Oréal USA, Inc. v. Liqwd, Inc.Some claims unpatentable
  PTAB · Jul 30, 2019 · PGR2018-00025 · APJ Timothy G Majors · PGR · Final written decision

  Claims 1–13, 19–23, 29, and 30 are unpatentable as obvious; claims 14–16, 18, and 24–28 were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “combination of Pratt and Tanabe teaches or suggests all of claim 1’s limitations, and that the skilled artisan had a sufficient reason to combine the art as proposed with a reasonable expectation of success in arriving at the bleaching method that is claimed. Before reaching a conclusion of obviousness, however, we consider the parties’ argument and evidence related to alleged objective indicia of nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).” slip op. at 35

  • ExcludeMotion to exclude, deniedMixed

    “those exhibits) as discussed above in the context for which they were offered (objective indicia of nonobviousness as to alleged unexpected results and industry skepticism). We gave the exhibits little weight on those issues for the reasons explained, and ultimately found in Petitioner’s favor—that objective indicia of nonobviousness did not outweigh the evidence of obviousness on this record. Thus, excluding this evidence would not change the result. Accordingly, we dismiss Petitioner’s motion to exclude Exhibits 2038 and 2041 as moot.” slip op. at 85

  Patent outcomesUS 9,668,954 mixed
  § 103 obviousnesscites KSR
  Patents in suitUS 9,668,954
• The Kingsford Products Company, LLC v. Creative Spark, LLCSome claims unpatentable
  PTAB · Mar 9, 2018 · IPR2016-01831 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1, 2, 4–12, 17, 19–21, 23, 24, and 26–32 are unpatentable; claims 3, 13–16, 18, 22, and 25 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “the briquets resulting from the combination of Burke, Wulf, and Peters, nor whether those microfractures could lead to deleterious results. Instead, the question is whether a person of ordinary skill in the art would have combined the teachings of Burke, Wulf, and Peters in the manner claimed in the ’803 patent with a reasonable expectation of success. On this point, we have considered Dr. Speight’s testimony that [a] person of ordinary skill in the art would have understood that using roller pressing to press grooves into a charcoal briquet as described in Wulf would have led to an unacceptably structurally weak charcoal briquet, subject to premature crumbling during combustion and likely to shatter during shipping, handling, and use. Ex. 2021 ¶ 89;9 see PO Resp. 11–19. Dr. Speight’s testimony is unsupported by additional objective evidence and, therefore, as discussed below, outweighed by Petitioner’s evidence that a person of ordinary skill in the art would have wanted to use grooved briquets in order to provide improved ignition and combustion characteristics by enhancing air flow around the briquet. Ex. 1002 ¶ 94; Ex. 1006, 1:53–60; Ex. 1007, 1:54–61. In addition to the testimony of Petitioner’s declarant, Ex. 1002 ¶ 94, both Burke and Peters state that the “provision of external surface discontinuities such as . . . slots or the like” is a way of “enhanc[ing] ignition or burning by enhancing air supply,” providing objective evidence that a person of ordinary skill in the art would have pursued grooves as a way of enhancing air supply to a charcoal briquet. Ex. 1006, 1:53–60; Ex. 1007, 1:54–61.” slip op. at 21

  • Skill levelSkill level board ownDecided for petitioner

    “benefits of adding grooves to charcoal briquets, Petitioner directs us to the testimony of Donald Swatling, who “has worked in the commercial charcoal briquetting field since 1999, has direct, personal experience using roller presses to make grooved charcoal briquets before 2004, and has supported the technical aspects of the commercial production of grooved charcoal briquets using roller presses.” Reply 15 (citing Ex. 1030 ¶¶ 4–9) (emphasis removed). In his testimony, Mr. Swatling, a fact witness who approximates a person of ordinary skill in the relevant art, “states that he was never aware of any concern that the standard roller presses used to manufacture charcoal briquets would cause structural weaknesses that would lead to premature crumbing during combustion if used to produce grooved briquets” or any concern that “roller pressing would cause a charcoal briquet to be unacceptably susceptible to breakage under normal shipping, storage, handling or use conditions.” Id. at 15–16 (citing Ex. 1030 ¶¶ 10–15). This is significant evidence that a person of ordinary skill in the art was not troubled by the microfracture concerns Dr. Speight raises, or at least that a person of ordinary skill in the art was not so troubled that he would have been persuaded not to pursue roller-pressed grooves as an option in briquet design and production.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “with a limited ignition time and an extended burning time.” Id. We disagree that this portion of Peters necessarily evidences an unmet need for “a charcoal briquet that achieved a cooking temperature of at least, about, or on the order of at least 1000 degrees Fahrenheit within about fifteen minutes after ignition, and sustained that temperature for at least fifteen minutes thereafter.” PO Resp. 48. Instead, it suggests a generic need, whether met or not, for an ignition phase of “limited” duration and a burn phase that is “extended” and “provide[s] adequate cooking time.” Patent Owner does not direct us to evidence in Peters that supports a finding that there was an unmet need for achieving a cooking temperature within about fifteen minutes or for sustaining the cooking temperature for at least fifteen minutes. Patent Owner also does not direct us to evidence in Peters that suggests an attempt and failure to meet a need for any particular cooking temperature. The second portion of Peters cited by Patent Owner states that “[t]here have been very [few] prior art developments related to design of solid fuel articles for desired combustion performance” and that these earlier developments “do not provide desired optimal ignition and burning characteristics.” Ex. 1006, 1:51–62; see also id. at 2:7–9 (increased surface area-to-volume ratio has not “provid[ed] optimal desired ignition and burning characteristics”). Again, this is not evidence of the unmet need for which Patent Owner argues: “a charcoal briquet that achieved a cooking temperature of at least, about, or on the order of at least 1000 degrees Fahrenheit within about fifteen minutes after ignition, and sustained that temperature for at least fifteen minutes thereafter.” PO Resp. 48. Thus, we are not persuaded that Peters supports the long-felt but unmet need for which Patent Owner argues.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for petitioner

    “We have considered Patent Owner’s arguments, but we are not persuaded that Franke’s statements, even as supplemented by the testimony of Dr. Speight, show skepticism regarding the invention of the challenged claims. As discussed above, relevant skepticism is expressed at the time of the invention of the claims in question, and it is directed at the feasibility of the claimed invention itself or the results of that invention. Here, Professor Franke’s statements were made before 1917. The application leading to the ’803 patent was filed in 2011 and claims priority to applications filed as early as 2002. Ex. 1001, at [22], [63]. Thus, Professor Franke’s statements were made at least 85 years before the invention of the ’803 patent, not at or around the time of the invention. In addition, Professor Franke’s statements were directed at briquets made of a different material than the briquets of the ’803 patent—lignite coal, rather than charcoal. Furthermore, the briquets discussed by Professor Franke were made using technology available before 1917, not technology available in 2002 or 2011. Professor Franke’s belief that grooved lignite briquets made using early 20th century technology were likely to crumble prematurely during combustion thus is not sufficiently pertinent to the’803 patent to persuade us that it represents a relevant skepticism on the part of experts in the field at the time of the invention of the ’803 patent.” slip op. at 14

  Patent outcomesUS 9,131,803 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,131,803
• Ceramtec GmbH v. Ceramedic, LLCSome claims unpatentable
  PTAB · Jul 1, 2016 · IPR2015-00398 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–5, 7, 11–13, 15–17, 19–21, 23, 30–38, 52, and 53 are unpatentable; claims 8–10 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In our Decision on Institution, we construed “dispersing α-Al2O3 powder . . . in an aqueous solution to create a mixture” to mean “causing α- Al2O3 powder to become or continue being distributed throughout an aqueous solution.” Dec. 5–6. We construed “dispersing methods” to mean “methods that cause α-Al2O3 powder to become or continue being distributed throughout an aqueous solution.” Id. at 6–7. We determined that the phrases “treating said mixture so as to create a shaped unsintered body” and “treating said mixture with a pressure process so as to create an unsintered precursor having a relative density of ρ ≥ 55%” needed no express construction. Id. at 7–8. The parties discuss and apply these claim constructions, but neither party presents arguments or evidence persuasive to modify them in light of the record developed at trial. See infra Section II.B.i.c. Accordingly, we maintain our construction of the term “dispersing α-Al2O3 powder . . . in an aqueous solution to create a mixture” to mean “causing α-Al2O3 powder to become or continue being distributed throughout an aqueous solution” and “dispersing methods” to mean “methods that cause α-Al2O3 powder to become or continue being distributed throughout an aqueous solution.”” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Al2O3 powder to become or continue being distributed throughout an aqueous solution.” Dec. 5–6. We construed “dispersing methods” to mean “methods that cause α-Al2O3 powder to become or continue being distributed throughout an aqueous solution.” Id. at 6–7. We determined that the phrases “treating said mixture so as to create a shaped unsintered body” and “treating said mixture with a pressure process so as to create an unsintered precursor having a relative density of ρ ≥ 55%” needed no express construction. Id. at 7–8. The parties discuss and apply these claim constructions, but neither party presents arguments or evidence persuasive to modify them in light of the record developed at trial. See infra Section II.B.i.c. Accordingly, we maintain our construction of the term “dispersing α-Al2O3 powder . . . in an aqueous solution to create a mixture” to mean “causing α-Al2O3 powder to become or continue being distributed throughout an aqueous solution” and “dispersing methods” to mean “methods that cause α-Al2O3 powder to become or continue being distributed throughout an aqueous solution.” All other terms are accorded their ordinary and customary meaning as would have been understood by one of ordinary skill at the time of the invention. To the extent that any term requires express construction for the purposes of this decision, we discuss that construction in our analysis of the grounds of unpatentability. B.” slip op. at 6

  • Strike new argumentNew argument consideredDecided for petitioner

    “We note the statutory requirement that the initial Petition should identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). A petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Moreover, “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). We weigh our application of these statutes and rules with the principle that the “development of evidence in the course of the trial is in keeping with the oppositional nature of an inter partes review proceeding.” Genzyme Therapeutic Prods. v. Biomarin Pharm., Nos. 2016-1720, 2015-1721, 2016 WL 3254734, at *4 (Fed. Cir. June 14, 2016). The critical question for compliance with the APA and due process is whether a party received “adequate notice of the issues that would be considered, and ultimately resolved, at that hearing.” Id. at *5. We are persuaded that the Petition’s claim 32 arguments, in which Yeh was combined with Lin for an obviousness argument, adequately put Patent Owner on notice of Petitioner’s arguments that Lin’s third dispersing method—stirring—could be another dispersing method in Petitioner’s anticipation argument for claim 1 based on Lin. Here, Lin is the only prior art upon which Petitioner bases its anticipation argument, and Lin identifies a third dispersing method in close textual proximity to the identification of the first two dispersing methods. Ex. 1002, 37 (listing stirring on the same page, in the same paragraph, and only four lines after discussing ultrasonication). Patent Owner was made aware of this third dispersing method in Petitioner’s case-in-chief, albeit regarding a different claim. Under the particular circumstances presented here, we are persuaded that the disclosure in Lin, relating to the stirring step, was fairly raised in the Petition and that Patent Owner was given a fair opportunity to address its import in this proceeding.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “It is not disputed that the cited portion of Lin discloses two dispersing steps that occur at discrete points in time. It is disputed whether these two discrete dispersing steps are different dispersing steps. The second dispersing method involves application of an ultrasonic probe to the Al2O3 suspension. Ex. 1002, 36–37. At that point, an Al2O3 suspension is already created. Although Lin’s first dispersing method is not named, it requires that “Al2O3 powder was dispersed in deionizied water” such that a “dilute dispersed aqueous suspension of 2 vol% solid concentration was prepared.” Id. at 37. Thus, in Lin’s first dispersing method, Al2O3 powder is introduced to liquid to create a dilute dispersed aqueous solution. Our construction of dispersing method encompasses “methods that cause α-Al2O3 powder to become or continue being distributed throughout an aqueous solution.” Certain Examples of the ’584 patent provide that the powders “were introduced” as part of the first dispersing step. Ex. 1001, 11:39–40, 12:63, 14:3. Introducing dry powder to liquid is a method that causes the powder to become distributed throughout an aqueous solution. This is a dispersing method that is different than ultrasonication. Even if powder were introduced to liquid, and ultrasonicated at the same time, this still is a “different” dispersing method than ultrasonication alone by virtue of the introduction to liquid step. Thus, Lin discloses two different dispersing methods.” slip op. at 9

  Patent outcomesUS 6,066,584 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,066,584
• Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.Some claims unpatentable
  PTAB · Oct 20, 2015 · IPR2014-00730 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–3, 5–14 are unpatentable: claims 1–3, 5, 10–14 anticipated by Smith; claims 6–7 and 8–9 obvious over Smith with Barr and Fouche, respectively. Claims 4 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “construe “difference of motion” in claim 4 as relative motion. Pet. Reply 5– 6. Petitioner in its Reply does not, however, provide a persuasive explanation with respect to how the signal sent by the remote controller in Smith, or its “target motion signal” in the terms of claim 4, may contribute to getting the relative motion between the remote controller and the remotecontrolled device.2 Petitioner submits that “[i]t bears noting, moreover, that the ‘target motion signal’ (STAR3) of Fig. 5 of the ’071 Patent, also is a combination of the remote-controller’s measured orientation and the angle of the joystick, just as in Smith. Ex. 1001, 6:39-51. In that embodiment, it is ‘STAR3’ that is used to calculate the ‘difference of motion.’” Pet. Reply. 7. Petitioner refers to no evidence of record, however, to establish that this “third operation mode” described by the ’071 patent necessarily sends, as in Smith, a target motion signal that is the summation of the terrestrial magnetism signal and the orientation of the joystick relative to the remote 2 Although we did not institute trial on the alternative ground that claim 4 would have been obvious over Smith and Fouche (or the knowledge of a person of ordinary skill in the art) (Pet. 29), the alternative ground for obviousness would suffer from the same deficiency as the anticipation ground. controller. Although attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Arguments of counsel cannot take the place of evidence in the record. See, e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In consideration of the foregoing, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claim 4 is unpatentable as anticipated by Smith.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’071 patent, thus, makes clear that, in the preferred embodiment of the invention, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. The “terrestrial magnetism” of the Earth “directs to a fixed direction parallel to the horizontal ground surface.” Id. at col. 3, ll. 63–65. Detecting the orientation of a remote controller with respect to magnetic North is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed. “A claim construction that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “in orientation.” Pet. 17. As Petitioner indicates (id.), the ’071 patent does not provide a definition of the relevant terms different from the ordinary meaning of the words. At the preliminary proceeding stage, we interpreted “difference of motion” simply to mean, under the required broadest reasonable interpretation, relative motion. Dec. on Inst. 10. That interpretation is consistent with the language of claim 4. Claim 4 recites that the “calculated result” — the calculated current motion of the remote-controlled device — is compared with the target motion signal to get the “difference of motion” (relative motion) between the remote-controlled device and the remote controller. In relation to Petitioner’s proffered interpretation, because a change in orientation is a type of motion, relative orientation would be a type (or species) of “difference of motion.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Thus, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. Patent Owner has not pointed to any disclosure in the ’071 patent of the remote controller storing a previous orientation for comparison with a present orientation to effect “detect[ing] the remote controller’s motion” as claimed. We, therefore, remain convinced that detecting the orientation of a remote controller with respect to magnetic North — which Patent Owner admits Smith to disclose — is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed.” slip op. at 13

  Patent outcomesUS 7,584,071 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,584,071
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,298,189
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,276,543
• Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentable
  PTAB · 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 · Graham
  Patents 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.