• Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.No claims unpatentable
  PTAB · May 23, 2016 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Remand

  On remand, the Board held claims 1–7 and 32–42 not shown unpatentable because WINS and NetBIOS do not disclose the claimed current-connection status.

  RulingsRemand decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3–9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); see generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013-00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we disagree that Stalker Software is a real partyin-interest. Accordingly, we are not persuaded that Petitioner is barred from initiating this proceeding, or that sanctions should be imposed on Petitioner.” slip op. at 10

  • BurdenNot shown unpatentable

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Petitioner provides the testimony of Mr. Kolesnikov that WINS was publically available and a CD version (Ex. 1019) was received by Mr. Kolesnikov in 1994. Pet. Reply 13–14; Tr. 19:5–19; see Ex. 1017. Mr. Kolesnikov testifies that he saw several Microsoft Windows NT 3.5 Server packages that included a print copy of WINS. Ex. 1017 ¶ 7. Petitioner further provides the testimony of Ms. Ehrlich to establish that the differences between WINS and the CD version are differences mostly as to formatting. Pet. Reply 13–14; see Ex. 1018. Ms. Ehrlich testifies that WINS and the CD version are substantially similar, noting differences in the glossaries and formatting. Ex. 1018 ¶ 6; Ex. 2044, 16:17–24. We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1–25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS was publicly available in 1994, and, therefore, qualifies as prior art under 35 U.S.C. § 102(a).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  Patent outcomesUS 6,108,704 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,108,704
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455
• Tietex International, Ltd. v. Precision Fabrics Group, Inc.No claims unpatentable
  PTAB · Jan 27, 2016 · IPR2014-01248 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–22 were not shown unpatentable under § 103 over Radwanski, Rowan, and Murch because the petitioner did not establish the claimed thermal protective performance value.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Thus, in order to prevail, Petitioner must provide evidence establishing that the claimed TPP values are inherent in the prior art. Petitioner cannot, as an examiner can, establish unpatentability of the challenged claims based on the presumption that the structure of fabric that results from the combination of Radwanski, Rowan, and Murch would necessarily possess the claimed properties. Allowing Petitioner to rely solely on a presumption of inherency would improperly shift the burden to Patent Owner to establish that the claimed properties are not necessarily present in the prior art. Therefore, we are not persuaded that the Appeal Decision establishes “that one of ordinary skill in the art would have found it obvious to construct a flame retardant, intumescent fabric in accordance with the teachings of the prior art” with the claimed TPP value of at least 4.5 as Petitioner contends. Pet. 16.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “After considering Petitioner’s and Patent Owner’s positions, as well as their supporting evidence, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 1 of the ’639 patent, and claims 2– 10, 13–16, and 19–22 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Radwanski, Rowan, and Murch. Independent claims 11, 12, and 17 also require a TPP value of at least 4.5. Ex. 1001, 12:47–13:20, 14:1–18. Therefore, for the reasons set forth above, we also determine that Petitioner has not shown, by a preponderance of the evidence, that claims 11, 12, and 17, and dependent claim 18, would have been obvious over the combination of Radwanski, Rowan, and Murch. D. Secondary Considerations of Non-obviousness Patent Owner contends that secondary considerations of non- obviousness, including unexpected results, long-felt but unsolved need, and commercial success of the patented product “compel a determination of nonobviousness.” PO Resp. 49; see id. at 49–59. As discussed above, we find that Petitioner has not established that claims 1–22 of the ’639 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Thus, we need not address Patent Owner’s evidence regarding secondary considerations of non-obviousness.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In our judgment, Petitioner’s arguments and evidence in the Reply are outside the scope of a proper reply because they do more than merely address Patent Owner’s argument that Petitioner did not establish that fabrics made by the combination inherently would have the claimed TPP value; rather, they attempt to provide new evidence that was not set forth clearly in the Petition as to why the fabric resulting from the combination of Radwanski, Rowan, and Murch necessarily would have the claimed TPP values. Because Petitioner waited until the Reply to serve this evidence on Patent Owner, Patent Owner was denied the opportunity to file responsive evidence. Consideration by the Board of the arguments in the Reply and evidence presented in the Horrocks Declaration in support thereof would be unfair to Patent Owner. Petitioner could have presented this argument and evidence with the Petition, and has not contended or offered any evidence to show otherwise. Because Petitioner belatedly presented these new arguments and evidence to make its case that the TPP value is dictated by the structure of the fabric, we decline to consider the portions of the Reply and the Horrocks Declaration on this issue. See Office Trial Practice Guide, 77 Fed. Reg. at 48,767. Patent Owner had a chance to, and in fact did, cross-examine Dr. Horrocks, but had no further briefing opportunity to challenge Petitioner’s evidence. Although Patent Owner did file observations regarding the cross-examination of Dr. Horrocks, such observations are not designed for submitting substantive arguments. See id. at 48,768 (“An observation (or response) is not an opportunity to raise new issues, re-argue issues, or pursue objections.”). Considering the new arguments and evidence at this late stage would not serve the interests of justice. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that the claimed TPP values are inherent in the prior art.” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “Secondary Considerations of Non-obviousness Patent Owner contends that secondary considerations of non- obviousness, including unexpected results, long-felt but unsolved need, and commercial success of the patented product “compel a determination of nonobviousness.” PO Resp. 49; see id. at 49–59. As discussed above, we find that Petitioner has not established that claims 1–22 of the ’639 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Thus, we need not address Patent Owner’s evidence regarding secondary considerations of non-obviousness.” slip op. at 18

  Patent outcomesUS 8,501,639 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,501,639
• Endo Pharmaceuticals Inc. v. Depomed, Inc.No claims unpatentable
  PTAB · Sep 21, 2015 · IPR2014-00656 · APJ Tina E Hulse · IPR · Final written decision

  The Board held claims 1, 2, 8, 9, 13–15, 43, 45, and 46 not unpatentable under § 103 because Petitioner did not establish a reason to combine the prior art with a reasonable expectation of …

  RulingsFinal written decision

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

    “Even if a person of ordinary skill in the art would understand that a controlled release dosage form is characterized by its rate-controlling drug release mechanism, the claim language does not expressly require a particular rate-controlling drug release mechanism. For example, the claim language does not recite that diffusion is the rate-controlling drug release mechanism of claim 1. Rather, the language of claim 1 states simply that drug is released by “dissolution and diffusion.” And, as explained by the Banker & Rhodes reference—which Patent Owner’s declarant relies heavily on—systems can be “dissolution rate-limited or diffusion-controlled.” Ex. 1025,7 589; see also id. at 581–82 (describing dissolution-controlled systems and diffusional-controlled systems); see also Ex. 2015 ¶ 44 (Dr. Hopfenberg discussing the Banker & Rhoades reference). Thus, based on the full record developed during trial, the broadest reasonable interpretation of the “dissolution and diffusion” term is not limited to diffusion-controlled drug release.” slip op. at 10

  • Skill levelSkill level board ownDecided for petitioner

    “C. The Level of Ordinary Skill in the Art In large part, the parties agree as to the level of ordinary skill in the art. Pet. 9; PO Resp. 13. Both agree that a person of ordinary skill in the art would be a person with at least a bachelor’s degree in chemistry, chemical engineering, pharmaceutical science, and/or material science, as well as substantial experience in development of controlled release oral dosage forms involving polymeric materials. Pet. 9; PO Resp. 13. In light of the parties’ general agreement, we adopt that description of the level of ordinary skill in the art for purposes of this proceeding. In our analysis, we consider the applied prior art as representative of the level of ordinary skill in the art. D.” slip op. at 15

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the evidence that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the drug formulations of the cited references. As Patent Owner notes, Petitioner’s declarant testified about several formulation considerations that impact drug release. PO Resp. 22. Such considerations include the drug to polymer ratio (Ex. 2023, 78:17– 23), type of polymer used (id. at 79:24–80:5), and particle size (id. at 99:10– 100:15). Dr. Wilson also testified that formulating a reliable gastric retentive controlled release dosage form is “very difficult.” Id. at 101:10– 15. Given this testimony from Petitioner’s own declarant, we credit the testimony of Patent Owner’s declarant, Dr. Hopfenberg, that “[m]atrices formulated with a given polymer in a dosage form can result in different release controlling mechanisms, depending on the details of the matrix formulation and drug solubility characteristics.” Ex. 2015 ¶ 163. Accordingly, we find that Petitioner does not address sufficiently why a person of ordinary skill in the art would believe it could modify the formulation of the Shell 1993 publication to incorporate the drug release profile of Baveja and/or the Shell ’790 patent without, for example, affecting the other desired properties of the Shell 1993 publication formulation (e.g., the swelling in a dimensionally unrestricted manner to a size that promotes gastric retention).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Petitioner has shown that each limitation of claim 1 is separately disclosed by at least one of the cited references. Our analysis, however, does not end there. A patent “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., 773 F.3d at 1193. To make that determination, we can look to “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 418. We can also look to the nature of the problem to be solved. In re Gartside, 203 F.3d 1305, 1319 (Fed. Cir. 2000) (holding that suggestion to combine “may come from, inter alia, the teachings of the references themselves and, in some cases, from the nature of the problem to be solved”). After considering the parties’ arguments and evidence, however, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill would have combined the teachings in the manner recited by the claims with a reasonable expectation of success.” slip op. at 20

  Patent outcomesUS 6,635,280 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,635,280
• Endo Pharmaceuticals Inc. v. Depomed, Inc.No claims unpatentable
  PTAB · Sep 21, 2015 · IPR2014-00654 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1, 2, 8, 9, 13–15, 43, 57, 58, 61, 62, and 66 were not held unpatentable under § 103 because Petitioner did not show a reason to combine the prior art with a reasonable …

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “Based on the evidence presented above, we are persuaded that Petitioner has shown that each limitation of claim 1 is separately disclosed by at least one of the cited references. Our analysis, however, does not end there. A patent “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., 773 F.3d at 1193. To make that determination, we can look to “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 418. We can also look to the nature of the problem to be solved. In re Gartside, 203 F.3d 1305, 1319 (Fed. Cir. 2000) (holding that suggestion to combine “may come from, inter alia, the teachings of the references themselves and, in some cases, from the nature of the problem to be solved”). After considering the parties’ arguments and evidence, however, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill would have combined the teachings in the manner recited by the claims with a reasonable expectation of success.” slip op. at 19

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

    “Upon considering the arguments and evidence, we determine that the broadest reasonable interpretation of (1) “releases said drug . . . by the dissolution and diffusion of said drug out of said matrix” is “releases the drug by dissolution of the drug in the matrix followed by diffusion of the drug out of the matrix”; and (2) “releases said drug into gastric fluid by the dissolving of said drug by said gastric fluid and either erosion of said matrix or diffusion of said dissolved drug out of said matrix” is “releases the drug into gastric fluid by dissolving the drug by the gastric fluid followed by erosion of the matrix or diffusion of the dissolved drug out of the matrix.”” slip op. at 13

  • Skill levelSkill level board ownDecided for petitioner

    “C. The Level of Ordinary Skill in the Art In large part, the parties agree as to the level of ordinary skill in the art. Pet. 9–10; PO Resp. 13. Both agree that a person of ordinary skill in the art would be a person with at least a bachelor’s degree in chemistry, chemical engineering, pharmaceutical science, and/or material science, as well as substantial experience in development of controlled release oral dosage forms involving polymeric materials. Pet. 9–10; PO Resp. 13. In light of the parties’ general agreement, we adopt that description of the level of ordinary skill in the art for purposes of this proceeding. In our analysis, we consider the applied prior art as representative of the level of ordinary skill in the art. D.” slip op. at 15

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “23. Such considerations include the drug to polymer ratio (Ex. 2023, 78:17– 23), type of polymer used (id. at 79:24–80:5), and particle size (id. at 99:10– 100:15). Dr. Wilson also testified that formulating a reliable gastric retentive controlled release dosage form is “very difficult.” Ex. 2023, 101:10–15. Given this testimony from Petitioner’s own declarant, we credit the testimony of Patent Owner’s declarant, Dr. Hopfenberg, that “[m]atrices formulated with a given polymer in a dosage form can result in different release controlling mechanisms, depending on the details of the matrix formulation and drug solubility characteristics.” Ex. 2015 ¶ 164. Accordingly, we find that Petitioner does not address sufficiently why a person of ordinary skill in the art would believe it could modify the formulation of the Shell 1993 publication to incorporate the drug release profile of Baveja and/or the Shell ’790 patent without, for example, affecting the other desired properties of the Shell 1993 publication formulation (e.g., the swelling in a dimensionally unrestricted manner to a size that promotes gastric retention).” slip op. at 25

  Patent outcomesUS 6,340,475 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,340,475
• Purdue Pharma L.P. v. Depomed, Inc.No claims unpatentable
  PTAB · Jul 8, 2015 · IPR2014-00377 · APJ Tina E Hulse · IPR · Final written decision

  Claims 1, 8–10, 13–15, 43, 45, and 46 were not held unpatentable because Petitioner did not establish obviousness under § 103.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “persuaded that Petitioner has established that each limitation of claim 1 was known in the art, as evidenced by the teachings of Baveja and the ’837 patent. A patent, however, “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., 773 F.3d at 1193. To make that determination, we can look to “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” Id. We can also look to the nature of the problem to be solved. In re Gartside, 203 F.3d 1305, 1319 (Fed. Cir. 2000) (holding that suggestion to combine “may come from, inter alia, the teachings of the references themselves and, in some cases, from the nature of the problem to be solved”). After considering the parties’ arguments and evidence, however, we are not persuaded that Petitioner has made a sufficient showing that a person of ordinary skill would have combined the teachings in the manner contended by Petitioner.” slip op. at 23

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Under § 103(c)(1), the ’837 patent cannot preclude patentability unless it “qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102.” 35 U.S.C. § 103(c)(1) (emphasis added). As noted by Petitioner, the ’837 patent is also prior art under 35 U.S.C. § 102(a). Patent Owner does not dispute this. Thus, the plain language of § 103(c)(1) suggests that the ’837 patent is applicable as § 102(e) prior art for purposes of obviousness. Patent Owner’s complaint that the Petition did not identify the ’837 patent as § 102(a) prior art is immaterial to whether the reference, in fact, qualifies as § 102(a) prior art. Petitioner’s reliance on the ’837 patent as §102(e) art in the Petition was sufficient to place Patent Owner on full and fair notice that Petitioner was applying the reference in the grounds. Patent Owner does not persuade us that the alleged misidentification in any way prejudiced Patent Owner’s defense of its interests in this proceeding. Under these circumstances, we are not persuaded by Patent Owner’s argument that we should exclude the ’837 patent from the challenges asserted in this proceeding.” slip op. at 14

  • Skill levelSkill level board ownOther

    “D. The Level of Ordinary Skill in the Art In large part, the parties agree as to the level of ordinary skill in the art. Pet. 10; PO Resp. 11. Both agree that a person of ordinary skill in the art would be a person with a Ph.D. degree in at least pharmaceutical science, chemistry, or chemical engineering along with at least two years of industry experience in the development of controlled-release oral dosage forms. Pet. 10; PO Resp. 11. Both also agree that a person of ordinary skill in the art may have an equivalent level of skill through similar education, training, and industry experience. Pet. 10; PO Resp. 11. In light of the parties’ agreement, we adopt that description of the level of ordinary skill in the art for purposes of this proceeding.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “persuaded that Petitioner has established that each limitation of claim 1 was known in the art, as evidenced by the teachings of Baveja and the ’837 patent. A patent, however, “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., 773 F.3d at 1193. To make that determination, we can look to “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” Id. We can also look to the nature of the problem to be solved. In re Gartside, 203 F.3d 1305, 1319 (Fed. Cir. 2000) (holding that suggestion to combine “may come from, inter alia, the teachings of the references themselves and, in some cases, from the nature of the problem to be solved”). After considering the parties’ arguments and evidence, however, we are not persuaded that Petitioner has made a sufficient showing that a person of ordinary skill would have combined the teachings in the manner contended by Petitioner.” slip op. at 23

  Patent outcomesUS 6,635,280 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,635,280
• Purdue Pharma L.P. v. Depomed, Inc.No claims unpatentable
  PTAB · Jul 8, 2015 · IPR2014-00379 · APJ Tina E Hulse · IPR · Final written decision

  Claims 43, 54, 55, 57, 58, and 66 were not held unpatentable because Purdue failed to prove anticipation or obviousness by a preponderance of the evidence.

  RulingsFinal written decision

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

    “We are not persuaded by Patent Owner’s arguments. The plain meaning of “until all of said drug is released” is evident. If we were to adopt Patent Owner’s argument that “all” can mean “less than all,” we would be ignoring the plain meaning of the term. Moreover, although Patent Owner is correct that certain other embodiments in the Specification plateau at less than 100% of drug release, we note that certain embodiments do plateau at 100%. See Ex. 1001, Fig. 1 (curve marked by filled diamonds); see also August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir. 2011) (“The mere fact that there is an alternative embodiment disclosed in the [asserted patent] that is not encompassed by [our] claim construction does not outweigh the language of the claim, especially when [our] construction is supported by the intrinsic evidence.”) (citation omitted). Furthermore, as noted above, we have determined that, as properly construed, the phrase “releases substantially all” in claim 43 means “at least 80% of the drug has been released.” If we were to interpret “all” to mean the point at which the drug release profile plateaus—even if less than 80%— then it would be possible for a dosage form to release “all” of a drug, but not “substantially all” of the drug. Such an inconsistency within the claim would not be a reasonable construction of the term “all.” Accordingly, we decline to construe “until all of said drug is released” as broadly as Patent Owner requests and, instead, construe it according to its plain, ordinary meaning.” slip op. at 8

  • Skill levelSkill level board ownDecided for patent owner

    “C. The Level of Ordinary Skill in the Art In large part, the parties agree as to the level of ordinary skill in the art. Pet. 10; PO Resp. 10. Both agree that a person of ordinary skill in the art would be a person with a Ph.D. degree in at least pharmaceutical science, chemistry, or chemical engineering along with at least two years of industry experience in the development of controlled-release oral dosage forms. Pet. 10; PO Resp. 10. Both also agree that a person of ordinary skill in the art may have an equivalent level of skill through similar education, training, and industry experience. Pet. 10; PO Resp. 10. In light of the parties’ agreement, we adopt that description of the level of ordinary skill in the art for purposes of this proceeding.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “2. Analysis As an initial matter, Patent Owner argues that the ’803 patent is not prior art under 35 U.S.C. § 102(e) because the ’475 patent claims priority to U.S. Patent Application No. 08/870,509 (“the ’509 application”), which was filed on June 6, 1997. PO Resp. 19–20. Petitioner disagrees, stating the method claims of the ’475 patent were added in a later continuation-in-part application filed March 29, 1999, and are therefore not entitled to the benefit of the June 6, 1997, filing date of the ’509 application. Pet. Reply 1–2. At oral argument, Patent Owner conceded this point. Tr. 75:15–21 (stating “I believe we agree [the method claims are] entitled to a 1999 date”). Accordingly, we determine that the ’803 patent is prior art to the method claims at issue in this proceeding.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Under claim 43, a dosage form must remain substantially intact “until all of said drug is released.” Even if “maintain[ing] its physical integrity” did disclose a dosage form that remains “substantially intact,” Petitioner has not shown that maintaining the physical integrity of the dosage form for a “prolonged period of time” expressly or inherently discloses doing so “until all of said drug is released.” In other words, a “prolonged period of time” is not necessarily the same as the time period within which “all of said drug is released.”8 Thus, we are not persuaded that Petitioner has established that the ’803 patent discloses the “substantially intact” limitation of claim 43. Accordingly, after considering the parties’ arguments and evidence, we determine that Petitioner has not shown by a preponderance of the evidence that the ’803 patent anticipates claims 43, 54, 55, 57, 58, and 66 of the ’475 patent.” slip op. at 14

  Patent outcomesUS 6,340,475 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,340,475
• Purdue Pharma L.P. v. Depomed, Inc.No claims unpatentable
  PTAB · Jul 8, 2015 · IPR2014-00378 · APJ Tina E Hulse · IPR · Final written decision

  Claims 1, 8–10, 13–15, 61, and 62 were not held unpatentable because Petitioner did not establish obviousness by a preponderance of the evidence.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. Prior Construed Claim Terms We construed the following claim terms in the Decision to Institute. Claim Term Claim Construction “gastric fluid” 1 “[b]oth the fluid in the stomach and simulated or artificial fluids recognized by those skilled in the art as a suitable model for the fluid of the human stomach” (Dec. Inst. 6)” slip op. at 7

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

    “We are not persuaded by Patent Owner’s arguments. The plain meaning of “until all of said drug is released” is evident. If we were to adopt Patent Owner’s argument that “all” can mean “less than all,” we would be ignoring the plain meaning of the term. Moreover, although Patent Owner is correct that certain embodiments in the Specification plateau at less than 100% of drug release, we note that certain other embodiments do plateau at 100%. See Ex. 1001, Fig. 1 (curve marked by filled diamonds); see also August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir. 2011) (“The mere fact that there is an alternative embodiment disclosed in the [asserted patent] that is not encompassed by [our] claim construction does not outweigh the language of the claim, especially when [our] construction is supported by the intrinsic evidence.”) (citation omitted). Furthermore, as noted above, we have determined that, as properly construed, the phrase “releases substantially all” in claim 1 means “at least 80% of the drug has been released.” If we were to interpret “all” to mean the point at which the drug release profile plateaus—even if less than 80%— then it would be possible for a dosage form to release “all” of a drug, but not “substantially all” of the drug. Such an inconsistency within the claim would not be a reasonable construction of the term “all.” Accordingly, we decline to construe “until all of said drug is released” as broadly as Patent Owner requests and, instead, construe it according to its plain, ordinary meaning.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “diffusion must control the rate of release of drug out of the matrix. After considering the parties’ arguments, we adopt Petitioner’s construction as the broadest reasonable interpretation consistent with the Specification. To construe the term, we start with the language of the claim. Claim 1 recites a “controlled-release oral drug dosage form” that “releases said drug into gastric fluid by the dissolution and diffusion of said drug out of said matrix by said gastric fluid.” We determine that nothing in the claim language requires that the drug release be “at a rate controlled by the rate of diffusion,” as Patent Owner asserts. To the extent Patent Owner suggests that its construction is dictated by the fact that the claim recites a “controlled-release” drug formulation for a highly soluble drug, we are not persuaded. In particular, we note that Patent Owner’s own declarant, Dr. Harold B. Hopfenberg, testified that those parameters do not necessarily require release by dissolution and diffusion:” slip op. at 10

  • Skill levelSkill level board ownDecided for patent owner

    “C. The Level of Ordinary Skill in the Art In large part, the parties agree as to the level of ordinary skill in the art. Pet. 7; PO Resp. 10. Both agree that a person of ordinary skill in the art would be a person with a Ph.D. degree in at least pharmaceutical science, chemistry, or chemical engineering along with at least two years of industry experience in the development of controlled-release oral dosage forms. Pet. 7; PO Resp. 10. Both also agree that a person of ordinary skill in the art may have an equivalent level of skill through similar education, training, and industry experience. Pet. 7; PO Resp. 10. In light of the parties’ agreement, we adopt that description of the level of ordinary skill in the art for purposes of this proceeding.” slip op. at 13

  Patent outcomesUS 6,340,475 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,340,475
• Corning Incorporated v. DSM IP Assets B.V.No claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,298,189
• Corning Incorporated v. DSM IP Assets B.V.No claims unpatentable
  PTAB · May 9, 2014 · IPR2013-00045 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the wet-adhesion evidence did not establish the claimed adhesion against delamination in liquid water.

  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, 29:5-7 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:24-26 (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 21:54 (referring to “atmospheric moisture”); 28:55, 67; 29:5 (referring to “humidity”). The ’666 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, 67:20-22. 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 ’666 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 7

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

    “force required to peel a coating away from a glass substrate, after the coating has been conditioned at 95% relative humidity. Ex. 1001, 29:8-25. The ’666 patent identifies a different test—a water soak delamination test— for evaluating the extent of delamination that occurs when a cured coating is exposed to liquid water. Id. at 28:32-47. In DSM’s view, Corning fails to establish sufficiently that the wet adhesion test, or “[p]eel test,” can “be used to reliably determine what the results of a delamination test would be.” PO Resp. 25. We agree.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “comes forward with evidence insufficient to support an inference that the results of a 95% relative humidity wet adhesion test correspond to an ability to withstand the hydrodynamic forces that effect delamination. Corning argues that Dr. Winningham “has confirmed that a coating composition with an adhesion to glass of either 23 g/in or 44 g/in, as in Szum, would have sufficient adhesion to the glass fiber to prevent delamination in the presence of moisture and during handling.” Pet. 18-19 (citing Ex. 1006 ¶ 88).2 Dr. Winningham’s opinion on that point is unsupported and, therefore, unpersuasive. See Ex. 1006 ¶ 88 (reciting opinion without objective proof). In that regard, Dr. Winningham repeats, verbatim, attorney argument set forth in the petition, but identifies no objective evidence explaining how a wet adhesion value, which indicates a mechanical force required to peel a coating away from a glass substrate, correlates to an ability to withstand the 2 In addition to the experimental test results tending to establish a wet adhesion value of 44 g/in for the Szum coating, Corning points to the reference itself for a teaching that the Szum coating exhibits “an adhesion to glass at 95% relative humidity of 23 g/in.” Pet. 18 (citing Ex. 1002, 25:12). hydrodynamic forces that effect delamination. Id. Dr. Winningham’s bare opinion is entitled to little weight in the absence of objective evidentiary support. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (finding lack of factual support for expert opinion “may render the testimony of little probative value in a validity determination”).” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for patent owner

    “At the oral hearing, Corning’s counsel directed our attention to test results reported in Table 3 of the ’666 patent and, for the first time, argued that those results establish “a clear correlation between the films that passed the hot water soak test . . . and films that have a certain wet adhesion.” Transcript 10:15-17. That argument, and Corning’s reliance on Table 3, is not set forth in the petition or the reply. See Pet. 18-19; Reply 2-5. We deem Corning to have waived that argument raised by counsel for the first time at the oral hearing. Cf. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n.3 (Fed. Cir. 2005) (arguments not raised in an opening brief are deemed waived). That argument also is unpersuasive because it is unsupported by convincing, objective evidence that explains a relationship between the wet adhesion values and the water soak delamination results reported in Table 3. In that regard, Corning asks us to infer a relationship between wet adhesion values (reported as a grams-per-inch mechanical force) and water soak delamination results (reported as an observation, for example, of slight delamination after 15 minutes) from Table 3. See Transcript 10:15-17; Ex. 1001, 29:50-59 (Table 3). That is a leap we will not undertake in the absence of persuasive evidence, such as a technical article or expert testimony, explaining some relationship between those disparate test results. Pet. 18-19; Reply 2-5 (identifying no such evidence).” slip op. at 15

  Patent outcomesUS 6,339,666 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,339,666

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.