- Borealis AG v. Berry Plastics CorporationInstitution deniedPTAB · Mar 24, 2016 · IPR2016-00235 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution because the challenged claims had been disclaimed.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a), in compliance with §321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims. 37 C.F.R. § 41.107(e) (2015). In view of the disclaimer (Ex. 2003), an inter partes review will not be instituted.” slip op. at 3
NonePatents in suitUS 8,883,280 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01556 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1–4, 6–7, and 9–16 are unpatentable under § 103(a) over the combined prior art; the anticipation grounds do not establish unpatentability.
RulingsFinal written decision- Strike new argumentNew argument disregardedDecided for patent owner
“(a) A party may request oral argument on an issue raised in a paper at a time set by the Board. The Trial Practice Guidelines advise as follows: A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (col. 2) (Aug. 14, 2012) (italics added). The rationale in support of the Rule and Guideline is fundamental fairness to an opponent. 37 C.F.R. § 42.1(b) (Part 42 “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”) It is not just to an opponent for a party to raise an argument not based on the Petition, Opposition, or Reply, or to discuss evidence not in the record. Why? There is no meaningful opportunity for the opponent to rebut the argument or address the evidence. Likewise, the Board is at a disadvantage because judges do not prepare for oral argument based on arguments and evidence not present in the record. To the extent that arguments and discussions took place at oral argument in this case contrary to the principles set out above, those arguments and discussions have not been considered in rendering a decision on the merits.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Petitioner’s “comprising” position. While the regeneration gas can “comprise” elements not set out in parts [A1] and [A2] of claim 1, as reproduced above, part [A2] is restricted to an inert carrier gas. According to the ʼ911 patent, the regeneration gas is substantially oxygen free, albeit the regeneration gas can contain up to one percent oxygen. Ex. 1001A, col. 3:27–29. A regeneration gas containing more than one percent oxygen would cease to be a regeneration gas within the meaning of claim 1. Any reasonable interpretation of “regeneration gas,” consistent with the Specification, would require that the regeneration gas have no more than up to one percent oxygen. In reaching our conclusion, we have not added a limitation from the Specification into claim 1 of the ʼ911 patent; rather, we interpret the meanings of “regeneration gas” and “inert carrier gas” as set out in the claim.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“to doubt that the NOx released by the [Hirota] absorbent . . . [would] be reduced . . . by . . . [the Hirota] process” “provid[ed] there is sufficient reductant present.” Ex. 1056, page 89:18–21. However, Dr. Crocker’s cross-examination testimony does not establish that the Hirota process anticipates the process of claim 1 of the ʼ911 patent. The issue here is not whether Hirota is operative; rather, it is whether Hirota operates with “an inert carrier gas” within the meaning of claim 1 of the ʼ911 patent. During oral argument, Petitioner called attention to the wording of Hirota, with emphasis on the fact Hirota does not use the word “shall” or “must” but rather uses the word “is.” Transcript of Oral Argument, Paper 56, page 4:7 through page 5:15. According to Petitioner, under a broadest reasonable interpretation standard, the regeneration gas of claim 1 should be interpreted broadly. Id. at page 5:12–15. But, Petitioner previously had agreed that it makes no “difference what the claim construction is here,” (id. at page 3:20–23). We view the “shall,” “must,” and “is” discussion as a formalistic wordsmithing side-show given that the meaning of the regeneration gas is clear from its description in the Specification. We find that Hirota does not describe the subject matter of claim 1 of the ʼ911 patent. Accordingly, Petitioner has failed to prove that Hirota anticipates claim 1 of the ʼ911 patent.” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Likewise, Land justifies a holding that joint inventors Guth and Campbell (Ex. 1004A) are separate entities vis-à-vis joint inventors of the Guth, Campbell, and Wagner ʼ911 patent (Ex. 1001A). Patent Owner maintains that Guth ʼ758 and Campbell’s “work may not be used against [them] unless there is a time bar under 35 U.S.C. 102(b).” Paper 28, page 19 (quoting MPEP § 2136.05 (7th ed. July 1998)). However, Guth and Campbell’s work is not being used against them; it is being used against the inventive entity of the ʼ911 patent: Guth, Campbell, and Wagner. At oral argument, counsel for Patent Owner stated “[s]o what I’m saying is I agree that Land probably applies.” Transcript of Oral Argument, Paper 56, page 14:19–20. On the record before us, there is insufficient evidence that Wagner contributed to, or is a joint inventor of, the subject matter described and/or claimed in the ʼ911 patent.” slip op. at 39
Patent outcomesUS 5,953,911 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,953,911 - Volkswagen Group Of America, Inc. v. Emerachem Holdings, LLCAll claims unpatentablePTAB · Jan 22, 2016 · IPR2014-01555 · APJ Fred E Mckelvey · IPR · Final written decision
Claims 1–2, 7–12, 14–17, 19, 21–24, and 31–42 are unpatentable based on the grounds sustained in the final written decision.
RulingsFinal written decision- Strike new argumentNew argument consideredDecided for petitioner
“Unlike Corning, the inherency theory matured during cross- examination of Patent Owner’s witness, Dr. Crocker. Ultimately, in our view, Dr. Crocker agreed that no platinum migrated to the alkali metal layer—based on an analysis with a correct “0.018” number. The Reply evidence, consistent with Dr. Crocker’s testimony, agreed that a correct number is “0.018” and on that basis, Petitioner’s witness agreed with Dr. Crocker. Further, unlike Corning, a whole new theory of anticipation did not arise in the first instance with the Reply; rather, it was essentially developed during cross-examination of Patent Owner’s witness.” slip op. at 74
- ExcludeMotion to exclude, deniedMixed
“The fact that evidence is filed with a reply does not mean the evidence is per se inadmissible. The exhibits relate to the issue of whether there is a typographical error in Example 1 of Hoekstra, i.e., is “2.018” a typographical error which should be “0.018.” In presenting the Petition, Petitioner’s witness Dr. Farrauto explained why he felt Hoekstra’s Example 1 anticipates claim 1 of the ʼ558 patent. Dr. Crocker, Patent Owner’s witness, disagreed with Dr. Farrauto’s explanation.” slip op. at 73
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“While the matter of assigning the weight to be given to the testimony of the two witnesses in this case is a close call, based on the direct and crossexamination testimony with respect to Kinoshita and its Example 3, and to the extent that there is a conflict between Dr. Crocker’s testimony and that of Dr. Farrauto, we credit the testimony of Dr. Crocker over that of Dr. Farrauto. However, even if one were to find the testimony of Dr. Crocker and Dr. Farrauto evenly balanced, then a preponderance of the evidence on inherency does not emerge. Under those circumstances, the party with the burden of proof cannot be said to have proved its case. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988) (where a party is under a burden to establish a fact by a preponderance of the evidence and where the evidence is so evenly balanced that no preponderance emerges, the party having the burden of persuasion necessarily loses). We are also concerned that Example 3 does not describe enough detail to indicate clearly whether there is enough potassium to cover the platinumimpregnated alumina. Ex. 2002 ¶ 32.” slip op. at 51
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We hold that “intimately and entirely coated” mean exactly what it says. In other words, it means the embodiment shown in Figs. 1a through 1c of the ʼ558 patent drawings and associated discussion in the written description portion of the specification. We appreciate why both parties would prefer a broader construction, i.e., “intimately and entirely coated” means (1) coated with a monolayer where catalytic action would occur through diffusion (our construction) as well as (2) direct contact with the combustion gas without diffusion. Petitioner would favor a broader construction because Takeshima anticipates a direct contact embodiment. Patent Owner would favor a broader construction because more “material” might infringe claim 1. Takeshima Figs. 5(A) and 5(B) describe an embodiment where the exhaust gas directly contacts the catalyst. A direct contact embodiment does not fall within the scope of claim 1 of the ʼ558 patent. Accordingly, Takeshima does not describe the “intimately and entirely coated” limitation of claim 1.” slip op. at 23
Patent outcomesUS 5,451,558 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,451,558 - Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution deniedPTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution
The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9
- BurdenNot shown unpatentable
“those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,940,089 - Coalition For Affordable Drugs V LLC. v. Biogen Ma Inc.Rehearing deniedPTAB · Oct 23, 2015 · IPR2015-01136 · APJ Fred E Mckelvey · IPR · Rehearing
The Board denied the Petitioner’s rehearing request, leaving in place its decision not to institute because the petition did not establish a reasonable likelihood of success on the asserted obviousness theories.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“to be” on page 9 of the Decision. We gave more weight to pre-litigation statement by Kappos than to post-litigation conclusory expert testimony. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (holding that Board did not abuse its discretion in giving more weight to documentary evidence vis-à-vis witness testimony). Furthermore, as Patent Owner points out, the word “appear” is also synonymous with “seem” (http://www.merriam-webster.com/dictionary/appear), and is consistent with our statement that what counts is what is described, not what appears or seems to have been tested. Decision, page 9.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Decision misapprehended or overlooked Dr. Linberg’s statement that the Kappos 2005 dose-ranging study would not have been undertaken unless BG00012 had been determined to be therapeutically active in treating patients with MS and that the Decision cites no substantial evidence for interpreting Kappos in a fundamentally different way. The reference to “substantial evidence” is curious since “substantial evidence” is an appellate standard of review for fact finding. The argument should have been that our finding was not supported by a preponderance of the evidence. In any event, Petitioner, in effect, attempts to reargue a case it attempted to make out in the petition and fails to point out how we misunderstood Dr. Linberg’s testimony. Petitioner failed to explain adequately in the Petition why one of ordinary skill in the art, based on Kappos, would have understood that DMF was useful for treating multiple sclerosis (MS).” slip op. at 3
- Strike new argumentNew argument disregardedOther
“stating a fact, i.e., that DMF had been determined to be effective, which is why there would have been a reasonable expectation of success. The argument concerning reasonable expectation of success, as pointed out by Patent Owner in the opposition, is new and therefore could not have been overlooked. Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 1388 (Fed. Cir. 1989) (prescience is not a required characteristic of the board and the board need not divine all possible afterthoughts of counsel that might be asserted for the first time on appeal). Moreover, in our view Petitioner has not pointed out where there is a clear statement in Kappos 2005 that those skilled in the art knew that DMF was useful in treating MS.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“to be” on page 9 of the Decision. We gave more weight to pre-litigation statement by Kappos than to post-litigation conclusory expert testimony. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (holding that Board did not abuse its discretion in giving more weight to documentary evidence vis-à-vis witness testimony). Furthermore, as Patent Owner points out, the word “appear” is also synonymous with “seem” (http://www.merriam-webster.com/dictionary/appear), and is consistent with our statement that what counts is what is described, not what appears or seems to have been tested. Decision, page 9.” slip op. at 3
NonePatents in suitUS 8,399,514 - Merial Limited v. VirbacRehearing deniedPTAB · May 4, 2015 · IPR2014-01279 · APJ Fred E Mckelvey · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request without prejudice to presenting its patentability arguments in the Patent Owner’s Response on the merits.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon consideration of a Petition for Rehearing filed by the Patent Owner on 29 April 2015 (Paper 20), it is ORDERED that the Petition for Rehearing is denied without prejudice to Patent Owner presenting patentability arguments made in the Petition for Rehearing as part of its Patent Owner’s Response on the merits.” slip op. at 1
NonePatents in suitUS 8,501,799 - Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentablePTAB · May 9, 2014 · IPR2013-00048 · APJ Scott E Kamholz · IPR · Final written decision
Claims 5, 13, 17, 29, 33, 37, 45, and 49 are unpatentable; the remaining challenged claims are not shown unpatentable, principally because key material-property limitations were not proved.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The evidence supports a conclusion that the broadest reasonable interpretation of the term “moisture” is liquid water—that is, a condition of 100% relative humidity. The written description uses the term “moisture” in a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:17-18 (applying heat to remove “moisture” from samples, suggesting removal of liquid water). Moreover, where the written description discusses water in vapor form, the inventors use the word “humidity” or “atmospheric moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to “atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189 patent further discloses that a “ribbon assembly can be buried under ground or water for long distance connections, such as between cities,” which is consistent with the proposition that an optical fiber coating must endure long periods of immersion in liquid water without delaminating. Ex. 1001, 67:43-45. In light of the context in which the term “moisture” appears in the specification, we conclude that the inventors used that term in its ordinary sense to refer to liquid water. The ’189 patent, thus, is directed to a coating composition that, after radiation cure, has sufficient adhesion to glass to prevent delamination in the presence of liquid water. We decline to resolve what temperature, or length of time of exposure to liquid water the coating must endure, without delaminating, in order to satisfy the claimed adhesion property. Resolving those conditions is not necessary to our analysis, which focuses on whether Corning’s wet adhesion test, conducted under conditions of 95% relative humidity, is probative of the extent to which a cured coating delaminates from glass when exposed to liquid water.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We do not agree with Corning that the ’189 patent defines the term “stripping temperature” as “about 90°C to about 120°C.” Rather, the patent indicates that stripping temperature is “typically” within this range. Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating compositions the design ribbon stripping temperatures are usually about 90° C. to about 120° C., but may be different depending on the specific design parameters for the particular coating composition.”). This disclosure is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480. The ’189 patent does refer repeatedly, however, to 90°C as an exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55. The ’189 patent also identifies 100°C as an exemplary stripping temperature, particularly in the context of measuring change in length. Id. at 14:46-47, 18:44-45. Whatever other temperatures this term encompasses, it certainly encompasses at least the ones specifically identified. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”). The limitation requires no further construction.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“plots is whether they exhibit a linear region of negative slope. Corning argues that they do, and the description in Exhibit 2015 that a region of the Shustack Example I plot showing a “linear relationship” was used to calculate slope bears out this argument. See Ex. 2015, 1. DSM, in contrast, argues that Corning’s plots lack “a substantially smooth linear region” but offers little evidence to support this assertion beyond Dr. Taylor’s statements that the plots “have no linear region from which to measure a slope” and that they lack any “substantial linear region.” See Resp. 31; Ex. 2032 ¶ 86. Dr. Taylor gives no credible explanation for the basis on which he reaches these conclusions. Even if Dr. Taylor provided some underlying facts or data for this conclusion, Dr. Taylor’s statements do not support DSM’s argument that there is no substantially smooth linear region. As between the conflicting evidence on this point, we credit Corning’s evidence, particularly from Exhibit 2015, in which Corning’s Mr. Gleason identifies the region of linear relationship as extending between displacements of 2.76 mm and 7 mm. DSM does not explain why this determination is invalid. We agree with Corning that the plots for Shustack Example I show a linear region of negative slope from 2.76 mm to 7 mm. To be sure, the signal is noisy, and the plots are jagged, but that does not mean that a linear relationship is not discernible in that region.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundNot shown unpatentable
“For these reasons, we credit Corning’s testing evidence over DSM’s. We are persuaded that Corning has shown that Shustack Example I and Szum ’928 Example 5B each inherently possess a fiber pull-out friction within the scope of every challenged claim. 2. “Sufficient Adhesion” As discussed above in section II.A.1, each of claims 1-4 and 9-12” slip op. at 27
Patent outcomesUS 6,298,189 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,298,189 - Corning Incorporated v. DSM IP Assets B.V.No claims unpatentablePTAB · May 9, 2014 · IPR2013-00049 · APJ Scott E Kamholz · IPR · Final written decision
Corning failed to prove claims 53–66 unpatentable because it did not establish the claimed change-in-length property and other required limitations for the asserted grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The evidence supports a conclusion that the broadest reasonable interpretation of the term “moisture” is liquid water—that is, a condition of 100% relative humidity. The written description uses the term “moisture” in a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:17-18 (applying heat to remove “moisture” from samples, suggesting removal of liquid water). Moreover, where the written description discusses water in vapor form, the inventors use the word “humidity” or “atmospheric moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to “atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189 patent further discloses that a “ribbon assembly can be buried under ground or water for long distance connections, such as between cities,” which is consistent with the proposition that an optical fiber coating must endure long periods of immersion in liquid water without delaminating. Ex. 1001, 67:43-45. In light of the context in which the term “moisture” appears in the specification, we conclude that the inventors used that term in its ordinary sense to refer to liquid water. The ’189 patent, thus, is directed to a coating composition that, after radiation cure, has sufficient adhesion to glass to prevent delamination in the presence of liquid water. We decline to resolve what temperature, or length of time of exposure to liquid water the coating must endure, without delaminating, in order to satisfy the claimed adhesion property. Resolving those conditions is not necessary to our analysis, which focuses on whether Corning’s wet adhesion test, conducted under conditions of 95% relative humidity, is probative of the extent to which a cured coating delaminates from glass when exposed to liquid water.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We do not agree with Corning that the ’189 patent defines the term “stripping temperature” as “about 90°C to about 120°C.” Rather, the patent indicates that stripping temperature is “typically” within this range. Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating compositions the design ribbon stripping temperatures are usually about 90° C. to about 120° C., but may be different depending on the specific design parameters for the particular coating composition.”). This disclosure is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480. The ’189 patent does refer repeatedly, however, to 90°C as an exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55. The ’189 patent also identifies 100°C as an exemplary stripping temperature, particularly in the context of measuring change in length. Id. at 14:46-47, 18:44-45. Whatever other temperatures this term encompasses, it certainly encompasses at least the ones specifically identified. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”). The limitation requires no further construction.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“excluded and given little or no weight. Resp. 45-47; PO Mot. To Exclude 1- 6. We address the admissibility of Dr. Winningham’s testimony below in our decision on DSM’s motion to exclude evidence. To the extent that DSM’s argument goes to the weight to be accorded Dr. Winningham’s testimony, it is not persuasive. DSM identifies no particular instances in which Dr. Winningham’s silence as to the relevant time period for determining who is one of skill in the art weakens his testimony. We agree with Corning that the thoroughness of Dr. Winningham’s testimony outweighs the concern DSM expresses. We also are not persuaded that Dr. Winningham made the admission that DSM argues. DSM’s question appears to address whether Dr. Winningham made any distinctions about the qualifications and experience of a skilled scientist over time, not whether Dr. Winningham based his obviousness opinions on the knowledge of that skilled scientist at the time the invention was made. We do not find Dr. Winningham’s supposed admission determinative on the issue of whether he failed to consider the relevant time period in his obviousness opinions.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“In sum, two independent reasons support our determination that the wet adhesion test results advanced by Corning fail to show adequately that the Szum coating has “sufficient adhesion . . . to prevent delamination in the presence of moisture” within the meaning of the challenged claims. First, the wet adhesion test assesses a property of the coating after conditioning at 95% relative humidity, which is not “in the presence of moisture.” Second, Corning identifies no persuasive evidence from which we reasonably can discern that the wet adhesion test evaluates for “delamination.”” slip op. at 24
Patent outcomesUS 6,298,189 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,298,189 - Corning Incorporated v. DSM IP Assets B.V.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,339,666 - Corning Incorporated v. DSM IP Assets B.V.No claims unpatentablePTAB · May 1, 2014 · IPR2013-00047 · APJ Fred E Mckelvey · IPR · Final written decision
Corning’s request to cancel claims 1–14 was denied because it failed to prove that Coady or Szum inherently disclosed the claimed %RAU limitations.
RulingsFinal written decision- Strike new argumentNew argument disregardedDecided for patent owner
“9. Discussion The rationale urged for non-consideration is based on our trial rules, including our rule relating to replies. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the . . . patent owner response.”). Practice relating to replies is addressed in our Office Patent Trial Practice Guide. 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012): A reply may only respond to arguments raised in the corresponding opposition [, in this case DSM’s response]. [37 C.F.R.] § 42.23. 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. The Board will not attempt to sort proper from improper portions of the reply. 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 claims, and new evidence that could have been presented in a prior filing. There came a time when Corning says it made an inquiry “to” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The dispositive claim limitations of the ʼ306 patent are limitations [2(a)] and [2(b)], as set out in claim 1 reproduced above. Corning has failed to prove by a preponderance of the evidence that the prior art inherently describes either limitation. Under the claim construction Corning proposed in its Petition (Pet. 14-16), Corning has failed to prove its case; accordingly, there is no occasion for further construction of the %RAU language of limitations [2(a)] and [2(b)] in claim 1.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“burden of establishing that the %RAU limitations of the claims of the ‘306 patent are inherently described in Coady or Szum. Based on the evidence entitled to be considered, Corning has not established that the %RAU limitation is inherently described by either Coady or Szum. As a result, Corning has failed to sustain its burden of proof.” slip op. at 18
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“Sogah’s testimony is proper reply testimony. Cf. Liberty Mutual Ins. Co., supra n.3 at 65 (“To rebut Mr. Ehsani’s assertions regarding Kosaka’s Figures 10 and 11, it would be reasonable for Mr. Andrews’s rebuttal testimony to address those same figures.”) (italics added). We decline DSM’s request to exclude the Item 2 evidence.” slip op. at 13
Patent outcomesUS 6,438,306 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,438,306
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.