In its Final Written Decision, the Board found that Petitioner failed to show by a preponderance of the evidence that any of challenged claims 1-14 of U.S. Patent No. 6,438,306 (the ’306 Patent) are unpatentable, and thus all claims were maintained. Further, the Board dismissed Petitioner’s Motion to Exclude evidence offered by PatentOwner as moot, because the evidence to be excluded was not considered. With regard to Patent Owner’s Motion to Exclude reply evidence provided by Petitioner, the Board dismissed the motion as to one item, denied the motion as to another item, and granted the motion as to yet another item. The ’306 Patent relates to coated optical fiber having a cured coating prepared from a radiation curable composition said to have improved cure speed without deteriorating yellowing performance of the cured coating.
The Board began with claim construction, stating that it interprets the claims the broadest reasonable construction in light of the specification of the patent. The dispositive claim limitations of the ’306 Patent included limitations defining the properties of the inner and outer coatings or the inner and outer portions of a single coating. Specifically, the Board determined that even if the Board accepted the claim construction proposed in the Petition, the Petitioner failed to prove by a preponderance of the evidence that the prior art inherently described the dispositive limitations.
Petitioner filed experimental data with its Petition to support its inherency position. However, Petitioner later abandoned, and no longer relied on, its pre-Petition experimental work. Instead, Petitioner, with its Reply, submitted evidence based on post-Petition experimental tests and testimony of three witness who did not testify in support of the Petition (hereinafter “new evidence”).
Patent Owner requested, in its Motion, that the Board not consider the new evidence. The Board determined that the material requested to be excluded could be divided into three items, according to the following: (1) pre-Petition tests relied upon in the Petition; (2) opinions by Dr. Sogah relating to the appropriateness of certain chemical substitutions made by Petitioner when it undertook experiments to reproduce a coating described in the first prior art reference; and (3) new testing data obtained after the Petition was filed and presented with Petitioner’s Reply.
With the Petition, the declarant acknowledged that two different materials were used in the composition tested compared to the composition of the prior art, for ease of testing. In its Preliminary Response, Patent Owner argued that Petitioner’s expert failed to use the calculation method laid out in the ’306 Patent and failed to disclose the test data underlying the calculations. The Board addressed Patent Owners arguments in the Preliminary Response, but declined to accept the arguments in its decision to grant institution. In its Response after cross-examining Petitioner’s experts, Patent Owner offered direct testimony challenging Petitioner’s test results as being “fatally flawed.” In its Reply, Petitioner acknowledged that there were two sources of error in the way exposure times were determined, and offered new testing results by three new witnesses.
The Board found that the Reply declaration purporting to show that the two different materials used in the pre-Petition experiments compared to the prior art reference example were chemically the same, was proper reply testimony. In contrast, the Board found that the Reply declaration providing evidence of new testing analysis conducted after the Petition was filed, was improper reply testimony. In particular, the Board found that Petitioner was (1) relying on the new testimony to make out a prima facie case of unpatentability, (2) the new evidence could, and should, have been presented with the Petition, and (3) Patent Owner had no opportunity to respond to the evidence that went to the heart of Petitioner’s allegations of unpatentability. Further, based on the late stage of the trial (i.e. when filing the Reply), there was no ability to provide additional rebuttal period for Patent Owner to rebut the new evidence. Possibly, if the new evidence would have been brought earlier by way of a motion for leave to file supplemental information, the Patent Owner may have had the ability to rebut the evidence, and thus the evidence may have been entered.
Because Petitioner was no longer relying on the pre-Petition testing and the post-Petition testing was excluded, no evidence remained to sustain Petitioner’s burden of establishing that the particular limitations of the claims of the ’306 Patent were inherently described in the prior art.
Corning Inc. v. DSM IP Assets, IPR2013-00047
Paper 84: Final Written Decision
Dated: May 1, 2014
Patent 6,438,306 B1
Before: Fred E. McKelvey, Grace Karaffa Obermann, Jennifer S. Bisk, Scott E. Kamholz, and Zhenyu Yang
Written by: McKelvey
Related Proceedings: IPR2013-00043; IPR2013-00044; IPR2013-00045; IPR2013-00046; IPR2013-00048; IPR2013-00049; IPR2013-00050; IPR2013-00052; and IPR2013-00053