Takeaway: Where the Petitioner fails to show by a preponderance of the evidence that a dispositive limitation is disclosed by the prior art and Patent Owner fails to show by a preponderance of the evidence that a dispositive limitation is not disclosed by the prior art, the Board will find in favor of the Patent Owner because the Petitioner has the burden of proof.

In its Final Written Decision, the Board found that none of the claims of the ’103 Patent or the ’508 Patent were unpatentable, and dismissed as moot Patent Owner’s Motion to Amend in both reviews.

The ’103 Patent and the ’508 Patent relate to coated optical fibers having primary and secondary coatings and to radiation-curable primary coating compositions. Specifically, the ’103 Patent and ’508 Patent are directed to coated optical fibers in which the primary coating provides “good microbending resistance,” and simultaneously has a “high cure speed” that will not limit production rates.

The Board began with claim construction, stating that it interprets the claims using the broadest reasonable construction in light of the specification of the patent. The Board stated that the dispositive limitation of the ’103 Patent is “a cure dose to attain 95% of the maximum attainable modulus of less than 0.65 J/cm².”  The dispositive limitation of the ’508 Patent is “said primary coating is obtained by curing a primary coating composition having a cure dose to attain 95% of the maximum attainable modulus of less than 0.65 J/cm².”  The Board then noted that Petitioner failed to prove that the prior art compositions inherently attain 95% of the maximum modulus at a cure dose of less than 0.65 J/cm², and Patent Owner failed to prove that the prior art compositions do not attain 95% of the maximum modulus at a cure dose of less than 0.65 J/cm².  Therefore, the Board did not need to further construe the language of those limitations.

The Board next turned to the testimony and documentary evidence related to the dispositive limitations. The Board first examined the testimonial evidence provided by Petitioner specifically related to compositions that were made pursuant to certain examples of one of the primary prior art references (Szum ’157).  The Board focused on the cross-examination of the declarants regarding how closely the declarants had supervised the making of the compositions.  The Board then discussed Patent Owner’s declarant who criticized the compositions based on his own counter-testing and stated that Petitioner’s cure dose analysis was statistically invalid.  The Board then reviewed the testimony of Petitioner’s declarant in response to Patent Owner’s declarant.

The Board stated that in resolving the case, it considered only the arguments made in the Petition, Response, and Reply in finding that Petitioner had not established by a preponderance of evidence that the examples inherently disclosed the dispositive limitations and that Patent Owner did not establish by a preponderance of the evidence that the examples did not disclose the dispositive limitations. The Board noted the conflicting testimony of both parties’ declarants who appeared to be qualified, but the Board credited Patent Owner’s declarant over Petitioner’s with respect to Petitioner’s cure dose proofs.  The Board noted that Patent Owner’s declarant’s testimony was detailed and supported by underlying data, while Petitioner’s declarant’s testimony was general and not credibly supported by underlying data.  The Board then noted that Patent Owner is under no burden to establish that the examples do not inherently disclose the dispositive limitations, but the Board examined Patent Owner’s evidence on this point because it was discussed by both parties.  In that case, the Board credited Petitioner’s declarant’s testimony over Patent Owner’s declarant’s testimony.  However, noting that Petitioner has the burden of proof and did not meet it, the Board found that the claims could not be held unpatentable.

Turning then to the Motions to Amend, because the Motions were contingent on a finding of unpatentability, the Board dismissed them as moot.

Corning Inc. v. DSM IP Assets B.V., IPR2013-00043; IPR2013-00044
Paper 95: Final Written Decision
Dated: May 1, 2014
Patents 7,171,103 B2; 6,961,508 B2
Before: Fred E. McKelvey, Grace Karaffa Obermann, Jennifer S. Bisk, Scott E. Kamholz, and Zhenyu Yang
Written by: McKelvey
Related Proceedings: IPR2013-00045; IPR2013-00046; IPR2013-00047; IPR2013-00048; IPR2013-00049; IPR2013-00050; IPR2013-00052; IPR2013-00053