In its Decision, the Board canceled claims 1-9 as being unpatentable and denied Patent Owner’s Motion to Amend.
Patent Owner, in its Patent Owner Response, chose “not to substantively respond to Corning’s Petition.” Thus, for the reasons set forth in the Decision to Institute, the Board held that Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. In a footnote, the Board noted that Patent Owner stated in its Patent Owner Response that it attempted to incorporate by reference arguments from the Preliminary Response. The Board stated that incorporation by reference is prohibited by 37 C.F.R. § 42.6(a)(3), and therefore, arguments in the Response itself were only being considered.
Patent Owner relied upon its Motion to Amend Claims, proposing to replace the original claims 1-3 and 7 with claims 10-13. The Board noted that it is Patent Owner’s burden to establish the patentability of proposed substitute claims in a motion to amend over the prior art in general. The Board also noted that neither the challenged claims nor the proposed substitute claims enjoy a presumption of validity, and that in light of the determination that challenged claims 1-9 are unpatentable, there is no inference of patentability of the substitute claims by virtue of the fact that they replace claims 1-3 and 7.
The Board denied the Motion to Amend, holding that the Motion merely provided conclusory statements as to the patentability of the substitute claims and relied upon an expert declaration that the Board discredited.
The expert’s declaration focused on the prior art cited in the Petition and stated that Patent Owner’s expert “understand[s] these references include the closest prior art of which DSM is aware.” However, the Board faulted Patent Owner’s expert for failing to identify the closest prior art that was known to him as opposed to being known to Patent Owner. For this reason, the Board indicated that the declaration “provides insufficient information to establish that his patentability analysis as to the substitute claims is complete or reliable,” and was entitled to little weight.
In addition, the expert’s declaration was limited to the specific samples tested by Petitioner rather than distinguishing “the many other compositions disclosed in the cited prior art.” Thus, the Board held that the declaration did not even establish patentability over the small collection of prior art references involved in the proceeding.
The Board also found the expert declaration deficient for failing to provide evidence as to the level of ordinary skill in the art at the time of the invention, as required for the obviousness inquiry.
Finally, the Board dismissed as moot Petitioner’s Motion to Exclude Evidence. The evidence Petitioner sought to exclude was filed with the Motion to Amend, which the Board denied.
Corning Inc. v. DSM IP Assets B.V., IPR2013-00046
Paper 81: Final Written Decision
Dated: May 1, 2014
Patent 6,110,593
Before: Fred E. McKelvey, Grace Karaffa Obermann, Jennifer S. Bisk, Scott E. Kamholz, and Zhenyu Yang
Written by: Bisk
Related Proceedings: IPR2013-00043; IPR2013-00044; IPR2013-00045; IPR2013-00047; IPR2013-00048; IPR2013-00049; IPR2013-00050; IPR2013-00052; and IPR2013-00053