Corning continued its challenges to numerous patents assigned to DSM IP Assets (DSM) that are directed to coating compositions for optical fibers. Due to the similarity of their subject matter, this post covers decisions in four related matters, styled as Corning Inc. v. DSM IP Assets B.V., (IPR2013-00048, IPR2013-00049, IPR2013-00045, and IPR2013-00046), involving U.S. Pat. Nos. 6,298,189 (twice); 6,399,666; and 6,110,593.
The ‘189 patent, the ‘666 patent, and the ‘593 patent all relate to radiation curable coating compositions for optical fibers. More specifically, the patents describe optical glass fibers with two radiation-cured coatings. To create cable or ribbon assemblies, numerous coated optical fibers are bonded together in a matrix material. As part of the manufacturing process, the glass fiber surface must be accessible, a process known as “ribbon stripping.” All three patents are directed to a ribbon assembly having improved ribbon stripping capabilities.
The Board’s analysis in all four cases, began with a claim construction “analysis.” Patent Challenger submitted proposed constructions for several claim terms, but the Board, without any analysis, merely agreed with Patent Owner that the terms being disputed need not be interpreted in a manner that departs from their ordinary and customary meanings for purposes of its decisions.
Then, the Board turned to an overview of the petition. In all cases, Patent Challenger asserted that the subject matter in the challenged claims was only initially allowed during prosecution because the claim limitations were, for the most part, in the form of inherent properties of the composition which were not explicitly disclosed in the prior art. To support this position, Patent Challenger relied on the expert testimony of two of its own scientists, one of which reproduced prior art compositions to test them for inherent properties, and the other of which vouched for the validity of testing.
In rebuttal to this testing, Patent Owner argued that Patent Challenger deviated from what is described in the references during reproduction and testing of products and further that Patent Challenger improperly relied on inherency principles and ex post facto testing.
The Board then moved on to analyze Patent Challenger’s numerous asserted grounds of unpatentability in all four cases. Of particular interest, given the testing evidence relied upon by Patent Challenger, was Patent Owner’s argument that the contentions rely upon ex post facto testing – not information that was known at the time of the invention or disclosed in the cited references. But, the Board rejected Patent Owner’s attempts to undercut Patent Challenger’s inherency arguments in several respects. For example, the Board pointed out that it is not a requirement that the inherent properties of the prior art be known at the time of the invention. 00048 Order at 16-17. By contrast, unknown properties cannot be relied upon to provide a rationale for modifying or combining prior art to reach the claimed subject matter. Id. at 17. But, because Patent Challenger did not predicate its obviousness challenges on the latent properties – that is, Patent Challenger did not argue that those properties, themselves, provide the rationale for combining prior art references, Patent Owner’s rebuttal failed. As such, the Board accepted the testing evidence.
In addition, Patent Owner argued that the anticipation argument made by Patent Challenger required the selection of base oligomers from several different examples in the prior art patent. Per Patent Owner, therefore, the reference could not be anticipatory. The Board disagreed, finding that “a reference is not disqualified as anticipatory simply because ‘one of ordinary skill in the art would be required to pick items from two lists of components in order to assemble the invention.'”). See, e.g., 00048 Order at 12. As a backup to this finding, the Board went on to find that the reference at issue renders the claims obvious because it provides reason to combine the various examples.
The Board also commented on the use, by Patent Challenger’s expert, of a secondary reference as part of an anticipation argument. Patent Owner had argued that the use of the secondary reference required that there could be no anticipation. The Board disagreed, finding that the anticipation argument does not rely upon more than one reference simply because a second reference is discussed. Instead, the second reference is used to support the expert’s testimony regarding the knowledge of a person having ordinary skill at the time of the invention.
In summary, the Board granted the petition of Patent Challenger as to 20 of 20 challenged claims in the ‘666 patent, 66 of 66 challenged claims in the ‘189 patent, and 9 of 9 challenged claims in the ‘593 patent based on extensive obviousness and anticipation grounds.