45 for 50: Inherent Disclosure Plays Key Role in Grant of Inter Partes Review Trial

Optical fibersCorning was successful in challenging 24 of 34 claims of a DSM IP Assets (DSM) patent in a case styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00052), involving U.S. Pat. No. 7,276,543.  As previously discussed, this is an interesting case given that Corning and DSM have had a long standing business relationship, at least until this IPR battle erupted.  This is the first of 10 IPR petitions filed by Corning.

The ‘543 patent relates to radiation curable coating compositions for optical fibers. More specifically, the patent describes optical glass fibers with two radiation-cured coatings.

Board began by interpreting several claim limitations, from the challenged claims, including, “photoinitiator package,” “free radical photoinitiators,” “molecular extinction coefficient,” and “absorption peak” or “shoulder.” Patent Challenger proposed interpretations for all of the phrases, including taking the position that certain recitations from the claims refer to future intended uses of the subject compositions and do not, therefore, limit the claimed compositions.  Order at 5.  Patent Owner generally objected to the proposed constructions as being too narrow, without proposing its own counter-interpretations. Without analysis, the Board decided that Patent Challenger’s interpretations “do not appear unreasonable at this stage of the proceeding” and adopted all Patent Challenger’s interpretations.

The overall theme of Patent Challenger’s Petition was that the challenged claims were allowed during prosecution “simply because many of the limitations were in the form of inherent properties of the claimed composition not explicitly disclosed int he prior art.  Order at 6.  To fill those gaps in the prior art, Patent Challenger relied on the expert testimony of two of its own scientists to show that the properties were, in fact, inherent by virtue of experiments whereby the experts reproduced prior art compositions and tested their properties.

In an effort to defeat this expert-created evidence, Patent Owner argued that the test results were insufficient because they failed to disclose certain significant underlying facts about the testing.  Not completely closing the door on that argument, the Board found that, at this stage of the proceeding, the “data is reasonably clear, and not so deficient that it can be discounted completely.”  More specifically, at this stage of the proceeding, there was no reason to doubt the veracity of the proffered testimony.  Presumably, such doubt, if any, can be created by Patent Owner in the trial with its own expert.  As such, the Board granted a trial based on anticipation based on two references.

Relatedly, the Board found that the use of an inherent disclosure can be used to establish obviousness.  Order at 14.  “It is not a requirement that the inherent properties were known at the time of the invention.”  Id.  Case law cited by Patent Owner on this point was distinguishable because Patent Challenger did not argue that the latent properties themselves  provide the rationale for combining the prior art references.  Instead, Patent Challenger predicated obviousness upon the express teachings of the cited references, plus expert testimony.  In view of this analysis, the Board granted certain obviousness grounds, but denied others, in instituting the IPR trial.

In summary, the Board granted the petition of Patent Challenger as to 24 of the 34 challenged claims in the ‘102 patent on obviousness and anticipation grounds, at the same time, setting forth key analysis relating to the issue of inherency in both anticipation and obviousness contexts.

22 for 23: Second and Third Micron Tech Inter Partes Review Trials Instituted

As previously discussed, Micron Tech filed three petitions seeking inter partes review against The Board of Trustees of the University of Illinois. Because they are so closely related, we consolidate into this post a discussion of the grant of both the second and third of these IPR trials in cases styled as Micron Technology, Inc. v. The Board of Trustees of the University of Illinois (IPR2013-00006 and IPR2013-00008), involving US Patent Nos. 6,888,204 and 5,872,387. In each case, all challenged claims were put into the IPR trial.

The technology involved in the ‘204 and ‘387 patents involves methods of treating a semiconductor device by passivating (or annealing) the device with deuterium, an isotope of hydrogen. More specifically, each independent claim includes a product-by-process limitation. As such, patentability of the claims are determined by the product itself, not the process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.”). Order at 11-12.

Turning to the grounds for challenge, the Board considered the unpatentability of the ‘204 patent in view of a prior art reference that taught all but one limitation of the product made by the claimed process. To meet that missing limitation, Patent Challenger argued that the prior art reference inherently taught the missing limitation. To support that position, Patent Challenger’s expert opined that the missing limitation necessarily was present in the prior art – a position adopted by the Board. Important to the Board’s decision in this regard, Patent Owner did not challenge this inherency argument.

In the end, the remaining issues discussed by the Board significantly overlapped those of the previous decision and are not repeated here. Micron Technology successfully overcame the reasonable likelihood threshold and will proceed to trial against all three University of Illinois patents.