Corning extended its winning streak in its challenges of patents owned by DSM IP Assets (DSM) in three related cases styled as Corning Inc. v. DSM IP Assets B.V. (IPR2013-00043, IPR2013-00044, and IPR2013-00047), involving U.S. Pat. Nos. 7,171,103; 6,961,508; and 6,438,306 respectively.
All three patents relate to optical fibers having multiple-layered, radiation-curable coatings as well as to the compositions of the radiation-curable coatings. The coatings act to confer “microbending resistance” and specifically, the ’103 and ‘508 patents are directed to coated optical fibers in which the coating provides “good microbending resistance” and “a high cure speed.” Further, the ‘306 patent is specifically directed to a coated optical fiber with a cured resin coating which does not restrict the mechanical properties of the optical fiber.
In all three cases, the Board began with a short claim construction analysis. In general, the Board either adopted Patent Challenger’s constructions, or deemed that claim construction was unnecessary at this stage, without providing any meaningful analysis supporting its decisions.
Then, the Board turned to an overview of the petition. In all three cases, Patent Challenger asserted that the subject matter in the challenged claims was only allowed during prosecution because many of the claim limitations were in the form of inherent properties not explicitly set forth 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.
Patent Owner objected to these inherency arguments, arguing that (a) Patent Challenger’s anticipation argument actually required multiple references to explain the testing being conducted, (b) the petition should be denied due to Patent Challenger basing its challenges on ex post facto testing, (c) a person of ordinary skill in the art would not have been motivated to combine the prior art references cited by Patent Challenger to produce the claimed invention, nor would they have had a reasonable expectation of success, and (d) in the cases involving the ‘508 and ‘306 patents, Patent Owner argued that Patent Challenger deviated from the prior art teaching in its formulations and testing, even in one case calling Patent Challenger’s methods “fatally flawed.”
Among the interesting aspects of the Board’s decision was its analysis of whether a particular prior art reference inherently possessed a material limitation of the challenged claims. To that end, Patent Owner argued that Patent Challenger was relying on a combination of references in its anticipation challenge. The Board disagreed, finding that Patent Challenger may rely on evidence extrinsic to the primary prior art reference to show that the primary reference inherently possesses a particular property, “so long as the extrinsic evidence establishes that the property is ‘necessarily present in the thing described int he reference, and that it would be so recognized by persons of ordinary skill.'” citing Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). 00043 Order at 12.
As in previous Corning decisions, the Board also declined to adopt Patent Owner’s argument that ex post facto testing cannot be used in an obviousness analysis. Because Patent Challenger was not using the testing to provide the rationale for combining prior-art references to reach the claimed subject matter, the testing was proper evidence in the obviousness analysis. See, e.g., 00043 Order at 18-19.
It is worth noting that this is an interesting decision for a reason related to the decision whether or not a Patent Owner should file a Preliminary Response to the Petition. Momentum is certainly on the side of not filing such Preliminary Responses, given the overwhelming rate of Petition grants to date. That is, given the low likelihood that such a response will be successful, there is little incentive to a Patent Owner to explain its positions early in the proceeding. In this case, while the Board ultimately granted the IPR trial, Patent Owner was given a detailed exposition of the weaknesses in its arguments, as currently viewed by the Board. This will give Patent Owner a detailed road map for expert testimony and argument in its formal response in an attempt to rebut the challenge grounds.
In summary, the Board granted the petition of Patent Challenger as to 18 of 18 challenged claims in the ‘103 patent, 22 of 22 challenged claims in the ‘508 patent, and 14 of 14 claims in the ‘306 patent based on obviousness and anticipation grounds, solely obviousness grounds, and solely anticipation grounds, respectively.