CORNING INCORPORATED v DSM IP ASSETS B.V.

Patent Trial and Appeal Board

May 1, 2014

09972203 (P.T.A.B. May. 1, 2014)

Trials@uspto.gov Paper 88
571-272-7822 Entered: May1, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CORNING INCORPORATED
Petitioner

v.

DSM IP ASSETS B.V.
Patent Owner
____________

Case IPR2013-00052
Patent 7,276,543 B2
____________

Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
Administrative Patent Judges.

YANG, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Pursuant to 35 U.S.C. §§ 311-319, Corning Incorporated (“Corning”)
petitioned for an inter partes review of claims 1-34 of U.S. Patent No.
7,276,543 B2 (“the ’543 patent”). Paper 3 (“Pet.”). On May 2, 2013, the
Board denied the petition as to claims 1-10 but instituted trial for claims 11-
34 on several grounds of unpatentability. Paper 13 (“Dec.”). Thereafter,
Patent Owner DSM IP Assets B.V. (“DSM”) filed a Response (Paper 43
(“PO Resp.”)), and Corning filed a Reply (Paper 56 (“Reply”)). Later, DSM
filed a Supplemental Response (Paper 67 (“Supp. Resp.”)), and Corning
filed a Reply thereto (Paper 68 (“Supp. Reply”)).1
Oral hearing was held on February 11, 2014. See Paper 87 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c) and issues this final
written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Corning has proved by a preponderance of the evidence that
claims 11-23 and 26-31 of the ’543 patent are unpatentable. It, however, has
failed to meet its burden of proof regarding the unpatentability of claims 24,
25, and 32-34.
B. Related Proceedings
Corning and DSM simultaneously are involved in nine other inter
partes reviews based on patents claiming similar subject matter:
IPR2013-00043, IPR2013-00044, IPR2013-00045, IPR2013-00046,

1 The Board authorized these filings in resolving certain discovery disputes.
Paper 54.
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IPR2013-00047, IPR2013-00048, IPR2013-00049, IPR2013-00050, and
IPR2013-00053.2
C. The ’543 Patent
The ’543 patent relates to an optical fiber coating prepared from a
radiation curable composition. Ex. 1001, Abstract; see also id. at 1:16-18.
The composition comprises an oligomer, a reactive diluent, and a plurality of
free radical photoinitiators with certain absorption characteristics. Id. at
3:11-44.
Claim 11, the sole independent claim in this proceeding, reads:
11. A radiation-curable composition comprising
(A) an oligomer,
(B) a reactive diluent, and
(C) a photoinitiator package of at least two free radical
photoinitiators having an overall absorption spectrum in
methanol which is the sum of the absorption spectra of each
individual photoinitiator wherein said overall absorption
spectrum has a minimum value of a molar extinction coefficient
(ε) in a range between 280 nm (λ1) and 320 nm (λ2) of at least
about 525 lmol-1cm-1 or wherein said overall absorption
spectrum has an average value of ε in a range between 280 nm
(λ1) and 320 nm (λ2) of at least about 980 lmol-1cm-1.
Ex. 1001, 27:45-57.

2 IPR2013-00053 addresses claims 35-57 of the ’543 patent.
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D. Reviewed Grounds of Unpatentability
The Board instituted trial on the following grounds of unpatentability:
Claim(s) Challenged Basis Reference(s)3
11-14, 16-21, 26, 27,
29, 30, and 32-34
§ 102 Szum ’041
24 and 25 § 103 Szum ’041 and Ciba
11-22 and 26-30 § 102 Snowwhite
23 § 103 Snowwhite, Fouassier, and Levy
31 § 103 Snowwhite and Zahora
31 § 103 Szum ’041, Snowwhite, and Zahora

II. ANALYSIS
A. Claim Construction
In the Decision to Institute, the Board adopted Corning’s
interpretation of several terms. Dec. 5-6. After the institution of the trial,
the parties disputed the construction of “percentage reacted acrylate
unsaturation (%RAU)” only. Pet. 16-17; PO Resp. 16-18; Reply 2-7. As we
dispose of all issues on other grounds, we do not need to reach any claim
construction in this Final Decision.

3 Szum, U.S. Patent No. 5,664,041 (Ex. 1002) (“Szum ’041”); Ciba-Geigy
Corp., Photoinitiators for UV Curing: A Formulator’s Guide (Ex. 1006)
(“Ciba”); Snowwhite et al., Int’l Pub. No. WO 98/47954 (Ex. 1003)
(“Snowwhite”); JEAN-PIERRE FOUASSIER, PHOTOINITIATION,
PHOTOPOLYMERIZATION, AND PHOTOCURING: FUNDAMENTALS AND
APPLICATIONS 71-72 (1995) (Ex. 1011) (“Fouassier”); Levy, U.S. Patent No.
6,042,943 (Ex. 1012) (“Levy”); Zahora et al., Int’l Pub. No. WO 98/50317
(Ex. 1004) (“Zahora”).
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B. Unpatentability Analysis
1. Claims 11-23 and 26-31
In instituting this inter partes review, the Board concluded that
“Corning has demonstrated that there is a reasonable likelihood of prevailing
on its challenge to the patentability” of claims 11-23 and 26-31. See Dec. 8-
12, 18-20, 22; see also 35 U.S.C. § 314(a). After the Board institutes a
review, the patent owner “may file a response to the petition addressing any
ground for unpatentability not already denied.” See 37 C.F.R. § 42.120(a).
In its Scheduling Order, the Board cautioned DSM that “any arguments for
patentability not raised in the response will be deemed waived.” Paper 14,
2.
In its Patent Owner’s Response, DSM chose “not to substantively
respond to Corning’s Petition with respect to claims 11-23 and 26-31.”4 PO
Resp. 3. In its Supplemental Response, however, DSM asserted that
“Corning’s GPC [gel permeation chromatography] data does not prove that
Corning properly synthesized the prior art oligomers.” Supp. Resp. 5. Even
though DSM did not state so explicitly, this allegation relates to DSM’s
patentability argument for claims 11-23 and 26-31. After all, if DSM’s
contentions bear out, Corning’s test data using the oligomers of questionable
quality could not serve as the basis to prove unpatentability of any claim.
According to Professor Bowman, the expert for DSM, when
synthesizing an oligomer, the presence of a significant amount of low

4 DSM stated that it instead submitted a Motion to Amend under 37 C.F.R.
§ 42.121. PO Resp. 3. The record, however, does not include any Motion to
Amend in this proceeding.
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molecular weight starting materials would indicate an incomplete synthesis.5
Ex. 2037 ¶ 7. In addition, unreacted starting materials also can impact
detrimentally the functional properties of the resulting coating composition.
Id. In Professor Bowman’s view, the starting materials of Corning’s sample
co-eluted with the tracer, which made it “difficult, if not impossible, to
determine from these [GPC] spectra whether the oligomer functionalization
reaction is complete in Corning’s oligomer compositions.” Id. ¶ 12.
Professor Bowman estimated “there might be 30 or 40 percent of small
molecular weight compounds that are present in those [Corning oligomers].”
Ex. 1039, 171:16-19.
Corning disagreed. Professor Sogah, an expert for Corning,
explained: “The main purpose of analyzing a GPC chromatogram that is run
on a GPC designed to assess oligomer formation is to see if oligomer peaks
appear in the high molecular-weight region of the chromatogram.” Ex. 1071
¶ 56. Thus, a skilled polymer chemist would not analyze the low molecular-
weight region to confirm oligomer formation. Id. ¶ 57. “Even if a skilled
scientist were to focus on the low molecular-weight region of the GPC
chromatogram[,] there is no information available in the Corning GPC
chromatograms in this region to indicate that the oligomer has not been
properly formed.” Id. ¶¶ 58-60. In Professor Sogah’s opinion, given the
highly reactive nature of the reagents used in the oligomer formation,

5 The Board denied DSM authorization to file Dr. Bowman’s supplemental
declaration in this proceeding. Paper 59, 4-5. DSM nevertheless cited to
this declaration in support of its Supplemental Response argument.
Suppl. Resp. passim. We exercise our discretion and consider
Dr. Bowman’s supplemental declaration for the limited purpose discussed
herein.
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together with the long reaction time Corning used to prepare the oligomers,
it would be “highly unlikely” that the unreacted starting materials would
be present in amounts of 30-40%, as Professor Bowman alleged. Id.
¶¶ 64-66. Professor Sogah further pointed out:
Additionally, oligomers in general are fairly viscous, to the
point that this viscosity is observable to the naked eye. Having
30-40% unreacted HEA [the starting material], or any other
liquid, in the final product of an oligomer synthesis would
certainly affect the viscosity of the resulting product. A skilled
chemist with experience synthesizing oligomers would
immediately recognize that such a resulting product does not
have the viscosity and other physical attributes associated with
a typical oligomer. For example, HEA is volatile and has a
very strong, pungent odor which a skilled chemist would almost
certainly notice when handling this material. For all the reasons
stated above, I think it would be highly unlikely that a skilled
chemist with experience in synthesizing oligomers would be
confused into thinking that the final “oligomer” product being
synthesized actually contained 30-40% small molecular weight
compounds, such as unreacted HEA.
Id. ¶ 68.
We find Professor Sogah’s explanation more persuasive. First, after
Corning submitted Professor’s Sogah’s declaration rebutting Professor
Bowman’s opinion, DSM cross-examined Professor Sogah for two days.
See Exs. 2060, 2061. In its Motion for Observations on Cross-Examination
of Corning Reply Declarants, DSM called to our attention several deposition
testimony excerpts from other Corning experts. See Paper 70. Had DSM
found any support for its allegation that Corning improperly prepared the
oligomer samples, it could have pointed it out to us. See Office Patent Trial
Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48,756, 48,767-68
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(Aug. 14, 2012). It did not do so. In fact, DSM did not call to our attention
any testimony from Professor Sogah.
More importantly, DSM’s scientists do not appear to have given
much weight to the low-molecular-weight region of the GPC spectrum. See
Ex. 1039, 144:6–147:22. Indeed, when a DSM’s scientist presented the
oligomer test data to Professor Bowman, she did not include data of the low-
molecular-weight region. See id. at 146:12-15 (“So the one that I’m sure
had been done before it was the di -- the diisocyanate diacrylate. They had
run that before. She thought she knew where it should show up, but couldn’t
pull out that data.”); id. at 146:20-25 (“And I think the same thing was true
of the lauryl acrylate as was true of the diisocyanate diacrylate. She knew
from her experience where it would show up, but I again indicated I needed
more than her experience, that I wanted see that run as a sample itself . . . .”).
This testimony confirms Professor Sogah’s position, i.e., when analyzing a
GPC chromatogram to assess oligomer formation, a skilled polymer chemist
would focus on the oligomer peaks in the high-molecular-weight region, and
not the peaks of the starting materials or tracer in the low-molecular-weight
region. Ex. 1071 ¶¶ 56-57.
We find that Corning has established that it properly prepared the
oligomer it used for testing. DSM has not presented enough evidence to
lead us to doubt the quality of Corning’s oligomer preparation. Based on the
record developed at trial, we find a preponderance of evidence supporting
unpatentability of claims 11-23 and 26-31. See 35 U.S.C. § 316(e).
Specifically, we are persuaded by the data and testimony Corning presented
in support of its position that Examples 4 and 5B of Szum ’041 inherently
anticipate claims 11-14, 16-21, 26, 27, 29, and 30. See Pet. 18-26; Ex. 1013
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¶¶ 106-29, 135; Ex. 1014 ¶¶ 35-39. Also, Corning presented persuasive data
and testimony supporting its position that Example C of Snowwhite
inherently anticipates claims 11-22 and 26-30. See Pet. 48-54; Ex. 1013
¶¶ 209-28, 231; Ex. 1014 ¶¶ 35-39. Further, Corning presented data and
testimony sufficient to support its position that the combination of
Snowwhite, Fouassier, and Levy renders claim 23 obvious, and that the
combination of Snowwhite and Zahora (or the combination of Szum ’041,
Snowwhite, and Zahora) renders claim 31 obvious. See Pet. 30-31, 55-58;
Ex. 1013 ¶¶ 233-46.
Besides the unconvincing challenge of Corning’s adequate oligomer
sample preparation, DSM did not present any other evidence or argument to
rebut the unpatentability assertions. Therefore, Corning has satisfied its
burden of proving unpatentability of claims 11-23 and 26-31.
2. Claims 32-34
Claims 32-34 depend from claim 11 and further limit the radiation-
curable composition, “when cured at a dose of about 4.4 mJ/cm2,” to have a
%RAU of at least 56%, 60%, and 66%, respectively. Ex. 1001, 28:65–29:6.
In its Petition, Corning alleged that Examples 4 and 5B of Szum ’041
anticipate claims 32-34. Pet. 26-27. Specifically, Corning presented
the testimony of Ms. Kouzmina, a Corning employee, stating that she
prepared the compositions disclosed in Examples 4 and 5B of Szum ’041
and tested these samples for %RAU. Ex. 1014 ¶¶ 23-34. According to
Ms. Kouzmina, when cured at a dose of about 4.4 mJ/cm2, Example 4 has a
%RAU of 78% and Example 5B has a %RAU of 73%. Id. ¶ 34.
Dr. Winningham, Corning’s expert, did not examine independently the
underlying test procedures. Ex. 2087, 1096:24–1099:15. Instead, trusting
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the work of Ms. Kouzmina, Dr. Winningham opined that Examples 4 and 5B
of Szum ’041 disclose the %RAU recited in claims 32-34. Ex. 1013 ¶¶ 132-
35. Crediting both the Kouzmina and the Winningham declarations, the
Board instituted review of claims 32-34. Dec. 8-9.
In the Patent Owner’s Response, DSM contended that “Corning’s
%RAU measurements are scientifically invalid and therefore cannot
establish that Examples 4 and 5B of Szum ’041 anticipate claims 32[-]34 of
the ’543 patent.” PO Resp. 32-42. Specifically, Professor Bowman testified
that “assuming constant intensity of the incident light,” “a plot of dose
versus exposure time will be linear (i.e., will yield a straight line) with an
intercept at the origin of the graph.” Ex. 2029 ¶ 55. Corning’s technician,
however, improperly conducted the %RAU tests based on a substantially
nonlinear calibration data. Id. ¶ 58. According to DSM, Ms. Kouzmina, the
Corning declarant who supervised the %RAU tests and testified about the
results, “did not know whether the relationship between dose and exposure
time should be linear.” Id. ¶ 59. In providing his expert opinion,
Dr. Winningham relied on Ms. Kouzmina’s incorrect dose calibration data
without any examination. Id. ¶ 60. Thus, even though he understood the
linear relationship between dose and exposure, Dr. Winningham did not
catch “the fundamental error” in Corning’s data. Id.
In its Reply, Corning conceded that its original %RAU calculation, on
which it relied to support the Petition for review of claims 32-34, was
erroneous. Reply 7-8. Corning found “a then-unknown limitation inherent
in the [light] meter and a calculation error.” Id. These two errors caused an
overstated exposure time and thus, instead of 4.4 mJ/cm2 required in claims
32-34, “too high a dose was used.” Id.
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Corning then argued that Examples 4 and 5B of Szum ’041 anticipate
the ’543 patent claims based on its “renewed %RAU calculations.” Id.
at 8-12. Corning submitted Dr. Winningham’s Responsive Declaration and
several new expert declarations together with its Reply. See Exs. 1037,
1038, 1069, 1071. According to these experts, Corning prepared a new
batch of coating samples according to the formulations in Examples 4 and
5B of Szum ’041 (Ex. 1037 ¶¶ 33, 34, 39-48), determined the exposure
times required to achieve 4.4 mJ/cm2 (id. ¶¶ 56-68), conducted FTIR
analyses (id. ¶¶ 70-77), and calculated %RAU (id. ¶¶ 78-83). Corning
performed the tests using two different light meters: when using
EPM2000/PM3, the light meter used in the original tests to support the
Petition, the %RAU fell outside of the range recited in claims 32-34; but
when using ILT1400/XRL140B, a new light meter first used in the tests to
support the Reply, the %RAU fell within the range recited in claims 32-34.
Reply 10.
We decline to consider Corning’s “renewed” %RAU data because
they are improper reply evidence and because considering the data at this
late stage would not serve the interest of justice. “A reply may only respond
to arguments raised in the corresponding opposition or patent owner
response.” 37 C.F.R. § 42.23(b). When DSM challenged the soundness of
Corning’s methodology, a proper reply could have included, for example,
Corning’s rebuttal to contradict DSM’s allegation and any supporting
evidence to confirm the veracity of Corning’s original %RAU data. These
options were not available to Corning because it, in fact, discovered errors in
that testing. Reply 7-8. Instead, Corning provided new evidence of %RAU
data of an entirely new batch of samples tested under a new protocol,
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including using a new light meter. Id. at 8-10. Such evidence, and
Corning’s argument relying on such evidence, exceeded the proper scope of
a reply.
Corning insisted that its new reply evidence, or at least the portion
using the new ILT1400/XRL140B meter, was in response to
Professor Bowman’s criticism of Corning’s test procedure. See Tr. 6:12-24.
We disagree. “Examples of indications that a new issue has been raised in a
reply include new evidence necessary to make out a prima facie case for the
patentability or unpatentability of an original or proposed substitute claim,
and new evidence that could have been presented in a prior filing.” Trial
Practice Guide, 77 Fed. Reg. at 48,767. Corning’s reply evidence falls
squarely into this category.
Corning conceded that it could not rely on the original %RAU data in
the Petition to support its position that Szum ’041 inherently anticipates
claims 32-34. See Tr. 5:14-21. Thus, Corning’s “renewed” %RAU data in
the Reply becomes necessary to make its case for unpatentability of claims
32-34.
Corning could have presented the “renewed” %RAU data with its
original Petition. In none of its papers and at no time at the oral argument
did Corning contend or offer any evidence to show otherwise. Indeed, it was
Corning who decided to challenge DSM’s patent. In theory, Corning, unlike
DSM, had unlimited time to test the prior art compositions, because the
parties do not appear to have engaged in any ongoing litigation involving the
’543 patent. See 35 U.S.C. §§ 315(a)(1), 315(b). In reality, DSM asserted,
and Corning did not dispute, that Corning had two years to prepare for this
patent challenge. PO Resp. 5. Moreover, the problems with Corning’s
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original %RAU data lie in the first, calibration step. Id. at 36-43; see also
Reply 7-8. Corning blamed the breadth of claims 32-34 for its testing error.
But proper calibration of a light meter to determine the exposure times
needed to reach the doses recited in the claims is fundamental and does not
depend on Corning’s understanding, or for that matter, our construction, of
any claim language. To be sure, Corning was able to discover and correct
the errors,6 and present a new set of data, even though the parties did not
agree on, and we did not resolve, any claim construction issue.7
Because Corning belatedly presented the “renewed” %RAU data to
make its case of inherent anticipation, we decline to consider the portion of
the Reply on this issue. See Trial Practice Guide, 77 Fed. Reg. at 48,767.
This approach is consistent with those of federal courts, which generally do
not consider new evidence presented at the end of a briefing schedule when
the other party no longer has an opportunity to respond. See, e.g.,
Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897, 909 (Fed. Cir. 2011)
(holding that the district court acted within its discretion when it did not
consider supplementary declarations submitted for the first time in a reply
brief because the other party did not have an opportunity to respond). Here,
Corning included the “renewed” %RAU data evidence in its reply papers.
Even though DSM had a chance to, and in fact, did, cross-examine some
Corning experts, it had no further briefing opportunity to challenge

6 For purposes of this decision, we assume, without deciding, that Corning’s
calibration and calculation for its “renewed” %RAU data are procedurally
proper.
7 In fact, for the purpose of instituting this trial, the Board adopted Corning’s
interpretation of several terms, including “percentage reacted acrylate
unsaturation (%RAU).” See supra Section II.A.
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Corning’s evidence—at that time, DSM could file only observations on
cross-examinations, an avenue not designed for submitting substantive
argument. See Trial Practice Guide, 77 Fed. Reg. at 48,768. It would be
manifestly unfair to allow Corning to substitute new %RAU data in the
Reply when DSM had no briefing opportunity to address any issues with the
new evidence.
Certainly, our consideration of Corning’s newly presented evidence
would cause undue prejudice against DSM. Corning faulted DSM for not
seeking an opportunity to address the new Reply evidence. See Transcript of
Oral Hearing at 8:1-10, Corning Inc. v. DSM IP Assets B.V., IPR 2013-
00047 (PTAB Feb. 11, 2014) (Paper 83).8 According to Corning, DSM
previously asked for supplemental briefing, so it should have done the same
here. Id. Corning also offered to not object if DSM were to supplement its
briefing on the “renewed” %RAU after the hearing. See Tr. 7:15-22. As a
threshold matter, we would not consider Corning’s offer, because Corning
never raised this position before oral argument and because it is within the
Board’s discretion to decide whether to allow DSM the opportunity to
supplement its filing. See Trial Practice Guide, 77 Fed. Reg. at 48,767-68.
More importantly, DSM did not bear the burden to respond to
Corning’s “renewed” evidence. During the hearing, counsel for DSM
argued that requiring DSM to respond to the “renewed” %RAU data would

8 In IPR 2013-00047, Corning submitted the same new evidence of %RAU
data. At the hearing, the parties argued the same issue, i.e., whether the
Board should consider the new evidence, mainly during the earlier time
allotted for IPR 2013-00047. See Transcript of Oral Hearing at 5:15-21,
Corning Inc. v. DSM IP Assets B.V., IPR 2013-00047 (PTAB Feb. 11, 2014)
(Paper 83).
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amount to conducting a de facto new inter partes review on claims 32-34.
See Tr. 9:18-21. We agree. DSM already had expended resources on expert
analyses and attorney argument addressing the deficiency of Corning’s
original data. The Board will not press DSM to expend additional resources
to have an expert analyze Corning’s new data together with hundreds of
paragraphs of new expert declarations, or to have its attorney make a
supplemental submission—not when DSM did not cause Corning’s testing
errors; not when Corning itself never sought authorization to supplement the
“renewed” evidence;9 and not when doing so less than three months before
the statutory deadline for issuance of the final decision would place a
strenuous burden on DSM.10 In addition, allowing the parties to address
Corning’s new reply evidence at this late stage would impede the Board’s
objective to “secure the just, speedy, and inexpensive resolution of every
proceeding.” See 37 C.F.R. § 42.1(b).
We applaud Corning’s candor in admitting the errors in its testing
results. We also appreciate its argument that revoking unpatentable claims
would serve the public interest.11 See Tr. 7:4-6. But, federal courts may

9 Corning never so moved, and we express no opinion on whether the Board
would have granted such a motion.
10 Because the Board instituted the instant review on May 2, 2013 (see Dec.),
it shall issue the final decision on or before May 2, 2014, less than three
months after the oral hearing held on February 11, 2014. See 35 U.S.C.
§ 316(a)(11).
11 DSM contended that even Corning’s “renewed” %RAU data would not
support unpatentability of claims 32-34. See Transcript of Oral Hearing at
19:21–20:7, Corning Inc. v. DSM IP Assets B.V., IPR 2013-00047 (PTAB
Feb. 11, 2014) (Paper 83). Without the benefit of any critical review of the
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exclude evidence when a party fails to timely disclose information or
supplement an earlier disclosure during discovery. See, e.g., O2 Micro Int’l
Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1368 (Fed. Cir. 2006)
(concluding that the district court did not abuse its discretion in excluding
untimely supplemental expert declarations). They do so despite the fact that
some excluded evidence may invalidate a patent claim. See, e.g., Vehicle IP,
LLC v. Werner Enters., Inc., CV10-503, 2013 WL 4786119, *2-3 (D. Del.
Sept. 9, 2013) (excluding invalidity theory based on untimely disclosed prior
art). To reach consistent and fair outcomes in performing its duties, the
Board similarly must follow set rules and conduct its proceedings in an
orderly fashion.
Overall, the balance of various interests tips against Corning, and the
Board declines to entertain Corning’s “renewed” %RAU data. Because
Corning conceded that it could not prevail based on the original %RAU data
submitted with the Petition, and we find that it cannot rely on the new
evidence advanced in the Reply, it failed to prove by a preponderance of the
evidence that claims 32-34 are unpatentable.
3. Claims 24 and 25
Claims 24 and 25 depend from claim 11. Claim 24 further limits
compound (C) to comprise “five different -cleavage homolytic free radical
photoinitiators, wherein each photoinitiator is individually present in an
amount between 0.05 and 4.0 wt. % relative to the total amount of the
coating composition.” Ex. 1001, 28:36-41. Claim 25 depends from

data by DSM’s expert and further briefing on this issue, it is unclear whether
Corning would have satisfied its burden to prove unpatentability.
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claim 24 and requires that “each photoinitiator is present in an amount
between 0.1 and 2.5 wt. % relative to the total amount of the coating
composition.” Id. at 28:42-45.
According to Corning, claims 24 and 25 would have been obvious
over the combination of Szum ’041 and Ciba. Pet. 27-30. Specifically,
Corning asserted that Examples 4 and 5B of Szum ’041 satisfy each and
every limitation of claim 11. Id. at 27. Each composition contains,
however, only two, not five, -cleavage homolytic free radical
photoinitiators in the range of the recited amount, as claims 24 and 25
require. Id. at 27-28. Ciba “describes five different photoinitiators having
different uses: a primary initiator, a surface cure initiator, a through cure
initiator, an initiator with a good short wavelength absorption, and an
initiator with a good long wavelength absorption.” Id. at 29 (citing Ex.
1006, 15). Thus, “it would have been obvious to use five different
photoinitiators in Szum’s compositions, as required by claim 24, to achieve
the well known benefits associated with multiple photoinitiators.” Id.
In response, DSM contended that a person of ordinary skill in the art
would not have been motivated to combine five photoinitiators into a single
composition. PO Resp. 25-30. Professor Bowman testified that it is
“generally desired to use the smallest number of the most efficient
photoinitiators possible and no more than necessary to achieve an effective
cure.” Ex. 2029 ¶ 43. According to Professor Bowman, using too many
photoinitiators or too much total photoinitiator likely will cause problems.
Id. As a result, “a person of ordinary skill in the art would not select five
different photoinitiators in the specifically claimed amounts merely because
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the photoinitiators can be described in five different ways—especially given
the cost concerns as expressly mentioned in Ciba.” Id. ¶ 48.
DSM also contended that the combination of Szum ’041 and Ciba
does not disclose each and every limitation of claims 24 and 25. PO Resp.
24-25. Specifically, claim 11, from which claims 24 and 25 depend,
requires the photoinitiator package exhibit certain absorption characteristics
between 280 nm and 320 nm. Ex. 1001, 27:48-57. Corning, however, did
not present any credible evidence to show that “when the photoinitiator
packages of Examples 4 and 5B are modified to include three additional
photoinitiators as Corning suggests, this combination of five photoinitiators
meets the claimed absorption characteristics.” PO Resp. 24.
In its Reply, Corning provided no rebuttal on either issue. In fact,
besides reciting the claim language, the only sentence addressing the
unpatentability of claims 24 and 25 reads:
For the reasons explained in the Petition for Inter Partes
Review and adopted by the Board in the Decision Instituting
Inter Partes Review, it would have been obvious from Ciba to
add five additional alpha-cleavage homolytic free radical
photoinitiators to Examples 4 and 5B of Szum.
Reply 13-14.
Based on the record developed at trial, we conclude that Corning has
not met its burden to prove claims 24 and 25 obvious by a preponderance of
evidence. First,
[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was,
independently, known in the prior art. Although common sense
directs one to look with care at a patent application that claims
as innovation the combination of two known devices according
to their established functions, it can be important to identify a
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reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, Corning
argued that “it was well known to include multiple photoinitiators in
radiation-curable compositions, for instance, to improve cure speed and
optimize performance properties.” Pet. 28. Having initially found this
reasoning persuasive, we instituted this review. After institution, DSM,
however, came forward with evidence showing other considerations at play.
See PO Resp. 26-30. Indeed, Professor Bowman explained why one skilled
in the art would not have had a reason to use five photoinitiators and in the
amount as claims 24 and 25 require. See, e.g., Ex. 2029 ¶¶ 46-48. He refers
to express teachings in Ciba to support his opinion. For example, “a
frequent cause of insufficient through-cure is too much photoinitiator in the
composition, and as Ciba expressly teaches, this problem can often be
rectified by using lower levels of photoinitiators.” Id. ¶ 47; see also id. ¶ 48
(pointing to the cost concerns expressed in Ciba). We find
Professor Bowman’s opinion credible, especially given that both the opinion
and the evidence referred to therein stand unrebutted by Corning.
A second independent basis supports our conclusion that Corning has
failed to meet its burden of proving that claims 24 and 25 are unpatentable.
Even assuming that it would have been obvious to modify Szum ’041 and
use five photoinitiators in a radiation-curable composition, Corning has not
shown by a preponderance of evidence that such a modification would
satisfy the required absorption characteristics. Claims 24 and 25 depend
from claim 11. It is undisputed that neither Szum ’041 nor Ciba expressly
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discloses the absorption characteristics recited in claim 11. In fact, Corning
established the unpatentability of claim 11 (anticipated by Szum ’041)
through the inherency doctrine.12 See supra Section II.B.1. Though it
matters not whether one skilled in the art appreciated the inherent property
of the Szum ’041 compositions at the time of the invention, “it matters
greatly whether anything the skilled artisan would be prompted by the prior
art to do is in fact within the scope of the . . . claim.” In re Kao, 639 F.3d
1057, 1066 (Fed. Cir. 2011). Corning did not present any testing data to
show that when the photoinitiator packages of Examples 4 and 5B are
modified to include three additional photoinitiators, the modified
photoinitiator packages meet the claimed absorption characteristics. Lack of
such tests is not fatal if Corning can provide other evidence sufficient to
prove the point. This, Corning did not do.
Here, the only evidence Corning relied on came from a single
sentence in Dr. Winningham’s declaration:
Modifying the photoinitiator packages of Example 4 and
Example 5B of Szum by adding additional α-cleavage
homolytic free radical photoinitiators at approximately the same
weight percentages of the photoinitiators already used in those
examples would not be expected to have caused the minimum

12 “[T]he inherency doctrine may apply to an otherwise obvious claim as
well.” Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1294 n.1 (Fed. Cir.
2013). Thus, we reject DSM’s argument that “Corning has improperly
based its obviousness analysis on its ex post facto absorption data obtained
for Examples 4 and 5B of Szum ’041.” PO Resp. 31. This is not a case
where Corning relied on an inherent property (i.e., the unknown absorption
characteristics of the Szum ’041 compositions) for a rationale to combine.
Rather, Corning based its obviousness argument upon express teachings in
Szum ’041 and Ciba, as well as expert testimony.
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and average ε of the resulting photoinitiator packages to drop
below the values recited in claim 11, from which claims 24 and
25 depend.
Ex. 1013 ¶ 169 (emphasis added). An expert’s opinion is only as good as
the facts upon which it is based. Dr. Winningham, in rendering his opinion,
pointed to no factual support and gave no explanation. During the hearing,
the panel inquired about the basis of Dr. Winningham’s conclusory
statement. Counsel for Corning appeared to state that Dr. Winningham
based his opinion on the level of one skilled in the art but emphasized his
expertise in the field. See Tr. 4:9-18. One’s expertise, even though draped
with a skilled-artisan veil, does not entitle a naked opinion to much weight.
See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
(Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual
determinations . . . may render the testimony of little probative value in a
validity determination.”).
Modifying a photoinitiator package from two photoinitiators to five
may not appear significant. But “[t]he emphasis on non-obviousness is one
of inquiry, not quality . . . .” Graham v. John Deere Co., 383 U.S. 1, 17
(1966). More importantly, we reach our conclusion here by following not
some rigid analysis formula but the statutory mandate: in an inter partes
review, “the petitioner shall have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e).
Corning’s conclusory expert opinion does not supply the requisite
preponderance of evidence.
This is especially so as Corning failed to rebut Professor Bowman’s
opposite conclusion. Professor Bowman pointed out that Corning tested
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photoinitiators with high absorptivity while arguing that the other
photoinitiators’ absorptivities were unimportant. Ex. 2029 ¶ 49. His
testimony cast further doubt on Dr. Winningham’s conclusory statement that
the addition of three other photoinitiators “would not be expected” to cause
the absorption characteristics to fall out of the range recited in claims 24 and
25. See id. We find Professor Bowman’s opinion persuasive. And
Corning’s failure to rebut this opinion leads to its failure to prove the
unpatentability of claims 24 and 25 by a preponderance of evidence. As a
result, claims 24 and 25 survive this review.
C. Motions to Exclude
Both DSM and Corning filed Motions to Exclude. See Papers 71
(“DSM’s Mot.”), 74 (“Corning’s Mot.”). Corning’s motion is dismissed as
moot; DSM’s motion is granted in part and dismissed in part as moot.
DSM moved to exclude Corning’s original %RAU data submitted
with the Petition. DSM’s Mot. 4-6. Because Corning conceded that it
would not rely on the data (see Tr. 5:14-21), we dismiss this portion of
DSM’s motion as moot.
DSM also moved to exclude Corning’s “renewed” %RAU data
submitted with the Reply. DSM’s Mot. 6-10. For the reasons explained in
the substantive discussion regarding claims 32-34 (see supra Section II.B.2),
we grant this portion of DSM’s motion.13

13 A motion to exclude is not an appropriate vehicle for challenging a reply
or supporting evidence as of improper scope. Liberty Mutual Ins. Co. v.
Progressive Casualty Ins. Co., CBM2012-00002, Paper 66, slip op. at 62
(PTAB Jan. 23, 2014). We consider DSM’s argument here only because the
panel previously instructed DSM to challenge the reply evidence in a motion
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Corning moved to exclude portions of Professor Bowman’s
declaration that “include and/or rely on certain unauthenticated hearsay
evidence.” Corning’s Mot. 1. According to Corning, Figure 1 and Table 1
in the declaration purported to show “DSM’s testing of an unidentified
formulation by DSM employees and the results of those tests,” which DSM
never authenticated. Id. at 2-3. Because we do not rely on either these
portions of Professor Bowman’s declaration or the underlying data to reach
the final decision, we dismiss Corning’s motion as moot.

III. CONCLUSION
Corning has shown, by a preponderance of the evidence, that claims
11-23 and 26-31 of the ’543 patent are unpatentable. It, however, has failed
to meet its burden of proof regarding the unpatentability of claims 24, 25,
and 32-34.

IV. ORDER
For the reasons given, it is
ORDERED that claims 11-23 and 26-31 of the ’543 patent are
determined to be UNPATENTABLE;
FURTHER ORDERED that Corning’s request for cancellation of
claims 24, 25, and 32-34 is denied;
FURTHER ORDERED that DSM’s Motion to Exclude is granted-in-
part and dismissed-in-part as moot;

to exclude. Paper 57, 4-5. In future cases, however, parties should bring
improper reply evidence to the Board’s attention in a conference call or
during oral argument.
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FURTHER ORDERED that Corning’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Michael L. Goldman
Jeffrey N. Townes
Edwin V. Merkel
LeClairRyan, A Professional Corporation
Michael.Goldman@leclairryan.com
Jeffrey.Townes@leclairryan.com
Edwin.Merkel@leclairryan.com

For PATENT OWNER:

Sharon A. Israel
Joseph A. Mahoney
Mayer Brown LLP
SIsrael@mayerbrown.com
JMahoney@mayerbrown.com