September 16, 2013

Testing that Proved Inherent Properties of Prior Art Accepted by Board

By Matthew L. Cutler, Principal

Here is another update on the Corning assault on patents owned by DSM IP Assets (DSM) patents, this one styled as Corning Incorporated v. DSM IP Assets B.V. (IPR2013-00050), involving U.S. Pat. No. 6,323,255.  All 19 claims of the ’255 patent were placed into the inter partes review trial, based on all five obviousness grounds proposed by Corning.

As in the previous battles, the ‘255 patent relates to compositions that may be used as optical fiber coatings.  In this case, the patent covers coatings that have the properties of resistance to discoloration and high elongation. Specifically, the compositions include “at least one transesterified and/or high-purity monomer” to which the coating’s unique properties can be attributed.

As with the previous Corning v. DSM battles, the key takeaway from the Board’s ruling relates to the inherent disclosure of certain properties of the claims-at-issue in the prior art.  Corning’s over-arching position is that the prior art disclosed the claimed coatings, despite the fact that not all the claimed characteristics of the coatings were explicitly listed in that prior art.  The Board agreed, finding that Corning had established a reasonable likelihood of proving that the 19 challenged claims are unpatentable.

For example, with regard to the limitation that the subject composition, when cured, has “a ΔE value of less than 20 when exposed to low intensity fluorescent light for a period of ten weeks,” Corning acknowledged that the prior art did not disclose this property.  Instead, Corning relied on testing by its employees that showed that the property was inherent in the prior art it cited.

DSM responded by arguing that (1) it was improper to rely upon ex post facto testing to show inherency, (2) no motivation to combine was disclosed, and (3) no showing of “reasonable expectation of success in making the combination” were shown.  The Board rejected each such argument, as explained below.

Ex post facto Evidence

DSM’s argument was based on the erroneous view of the law that an inherent disclosure cannot be part of an obviousness analysis.  As the Board pointed out, “ample case law establishes that inherent disclosure may be relied upon in finding that subject matter would have been obvious at the time of its invention.  E.g., In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).”  Order at 11. The Board did point out, however, that unknown properties in the prior art may not be relied upon for providing a rationale for modifying or combining the prior art.  Id.  Corning used the testing in support of the former argument, not the latter.  As such, it was appropriate to consider in the Board’s decision.

Reason to Combine

The Board simply disagreed with DSM that Corning had failed to provide any evidence of a reason to combine.  The art itself, as well as Corning’s expert’s declaration, provided such motivation.

Reasonable Expectation of Success

Again, the Board disagreed with DSM’s finding.  More particularly, the Board stated that “[s]ubstituting a 95% pure monomer for a 90.4% pure monomer does not strike us, on the record currently before us, as a change so drastic that it would raise significant doubt in the mind of a the skilled artisan as tot he properties of the resulting composition.”  Order at 13.  Though the Board left the door open, with this statement, for DSM to provide expert evidence to refute Corning’s position, at this stage of the proceeding, the Board was not convinced that the obviousness argument must fail.

Having accepted Corning’s testing evidence, that proved the inherent properties of the prior art compositions, the Board’s subsequent obviousness analysis was relatively straightforward, resulting in another (preliminary) win for Corning.