{"id":498,"date":"2013-09-16T16:31:33","date_gmt":"2013-09-16T20:31:33","guid":{"rendered":"https:\/\/aia.harnessip.com\/?p=498"},"modified":"2013-09-27T16:33:21","modified_gmt":"2013-09-27T20:33:21","slug":"testing-that-proved-inherent-properties-of-prior-art-accepted-by-board","status":"publish","type":"post","link":"https:\/\/aia.harnessip.com\/?p=498","title":{"rendered":"Testing that Proved Inherent Properties of Prior Art Accepted by Board"},"content":{"rendered":"

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.<\/em> (IPR2013-00050)<\/a>, involving U.S. Pat. No. 6,323,255.\u00a0 All 19 claims of the \u2019255 patent were placed into the inter partes review trial, based on all five obviousness grounds proposed by Corning.<\/p>\n

As in the previous battles, the \u2018255 patent relates to compositions that may be usedas optical fiber coatings.\u00a0 In this case, the patent covers coatings that have the properties of resistance to discoloration and high elongation. Specifically, the compositions include \u201cat least one transesterified and\/or high-purity monomer\u201d to which the coating\u2019s unique properties can be attributed.<\/p>\n

As with the previous Corning v. DSM battles, the key takeaway from the Board\u2019s ruling relates to the inherent disclosure of certain properties of the claims-at-issue in the prior art.\u00a0 Corning\u2019s 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.\u00a0 The Board agreed, finding that Corning had established a reasonable likelihood of proving that the 19 challenged claims are unpatentable.<\/p>\n

For example, with regard to the limitation that the subject composition, when cured, has \u201ca \u0394E value of less than 20 when exposed to low intensity fluorescent light for a period of ten weeks,\u201d Corning acknowledged that the prior art did not disclose this property.\u00a0 Instead, Corning relied on testing by its employees that showed that the property was inherent in the prior art it cited.<\/p>\n

DSM responded by arguing that (1) it was improper to rely upon ex post facto <\/em>testing to show inherency, (2) no motivation to combine was disclosed, and (3) no showing of \u201creasonable expectation of success in making the combination\u201d were shown.\u00a0 The Board rejected each such argument, as explained below.<\/p>\n

Ex post facto Evidence<\/em><\/p>\n

DSM\u2019s argument was based on the erroneous view of the law that an inherent disclosure cannot be part of an obviousness analysis.\u00a0 As the Board pointed out, \u201cample 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.\u00a0 E.g., <\/em>In re Napier<\/em>, 55 F.3d 610, 613 (Fed. Cir. 1995).\u201d\u00a0 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.\u00a0 Id.\u00a0 <\/em>Corning used the testing in support of the former argument, not the latter.\u00a0 As such, it was appropriate to consider in the Board\u2019s decision.<\/p>\n

Reason to Combine<\/em><\/p>\n

The Board simply disagreed with DSM that Corning had failed to provide any evidence of a reason to combine.\u00a0 The art itself, as well as Corning\u2019s expert\u2019s declaration, provided such motivation.<\/p>\n

Reasonable Expectation of Success<\/em><\/p>\n

Again, the Board disagreed with DSM\u2019s finding.\u00a0 More particularly, the Board stated that \u201c[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.\u201d\u00a0 Order at 13.\u00a0 Though the Board left the door open, with this statement, for DSM to provide expert evidence to refute Corning\u2019s position, at this stage of the proceeding, the Board was not convinced that the obviousness argument must fail.<\/p>\n

Having accepted Corning\u2019s testing evidence, that proved the inherent properties of the prior art compositions, the Board\u2019s subsequent obviousness analysis was relatively straightforward, resulting in another (preliminary) win for Corning.<\/p>\n","protected":false},"excerpt":{"rendered":"

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.\u00a0 All 19 claims of the \u2019255 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":12,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"jetpack_post_was_ever_published":false,"_jetpack_newsletter_access":"","_jetpack_dont_email_post_to_subs":false,"_jetpack_newsletter_tier_id":0,"_jetpack_memberships_contains_paywalled_content":false,"_jetpack_memberships_contains_paid_content":false,"footnotes":"","jetpack_publicize_message":"","jetpack_publicize_feature_enabled":true,"jetpack_social_post_already_shared":false,"jetpack_social_options":{"image_generator_settings":{"template":"highway","default_image_id":0,"font":"","enabled":false},"version":2}},"categories":[4],"tags":[18,19,16,20,21],"class_list":["post-498","post","type-post","status-publish","format-standard","hentry","category-ipr","tag-inherency","tag-institution-of-trial","tag-inter-partes-review","tag-obviousness","tag-ptab"],"jetpack_publicize_connections":[],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"jetpack_shortlink":"https:\/\/wp.me\/p4ZIpB-82","_links":{"self":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/498","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/12"}],"replies":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=498"}],"version-history":[{"count":1,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/498\/revisions"}],"predecessor-version":[{"id":499,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/498\/revisions\/499"}],"wp:attachment":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=498"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=498"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=498"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}