Corning Inc v. DSM IP Assets BV

1. Case Identification

• Case #: IPR2013-00045
• Patent #: 6,339,666
• Filed: November 15, 2012
• Petitioner(s): Corning Incorporated
• Patent Owner(s): DSM IP Assets B.V.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Radiation-Curable Optical Glass Fiber Coating Compositions, Coated Optical Glass Fibers, and Optical Glass Fiber Assemblies
• Brief Description: The ’666 patent discloses radiation-curable compositions for inner and outer primary coatings on optical glass fibers. The claims define the invention by reciting specific physical and performance properties of the cured coatings, such as fiber pull-out friction, crack propagation, glass transition temperature (Tg), and adhesion, rather than by specific chemical composition alone.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Szum - Claims 10-20 are anticipated by or, in the alternative, are obvious over Szum.

• Prior Art Relied Upon: Szum (WO 95/15928).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Szum, which was not considered during prosecution, discloses all elements of claims 10-20. Specifically, Petitioner contended that Example 5B of Szum is an inner primary coating and Example 2 is an outer primary coating that, when tested, inherently possess the specific performance properties required by the claims. Petitioner submitted expert declarations with test data showing Szum's Example 5B meets the claimed limitations for fiber pull-out friction (<40 g/mm at 90°C), crack propagation (>1.0 mm at 90°C), Tg (<−20°C), and adhesion to glass. Similarly, Petitioner's testing showed that the combination of Szum’s Example 5B (inner) and Example 2 (outer) coatings meets the "change in length" ratio limitation of claims 19 and 20.
  • Motivation to Combine (for §103 grounds): In the alternative obviousness argument, Petitioner asserted that to the extent the inner and outer primary coating examples in Szum are viewed as separate disclosures, a person of ordinary skill in the art (POSITA) would have been motivated to combine them. Szum explicitly teaches using inner and outer primary coatings together on optical fibers and provides distinct examples for each, making their combination a predictable and logical step to achieve the known benefits of a dual-coating system.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the coatings because Szum teaches their intended use together and provides working examples of each type of coating composition.

Ground 2: Obviousness over Szum and Coady - Claims 1-9 are obvious over Szum in view of Coady.

• Prior Art Relied Upon: Szum (WO 95/15928) and Coady (Patent 5,219,896).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Szum's Example 5B meets nearly all limitations of independent claim 1, but discloses an ethoxylated nonylphenol acrylate, whereas claim 1 requires a propoxylated nonylphenol acrylate. Coady was introduced because it explicitly teaches that propoxylated and ethoxylated nonylphenol acrylates are interchangeable monomers for use in primary coating compositions. Coady discloses using both types and specifically names Aronix M-117, a propoxylated nonylphenol acrylate. Therefore, Petitioner contended it would have been obvious to substitute the ethoxylated monomer in Szum’s formulation with the propoxylated version taught by Coady.
  • Motivation to Combine: A POSITA would combine the teachings because both Szum and Coady address the same technical problem of formulating primary coatings for optical fibers and teach the use of alkoxylated nonylphenol acrylates. Coady's disclosure of their interchangeability would have motivated a POSITA to substitute one for the other in Szum's otherwise suitable composition to optimize properties or for supply chain reasons, a common practice in the art.
  • Expectation of Success: A POSITA would expect success because the substitution involves swapping two chemically similar monomers for the same known purpose. Petitioner’s expert opined that such a substitution would not be expected to significantly alter the key performance properties (friction, Tg, adhesion) to move them outside the ranges claimed in the ’666 patent.

Ground 3: Obviousness over Szum and Shustack - Claims 1-9 are obvious over Szum in view of Shustack.

• Prior Art Relied Upon: Szum (WO 95/15928) and Shustack (Patent 5,352,712).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a similar argument to Ground 2. Again, Szum's Example 5B was asserted as the base reference disclosing most claimed properties, but using an ethoxylated monomer. Shustack was introduced as the secondary reference teaching the use of propoxylated nonylphenol acrylate in a primary coating composition (Example I). Petitioner argued polypropylene glycol nonylphenylether acrylate, disclosed in Shustack, is the same chemical compound as propoxylated nonylphenol acrylate.
  • Motivation to Combine: The motivation was analogous to the Szum/Coady combination. A POSITA reading Szum and seeking to formulate a primary coating would look to other references in the field, like Shustack, for suitable components. Seeing Shustack's use of a propoxylated monomer for the same purpose would have provided a clear motivation to substitute it into Szum's formulation.
  • Expectation of Success: The expectation of success was high for the same reasons as in the Coady combination: the components are well-known, chemically similar, and used for the same function in the same type of product, with no expectation of unpredictable results.
• Additional Grounds: Petitioner asserted numerous additional grounds, including: anticipation of claims 10-20 by Shustack; obviousness of various claims over Coady alone; and obviousness combinations using Jackson (Patent 4,900,126) to teach ribbon assembly structures in combination with the coating compositions of Szum, Shustack, or Coady.

4. Key Claim Construction Positions

• "Sufficient Adhesion to...Prevent Delamination": Petitioner argued this term was not explicitly defined with a numerical value in the ’666 patent. However, based on the specification and the prosecution history of a parent application, Petitioner contended that a value of at least 5 g/in for "wet adhesion" would meet the limitation. This construction was critical, as it allowed Petitioner to argue that the measured adhesion values of the prior art compositions (e.g., 23 g/in, 44 g/in, or 77 g/in) satisfied this claim element.

5. Key Technical Contentions (Beyond Claim Construction)

• Inherent Properties of Prior Art: A central contention was that the ’666 patent claims were allowed because they were drafted in terms of functional properties that the PTO lacked the resources to test during prosecution. Petitioner argued that it had performed the necessary testing on prior art compositions (from Szum, Shustack, and Coady) and demonstrated that these known compositions inherently possessed the claimed performance characteristics. This testing, presented via expert declaration, formed the evidentiary backbone of all invalidity grounds.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’666 patent as unpatentable under 35 U.S.C. §§ 102 and/or 103.