PTAB

IPR2013-00047

Corning Inc v. DSM IP Assets BV

Key Events

Petition

petition Intelligence

Title: RADIATION CURABLE RESIN COMPOSITION
Brief Description: The ’306 patent relates to a coated optical fiber comprising a radiation-curable coating. The invention is defined not by the coating’s chemical composition, but by specific functional properties the composition exhibits when subjected to a defined test protocol, such as the percentage of reacted acrylate unsaturation (%RAU) and color change (ΔE) after curing.

Prior Art Relied Upon: Edwards (Patent 5,416,880).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Edwards, which was not considered during the original prosecution, discloses all limitations of claims 1-14. Edwards describes radiation-curable coating compositions for optical fibers, including systems with both a single protective coating and a dual-layer system corresponding to the claimed inner and outer primary coatings. Petitioner contended that while Edwards does not explicitly report the %RAU and ΔE values recited in the claims, specific compositions disclosed in Edwards (Formulation 2, Formulation 10, and Formulation 11) inherently possess these properties. Based on its own testing, Petitioner asserted that these Edwards compositions meet the claimed thresholds for %RAU and color stability (ΔE) when cured and aged according to the test protocols defined in the ’306 patent. For example, Petitioner’s testing showed Formulation 2 (an inner primary coating) achieved a %RAU of 77%, exceeding the claimed value of at least 54%.

Prior Art Relied Upon: Coady (Patent 5,219,896).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Coady, also not before the original examiner, anticipates claims 1-11. Coady discloses photocurable liquid compositions for primary coatings on optical glass fibers. The reference teaches both single and superposed dual-coating systems, satisfying the structural elements of the claims. The central argument again rested on inherency demonstrated through testing. Petitioner tested a primary coating composition from Coady’s Example II (“Coating Z”) and found that it satisfied the claimed functional limitations. Specifically, testing showed Coating Z achieved a %RAU of 83% after exposure to a dose of about 4.4 mJ/cm², which surpasses the claimed requirements (e.g., at least 54% in claim 1 and 56% in claim 2). Further, Coady’s disclosure of using conventional “photoinitiators” in the plural, including free-radical types like benzophenone, was argued to meet the limitations of claims 8 and 9.

Prior Art Relied Upon: Szum (Patent 5,664,041).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Szum, another reference not previously considered, anticipates claims 1-9 and 12-14. Szum describes improved curable coating compositions for optical fibers, explicitly detailing an inner primary coating (Example 5B) and an outer primary coating (Example 4). Petitioner performed testing on these specific compositions and alleged the results demonstrate they meet the claimed %RAU and ΔE values. For instance, Example 5B (inner coating) showed a %RAU of 73%, and Example 4 (outer coating) showed a %RAU of 78%, both exceeding the claimed thresholds. Petitioner also argued that Szum’s Example 4 composition exhibited a color change ΔE of 2 after aging, well below the claimed limits of less than 20 (claim 12) or 10 (claim 14). Szum also explicitly discloses using at least two free-radical photoinitiators in its examples, directly teaching the limitations of claims 8 and 9.

Property Limitations as Test Protocols: Petitioner argued that the claim limitations reciting %RAU and ΔE values do not define properties of the final coated optical fiber product itself. Instead, they should be construed as defining requirements that the precursor radiation-curable composition must meet if it were subjected to the specific test protocols described in the claims (e.g., "when cured as a capillary film with a 100 W medium pressure mercury lamp..."). This construction was critical to the anticipation arguments, as it framed the issue as whether the prior art compositions inherently possessed these latent properties, not whether the prior art authors had actually performed the tests and reported the results.
Alternative Claim Limitations: Petitioner highlighted that several independent and dependent claims (e.g., claims 1, 2, 5-7) recite alternative features. For example, claim 1 requires the specific %RAU property in either a single coating, an inner primary coating, or an outer primary coating. Petitioner asserted that under this structure, a prior art reference need only disclose one of the recited alternatives to anticipate the entire claim.

Inherency via Analytical Testing: The petition’s central technical contention was that the claimed functional properties (%RAU and ΔE) were inherent characteristics of coating compositions disclosed in Edwards, Coady, and Szum. Petitioner argued that the patentee obtained the ’306 patent by claiming obscure properties that could only be verified through specific testing, which the original examiner lacked the resources to perform. By conducting this testing and submitting the results via expert declarations, Petitioner sought to prove that the prior art compositions, when made and tested according to the patent’s own instructions, met every limitation of the challenged claims.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-14 of the ’306 patent as unpatentable under 35 U.S.C. §102.