PTAB

IPR2013-00048

Corning Inc v. DSM IP Assets BV

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1. Case Identification

2. Patent Overview

  • Title: Radiation-Curable Optical Glass Fiber Coating Compositions, Coated Optical Glass Fibers, and Optical Glass Fiber Assemblies
  • Brief Description: The ’189 patent relates to radiation-curable coating systems for optical glass fibers, comprising distinct inner and outer primary coatings. The claims define the coatings by specific, interrelated physical properties—such as adhesion, glass transition temperature (Tg), modulus of elasticity, and fiber pull-out friction—intended to improve the performance of optical fiber ribbon assemblies, particularly during stripping.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 5, 9, 13, 37, and 45 by Coady

  • Prior Art Relied Upon: Coady (Patent 5,219,896).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Coady, which discloses photocurable primary coating compositions for optical fibers, anticipates the challenged claims. Specifically, Petitioner asserted that "Coating Z," a urethane-acrylate oligomer formulation described in Example II of Coady, is a radiation-curable inner primary coating that inherently possesses all the physical properties required by the claims.
    • Key Aspects: The core of the argument rested on new evidence from testing. Petitioner replicated Coady's Coating Z and provided declaration testimony (Kouzmina Decl.) with test data showing the formulation meets the ’189 patent’s claimed values for fiber pull-out friction (<20 g/mm), crack propagation (>0.7 mm), glass transition temperature (<10°C), and wet adhesion (47 g/in). Petitioner contended the PTO previously lacked the resources to conduct such testing, leading to the patent's improper issuance over cited art.

Ground 2: Anticipation or Obviousness of Claims 1-3, 5-7, 9-11, 13-15, 37-39, 45-47, and 49-51 by Shustack

  • Prior Art Relied Upon: Shustack (Patent 5,352,712).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Shustack, which discloses both primary (soft, inner) and secondary (hard, outer) UV-curable coatings, anticipates the claims. Petitioner mapped Shustack’s Example I composition to the claimed inner primary coating and its Examples IX-XI compositions to the claimed outer primary coating. Again, Petitioner provided test data demonstrating that these replicated compositions meet all claimed physical property limitations, including the critical ratio of change-in-length between the inner and outer coatings when heated (<2).
    • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued that if the separate examples in Shustack were not considered a single anticipatory disclosure, a person of ordinary skill in the art (POSITA) would have been motivated to combine them. Shustack explicitly teaches a dual-coating system where an inner coating provides cushioning and an outer coating provides protection, making the combination of its exemplified inner and outer coatings a matter of obvious design choice to achieve the disclosed system.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely involved using the specific coating types taught by Shustack for their intended and described purposes.

Ground 3: Obviousness of Claims 4, 8, 12, 16, 40, 48, and 52 over Shustack in view of Jackson

  • Prior Art Relied Upon: Shustack (Patent 5,352,712) and Jackson (Patent 4,900,126).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims directed to a "ribbon assembly." Petitioner argued that Shustack discloses coated optical fibers meeting all the inner and outer coating property limitations, but does not explicitly teach a ribbon assembly with a matrix material bonding multiple fibers. Jackson remedies this deficiency by disclosing a bonded optical fiber ribbon comprising a plurality of individually coated fibers held together in a matrix bonding material.
    • Motivation to Combine: A POSITA would combine Shustack's superior coated fibers with Jackson's known ribbon structure to improve the performance of the overall assembly. Jackson teaches that standard coated fibers are used in its ribbon, and Shustack touts the specific performance benefits of its coatings. A POSITA would have been motivated to use the improved coatings from Shustack in the well-known ribbon structure of Jackson to achieve a better-performing product, particularly for ease of construction, installation, and maintenance.
    • Expectation of Success: The combination involved the simple substitution of one known component (coated fibers) into a known assembly, with predictable and desirable results.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These grounds relied on the base coating compositions from Coady, Shustack, Edwards (Patent 5,416,880), or Szum (WO 95/15928) and combined them with secondary references to add specific functional components recited in other dependent claims. These combinations included adding a silane-oligomer for improved strength (in view of Chawla, Patent 5,696,179), a soluble wax for water resistance (in view of Hager, Patent 5,182,784), a radiation-curable silicone compound (in view of Tortorello, Patent 5,847,021), a fluorinated monomer for low friction (in view of Skutnik, Patent 4,707,076), or a solid lubricant for improved strippability (in view of Mills, Patent 5,408,564).

4. Key Claim Construction Positions

  • Sufficient Adhesion: Petitioner argued this phrase was not indefinite because the specification provides objective boundaries. Specifically, dependent claims and specification examples define "sufficient adhesion" as meeting numerical thresholds of at least 5 g/in or at least 12 g/in under wet conditions (95% relative humidity).
  • "System for coating an optical glass fiber": Petitioner contended that this preamble language in claims like 2, 6, 10, and 14 is not a structural limitation and should be afforded no patentable weight. The body of the claims fully sets forth the invention (the coating compositions), and the preamble merely states an intended use.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inherent Properties of Prior Art: The central technical contention underpinning multiple grounds was that prior art coating formulations, while not explicitly disclosing the claimed physical properties, inherently possess them. Petitioner argued the PTO examiner during original prosecution was unable to reject claims based on these properties because the PTO lacked the resources to replicate and test the prior art formulations. Petitioner's arguments relied heavily on new test data from its own scientists (in the Kouzmina and Winningham declarations) who prepared the prior art compositions and measured their properties using the methods described in the ’189 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-52 of the ’189 patent as unpatentable under 35 U.S.C. §§ 102 and 103.