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Mixed Result for Corning in PTAB Challenges To DSM Patents on Coated Optical Fibers

Wednesday, May 14, 2014

By Tony Dutra  

May 13— The Patent Trial and Appeal Board published final written decisions on inter partes review challenges by Corning Inc. against patents generally directed to coated optical fibers used in fiber-optic telecommunications and computer networking.

DSM IP Assets B.V. of Heerlen, Netherlands, is the patent owner. The earliest priority date claimed is 1996, at the beginning stages of the World Wide Web. The earliest patent granted was in 2000. The most recently issued (2007) patent still claims priority to 1999.

There is no record of DSM asserting the patents against Corning, but the latter filed 10 IPR petitions challenging eight DSM patents on Nov. 15-16, 2012.

The board instituted trial on all 10 petitions in May 2013 and issued its final decisions on either May 1 or May 9 as follows:

  •  IPR2013-00043 and IPR2013-00044 (U.S. Patent Nos. 7,171,103 and 6,961,508, “Coated optical fibers”): All 18 claims of the '103 patent and all 22 claims of the '508 patent were challenged and all survived the challenge (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00043, 5/1/14). The '103 patent is a continuation of the application leading to the '508 patent, both claiming priority to 2002, the latest priority date of any of the patents.
  •  IPR2013-00045 (6,339,666, “Radiation-curable optical glass fiber coating compositions, coated optical glass fibers, and optical glass fiber assemblies”): All 20 claims were challenged and all survived the challenge (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00045, 5/9/14).
  •  IPR2013-00046 (6,110,593, “Radiation-curable optical fiber primary coating system”): All 9 claims were successfully challenged, being determined unpatentable for anticipation or obviousness (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00046, 5/1/14).
  •  IPR2013-00047 (6,438,306, “Radiation curable resin composition”): All 14 claims were challenged and all survived the challenge (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00047, 5/1/14).
  •  IPR2013-00048 and IPR2013-00049 (6,298,189, “Radiation-curable optical glass fiber coating compositions, coated optical glass fibers, and optical glass fiber assemblies”): 8 out of 52 challenged claims were found unpatentable in the first case (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00048, 5/9/14), with the remainder in that case and the 14 additional claims challenged in the second case upheld (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00049, 5/9/14).
  •  IPR2013-00050 (6,323,255, “Radiation-curable composition): All 19 claims were held unpatentable for obviousness (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00050, 5/1/14).
  •  IPR2013-00052 and IPR2013-00053 (7,276,543, “Radiation curable resin composition”): Corning addressed the first 34 of the 57 patent claims in the '00052 challenge and the rest in the '00053 challenge . The board held that Corning had shown that claims 11-23 and 26-31, but not claims 24, 25, and 32-34, of the '543 patent are unpatentable (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00052, 5/1/14). Similarly, in the second case, claims 35, 39, 44, and 53-57, but not claims 36- 38, 40-43, and 45-52, of the '543 patent were held to be unpatentable (Corning Inc. v. DSM IP Assets B.V., P.T.A.B., No. IPR2013-00053, 5/1/14).
  • In most of the cases, DSM filed motions to amend in the alternative should the patent claims be found unpatentable. The motions were denied as moot when the claims were found patentable and denied outright otherwise.

    Five administrative patent judges—Fred E. McKelvey, Grace Karaffa Obermann, Jennifer S. Bisk, Scott E. Kamholz and Zhenyu Yang—conducted the trial in the 10 cases, with each writing at least one of the opinions.

    Michael L. Goldman of LeClairRyan P.C. represented Corning. Sharon A. Israel of Mayer Brown LLP, represented DSM.

    To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

    To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

    Text is available at http://pub.bna.com/ptcj/IPR2013-00043final.pdf, etc., with the last two digits of the URL changed to match the docket number accordingly.

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