Takeaway: When presenting evidence in the form of experimental data, parties should set forth sufficient facts to establish the methodology used in the experiments in the first instance; citing evidence in a request for rehearing will not be persuasive.

In its Decision, the Board denied Petitioner’s Request for Rehearing regarding the Board’s Final Written Decision, finding that Petitioner did not demonstrate that the Board misapprehended or overlooked any matters in rendering the final decision. In its Final Written Decision, the Board found that Petitioner had not established the unpatentability of challenged claims 1-4, 6-12, 14-16, 18-28, 30-32, 34-36, 38-44, 46-48, and 50-52 of the ‘189 patent.  Petitioner sought rehearing and challenged the Board’s findings that Petitioner failed to demonstrate that the prior art discloses two claim limitations: “ratio of the change in length” and the “modulus of elasticity” of the outer primary coating.

Petitioner asserted several arguments with respect to “ratio of the change in length,” which the Board considered in turn. First, Petitioner argued that the Board erred in first determining that Petitioner’s experiments regarding the claim limitation were sufficient when instituting trial but that the same experiments were insufficient to prevail in the final written decision.  The Board found the argument unpersuasive, in particular because the standard for institution differs from Petitioner’s burden to prevail.  The lesser institution standard requires a showing of a reasonable likelihood of prevailing, 35 U.S.C. § 314(a), whereas the burden for prevailing in a final written decision requires proof by a preponderance of the evidence, 35 U.S.C. § 316(e).  In this case, the Board noted that evidence during trial highlighted gaps in Petitioner’s evidence, and particularly, Petitioner’s evidence of experimental methods used in the change-in-length calculation.

Petitioner next argued that the Board should have given consideration to portions of one expert’s testimony (¶¶ 100-104), which provided the foundation for ¶¶ 128 and 132.  The Board was not persuaded.  First, the Board noted that Petitioner had not cited to ¶¶ 100-104 anywhere in its Petition or other briefing, even though ¶¶ 128 and 132 had been cited. Nonetheless, the Board had found in its Final Written Decision that those paragraphs provided no more explanation regarding the experiments than evidence it did consider.

Petitioner also argued that the Board’s criticism that witnesses did not perform or observe experiments first-hand and that one declarant had an “incomplete understanding” of how they were performed was inconsistent with a ruling that testimony need not come from those who actually conducted the testing. The Board disagreed, noting that although the rules do not require a declarant be the person who actually conducted the test, the Board actually discounted the testimony because it failed to explain the methods employed in the experiments.  Thus, the criticisms were in the context of Petitioner’s failure to provide evidence of how the change-in-length calculations were carried out.

Citing to the ‘189 patent’s silence regarding measurement procedures, Petitioner next argued that the Board improperly dismissed its testing procedures for not being sufficiently rigorous. First, the Board stated that it did not determine that the testing procedure was not rigorous, but rather it “determined that [Petitioner] had not cited sufficient evidence of rigor.”  All the evidence was fully considered in the final decision and found inadequate.

Petitioner then argued that the Board overlooked declaration and cross-examination testimony that allegedly established a declarant’s understanding of the testing procedure. The Board responded that it had already set forth what evidence it considered significant on the issue, and that a rehearing request was not an opportunity for Petitioner to re-argue its case.  In addition, the Board pointed out that Petitioner had not identified where in the record it had cited any of the evidence it now relied upon.  The Board “cannot have overlooked or misapprehended evidence that was not brought to [its] attention.”

Petitioner next alleged that the Board improperly discounted testimony of another declarant who set forth the basis for his understanding in the declaration. The Board held that even considering the bases of the testimony, it did not overcome the inadequacy of the evidence.  Petitioner again cited to additional evidence that was not previously cited, which the Board noted need not be considered further.

Next, Petitioner argued that certain testimony regarding talc-based measurements being reliable and accurate was overlooked. The Board disagreed, repeating its position that the evidence fails to provide sufficient information regarding the actual measurement process.  Not only must the witness’s testimony be supported by facts, those facts must be set forth.

Finally, with respect to the change in length limitation, Petitioner argued that the Board overlooked several pieces of information relevant to an issue that was not briefed by the parties yet addressed in the Final Written Decision. However, even though the parties had not briefed the issue, the Board indicated it “will not scour the record in search of relevant evidence.”

Turning to the “modulus of elasticity” limitation, Petitioner argued that the Board overlooked one declarant’s testimony regarding the availability of certain chemicals for experimenting. However, the Board had considered another declarant’s analogous testimony in the Final Written Decision, finding it unpersuasive.  The Board held that its reasoning was equally applicable to both declarants.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00048
Paper 96: Decision on Petitioner’s Request for Rehearing
Dated: July 11, 2014
Patent: 6,298,189 B1
Before: Fred E. McKelvey, Grace Obermann, Jennifer S. Bisk, Scott E. Kamholz, and Zhenyu Yang
Written by: Kamholz