Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 42
`Entered: September 12, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`DYNAMIC DRINKWARE LLC,
`Petitioner,
`
`v.
`
`NATIONAL GRAPHICS, INC.,
`Patent Owner.
`
`Case IPR2013-00131
`Patent 6,635,196
`
`
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Tel: 571-272-7822
`
`Paper 42
`Entered: September 12, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`DYNAMIC DRINKWARE LLC,
`Petitioner,
`
`v.
`
`NATIONAL GRAPHICS, INC.,
`Patent Owner.
`
`Case IPR2013-00131
`Patent 6,635,196
`
`
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2013-00131
`Patent 6,635,196
`
`I. INTRODUCTION
`
`
`
`Dynamic Drinkware (“Petitioner”) filed a corrected Petition
`
`requesting inter partes review of claims 1, 8, 12, and 15 of U.S. Patent No.
`
`6,635,196 to Goggins (Ex. 1001, “the ʼ196 patent”). Paper 10 (“Pet.”).
`
`National Graphics, Inc. (“Patent Owner”) filed a Preliminary Response.
`
`Paper 15. Based on these submissions, we instituted trial, but only as to
`
`claims 1 and 12 of the ʼ196 patent. Paper 16 (“Institution Decision”).
`
`
`
`After institution, Patent Owner filed a Response (Paper 22; “PO
`
`Resp.”) and Petitioner filed a corrected Reply (Paper 34; “Pet. Reply”). In
`
`addition Patent Owner filed a Motion to Amend (Paper 23) and Petitioner
`
`filed a corrected Opposition to that motion (Paper 33). Oral Hearing was
`
`held on July 24, 2014, and the Hearing Transcript (“Tr.”) has been entered in
`
`the record. Paper 41.
`
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a). We conclude that
`
`Petitioner has failed to prove by a preponderance of the evidence that claims
`
`1 and 12 of the ʼ196 patent are unpatentable.
`
`A. Related Proceeding
`
`
`
`Petitioner has identified, as a related proceeding, a district court case
`
`in which Petitioner is a defendant involving the ʼ196 patent and other
`
`patents, captioned National Graphics, Inc. v. Brax Ltd., Case Number 12-C-
`
`1119 (E.D. Wis.). Pet. 2.
`
`
`
`2
`
`
`
`IPR2013-00131
`Patent 6,635,196
`
`B. The ʼ196 Patent
`
`
`
`The ʼ196 patent issued October 21, 2003, from an application filed
`
`November 22, 2000. The patent identifies, and claims benefit of, a
`
`provisional application filed on June 12, 2000. Ex. 1001, col 1, ll. 4-5.
`
`
`
`The ʼ196 patent is directed to methods for making molded plastic
`
`articles bearing a “lenticular” image. Id. at col. 1, ll. 8-14. As described in
`
`the patent, a lenticular image is a segmented image comprising one or more
`
`component images. Id. at col. 1, ll. 49-51. The segments are interlaced in
`
`any conventional manner and mapped (i.e., aligned) to a lenticular lens. Id.
`
`at col. 1, ll. 51-53. The interlaced images can be viewed through the lens to
`
`create visual effects such as motion or depth. Id. at col. 3, ll. 43-56.
`
`
`
`As discussed in the patent specification the aesthetic requirements for
`
`molded plastic parts depend on their end use and the specification gives a
`
`number of examples where aesthetics would be important:
`
`For those products that are used in applications in which their
`use is visible to an end user, or in which their appearance is
`important to their sale, e.g., promotional items, automobile and
`appliance facie, cups, bottles, bottle caps/enclosures,
`snowboards or wake boards, skis (e.g., water, snow), cameras,
`computer cases (e.g., laptop cases), cell phone (or other
`electronic) cases, cosmetic cases, collectibles, signs, magnets,
`coasters, display posters, menu boards, postcards, business
`cards, and packaging on boxes, the aesthetics of the product are
`important.
`
`Ex. 1001, col. 1, ll. 35-45 (emphasis added).
`
`
`
`As described in the Background section of the ʼ196 patent, lenticular
`
`images are one way of improving the look of a product:
`
`One way to improve the look of a product is to incorporate into
`it bright color schemes and fancy or even glitzy decor so as to
`
`3
`
`
`
`IPR2013-00131
`Patent 6,635,196
`
`attract and keep a viewer’s attention. The application of a
`lenticular image is one form of such a decor.
`
`Id. at col 1, ll. 46-49.
`
`C. Illustrative Claim
`
`
`
`Both claims 1 and 12 are independent process claims. Claim 1,
`
`reproduced below, is illustrative:
`
`1. A method for making a molded article having a
`
`lenticular image attached thereto, the method comprising the
`steps of:
`
`providing a mold having a mold cavity in which to form the
`molded article having a lenticular image, the lenticular image
`comprising a lenticular lens and interlaced image, the mold
`cavity having a size that is appropriate to the molded article
`with the lenticular image;
`
`
`inserting the lenticular image into the mold cavity;
`introducing a molten plastic into the mold cavity having the
`lenticular image therein to form the molded article with the
`lenticular image attached thereto, the molten plastic introduced
`at at least one of a temperature, a pressure, and a turbulence that
`minimizes any distortion to the lenticular lens and any
`degradation to the interlaced image; and
`
`removing the molded article having the attached
`lenticular image from the mold cavity.
`
`
`(Emphasis added).
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`
`
`The claim constructions provided in our Institution Decision were not
`
`challenged by the parties, including our construction of the “minimizing”
`
`limitation, italicized in claim 1 above, which limitation appears also in claim
`
`12. For the purposes of this Final Decision, therefore, we adopt for that
`
`limitation the following construction from our Institution Decision:
`
`4
`
`
`
`IPR2013-00131
`Patent 6,635,196
`
`We interpret “minimizes any distortion to the lenticular lens
`and any degradation to the interlaced image” to require that the
`claimed methods sufficiently prevent distortion to the lenticular
`lens or degradation of the interlaced image so that the intended
`visual effect of the lenticular image still functions properly
`within the finished molded article.
`
`Institution Decision 8 (emphasis added). The other claim constructions from
`
`our Institution Decision are not material to this decision and therefore will
`
`not be discussed further.
`
`B. Antedating Raymond
`
`
`
`The Petition challenged claims 1, 8, 12, and 14 of the ʼ196 patent on
`
`several grounds. Trial was instituted, however, for two claims only (claims
`
`1 and 12), based upon one ground: anticipation by U.S. Patent No. 7,153,555
`
`(Ex. 1003; “Raymond”).
`
`
`
`Patent Owner’s Response does not attempt to distinguish claims 1 and
`
`12 from the teachings of Raymond. Instead, Patent Owner contends that
`
`Raymond does not qualify as prior art because the subject matter of claims 1
`
`and 12 was reduced to practice before Raymond’s effective date as prior art
`
`under 35 U.S.C. § 102(e). PO Resp. 7.
`
`i. Effective Date of Raymond
`
`
`
`The parties dispute the effective date of Raymond as prior art. The
`
`application for Raymond was filed on May 5, 2000, claiming benefit of a
`
`provisional application filed on February 15, 2000. Ex. 1003, col. 1, ll. 6-8.
`
`Patent Owner argues that Petitioner has failed to meet the burden of
`
`establishing Raymond is entitled to benefit of the earlier provisional filing
`
`date; therefore, Raymond’s effective date under 35 U.S.C. § 102(e) is its
`
`May 5, 2000, filing date. PO Resp. 3-7. In response, Petitioner attempts to
`
`5
`
`
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`IPR2013-00131
`Patent 6,635,196
`
`rebut this by presenting a chart comparing claim 1 of the ʼ196 patent to the
`
`Raymond provisional. Reply 4-5. No similar chart is provided for claim 12.
`
`
`
`We agree with Patent Owner that Petitioner has failed to prove by a
`
`preponderance of the evidence that Raymond is entitled to the benefit of the
`
`earlier provisional filing date. To be entitled to rely on the February 15,
`
`2000 provisional filing date, Petitioner had to establish that it relies on
`
`subject matter from Raymond that is present in and supported by its
`
`provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010)
`
`(“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if
`
`another’s patent discloses the same invention, which was carried forward
`
`from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88
`
`USPQ2d 1606 (BPAI 2008) (precedential).
`
`
`
`In Yamaguchi, the appellants challenged the Examiner’s rejections
`
`based on a patent to Narayanan under 35 U.S.C. § 102(e). 88 USPQ2d at
`
`1608. The Board noted that the filing date of Narayanan’s underlying
`
`provisional application would antedate the earliest effective filing date of the
`
`rejected application. Id. at 1613. But appellants took the position that the
`
`Examiner had failed to show that the provisional application properly
`
`supports the subject matter of the patent relied on in making the rejection.
`
`Id. The Board disagreed, and provided a chart correlating the Examiner’s
`
`fact findings on anticipation with both the Narayanan patent and Narayanan
`
`provisional application. Id. at 1614. The chart demonstrated that the
`
`Examiner’s findings were supported by subject matter common to the patent
`
`and the provisional application. Id.
`
`
`
`Petitioner has not provided the analysis of common subject matter
`
`required by Yamaguchi and Giacomini. Instead, Petitioner’s chart compares
`
`6
`
`
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`IPR2013-00131
`Patent 6,635,196
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`only one ʼ196 patent claim to the Raymond provisional. It does not compare
`
`the portions of Raymond’s patent relied on by Petitioner to the Raymond
`
`provisional, to demonstrate that those portions were carried over from the
`
`provisional. We therefore conclude that Petitioner has failed to carry its
`
`burden of proof that Raymond’s effective date is earlier than May 5, 2000.
`
`ii. Reduction to Practice
`
`
`
`As a result of our determination that Raymond’s effective prior art
`
`date is May 5, 2000, if Patent Owner can prove a reduction to practice of
`
`claims 1 and 12 prior to that date, Patent Owner can antedate Raymond and
`
`eliminate it as a reference. See, e.g., Mahurkar v. C.R. Bard, Inc., 79 F.3d
`
`1572, 1577 (Fed. Cir. 1996); In re Facius, 408 F.2d 1396, 1404 (CCPA
`
`1969).
`
`
`
`Petitioner contends that Patent Owner has failed to meet its burden to
`
`antedate Raymond. Pet. Reply. 6. We disagree. Having reviewed this
`
`record, we conclude that Patent Owner has carried successfully its burden of
`
`establishing by a preponderance of the evidence an actual reduction to
`
`practice of claims 1 and 12 prior to Raymond’s effective date.
`
`iii. Summary of Testimony
`
`
`
`To establish prior actual reduction to practice, Patent Owner relies on
`
`declaration testimony from two fact witnesses: Don Krause (Ex. 2003;
`
`“Krause Decl.”) and Matt Walker (Ex. 2004; “Walker Decl.”). In
`
`opposition, Petitioner relies on declaration testimony from named inventor
`
`Timothy Goggins (Ex. 1028; “Goggins Decl.”) and expert David Roberts
`
`(Ex. 1029; “Roberts Decl.”). The testimony of these witnesses is
`
`summarized below.
`
`
`
`7
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`
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`IPR2013-00131
`Patent 6,635,196
`
`Don Krause
`
`
`
`Krause, the founder and president of Patent Owner (“NGI”), testifies
`
`that in November 1999, NGI was interested in implementing technology for
`
`making injection molded lenticular articles. Krause Decl. ¶¶ 1-2. An NGI
`
`sales representative, Walker, contacted Rexam, an injection molding
`
`company, about producing an injection-molded lenticular cosmetic case. Id.
`
`¶¶ 3-4. Krause refers to logs of Walker’s phone calls with Rexam. Id. ¶ 5.
`
`
`
`Krause also identifies the sample cosmetic case (Ex. 2002) produced
`
`at Rexam “during the first successful injection molding run.” Id. ¶ 6. The
`
`cosmetic case is pictured below.
`
`Exhibit 2002 (Cosmetic Case)
`
`
`
`Relying on Walker’s phone logs, Krause testifies that the “first test run
`
`occurred sometime between March 15, 2000 and March 28, 2000.” Id. ¶ 6.
`
`
`
`Krause also testifies about various meetings that took place at NGI
`
`and identifies notes he took at those meetings. Id. ¶¶ 8-10. He identifies a
`
`page from the notebook of Tim Goggins, the named inventor of the ʼ196
`
`patent, who worked for NGI at the time. Id. ¶ 11. See Ex. 2008. The page,
`
`dated June 5, 2000, identifies Rexam and states “Initial test on a custom part
`
`were succesfull [sic] . . . .” Id.
`
`
`
`8
`
`
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`IPR2013-00131
`Patent 6,635,196
`
`Matt Walker
`
`
`
`Walker, a former NGI employee, had been a sales representative with
`
`prior experience in the cosmetics industry. Walker Decl. ¶¶ 1-2. He testifies
`
`that he suggested using a cosmetic case to implement injection molded
`
`lenticular lens technology at NGI. Id. ¶ 3. Accordingly, he “reached out” to
`
`various injection molders, and Rexam, an injection molding company in
`
`Wisconsin, expressed interest. Id. ¶¶ 4-5.
`
`
`
`Walker identifies his phone log (Ex. 2005) and testifies to the dates of
`
`various communications he had with Rexam concerning the project. Id.
`
`¶¶ 6-9. He also identifies the sample cosmetic case (Ex. 2002, pictured
`
`above), which he testifies was molded by Rexam between March 15 and
`
`March 28, 2000. Walker Decl. ¶ 10. He testifies that the lenticular portion
`
`is the cover of the case. Id.
`
`
`
`
`
`Referring to the sample, Walker testifies that this was the first
`
`successful test run of NGI’s injection molding process for forming a
`
`lenticular article. Id. ¶ 11. He testifies that the test run was successful. Id.
`
`Based upon his inspection of the mold prior to the test run, he testifies as to
`
`his understanding of the process used to make the cosmetic case. Id.
`
`
`
`Timothy Goggins
`
`
`
`Goggins worked for NGI from 1984 to March 17, 2004. Goggins
`
`Decl. ¶ 2. Currently he is employed by Pixalen Studios, LLC, as Studio
`
`Director. Id. ¶¶ 1-2. He testifies that Pixalen is “a company that is related
`
`to” Petitioner. Id. ¶ 4. At Pixalen, Goggins designs lenticular artwork for
`
`molded lenticular products and has been active in the lenticular industry
`
`since at least 1994. Id. ¶ 4-5.
`
`9
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`IPR2013-00131
`Patent 6,635,196
`
`
`
`While employed at NGI, Goggins was assigned by Krause to develop
`
`an in-mold lenticular product. Id. ¶ 7. At the time, he had worked on other
`
`lenticular projects, but had no experience with plastic molding. Id. ¶¶ 7-8.
`
`He testifies he has reviewed the Krause and Walker testimony, and was
`
`present at Rexam when most of the cosmetic case mold testing was done.
`
`Id. ¶¶ 9-11.
`
`
`
`Referring to Rexam, Goggins testifies while the testing did result in
`
`molded lenticular products, “the products that were molded exhibited
`
`degradation to the lenticular image and distortion to the lenticular lens.” Id.
`
`¶ 11. He testifies that “[n]one of the testing we performed at Rexam resulted
`
`in an acceptable lenticular product.” Id. ¶ 12. “None of the products
`
`produced at Rexam represented a molded lenticular item in which distortion
`
`to the interlaced image had been minimized or in which degradation of the
`
`lenticular lens had been minimized in a way that was consistent with the
`
`claims of the ʼ196 patent.” Id. ¶ 13.
`
`
`
`Goggins testifies that his June 5, 2000, notebook entry “confirms that
`
`we still had a long way to go to prepare a molded lenticular item in which
`
`distortion to the interlaced image has been minimized or in which
`
`degradation of the lenticular lens has been minimized.” Id. ¶ 14. In support,
`
`he discusses a number of specific entries from the notebook. Id.
`
`
`
`Goggins further testifies that when the Rexam tests failed to make a
`
`good lenticular part, NGI started experimenting with coatings to protect the
`
`ink on the printed surface. Id. ¶¶ 15-16. NGI partnered with Grimm
`
`Industries, another injection molding company. He visited Grimm and was
`
`present when they tested injection molded lenticular parts. Id. ¶¶ 17-18. He
`
`states the work with Grimm resulted in a successful molded lenticular cup
`
`10
`
`
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`IPR2013-00131
`Patent 6,635,196
`
`that became Figure 10 of the ʼ196 patent. Id. ¶¶ 19-20. That cup is pictured
`
`below:
`
`(Photograph of Cup)
`
`
`
`Id. ¶ 21. Goggins does not believe the Grimm cup was molded when his
`
`provisional application was filed on June 12, 2005. The cup quality was not
`
`“perfect,” showing slight misalignment of the image and some damage to
`
`the protective layer. Id. ¶ 23. A sample of the Grimm cup was provided to
`
`Rexam. Id. ¶ 24. He kept a later sample of the Grimm cup.
`
`
`
`David Roberts
`
`
`
`
`
`Roberts is an expert in molded lenticular products. Roberts Decl. ¶ 1.
`
`He inspected the sample cosmetic case (Ex. 2002) both visually and using a
`
`portable 300X microscope. Id. ¶ 11. From a visual inspection he describes
`
`the lenticular image as “fuzzy and indistinct.” Id. ¶ 12. He describes other
`
`aspects of the image as having “problems.” Id. ¶¶ 11-14. His further
`
`analysis is based on microscopic images of the sample. Id. ¶¶ 15-26.
`
`
`
`He concludes: “In my professional opinion, the cosmetic case does
`
`not represent a molded lenticular item in which distortion to the interlaced
`
`image has been minimized or in which degradation of the lenticular lens has
`
`11
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`IPR2013-00131
`Patent 6,635,196
`
`been minimized.” Id. ¶ 27. He further concludes: “Nor is this a situation in
`
`which distortion of the lenticular image and degradation of the lenticular
`
`lens has been functionally eliminated.” Id. He further testifies:
`
`In my professional opinion, the intended visual effect of
`the lenticular image in the cosmetic case is substantially
`destroyed by the distortion of the interlaced image, the loss of
`the lenticular image in the gate area where molten resin has
`pushed the image into an unrecognizable blob, and the
`degradation of the lenticular lens.
`
`Id. ¶ 28. He concludes that the sample “does not constitute a successful
`
`reduction to practice of the invention claimed in the ʼ196 patent.” Id. ¶ 29.
`
`iv. Principles of Law
`
`
`
`To establish an actual reduction to practice, the inventor must prove
`
`(1) that he constructed an embodiment or performed a process that meets all
`
`the claimed limitations of the invention, and (2) determined that the
`
`invention worked for its intended purpose. Cooper v. Goldfarb, 154 F.3d
`
`1321, 1327 (Fed. Cir. 1998). “The essential inquiry here is whether the
`
`advance in the art represented by the invention . . . was embodied in a
`
`workable device that demonstrated that it could do what it was claimed to be
`
`capable of doing.” Scott v. Finney, 34 F.3d 1058, 1063 (Fed. Cir. 1994)
`
`(quoting Farrand Optical Co. v. United States, 325 F.2d 328, 333 (2d Cir.
`
`1963)). “In tests showing the invention’s solution of a problem, the courts
`
`have not required commercial perfection nor absolute replication of the
`
`circumstances of the invention’s ultimate use.” Id. “Less complicated
`
`inventions and problems do not require stringent testing.” Mahurkar v. C.R.
`
`Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996) (citing Scott, 34 F.3d at
`
`1062).
`
`12
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`IPR2013-00131
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`
`
`
`The testing that is required depends upon the intended use of the
`
`invention. As the Federal Circuit explains,
`
`We reiterate that testing is relevant in that it is evidence of
`whether the inventor would have known that an invention is
`suitable for its intended purpose. As one of this court’s
`predecessors, the Court of Claims, explained, “the inquiry is not
`what kind of test was conducted, but whether the test conducted
`showed that the invention would work as intended in its
`contemplated use.”
`
`Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256 (Fed. Cir. 2002)
`
`(quoting E. Rotorcraft Corp. v. United States, 384 F.2d 429, 431 (Ct. Cl.
`
`1967)). As an example, in Sellner v. Solloway, 267 F.2d 321 (CCPA 2002),
`
`actual reduction to practice of the invention — an exercise chair — was
`
`established by witnesses who tried the chair out at a birthday party. Id. at
`
`323.
`
`
`
`There is no requirement that the invention, when tested, be in a
`
`commercially satisfactory stage of development. Steinberg v. Seitz, 517
`
`F.2d 1359, 1363 (Fed. Cir. 1975) (citing In re Dardick, 496 F.2d 1234, 1238
`
`(CCPA 1974)); DSL Dynamic Sciences Ltd. v. Union Switch & Signal, 928
`
`F.2d 1122, 1126 (Fed. Cir. 1991). The fact that further refinements of the
`
`invention were made is not relevant. Farrand Optical, 325 F.2d at 332;
`
`Loral Fairchild Corp. v. Matushita Elec. Indus. Co., Inc., 266 F.3d 1358,
`
`1362-63 (Fed. Cir. 2001) (“Once the invention has been shown to work for
`
`its intended purpose, reduction to practice is complete. Further efforts to
`
`commercialize the invention are simply not relevant to determining whether
`
`a reference qualifies as prior art against the patented invention.”) (internal
`
`citation omitted).
`
`
`
`
`
`13
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`IPR2013-00131
`Patent 6,635,196
`
`v. Analysis
`
`
`
`Patent Owner contends that the methods of claims 1 and 12 were
`
`reduced to practice by March 28, 2000, when the sample cosmetic case (Ex.
`
`2002) was produced at Rexam using the claimed process. PO Resp. 7-11.
`
`Alternatively, should the effective filing date of Raymond be determined to
`
`be February 15, 2000, Patent Owner contends that there is a sufficient
`
`showing of diligence to antedate the Raymond reference. Id. at 17. Because
`
`we have determined that Raymond effectively was filed on May 5, 2000 (see
`
`supra), we do not address this alternative argument or Petitioner’s response.
`
`Pet. Reply 8-9.
`
`
`
`Petitioner first argues that Raymond, not Goggins, is the “first
`
`inventor,” Raymond having conceived of his invention “well prior to
`
`December 2, 1999” and diligently reduced it to practice. Pet. Reply 1. We
`
`are not persuaded by this argument. The Raymond patent is a reference
`
`under 35 U.S.C. § 102(e); its effective date here cannot be moved back by
`
`Raymond’s pre-filing activities. See Sun Studs, Inc. v. ATA Equip. Leasing,
`
`Inc., 872 F.2d 978, 983 (Fed. Cir. 1989)(“When patents are not in
`
`interference, the effective date of a reference United States Patent as prior art
`
`is its filing date in the United States, as stated in § 102(e), not the date of
`
`conception or actual reduction to practice of the invention claimed or the
`
`subject matter disclosed in the reference patent.”).
`
`
`
`Petitioner further contends that Patent Owner’s proffered “non-
`
`inventor” testimony (i.e., Krause, Walker) is unreliable. Pet. Repl. 6-7.1
`
`Petitioner points instead to Goggins’s testimony, e.g., that a reduction to
`
`
`1 It is well-established that inventor testimony is not necessary to prove
`reduction to practice. Borror v. Herz, 666 F.2d 569, 575 (CCPA 1981).
`
`14
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`IPR2013-00131
`Patent 6,635,196
`
`practice did not take place until after May 2000, when Goggins began
`
`working with Grimm. Id. at 7. Petitioner also contends that the other
`
`evidence of reduction to practice presented by Patent Owner is inadequate.
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`Pet. Reply 9. Petitioner focuses this argument mainly on the sample
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`cosmetic case of Exhibit 2002, asserting that it was not produced by a
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`process that meets all the claim limitations, and that it does not work for its
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`intended purpose. Pet. Reply 9-10.
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`
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`Petitioner identifies various deficiencies in the sample, including “the
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`lenticular image is fuzzy and indistinct;” and “[p]roblems with the interlaced
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`image are visible with the naked eye.” Id. at 10. Referring to the Roberts
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`testimony, Petitioner also asserts “[u]nder microscopic evaluation, it is clear
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`that there are problems with both distortion to the lenticular lens and
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`degradation of the lenticular image.” Id. Petitioner, however, does not
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`challenge the descriptions provided by Krause and Walker of the work done
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`at Rexam producing the sample or their evidence of the process by which the
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`sample was made, facts that are corroborated largely by the Goggins
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`testimony.
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`
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`At the outset of our analysis, we note that the conflicting testimony in
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`this case presents an unusual situation. Normally, when priority of invention
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`is the issue, testimony of the patentee is proffered to establish the earliest
`
`invention date. Here, just the opposite is true: Goggins’s testimony is
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`proffered to establish a reduction to practice date that is later than the date
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`asserted by the Patent Owner.
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`
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`This is explained, in part, by the admission in Goggins’s declaration
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`that he currently is employed by a company that is “related” to the
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`Petitioner. Goggins Decl. ¶ 4. At oral argument, Petitioner’s counsel, when
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`15
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`IPR2013-00131
`Patent 6,635,196
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`asked to elaborate, advised the Board that Goggins’s current employer,
`
`Pixalen Studios (which he created and is now its Studio Director) and
`
`Petitioner are under common ownership. Tr. 10, ll. 1-15. Moreover, it is
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`clear from Goggins’s testimony (and confirmed at the hearing) that Pixalen’s
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`work falls within the field of molded lenticular products to which the ʼ196
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`patent is directed. Tr. 9, ll. 13-24. As Petitioner’s counsel stated, “He
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`[Goggins] does not have a direct financial interest in the outcome of these
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`proceedings, but his employer does.” Tr. 12, ll. 17-19.
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`
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`As a consequence, Goggins’s current interests are aligned against his
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`patent, and therefore, we must give close scrutiny to his conclusions
`
`concerning perceived defects in the sample cosmetic case or whether the
`
`tests at Rexam produced a sample that met the requirements of the ʼ196
`
`patent claims. The Federal Circuit has warned us that the oral testimony of
`
`interested witnesses is unreliable. “[T]here is a very heavy burden to be met
`
`by one challenging validity when the only evidence is the oral testimony of
`
`interested persons and their friends, particularly as to long-past events.”
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`Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
`
`1998).
`
`
`
`More telling evidence than his testimony is Goggins’s June 5, 2000,
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`notebook page identifying Rexam and stating that the initial test on a custom
`
`part was “succesfull [sic].” Ex. 2008.2 At the time of the notebook entry,
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`Goggins was employed by Patent Owner and had no motivation to be
`
`untruthful.
`
`
`
`Nor do we credit Goggins’s testimony explaining the rest of the
`
`notebook entry. He testifies that the entry “confirms that we still had a long
`
`
`2 See Ex. 1016 for the entire notebook entry.
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`16
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`IPR2013-00131
`Patent 6,635,196
`
`way to go to prepare a molded lenticular item in which distortion to an
`
`interlaced image has been minimized or in which degradation of the
`
`lenticular image has been minimized.” Goggins Decl. ¶ 14. He then goes
`
`on to describe his work on the project at Grimm leading to the cup pictured
`
`in the patent.
`
`
`
`This testimony from Goggins does not persuade us that the claimed
`
`process was not reduced to practice in March 2000. Evidence of further
`
`work perfecting the invention for commercialization does not prove that no
`
`reduction to practice occurred. Loral Fairchild Corp., 266 F.3d at 1362-63.
`
`Thus, we discount the testimony about his further experiments with Grimm.
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`Goggins Decl. ¶¶ 17-25.
`
`
`
`Nor are we convinced by the Roberts testimony concerning alleged
`
`defects in the sample cosmetic case produced at Rexam prior to March 28,
`
`2000. The ʼ196 patent specification makes clear the intended use of the
`
`invention is “products that are used in applications in which their use is
`
`visible to an end user, or in which their appearance is important to their
`
`sale.” Ex. 1001, col. 1, ll. 35-45. The patent specifically provides examples
`
`of these products, which include cups, bottles, cell phone cases, cosmetic
`
`cases, signs, magnets, coasters, and others where “the aesthetics of the
`
`product are important.” Id. at col 1, ll. 39-45.
`
`
`
`Roberts’s microscopic evaluation of the cosmetic case does not reflect
`
`the setting in which an end user such as a consumer normally would evaluate
`
`such products, e.g., in a store or at home. See Slip Track Sys., Inc., 304 F.3d
`
`at 1267; Sellner, 267 F.2d at 323. Roberts testified at his deposition that “[a]
`
`consumer wouldn’t necessarily notice a defect because they’re not trained in
`
`that area.” Ex. 2010 (“Roberts Dep.”) 18:24-19:1.
`
`17
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`IPR2013-00131
`Patent 6,635,196
`
`
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`Our visual inspection of the sample cosmetic case at the hearing did
`
`not confirm that the defects pointed to by Petitioner would be “visible to the
`
`naked eye.” See Pet. Reply 10. For instance, on inspection at the hearing,
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`and confirmed by counsel, the “distortion to the image near the gate” (id.)
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`cited by Petitioner turned out to be a small (“a little wider than a millimeter,”
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`Tr. 71, ll. 6-7) portion along the side of the case. Roberts testified that it was
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`on the hinge side of the lid, which our inspection confirmed. Roberts Dep.
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`38:20-22. Walker testified at his deposition that the image still had
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`“movement,” “depth,” and “changes in color,” which our inspection also
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`confirmed. Ex. 1025 (“Walker Dep.”) 42:1-2.
`
`
`
`Petitioner’s arguments that there was “ongoing development” on the
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`process, or that “testing and experimentation continued well past March
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`2000” are not persuasive. Pet. Reply 11-14. As discussed previously,
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`commercial perfection is not a requirement for reduction to practice. Scott,
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`34 F.3d at 1063. And while we agree with Petitioner that Krause (like
`
`Goggins) is an interested witness, the facts concerning the work done at
`
`Rexam set forth in his declaration and in Walker’s are not challenged and in
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`fact are corroborated by Goggins. Compare Ex. 2003 ¶¶ 5–6, with Ex. 2004
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`¶¶ 9–10 and Ex. 1028 ¶¶ 7, 11, 14, 15. We also consider the facts that
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`Walker is employed by neither party and has prior experience with lenticular
`
`images and advertising in the cosmetics field, where the sample product
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`would be used (Walker Dep. 8:11-16; 11:16-17), when crediting his
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`testimony that the test at Rexam was successful.
`
`
`
`We conclude, therefore, that Patent Owner has shown by a
`
`preponderance of the evidence that by March 28, 2000, a sample product
`
`was produced for Patent Owner demonstrating that the Rexam process was
`
`18
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`IPR2013-00131
`Patent 6,635,196
`
`suitable for its intended purpose. The testimony establishes that the Rexam
`
`process was successful in injection molding a plastic product with a
`
`lenticular image that would be acceptable to the intended end user. Walker
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`Decl. ¶ 11; Krause Decl. ¶ 7.
`
`
`
`The question remains, however, whether all the claim elements were
`
`met. The only element challenged by Petitioner is that addressed in the
`
`Roberts declaration, namely, the “minimizing” limitation: “the molten
`
`plastic be ‘introduced at at least one of a temperature, a pressure, and a
`
`turbulence that minimizes any distortion to the lenticular lens and any
`
`degradation to the interlaced image.’” Pet. Reply 12 (emphasis added). We
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`note that neither the Patent Owner’s Response nor the Petitioner’s Reply
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`focuses on the temperature, pressure, or turbulence recitations or other
`
`aspects of the claims; the dispute between Petitioner and Patent Owner
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`centers on the portion of the claim (italicized above) dealing with
`
`minimizing distortion to the lens and degradation to the image which
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`Petitioner contends is not met in the Rexam process. Id.; Goggins Decl.
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`¶ 13; Roberts Decl. ¶¶ 27-29. That is not surprising, for the ʼ196 patent
`
`claims do not claim specific pressure, temperature, or turbulence levels. The
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`claims say only that “the molten plastic is introduced at at least one of a
`
`temperature, a pressure, and a turbulence.” (Emphasis added). None of the
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`witnesses, including Goggins, disputes that this much of the claim is met by
`
`the Rexam process.
`
`
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`Our construction of the “minimizes” limitation requires “that the
`
`claimed methods sufficiently prevent distortion to the lenticular lens or
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`degradation of the interlaced image so that the intended visual effect of the
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`lenticular image still functions properly within the finished molded article.”
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`19
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`IPR2013-00131
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`Institution Decision 8 (emphases added). Thus, under this construction the
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`focus of the inquiry is on the intended visual effect, which we determine is
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`similar to the “suitable for its intended purpose” standard for determining
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`reduction to practice. We conclude, therefore, that our previous analysis of
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`“suitability for intended purpose” applies also to our consideration of thi
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