Tiffany and Company (Petitioner)
`v.
`Lazare Kaplan International, Inc. (Patent Owner)
`IPR No. 2015-00024
`
`Before Michael P. Tierney, Michelle R. Osinski, Jeffrey W. Abraham,
`Administrative Patent Judges
`
`1
`
`TIFFANY 1022
`Tiffany v. Lazare Kaplan International
`IPR2015-00024
`
`
`v.
`Lazare Kaplan International, Inc. (Patent Owner)
`IPR No. 2015-00024
`
`Before Michael P. Tierney, Michelle R. Osinski, Jeffrey W. Abraham,
`Administrative Patent Judges
`
`1
`
`TIFFANY 1022
`Tiffany v. Lazare Kaplan International
`IPR2015-00024
`
`
`
`Agenda
`
`Motion to Exclude
`
`Summary of the Claims at Issue
`
`Claim Construction
`
`Review of Instituted Grounds
`
`Fine Diamonds
`
`ILR Article
`
`Gresser Patent
`
`Secondary Considerations
`
`2
`
`
`
`Petitioner’s Motion to Exclude
`
`3
`
`
`
`Materials to be Excluded
`
`Exhibits 2005 & 2006 (LKI’s Experts’ Declarations)
`
`Exhibits 2011-2020 (Deposition Transcripts of Dr.
`Christensen and accompanying materials)
`
`Exhibits 2007 & 2008 (Mr. Moryto’s Declaration and
`accompanying appendix)
`
`Exhibits 2004, 2010, 2021, 2022, 2024-2033
`Paper No. 26, Petitioner’s Motion to Exclude at 1.
`
`4
`
`
`
`LKI’s Experts’ Declarations do not Comply with 37
`C.F.R. § 42.65
`
`§ 42.65 Expert testimony; tests and data.
`(a) Expert testimony that does not disclose the underlying
`facts or data on which the opinion is based is entitled to
`little or no weight….
`
`Dr. Bokor admitted
`his declaration
`lacked bases for
`his conclusions
`See, e.g., TIF1018, Bokor
`Depo. at 67:19-68:6.
`
`5
`
`
`
`Dr. Christensen’s Materials Should be Excluded
`
`“The testimony of Dr. Christensen years ago in a third
`party litigation to which [Petitioner] was not a party is
`irrelevant, and its use is improper in this proceeding. The
`only proper manner to present the testimony of Dr.
`Christensen to this Board is through a timely filed
`declaration by Dr. Christensen, which would have allowed
`Petitioner to depose Dr. Christensen. . . . LKI’s failure to
`take and present Dr. Christensen’s testimony in the proper
`manner in this matter imposes an unfair prejudice to
`Petitioner. The testimony was taken in a suit to which
`Petitioner was not a party. Petitioner therefore did not
`participate in the depositions and had no opportunity to
`cross examine Dr. Christensen.”
`
`Paper No. 26, Petitioner’s Motion to Exclude at 8.
`
`6
`
`
`
`Mr. Moryto’s Materials are Unqualified for the Business
`Records Exception
`
`“A memorandum, report, record or data
`compilation, in any form, of acts, events,
`conditions, opinions or diagnoses, made at or
`near the time by, or from information
`transmitted by, a person with knowledge, if
`kept in the course of a regularly conducted
`business activity, and if it was the regular practice
`of that business activity to make the
`memorandum, report, record, or data compilation,
`all as shown by testimony of the custodian or
`other qualified witness, unless the source of
`information or the method or circumstances of
`preparation indicate lack of trustworthiness [is not
`excluded by the hearsay rule, even though the
`declarant is available as a witness].”
`
`Air Land Forwarders, Inc. V. U.S., 172 F.3d 1338, 1342 (Fed.
`Cir. 1999) (quoting FED. R. EVID. 803(6))
`
`7
`
`
`
`The Claims
`
`The Claims
`
`8
`
`
`
`U.S. Patent No. 6,476,351
`
`
`“The ‘351 patent discloses a method and system for “The ‘351 patent discloses a method and system for
`
`microinscribing the surface of a gemstone using a laser.”microinscribing the surface of a gemstone using a laser.”
`
`Paper No. 7, Institution Decision at 2.
`
`“The ’351 patent discloses that the gemstone is held in a
`mounting system that is mounted on a translatable stage.
`The laser does not move, and therefore, to generate the
`inscription, the translatable three-axis (XYZ) stage moves
`the workpiece in relation to the laser beam. The
`translatable stage is ‘controlled by a computer to produce
`a complex marking pattern.’”
`
`Paper No. 7, Institution Decision at 3.
`
`9
`
`
`
`U.S. Patent No. 6,476,351
`
`
`“Video cameras allow an operator to view the workpiece “Video cameras allow an operator to view the workpiece
`
`from a plurality of vantage points, provide for ‘optical from a plurality of vantage points, provide for ‘optical
`
`feedback’ of the inscription process, and can be used to feedback’ of the inscription process, and can be used to
`
`ensure the correct positioning of the workpiece. ‘The ensure the correct positioning of the workpiece. ‘The
`
`optical feedback system also allows the operator to design optical feedback system also allows the operator to design
`
`an inscription, locate the inscription on the workpiece, an inscription, locate the inscription on the workpiece,
`
`verify the marking process and archive or store an image verify the marking process and archive or store an image
`
`of the workpiece and formed markings.’ . . . Once the of the workpiece and formed markings.’ . . . Once the
`
`inscription positioning is verified, the computer sends inscription positioning is verified, the computer sends
`
`commands to the inscription controller, which adjusts the commands to the inscription controller, which adjusts the
`
`position of the XYZ translatable stage accordingly to form position of the XYZ translatable stage accordingly to form
`
`the inscription pattern on the gemstone.”the inscription pattern on the gemstone.”
`
`Paper No. 7, Institution Decision at 4.
`
`10
`
`
`
`‘351 Patent, Claim 1
`
`’351 Patent, Claim 1.
`
`11
`
`
`
`‘351 Patent, Claim 7
`
`’351 Patent, Claim 7.
`
`12
`
`
`
`Claim Construction
`
`13
`
`
`
`The “Controlling” Limitation
`
`
`The Specification “discloses that ‘a single pass inscription is generally The Specification “discloses that ‘a single pass inscription is generally
`
`sufficient, and an automated optical feedback system may reliably control sufficient, and an automated optical feedback system may reliably control
`
`operation . . . [.] While the execution of retries may be automated, user control operation . . . [.] While the execution of retries may be automated, user control
`
`may be desirable, and such control is possible through use of the video may be desirable, and such control is possible through use of the video
`
`cameras which are directed at the workpiece.”cameras which are directed at the workpiece.”
`
`Paper No. 7, Institution Decision at 8;
`Paper No. 2, Petition at 2 (citing ‘351 Patent at 5:57-6:4).
`
`The Federal Circuit’s Construction
`
`“Considered together, these statements make evident that one of ordinary
`skill in the art at the time of the invention would have understood the term
`‘controlling the directing . . . based on . . . the imaging’ to include control
`based on either automated or manual feedback derived from optical images
`of a gemstone, before or during the laser burn process.”
`
`Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1369 (Fed. Cir. 2010),
`Paper No. 2, Petition at 5; Ex. 1003 (Trumper Declaration), ¶¶ 25–26
`
`14
`
`
`
`The “Controlling” Limitation
`
`The Board’s Construction
`
`“[W]e construe the ‘controlling’ limitation to include control based on either “[W]e construe the ‘controlling’ limitation to include control based on either
`
`automated or manual feedback derived from optical images either before or automated or manual feedback derived from optical images either before or
`
`during the laser inscription process, and, therefore, adopt Petitioner’s during the laser inscription process, and, therefore, adopt Petitioner’s
`
`proposed construction as our own.”proposed construction as our own.”
`
`Paper No. 7, Institution Decision at 9.
`
`15
`
`
`
`The “Controlling” Limitation
`
`LKI Challenges the Board’s Construction Standard
`
`“LKI first challenges the Board’s adoption of the BRI standard and “LKI first challenges the Board’s adoption of the BRI standard and
`
`advocates the Phillips standard for claim construction because the advocates the Phillips standard for claim construction because the
`
`‘’351 Patent will expire next year.’ This argument is irrelevant, as the ‘’351 Patent will expire next year.’ This argument is irrelevant, as the
`
`Board has already considered the Phillips standard in arriving at the Board has already considered the Phillips standard in arriving at the
`
`above claim constructions. Indeed, the Board’s claim constructions are above claim constructions. Indeed, the Board’s claim constructions are
`
`the same as the 2010 Fed. Cir.’s constructions, which were derived the same as the 2010 Fed. Cir.’s constructions, which were derived
`
`under the Phillips standard. Thus, the Board’s claim constructions are under the Phillips standard. Thus, the Board’s claim constructions are
`
`correct regardless of which standard is adopted.”correct regardless of which standard is adopted.”
`
`Paper No. 24, Petitioner’s Reply at 4
`
`16
`
`
`
`The “Controlling” Limitation
`
`LKI’s Proposed Construction is Improper
`
`“LKI then attempts to rewrite the ‘controlling’ limitations to mean “LKI then attempts to rewrite the ‘controlling’ limitations to mean
`
`‘controlling the directing of the focused laser energy based on the ‘controlling the directing of the focused laser energy based on the
`
`marking instructions and electronic image information fed back from marking instructions and electronic image information fed back from
`
`the imaging step, combined to selectively generate a marking . . . .’ the imaging step, combined to selectively generate a marking . . . .’
`
`LKI’s claim construction is facially unjustified as the inserted qualifiers, LKI’s claim construction is facially unjustified as the inserted qualifiers,
`
`‘electronic’ and ‘combined,’ are plainly absent from the claim ‘electronic’ and ‘combined,’ are plainly absent from the claim
`
`language. Had LKI intended ‘image information’ to be limited to language. Had LKI intended ‘image information’ to be limited to
`
`‘electronic image information’ and for the image information to be ‘electronic image information’ and for the image information to be
`
`‘combined’ with the marking instructions, the claim could have ‘combined’ with the marking instructions, the claim could have
`
`explicitly said so.”explicitly said so.”
`
`Paper No. 24, Petitioner’s Reply at 4
`
`17
`
`
`
`Prior Art References
`
`18
`
`
`
`Prior Art References – Fine Diamonds
`
`Published in November 1993
`Prior art under 35 U.S.C. §
`102(b)
`
`19
`
`
`
`Prior Art References – Fine Diamonds
`
`
`“Fine Diamonds . . . discloses a diamond laser machining system. The “Fine Diamonds . . . discloses a diamond laser machining system. The
`
`Fine Diamonds article shows an example equipment configuration in Fine Diamonds article shows an example equipment configuration in
`
`Figure 2 . . . which shows stages moveable in the X, Y and Z directions Figure 2 . . . which shows stages moveable in the X, Y and Z directions
`
`for mounting a gemstone and a UV waveguide laser as a laser energy for mounting a gemstone and a UV waveguide laser as a laser energy
`
`source. . . . Also shown are a computer and stage controller interfaced source. . . . Also shown are a computer and stage controller interfaced
`
`with both the X-Y-Z stages and the UV waveguide laser, to provide with both the X-Y-Z stages and the UV waveguide laser, to provide
`
`computer control of the laser engraving operation. The computer and computer control of the laser engraving operation. The computer and
`
`stage controller can receive operators’ programming commands to stage controller can receive operators’ programming commands to
`
`create ablation patterns on the gemstone.”create ablation patterns on the gemstone.”
`
`Paper No. 2, Petition at 10.
`
`20
`
`
`
`Prior Art References – ILR Article
`
`Published in June 1994
`Prior art under 35 U.S.C. §
`102(b)
`
`21
`
`
`
`Prior Art References – ILR Article
`
`
`“The ILR Article . . . discloses systems and methods for surface “The ILR Article . . . discloses systems and methods for surface
`
`patterning and ablation of diamonds and other materials with a UV patterning and ablation of diamonds and other materials with a UV
`
`laser source. [It] shows a layout of a generic UV laser workstation, laser source. [It] shows a layout of a generic UV laser workstation,
`
`which resembles Figure 2 of Fine Diamonds. The generic UV laser which resembles Figure 2 of Fine Diamonds. The generic UV laser
`
`workstation as shown in Figure 2 includes, among other things, a workstation as shown in Figure 2 includes, among other things, a
`
`support including X-Y stages for mounting a gemstone, a UV laser for support including X-Y stages for mounting a gemstone, a UV laser for
`
`inscribing the gemstone, a video camera and viewing optics for inscribing the gemstone, a video camera and viewing optics for
`
`imaging and viewing the gemstone, and a computer and stage imaging and viewing the gemstone, and a computer and stage
`
`controller for controlling the X-Y stages and the UV laser.”controller for controlling the X-Y stages and the UV laser.”
`
`Paper No. 2, Petition at 22-24.
`
`22
`
`
`
`Prior Art References – Gresser
`
`Published July 12, 1983
`Prior art under 35 U.S.C. §
`102(b)
`Shares inventor with ‘351
`
`23
`
`
`
`Prior Art References – Gresser
`
`
`“Gresser is directed to a method and apparatus for inscribing ‘precious “Gresser is directed to a method and apparatus for inscribing ‘precious
`
`stones or gems’ (i.e., gemstones) using a laser. FIG. 1 of Gresser, stones or gems’ (i.e., gemstones) using a laser. FIG. 1 of Gresser,
`
`reproduced below, shows a system for placing identifying indicia on reproduced below, shows a system for placing identifying indicia on
`
`the surface of a gemstone. The focus of the Gresser patent is on the surface of a gemstone. The focus of the Gresser patent is on
`
`marking diamonds.”marking diamonds.”
`
`Paper No. 2, Petition at 44 (citing Gresser at Title, Abstract, 1:7-8).
`
`24
`
`
`
`Instituted Grounds
`
`25
`
`
`
`Instituted Grounds
`
`Ground 1 – Obvious under § 103(a) in view of Fine
`Diamonds
`Ground 2 – Obvious under § 103(a) in view of Fine
`Diamonds and the ILR Article
`Ground 3 – Obvious under § 103(a) in view of the NSF
`Report
`Ground 4 – Obvious under § 103(a) in view of the NSF
`Report and the ILR Article
`Ground 5 – Obvious under § 103(a) in view of Gresser
`Ground 6 – Obvious under § 103(a) in view of Gresser and
`the ILR Article
`
`26
`
`
`
`Comparison of Claims 1 and 7
`
`Claim 1
`A method of microinscribing a gemstone with
`laser energy from a pulse lager energy source,
`focused by an optical system on the workpiece,
`comprising the steps of:
`mounting a gemstone in a mounting system;
`
`directing the focused laser energy onto a desired
`portion of the gemstone;
`
`imaging the gemstone from at least one vantage
`point;
`
`receiving marking instructions as at least one
`input; and
`controlling the directing of the focused laser
`energy based on the marking instructions and the
`imaging, to selectively generate a marking on the
`gemstone based on the instructions.
`
`Claim 7
`A laser energy microinscribing system, for
`gemstones, said system comprising: a laser
`energy source;
`
`a gemstone mounting system, allowing optical
`access to a mounted workpiece;
`an optical system for focusing laser energy from
`the laser energy source, onto the gemstone to
`create an ablation pattern thereon; means for
`directing said focused laser energy onto a desired
`portion of the gemstone, having a control input;
`an imaging system for viewing the gemstone from
`at least one vantage point and obtaining
`information from the gemstone;
`an input for receiving marking instructions; and
`
`a processor for controlling said directing means
`based on said marking instructions and said
`imaging system, to selectively generate a marking
`based on said instructions and a predetermined
`program.
`
`27
`
`
`
`Ground 1 – Obvious under § 103(a) in view of Fine
`Diamonds
`
`28
`
`
`
`Fine Diamonds Renders Obvious Claims 1, 7 of ‘351
`Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at least
`one input; . . .
`
`Undisputed that Fine Diamonds
`discloses a method of microinscribing a
`gemstone with laser energy
`
`“Fine Diamonds discloses this element by disclosing
`a laser “micromachining” system for diamonds used
`at Potomac Photonics in Figure 2 and further
`disclosing that ‘[s]mall ultraviolet lasers can shape
`diamond surfaces with very high precision and
`spatial resolution.’”
`
`Paper No. 2, Petition at 11.
`
`“Fine Diamonds discloses lasers for ablating the
`surface of the diamond substrate.”
`
`Paper No. 12, Patent Owner’s Response at 33.
`
`Paper No. 24, Petitioner’s Reply at 11.
`29
`
`
`
`Fine Diamonds Renders Obvious Claims 1, 7 of ‘351
`Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at least
`one input; . . .
`
`Undisputed that Fine Diamonds
`discloses mounting a gemstone in a
`mounting system
`
`“The workpiece is mounted on precision X-Y stages
`driven by DC motors, and stage position is monitored
`by encoders.”
`
`Ex. TIF1007, Fine Diamonds at 108.
`
`“The camera points to a movable stage, on which a
`diamond substrate is located for machining.”
`
`Paper No. 12, Patent Owner’s Response at 33-34.
`
`Paper No. 24, Petitioner’s Reply at 11.
`30
`
`
`
`Fine Diamonds Renders Obvious Claims 1, 7 of ‘351
`Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at least
`one input; . . .
`
`Undisputed that Fine Diamonds
`discloses directing laser energy onto a
`worksurface or “diamond substrate”
`
`“The laser emission is shaped and collimated by
`beam-delivery optics and focused onto a
`worksurface with a UV-transmitting microscope
`objective.”
`
`Ex. TIF1007, Fine Diamonds at 108.
`
`“The computer causes the stage to perform a raster
`motion of the diamond substrate and gates the laser
`in the appropriate manner to create the input shape
`on the substrate.”
`
`Paper No. 12, Patent Owner’s Response at 34.
`Paper No. 24, Petitioner’s Reply at 11.
`31
`
`
`
`Fine Diamonds Renders Obvious Claims 1, 7 of ‘351
`Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at
`least one vantage
`point; receiving
`marking instructions as
`at least one input; . . .
`
`Undisputed that Fine Diamonds
`discloses imaging from at least one
`vantage point
`
`“Figure 2 of Fine Diamonds shows a ‘Video Camera
`and Viewing Optics’ imaging the gemstone from at
`least one vantage point (i.e., position or location).”
`
`Paper No. 2, Petition at 13.
`
`“Like Ehrenwald, Fine Diamonds also discloses that
`the UV objective images the diamond substrate onto
`a video camera.”
`
`Paper No. 12, Patent Owner’s Response at 33.
`Paper No. 24, Petitioner’s Reply at 11.
`32
`
`
`
`Fine Diamonds Renders Obvious Claims 1, 7 of ‘351
`Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at
`least one input; . . .
`
`Undisputed that Fine Diamonds
`discloses receiving marking instructions
`“During the raster motion, the laser output is gated
`on and off to produce the desired geometry. Use of a
`CAD/CAM program as a graphical interface allows
`long sequences of commands associated with
`complex shapes to be generated with a minimal
`amount of programming.”
`
`Ex. TIF1007, Fine Diamonds at 107.
`
`“A POSITA would understand the foregoing
`statements to refer to creation and receipt of marking
`instructions.”
`
`Paper No. 2, Petition at 13 (citing Trumper Declaration at ¶¶ 34-37).
`
`Paper No. 24, Petitioner’s Reply at 11.
`33
`
`
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: . . .
`controlling the
`directing of the
`focused laser energy
`based on the marking
`instructions and the
`imaging, to
`selectively generate a
`marking on the
`gemstone based on
`the instructions.
`
`Fine Diamonds Renders Obvious Claims 1, 7 of ‘351
`Patent
`Fine Diamonds discloses the
`“controlling” limitation
`“Small ultraviolet lasers can shape diamond surfaces
`with very high precision and spatial resolution. These
`optical tools combine the small laser sources with
`high-resolution imaging and precision motion-control
`systems for sculpting, planarizing, marking and
`patterning of diamond and diamond-like materials. . .
`. The opportunity exists to adjust the beam focus
`between scans . . . .”
`
`Ex. TIF1007, Fine Diamonds at 106, 108, 110.
`
`“A POSITA . . . would understand Fine Diamonds to
`disclose controlling the directing of the focused laser
`energy based on a combination of the marking
`instructions provided by the CAD/CAM software and
`the high-resolution imaging, to selectively generate a
`marking on the gemstone based on the instructions.”
`Paper No. 2, Petition at 15-16 (citing Trumper Declaration at ¶¶ 38-45).
`
`34
`
`
`
`Disputed Issues
`
`LKI’s Arguments
`
`LKI does not dispute that Fine Diamonds discloses all
`claim limitations other than the “controlling” limitations
`
`LKI argues that:
`“Fine Diamonds [does] not show a ‘combination’ of the
`electronic images and marking instructions.”
`Fine Diamonds does not show “video images . . . fed back
`to the computer and stage controller . . . .”
`Paper No. 24, Petitioner Reply at 12.
`
`35
`
`
`
`The “Controlling” Limitation
`
`Fine Diamonds discloses the “controlling” limitation, even
`under LKI’s proposed construction
`
`
`“These optical tools combine the small laser sources with high-“These optical tools combine the small laser sources with high-
`
`resolution imaging and precision motion-control systems for resolution imaging and precision motion-control systems for
`
`sculpting, planarizing, marking and patterning of diamond and sculpting, planarizing, marking and patterning of diamond and
`
`diamond-like materials.”diamond-like materials.”
`
`Ex. TIF1007, Fine Diamonds at 106.
`36
`
`
`
`Ground 2 – Obvious under § 103(a) in view of Fine
`Diamonds and ILR Article
`
`37
`
`
`
`Fine Diamonds and ILR Article Render Obvious Claims
`1, 7 of ‘351 Patent
`
`
`“The ILR Article is combined with Fine Diamonds due to its particularly “The ILR Article is combined with Fine Diamonds due to its particularly
`
`clear discussion that controlling the directing of the laser energy is clear discussion that controlling the directing of the laser energy is
`
`based on 1) marking instructions and 2) the imaging, as required by based on 1) marking instructions and 2) the imaging, as required by
`
`the ‘controlling’ limitations of claims 1 and 7.”the ‘controlling’ limitations of claims 1 and 7.”
`
`Paper No. 2, Petition at 23.
`
`38
`
`
`
`Fine Diamonds and ILR Article Render Obvious Claims
`1, 7 of ‘351 Patent
`
`
`“CAD/CAM interface simplifies motion programming and allows “CAD/CAM interface simplifies motion programming and allows
`
`electronic control of processing speed, exposure parameters, and electronic control of processing speed, exposure parameters, and
`
`other features. This simplifies set up, accelerates process other features. This simplifies set up, accelerates process
`
`development, and improves flexibility of the system in small batch development, and improves flexibility of the system in small batch
`
`processing. Video images generated by the viewing system can be processing. Video images generated by the viewing system can be
`
`digitized and processed to derive information used for autofocus, digitized and processed to derive information used for autofocus,
`
`registration, orientation, edge-following, and other operations that registration, orientation, edge-following, and other operations that
`
`make the laser tool easier and faster to use.”make the laser tool easier and faster to use.”
`
`Ex. TIF1009, ILR Article at 2.
`
`39
`
`
`
`Ground 6 – Obvious under § 103(a) in view of Gresser
`and the ILR Article
`
`40
`
`
`
`Gresser and the ILR Article Render Obvious Claims 1, 7
`of ‘351 Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at least
`one input; . . .
`
`Undisputed that Gresser discloses a
`method of microinscribing a gemstone
`with laser energy
`
`“In FIG. 1, a laser beam generation system 2 applies
`a pulsed laser beam 3 to a diamond 5 for the
`purpose of inscribing an indicium or a plurality of
`indicia in the diamond surface 4.”
`
`Ex. TIF1010, Gresser at 2:13-17.
`
`“Patent Owner does not address the merits of
`Petitioner’s argument, other than to argue that
`Gresser does not disclose the imaging limitations of
`claims 1 and 7 . . . .”
`
`Paper No. 7, Institution Decision at 21.
`
`Paper No. 24, Petitioner’s Reply at 11.
`41
`
`
`
`Gresser and the ILR Article Render Obvious Claims 1, 7
`of ‘351 Patent
`
`Undisputed that Gresser discloses
`mounting a gemstone
`
`“A table system 7 supports the diamond 5 and is
`adjusted to maintain the surface 4 of the diamond at
`the beam 3 focus postion during the inscription
`process.”
`
`Ex. TIF1010, Gresser at 2:63-65.
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at least
`one input; . . .
`
`42
`
`
`
`Gresser and the ILR Article Render Obvious Claims 1, 7
`of ‘351 Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at least
`one input; . . .
`
`Undisputed that Gresser discloses
`directing focused laser energy onto a
`gemstone
`
`“A table system 7 supports the diamond 5 and is
`adjusted to maintain the surface 4 of the diamond at
`the beam 3 focus position during the inscription
`process.”
`
`Ex. TIF1010, Gresser at 2:63-65.
`
`“Patent Owner does not address the merits of
`Petitioner’s argument, other than to argue that
`Gresser does not disclose the imaging limitations of
`claims 1 and 7 . . . .”
`
`Paper No. 7, Institution Decision at 21.
`
`Paper No. 24, Petitioner’s Reply at 11.
`43
`
`
`
`Gresser and the ILR Article Render Obvious Claims 1, 7
`of ‘351 Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at least
`one vantage point;
`receiving marking
`instructions as at
`least one input; . . .
`
`Undisputed that Gresser discloses
`receiving marking instructions from at
`least one input
`
`“A keyboard unit 88 permits entry of operator control
`instructions, including instructions defining the
`particular indicia to be inscribed.”
`
`Ex. TIF1010, Gresser at 3:36-39.
`
`“Patent Owner does not address the merits of
`Petitioner’s argument, other than to argue that
`Gresser does not disclose the imaging limitations of
`claims 1 and 7 . . . .”
`
`Paper No. 7, Institution Decision at 21.
`
`Paper No. 24, Petitioner’s Reply at 11.
`44
`
`
`
`Gresser and the ILR Article Render Obvious Claims 1, 7
`of ‘351 Patent
`
`’351 patent, claim 1
`
`1. A method of
`microinscribing a
`gemstone with laser
`energy from a pulse
`laser energy source,
`focused by an optical
`system on the
`workpiece, comprising
`the steps of: mounting
`a gemstone in a
`mounting system;
`directing the focused
`laser energy onto a
`desired portion of the
`gemstone; imaging the
`gemstone from at
`least one vantage
`point; receiving
`marking instructions as
`at least one input; . . .
`
`Gresser discloses imaging a gemstone
`from various vantage points
`
`“Viewing microscopes 101 and 68 mounted above
`and in front of the diamond 5 are provided as an aid
`to obtaining this information. As shown, microscope
`101 permits direct viewing of the diamond from the
`above, while microscope 68 permits viewing the
`diamond frontally via beam splitter 67.”
`Ex. TIF1010, Gresser at 4:46-51.
`
`45
`
`
`
`The ILR Article Discloses the “Controlling” Limitation
`
`
`“CAD/CAM interface simplifies motion programming and allows “CAD/CAM interface simplifies motion programming and allows
`
`electronic control of processing speed, exposure parameters, and electronic control of processing speed, exposure parameters, and
`
`other features. This simplifies set up, accelerates process other features. This simplifies set up, accelerates process
`
`development, and improves flexibility of the system in small batch development, and improves flexibility of the system in small batch
`
`processing. Video images generated by the viewing system can be processing. Video images generated by the viewing system can be
`
`digitized and processed to derive information used for autofocus, digitized and processed to derive information used for autofocus,
`
`registration, orientation, edge-following, and other operations that registration, orientation, edge-following, and other operations that
`
`make the laser tool easier and faster to use.”make the laser tool easier and faster to use.”
`
`Ex. TIF1009, ILR Article at 2.
`
`46
`
`
`
`The ILR Article Disclose the “Controlling” Limitation
`
`
`“The ILR Article discloses control of the laser energy based on “The ILR Article discloses control of the laser energy based on
`
`automated feedback from optical images of a gem (e.g., a diamond): automated feedback from optical images of a gem (e.g., a diamond):
`
`“[v]ideo images generated by the viewing system can be digitized and “[v]ideo images generated by the viewing system can be digitized and
`
`processed to derive information used for autofocus, registration, processed to derive information used for autofocus, registration,
`
`orientation, edge-following and other operations . . . .”orientation, edge-following and other operations . . . .”
`
`Paper No. 2, Petition at 41.
`
`
`“[T]he UV laser workstation depicted in Figure 2 of the ILR Article “[T]he UV laser workstation depicted in Figure 2 of the ILR Article
`
`includes a video camera and viewing optics, similar to those disclosed includes a video camera and viewing optics, similar to those disclosed
`
`in Fine Diamonds, which, according to Petitioner, satisfy the imaging in Fine Diamonds, which, according to Petitioner, satisfy the imaging
`
`limitations of the claims. In addition, the ILR Article expressly discloses limitations of the claims. In addition, the ILR Article expressly discloses
`
`‘[v]ideo images generated by the viewing system,’ and Petitioner refers ‘[v]ideo images generated by the viewing system,’ and Petitioner refers
`
`to these video images in arguing that the ILR Article discloses to these video images in arguing that the ILR Article discloses
`
`controlling the directing of the focused laser energy based on imaging.”controlling the directing of the focused laser energy based on imaging.”
`
`Paper No. 7, Institution Decision at 22.
`
`47
`
`
`
`A POSITA Would Have Been Motivated to Combine
`Gresser and the ILR
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