Trials@uspto.gov
`571-272-7822
`
`Paper No. 34
`
` Entered: April 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00024
`Patent 6,476,351 B1
`____________
`
`
`
`Before MICHAEL P. TIERNEY, MICHELLE R. OSINSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
` FINAL WRITTEN DECISION
`35 U.S.C. §318 and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
`Paper No. 34
`
` Entered: April 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00024
`Patent 6,476,351 B1
`____________
`
`
`
`Before MICHAEL P. TIERNEY, MICHELLE R. OSINSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
` FINAL WRITTEN DECISION
`35 U.S.C. §318 and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2015-00024
`Patent 6,476,351 B1
`
`
`I. INTRODUCTION
`Tiffany and Company (“Petitioner”) filed a Petition seeking inter
`partes review of claims 1 and 7 of U.S. Patent No. 6,476,351 B1 (Ex. 1001,
`“the ’351 patent”). Paper 2 (“Pet.”). Lazare Kaplan International, Inc.
`(“Patent Owner”) filed a Patent Owner Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). We determined that there was a reasonable
`likelihood that Petitioner would prevail in challenging those claims as
`unpatentable. On April 20, 2015, the Board instituted trial to review the
`patentability of the challenged claims. Paper 7 (“Dec. on Inst.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`12, “PO Resp.”), and Petitioner filed a Reply (Paper 24, “Reply”). An oral
`hearing was held on January 21, 2016. A transcript of the hearing has been
`entered into the record of the proceeding as Paper 33 (“Tr.”). Petitioner filed
`a motion to exclude certain evidence submitted by Patent Owner. Paper 26.
`Patent Owner filed an opposition (Paper 28) and Petitioner filed a reply to
`the opposition (Paper 30). In addition, there are multiple pending motions to
`seal various exhibits. Paper 13; Paper 25.
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1 and 7 are unpatentable. In
`addition, we dismiss Petitioner’s Motion to Exclude Evidence as moot and
`we grant the pending Motions to Seal.
`
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`
`A. Related Proceedings
`Patent Owner asserted the ’351 patent in Lazare Kaplan Int’l Inc. v.
`Photoscribe Techs., Inc., Case No. 1:06 CV 4005 (SDNY). Pet. 1; Paper 5.
`Petitioner is not a party to that proceeding.
`
`
`B. The ’351 Patent
`The ’351 patent discloses a method and system for microinscribing
`the surface of a gemstone using a laser. Ex. 1001, 1:14–17. The ’351 patent
`shows one microinscribing apparatus in Figure 9, reproduced below.
`
`Figure 9 shows various components of a microinscribing apparatus,
`including laser 1, mirror 8 and focusing lens 10 for focusing laser energy
`from the laser onto gemstone/workpiece 11, displaceable stage 50, computer
`52, and cameras 28 and 32. Id. at 15:33–44, 16:13, 16:44–54.
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`The ’351 patent discloses that the gemstone is held in a mounting
`system that is mounted on a translatable stage. See id. at Figs. 7A–7E,
`Fig. 10 element 144. 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. Id. at 16:44–48. The translatable stage is
`“controlled by a computer to produce a complex marking pattern.” Id. at
`2:47–48. The inscription data can be manually entered or generated by the
`computer. Id. at 20:15–23. The apparatus can include an assortment of
`fonts as well as custom or editable characters, such as logos and graphics.
`Id. at 20:3–14, 22:66–67.
`Video cameras allow an operator to view the workpiece from a
`plurality of vantage points, provide for “optical feedback” of the inscription
`process, and can be used to ensure the correct positioning of the workpiece.
`Id. at 2:61–3:13, 16:51–17:8. “The optical feedback system also allows the
`operator to design an inscription, locate the inscription on the workpiece,
`verify the marking process and archive or store an image of the workpiece
`and formed markings.” Id. at 3:14–17, 18:13–17, 20:52–55.
`According to one embodiment of the ’351 patent, an operator inserts a
`gemstone into the apparatus and aligns it so that top and side views are
`displayed on video monitors. Id. at 18:31–33. The operator enters the
`inscription into the computer, and verifies the inscription positioning on the
`images of the gemstone displayed on the monitors. Id. at 18:33–39. Once
`the inscription positioning is verified, the computer sends commands to the
`inscription controller, which adjusts the position of the XYZ translatable
`stage accordingly to form the inscription pattern on the gemstone. Id. at
`18:39–43.
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`C. Challenged Claims
`Independent claims 1 and 7 are the only challenged claims, and are
`reproduced below:
`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; 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.
`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 image
`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
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`selectively generate a marking based on said
`instructions and a predetermined program.
`Ex. 1001, 26:53–65, 27:17–34.
`
`
`D. References
`Petitioner relies on the following references:
`1. C. Paul Christensen, Fine Diamonds With Laser Machining,
`PHOTONICS SPECTRA 105–110 (Nov. 1993) (“Fine Diamonds,” Ex.
`1007).
`2. C. Paul Christensen, Laser Processing Works on a Micro Scale,
`INDUSTRIAL LASER REVIEW 1–4 (June 1994) (“ILR Article,” Ex.
`1009).
`3. Gresser et al., U.S. Patent No. 4,392,476, issued July 12, 1983
`(“Gresser,” Ex. 1010).
`
`
`E. Reviewed Grounds of Unpatentability
`The Board instituted trial to review the patentability of the challenged
`claims on the following grounds:
`Claims
`Statutory
`Challenged
`Basis
`1 and 7
`§103
`1 and 7
`§103
`1 and 7
`§103
`
`
`Fine Diamonds
`Fine Diamonds and the ILR Article
`Gresser and the ILR Article
`
`Reference(s)
`
`F. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Trumper, testifies that a person of ordinary
`skill in the art “would possess at least a bachelor’s degree in mechanical,
`electrical, manufacturing, or optical engineering, plus a few years of
`experience in the design and control of machines involving precision
`
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`motion, lasers, and optics.” Ex. 1003 (“Trumper Declaration”) ¶ 17. Patent
`Owner and its declarant, Dr. Bokor, adopted the level of ordinary skill in the
`art advanced by Dr. Trumper. PO Resp. 43–44 and n.4; Ex. 2005 (“Bokor
`Declaration”) ¶ 22.
`For purposes of this decision, we credit the testimony provided by the
`declarants for both parties and hold that one of skill in the art would possess
`at least a bachelor’s degree in mechanical, electrical, manufacturing, or
`optical engineering, plus a few years of experience in the design and control
`of machines involving precision motion, lasers, and optics. This level of
`ordinary skill is reflected not only by the information presented by the
`parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate
`level of ordinary skill in the art).
`
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016) (No. 15-446). Claim terms are given their ordinary and
`customary meaning, as understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
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`Only terms which are in controversy need to be construed explicitly,
`and then only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In our Decision on Institution, we determined that only the “controlling”
`limitations required construction. Based on our review of the complete
`record, we maintain our determination that no other explicit constructions
`are necessary, and we address the “controlling” limitations below.
`
`
`The “controlling” limitations1
`Petitioner proposes that, under the broadest reasonable interpretation,
`these limitations mean controlling the directing of the focused laser energy,
`or controlling the directing means, “based on automated or manual feedback
`derived from optical images of a gemstone before or during the laser burn
`process.” Pet. 4–5; Reply 3–11. Petitioner contends that support for this
`construction can be found within the Specification of the ’351 patent. Pet. 5
`(citing Ex. 1001, 5:57–6:4). Petitioner also contends that this construction is
`consistent with the Federal Circuit’s opinion in Lazare Kaplan International,
`Inc. v. Photoscribe Technologies, Inc., 628 F.3d 1359, 1369 (Fed. Cir.
`
`1 The “controlling” limitations refer to the following:
`
`“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”
`in claim 1; 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” in claim 7.
`
`
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`2010), wherein the court, applying the standard in Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc), held 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.” Pet. 5 (citing Ex.
`1006, 14); Ex. 1003 ¶¶ 25–26.
`In the Preliminary Response, Patent Owner stated that it did not
`“agree with much of the claim constructions” provided by Petitioner, but did
`not elaborate further and did not offer its own construction for these terms.
`Prelim. Resp. 10–11.
`In the Decision on Institution, based on our review of the
`Specification of the ’351 patent, the Federal Circuit’s opinion in Lazare
`Kaplan, and the Trumper Declaration, we adopted Petitioner’s proposed
`construction, and construed the “controlling” limitations to include control
`based on either automated or manual feedback derived from optical images
`either before or during the laser inscription process. Dec. on Inst. 9.
`In the Patent Owner Response, Patent Owner contends that the terms
`should be construed as follows:
`
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`PO Resp. 15.
`For the reasons explained below, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1 and 7 are
`unpatentable under either of the proposed constructions of the “controlling”
`limitations. Accordingly, we determine that it is unnecessary to resolve the
`parties’ dispute over the term “controlling.” See Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only
`be construed ‘to the extent necessary to resolve the controversy.’”) (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)). We provide below an analysis of the challenged claims under both
`constructions.
`
`
`B. Asserted Grounds of Unpatentability
`
`1. Introduction
`
`Petitioner asserts that claims 1 and 7 are obvious in view of Fine
`
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`Diamonds alone, Fine Diamonds in combination with the ILR Article, and
`Gresser in combination with the ILR Article. To support these asserted
`grounds of unpatentability, Petitioner provides detailed explanations and the
`declaration of Dr. Trumper to show how the references disclose or suggest
`each claim limitation under either party’s proposed constructions of the
`disputed claim terms.
`In our Decision on Institution, we determined that Petitioner had made
`a threshold showing that the prior art discloses or suggests all limitations of
`the challenged claims, including the “controlling” limitations under
`Petitioner’s proposed construction of those terms, sufficient for us to
`conclude that there was a reasonable likelihood that Petitioner would prevail
`in showing that the challenged claims were obvious in view of Fine
`Diamonds, the ILR Article, and/or Gresser.
`Our Scheduling Order in this case cautioned Patent Owner that “any
`arguments for patentability not raised in the [Patent Owner Response] will
`be deemed waived.” Paper 8, 3. The Board’s Trial Practice Guide,
`furthermore, states that the Patent Owner Response “should identify all the
`involved claims that are believed to be patentable and state the basis for that
`belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012). Furthermore, as the Board has stated, our governing statute
`and Rules “clearly place some onus on the patent owner, once trial is
`instituted, to address the material facts raised by the petition as jeopardizing
`patentability of the challenged claims.” Johnson Health Tech Co. Ltd. v.
`Icon Health & Fitness, Inc., Case IPR2013-00463, slip op. 12 (PTAB Jan.
`29, 2015) (Paper 41).
`In its Response, with the exception of the “controlling” limitations,
`
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`Patent Owner does not challenge Petitioner’s arguments and evidence
`demonstrating that the prior art discloses or suggests all limitations of the
`challenged claims. Patent Owner’s arguments regarding the “controlling”
`limitations are made only under Patent Owner’s construction of the
`“controlling” limitations. See PO Resp. 35–42.
`Thus, with the exception of the “controlling” limitations under Patent
`Owner’s construction, the record contains the same, and now undisputed and
`uncontested, arguments and evidence regarding whether the prior art
`discloses or suggests the limitations of the challenged claims as it did at the
`time of our Decision to Institute.
`Based upon our review of the record, we agree with Petitioner’s
`arguments and evidence presented in the Petition regarding whether Fine
`Diamonds, the ILR Article, and Gresser, disclose or suggest the limitations
`of the challenged claims. See Pet. 9–27, 55–59. Thus, we determine that the
`preponderance of the evidence supports a finding that Petitioner has
`demonstrated (1) that all limitations of the challenged claims are disclosed or
`suggested by one or more of Fine Diamonds, the ILR Article, and/or Gresser
`under Petitioner’s proposed construction of the “controlling” limitations, and
`(2) that all non-“controlling” limitations of the challenged claims are
`disclosed or suggested by one or more of Fine Diamonds, the ILR Article,
`and/or Gresser, under Patent Owner’s proposed claim construction of the
`“controlling” limitations.
`In view of this, in our analysis below, we focus on Patent Owner’s
`arguments presented in the Patent Owner Response, namely that (1) the
`applied references fail to disclose or suggest the “controlling” limitations
`recited in claims 1 and 7 under Patent Owner’s construction of the terms, (2)
`
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`a person of ordinary skill in the art would not combine the ILR Article with
`Fine Diamonds or with Gresser, and (3) objective indicia of non-obviousness
`direct a finding of non-obviousness. PO Resp. 1–3; see Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,766 (“The [Patent Owner] [R]esponse
`should identify all the involved claims that are believed to be patentable and
`state the basis for that belief.”).
`
`2. Claims 1 and 7 as Obvious under § 103 in view of Fine Diamonds
`and the ILR Article
`
`i.
`
` Fine Diamonds (Ex. 1007)
`
`Fine Diamonds is an article authored by Dr. Paul Christensen
`discussing laser machining of diamonds. Ex. 1007, 105. Fine Diamonds
`discloses systems that combine “small laser sources with high-resolution
`imaging and precision motion-control systems for sculpting, planarizing,
`marking and patterning of diamond and diamond-like materials.” Id. at 106.
`Fine Diamonds depicts a laser micromachining configuration in Figure 2,
`which is reproduced below.
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`Figure 2 shows the components of the laser micromachining system,
`including a UV waveguide laser, beam delivery optics, a video camera,
`viewing optics, X-Y-Z stages, and a computer and stage controller. Id. Fine
`Diamonds discloses the use of CAD/CAM software not only to draw
`arbitrary shapes but also to allow the computer to control the stages such that
`complex shapes can be etched into the diamond substrate. Id. at 107–108.
`According to Fine Diamonds, the “CAD/CAM software and the direct-write
`approach to laser machining allows almost any shape to be generated in a
`diamond surface.” Id. at 108. The high resolution video cameras in Fine
`Diamonds allow the operator to monitor the machining process. Id.
`
`
`ii. The ILR Article
`The ILR Article, also authored by Dr. Christensen, discloses surface
`patterning of various materials, including diamonds, on a micro scale using a
`UV laser source. Ex. 1009, 2. The ILR Article describes “[d]irect write”
`
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`techniques, which “focus the entire beam of a smaller laser on the work
`surface and move the surface under the focused beam for pattern
`generation.” Id. The ILR Article further discloses computer control of the
`work surface motion, which allows for the production of CAD-generated
`shapes. Id. A generic direct-write UV laser station is depicted in Figure 2 of
`the ILR Article, which is reproduced below.
`
`
`
`Figure 2 shows the UV laser station comprised of the laser itself in addition
`to beam transfer optics, a focusing objective, X-Y stages, video camera,
`viewing optics, and a computer and stage controller. Id. at 2–3. According
`to the ILR Article:
`CAD/CAM interface simplifies motion programming and
`allows electronic control of processing speed, exposure
`parameters, and other features.
` This simplifies set-up,
`accelerates process development, and improves flexibility of the
`system in small batch processing. Video images generated by
`the viewing system can be digitized and processed to derive
`information used for autofocus, registration, orientation, edge-
`following, and other operations that make the laser tool easier
`and faster to use.
`Id. at 3.
`
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` The “controlling” limitations
`iii.
`Petitioner argues that, even under a construction of the “controlling”
`limitations that requires electronic image information to be fed back from
`the imaging step or system and combined with marking instructions to
`generate a marking on the gemstone, claims 1 and 7 are unpatentable as
`obvious in view of Fine Diamonds in combination with the ILR Article.
`Reply 12–15; Pet. 5, n.1, 59–60.
`Petitioner contends that Fine Diamonds explicitly states that “optical
`tools combine the small laser sources with high-resolution imaging and
`precision motion-controlled systems for sculpting, planarizing, marking and
`patterning of diamond and diamond-like materials.” Reply 12 (quoting Ex.
`1007, 2) (emphasis in Reply).
`Petitioner further contends that the ILR Article discloses video images
`that are digitized and processed, which constitute electronic image
`information. Id. at 13 (citing Ex. 1009, 3). Petitioner argues that the ILR
`article teaches that electronic image information is fed back to the computer
`stage/controller because the ILR Article teaches that the digitized images are
`processed to “derive information used for autofocus, registration, and
`orientation.” Id.
`Petitioner takes the position that the ILR Article’s reference to a
`CAD/CAM interface that “simplifies motion programming” corresponds to
`the marking instructions recited in the “controlling” limitations. Id. In view
`of this, Petitioner argues that:
`The ILR Article, thus discloses the marking instructions (e.g.,
`CAD/CAM programs of the motion-controlled systems) and the
`electronic imaging (i.e., high-resolution imaging) could be
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`automatically combined for “electronic control of processing speed,
`exposure parameters, and other features” during “set-up” or in process
`“for autofocus, registration, orientation, edge-following, and other
`operations that make the laser tool easier and faster to use.”
`Id. at 13–14 (emphasis omitted).
`Patent Owner argues that the quoted language in Fine Diamonds
`merely indicates that the optical tools of Fine Diamonds “use lasers,
`imaging, and motion-controlled systems, as shown in Fig. 2 of Fine
`Diamonds.” PO Resp. 36. Patent Owner contends that Figure 2 of Fine
`Diamonds does not show a connection between the video camera and the
`computer/stage controller, and without a connection between the camera and
`computer, “there is no feedback of the electronic image information and no
`combination of the marking instructions and electronic imaging information
`to generate a marking.” Id. at 37 (citing Ex. 2005 ¶ 37).
`Patent Owner further argues that the ILR Article does not disclose the
`“controlling” limitations and therefore does not cure the deficiencies of Fine
`Diamonds. Id. at 39–42. In particular, Patent Owner contends that Figure 2
`in the ILR Article is essentially the same as Figure 2 in Fine Diamonds,
`showing no connection from the video camera to the computer and stage
`controller. Id. at 38–39. Patent Owner thus argues that the video images are
`not fed back to the computer and stage controller, and cannot be combined
`with marking instructions to generate a marking. Id. at 40. Patent Owner
`further argues that the ILR Article discloses only that video images can be
`processed to derive information used for certain operations, and is silent as
`to how to perform image processing or what performs the image processing.
`Id. at 39.
`
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`Referring specifically to the statement in the ILR Article regarding
`video images being digitized and used for autofocus, registration,
`orientation, or edge-following, Patent Owner argues that “[n]one of the
`operations enumerated by this sentence discloses, or even suggests, ‘marking
`instructions’ and electronic image information combined to generate a
`marking.” Id. at 40, 42. According to Patent Owner, autofocusing would
`occur independently of the marking instructions, and registration and
`orientation refer to setting up a workpiece and selecting a starting point for
`the laser, respectively, and do not constitute a disclosure of an image fed
`back to a processor and combined with marking instructions. Id. at 40–41.
`Patent Owner further argues that “edge-following” does not have a
`commonly understood meaning in the relevant art, and that even if a person
`of ordinary skill in the art did understand that term to suggest “employing an
`image to perform some type of edge-following for laser inscription of a
`gemstone, the ILR Article does not disclose or suggest feedback of the
`digitized image combined with ‘marking instructions’ to generate a
`marking.” Id. at 41–42 (citing Ex. 2005 ¶ 83).
`Upon consideration of the evidence and arguments presented by
`Patent Owner and Petitioner, we conclude that Petitioner has shown by a
`preponderance of the evidence that the ILR Article discloses the
`“controlling” limitations under Patent Owner’s construction.
`Although Figure 2 of the ILR Article does not depict a physical
`connection between the video camera and the camera and stage controller,
`we are persuaded that the ILR Article discloses or suggests that the video
`images in the ILR Article (i.e., the electronic image information) are fed
`back to the computer. During the Oral Hearing, Patent Owner indicated that
`
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`the term “fed back” is broad and does not necessarily require a physical
`connection between the camera and the computer. Tr. 39:4–40:25 (arguing
`that the important aspect of the claim is that the image taken on the imaging
`device is itself transferred to the computer, as opposed to only calculations
`manually derived from that image being manually entered into the
`computer).
`The purpose of the laser tool in the ILR Article is to provide surface
`patterning and ablations of diamonds with a UV laser source. Ex. 1009, 2.
`The ILR Article depicts a computer in Figure 2, and refers to the
`“[i]ntegration of a computer into the direct-write system.” Id. at 3. The ILR
`Article further discloses that “[v]ideo images generated by the viewing
`system can be digitized and processed to derive information used for”
`various “operations that make the laser tool easier and faster to use.” Id.
`We credit the testimony of Dr. Trumper that “the ILR Article makes clear
`that the computer digitizes and processes the optical images of a gemstone,
`and the automated feedback derived from the images is used for controlling
`the directing of the focused laser energy,” as it is consistent with the ILR
`Article’s disclosure of integrating a computer into the diamond ablation
`system. Ex. 1003 ¶ 56. Thus, despite the fact that the ILR Article does not
`expressly state that the computer is used to digitize and process the video
`images, it would have been obvious to a person of ordinary skill in the art
`that integrating the computer into the direct write system would include
`using the computer (shown in Fig. 2) to digitize the video images generated
`by the viewing system and process them to conduct the various operations
`that make the laser tool easier to use. KSR Int’l Co. v. Teleflex Inc., 550 US
`
`
`
`19
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`IPR2015-00024
`Patent 6,476,351 B1
`
`398, 421 (2007) (“A person of ordinary skill is also a person of ordinary
`creativity, not an automaton.”).
`Furthermore, as noted above, the ILR Article teaches that “[c]omputer
`control of work surfaces allows direct production of CAD-generated shapes”
`on diamond surfaces. Ex. 1009, 2. Petitioner contends, and Patent Owner
`does not contest, that the CAD/CAM programs correspond to the required
`“marking instructions.” Pet. 25–26 (citing Ex. 1009, 2); Ex. 1003 ¶ 56 (Dr.
`Trumper stating “marking instructions (e.g., motion programming of the
`CAD/CAM program)”). Additionally, the ILR Article discloses that the
`“CAD/CAM interface . . . allows electronic control of processing speed,
`exposure parameters, and other features” of the laser tool that “simplifies
`set-up [and] accelerates process development.” Ex. 1009, 3. As Petitioner
`points out, the next sentence in the very same paragraph discusses digitizing
`and processing the video images. Reply 13. In view of this, we determine
`that a person of ordinary skill in the art, reviewing the ILR Article, would
`have understood the ILR Article to disclose or suggest using the computer to
`control and operate the laser tool to generate shapes based on a combination
`of two inputs, the CAD/CAM programs (i.e., “marking instructions”) and
`images fed back to the computer and digitized therein (i.e., electronic image
`information), which “simplif[y] set-up [and] accelerate[] process
`development” and “make the laser tool easier to use.”2 Ex. 1009, 3; Reply
`13; Ex. 1003 ¶ 55.
`
`
`2 This is especially true considering Patent Owner’s argument that the
`“combined” language in the controlling limitations is not limited to
`overlaying marking instructions on an image. Tr. 48:15–22.
`
`
`
`20
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`IPR2015-00024
`Patent 6,476,351 B1
`
`
`We are not persuaded by Patent Owner’s arguments regarding
`autofocus, registration, orientation and edge-following, as they relate to the
`digitized and processed images. See PO Resp. 40–42. Nor do we credit Dr.
`Bokor’s testimony in this regard. See Ex. 2005 ¶¶ 78–82. First, we note that
`the ILR Article is not limited to those operations, as it refers generically to
`“other operations.” Ex. 1009, 3. Next, Patent Owner and Dr. Bokor’s
`contentions that none of these operations disclose or suggest marking
`instructions and image information combined to generate a marking ignores
`the ILR Article’s disclosure, in the very same paragraph, of the use of
`CAD/CAM programming to simplify motion programming and allow
`electronic control of certain aspects of the laser tool. PO Resp. 40–42; Ex.
`2005 ¶¶ 78–82; Reply 13–14.
`Finally, Patent Owner and Dr. Bokor acknowledge that a person of
`ordinary skill in the art would interpret the terms registration and orientation
`“as occurring at setup, for example, by moving a workpiece under a laser,
`and selecting a starting point for the laser to begin firing, based on
`information derived from a digitized workpiece image.”3 PO Resp. 41; Ex.
`2005 ¶ 80 (emphasis added). Thus, based on Patent Owner’s own
`arguments, and in view of its own declarant’s testimony, the ILR Article not
`only expressly teaches the use of a CAD/CAM interface (i.e., marking
`instructions) to simplify “set-up,” but also teaches the use of digitized video
`images (i.e., electronic image information) to derive information used for
`operations associated with set-up (registration and orientation). Therefore,
`
`3 We note that this statement undermines Patent Owner’s earlier argument
`that the “ILR Article is silent regarding setting up the substrate for
`machining and does not disclose any technique for determining a starting
`point or initial focus.” PO Resp. 39.
`
`
`
`21
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`IPR2015-00024
`Patent 6,476,351 B1
`
`contrary to Patent Owner’s arguments, we determine that a person of
`ordinary skill in the art would have understood that the ILR Article discloses
`or suggests that images are fed back to a processor and combined with
`marking instructions for, at the very least, setting up the laser inscription
`machine.
`Thus, although Patent Owner also argues that its proposed
`construction of the controlling limitations “distinguishes over systems that
`use gemstone images for setup—independent of ‘marking instructions’” (PO
`Resp. 29 (emphasis added)), the ILR Article discloses or suggests using
`images for set up in combination with marking instructions. Moreover, as
`Patent Owner points out, the Federal Circuit stated that the “controlling”
`limitations include “control based on . . . feedback derived from optical
`images of a gemstone, before or during the laser burn process.” Ex. 1006,
`14 (emphasis added); PO Resp. 31–32. We note that Patent Owner argues
`that its proposed construction is consistent with the 2
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