UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`TIFFANY AND COMPANY,
`Petitioner,
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`v.
`
`LAZARE KAPLAN INTERNATIONAL INC.,
`Patent Owner.
`
`Patent No. 6,476,351
`
`
`Inter Partes Review No. IPR2015-00024
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`
`
`DECLARATION OF NECIP ALEV IN SUPPORT OF PATENT
`OWNER
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`dc-801937
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`IPR2015-00024
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`Lazare Kaplan International, Inc. Exhibit 2006 Page 1
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL INC.,
`Patent Owner.
`
`Patent No. 6,476,351
`
`
`Inter Partes Review No. IPR2015-00024
`
`
`
`DECLARATION OF NECIP ALEV IN SUPPORT OF PATENT
`OWNER
`
`
`
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`dc-801937
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`IPR2015-00024
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`Lazare Kaplan International, Inc. Exhibit 2006 Page 1
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`IPR2015-00024
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`Docket No.: 614142800100
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`1.
`
`I, Necip Alev, make this declaration in connection with the above-
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`captioned inter partes review proceedings.
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`I.
`
`INTRODUCTION
`2.
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`I have been retained by counsel for Lazare Kaplan International Inc.,
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`(“LKI” or “the Patent Owner”) as a technical expert in connection with these inter
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`partes review proceeding. I submit this declaration in support of the Patent Owner
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`Response for United States Patent Nos. 6,476,351 (the “’351 Patent). I have been
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`retained to provide a technical opinion concerning the ’351 Patent, as discussed in
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`further detail below.
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`3.
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`I am being compensated by the Patent Owner for my consultation in
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`connection with this inter partes review proceeding, and all activities in connection
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`with the preparation of this declaration. I am being paid regardless of the
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`conclusions or opinions I reach. I have no personal or financial stake or interest in
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`the outcome of this inter partes review proceeding.
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`II. BACKGROUND
`4.
`I have over 20 years of experience in the gemstone industry. I
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`received a BS in electrical engineering and computer science from Carnegie
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`Mellon in 1969. I was the director of research and development at Harry Winston
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`beginning in 1974 until 1995. A detailed account of my education and
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`professional experience is available in my C.V., which is attached to this
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`Lazare Kaplan International, Inc. Exhibit 2006 Page 2
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`Docket No.: 614142800100
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`declaration as Appendix A.
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`5.
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`I began working at Harry Winston in 1974 as director of research and
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`development, with a mandate to introduce automation to their gemstone business.
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`My responsibilities included computer systems, sorting, manufacturing, and
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`automation of company operations. Sorting refers to grading stones based on their
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`various characteristics. In this process, a large parcel of melee (mixed stones) are
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`broken down to sizes, colors, and imperfections. Manufacturing refers to starting
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`with a rough stone and determining how it should be cut, usually by marking
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`where it should be sawed. Manufacturing also includes bruting the stone by
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`spinning it in a lathe-like machine to form a girdle. It also includes cutting and
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`polishing the facets.
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`6.
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`In order to be effective, I put myself into a training program where
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`every day I would spend few hours in different departments as an apprentice. I
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`studied sorting and marking of rough gemstones. I also studied the making of a
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`finished gemstone product, including the steps of cleaving, sawing, bruting, and
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`facet cutting of stones. I also studied the grading of finished gemstones into
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`weight (carats), color, cut, and clarity.
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`7.
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`After I began, it became clear that aspects of the process or finishing a
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`gemstone could be automated. For instance, color grading of the gemstones was
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`subjective and varied from day to day and person to person. Given the effect of
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`color grading on the price of the stone and reputation of the company, I recognized
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`that automated and objective measurements of color would be beneficial to the
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`company. The same was true of clarity determinations. It is a subjective valuation
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`that affects the price of a gemstone. Creating consistent determinations about
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`gemstone characteristics would help the Harry Winston brand. The consistency
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`would almost be a certification that if you bought a stone from Harry Winston, the
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`gemstone is exactly what Harry Winston says it is. I also believed that sawing,
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`bruting, and cutting of gemstones could be improved or totally automated.
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`8.
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`One project I worked on was the laser inscription of diamonds. In the
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`late 1970s, lasers were reaching commercial maturity and we decided to look if
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`they can be applied to diamonds. It was clear that lasers had enough energy to
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`transform diamond into graphite, albeit in small dimensions. One interesting idea
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`was cutting diamonds with a laser. Diamonds are very difficult or impossible to
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`cut against their grain. This imposes limitations, especially in large rough stones,
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`in order to get the maximum yield. Laser cutting did not have difficulty cutting
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`against the diamond grain.
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`9.
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`Another idea was to microinscribe stones for authentication. However,
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`we felt that a short touch to a grinding wheel would erase the inscription so that it
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`would not be indelible proof. We did not pursue the inscription idea during the
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`1970s time period. Around 1983, I learned of the Gresser patent and realized that
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`laser diamond inscription might be beneficial from a marketing point of view. Mr.
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`Winston did not want to inscribe gemstones in a manner that infringed LKI’s
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`Gresser patent, so he asked me to design a technique for laser inscription that was
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`different from Gresser. After excimer lasers became commercialized, Mr. Winston
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`and I came up with a laser inscription technique that differed from the Gresser
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`patent, and patented this laser inscription technique as U.S. Patent No. 5,149,938
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`entitled “Methods for producing indicia on diamonds.”
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`III. BACKGROUND OF THE GEMSTONE INDUSTRY
`10. From the perspective of an average consumer, trying to understand
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`gemstone pricing can be bewildering. There is a fear of being cheated and
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`overpaying because the characteristics used to value a gemstone are somewhat
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`vague and subjective.
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`11.
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`In the gemstone industry, the “4Cs” are used to value a gemstone:
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`carat, color, clarity, and cut. Of these four, only the carat weight is not subjective,
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`because a loose stone can be weighed, and mounted stones can be measured and
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`compared to templates to determine the carat weight.
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`12. Color, however, is open to interpretation and viewing conditions.
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`Light quality can affect the perception of gemstone color. That is why gemstones
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`are graded for color under standardized light bulbs. The cut of the gemstone can
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`also influence color perception.
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`13. Clarity is an aesthetic judgment call. It rests on the size of
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`imperfections in the gemstone, the location of the imperfections, and how the
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`imperfections reflect within the gemstone.
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`14. Cut can make stones appear brilliant or dull. To achieve an ideal cut,
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`sometimes weight is sacrificed.
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`15. A professional gemologist examines and grades a gemstone based on
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`the 4Cs, but this grade is not apparent to a typical customer from just looking at the
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`gemstone. Thus, the gemstone does not intrinsically carry the evaluation with it.
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`In fact, it is typically not possible for a customer to even identify one gemstone
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`among others.
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`16. A typical technique for identifying gemstones is called a “grading
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`plot.” When gemologists typically grade a gemstone, they record the significant
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`internal and external characteristics of the gemstone as an identification of the
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`gemstone—like a fingerprint. The plot can later be used to identify a gemstone
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`and correlate a particular gemstone with its grading.
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`17. A problem with relying on a plot to identify a diamond with certainty
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`is that creating and verifying a diamond plot is time-consuming, requires a
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`gemologist, and is therefore expensive. It is therefore not suitable for high-volume
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`commercial transactions. Identifying a diamond by a laser marking imprinted on
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`the gemstone is preferable, because it is faster than using a diamond plot and more
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`reliable.
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`18. GIA is an example of a company that marks indicia on a gemstone to
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`carry the gemstone grade with it. For example, GIA has a Diamond Dossier®
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`report, which includes a grading of the 4Cs of the gemstone, and a corresponding
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`report number. The report number is inscribed onto the gemstone. GIA stores the
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`report number for the gemstones it grades. Thus, a customer can take any
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`gemstone to a jeweler to read the inscribed report number using a microscope, and
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`then, for recent reports, input the report number at GIA’s website to pull the grade
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`of the diamond (http://www.gia.edu). The Dossier does not include a plotted
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`diagram, and does not need one.
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`19. By inscribing the quality of a gemstone on the stone itself, this proof
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`makes the stones more trusted therefore more marketable and fit for sale. In
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`addition, a logo of a trusted company, when added, reinforces the trust. Marked
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`gemstones are also more marketable, because customers know that what they see is
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`what they get.
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`IV. EARLY TECHNIQUES FOR LASER INSCRIPTION
`20. Historically, various techniques arose for inscribing gemstones, such
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`as diamonds, with lasers. Two early examples were Gresser, filed by LKI in 1980
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`(Ex. 1010), and U.S. Patent No. 4,467,172 to Ehrenwald et al. (“Ehrenwald”) (Ex.
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`2009), filed in 1983. Both Gresser and Ehrenwald disclosed inscribing gemstones
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`with identifying indicia using lasers. (Ex. 1010, 1:41-50, 2:43-49; Ex. 2009,
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`Abstract, 1:16-18, 2:16-19.)
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`21. Gresser and Ehrenwald disclose using computer-controlled stages to
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`perform the inscription. (Ex. 1010, 2:63-3:3, 3:4-19; Ex. 2009, 2:40-43, 5:9-14.)
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`Both Gresser and Ehrenwald disclose adjusting the stages to perform initial setup
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`procedures. For example, in Gresser, an operator views a profile of a gemstone
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`from a microscope located above the gemstone. While viewing the gemstone from
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`this angle, the operator uses a joystick to move a stage to line up the microscope
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`cross hairs with the girdle profile. (Ex. 1010, 5:1-6, see also id., 5:45-59.) The
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`operator presses a button on the computer, which prompts the computer to store
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`this value. (Id., 5:16-21.) The computer uses this value, among other values
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`entered by the operator, to set a starting point of the inscription and ensure that the
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`laser remains focused when moving along the curved surface of the girdle. (Id.,
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`5:45-59.) Gresser also discloses the operator taking various measurements using
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`the microscope, such as girdle length and width, and then entering those
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`measurements into the computer. (Id., 4:61-68.) Ehrenwald also discloses an
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`operator viewing the gemstone through a microscope and adjusting the stage to set
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`the focus and starting point as part of setup. (Ex. 2009, 2:40-43.)
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`22. Prior art systems like Gresser and Ehrenwald, however, had certain
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`drawbacks. One drawback was that the inscription process, particularly setup, was
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`time consuming and required expertise. For example, a skilled technician had to
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`be able to view the gemstone via a microscope and make detailed measurements
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`and placements of the gemstone, and then turn around and input those
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`measurements manually into a computer having a microprocessor. (Ex. 1010,
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`4:61-68, 5:22-44.) Taking the measurements and then inputting them into the
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`computer was relatively time-consuming and susceptible to human error. For
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`example, an operator could make a mistake and incorrectly type the measurement
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`into the computer. This could potentially burn a gemstone in such a way to reduce
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`its value. This kind of mistake was costly to rectify. The stone would have to be
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`returned to a polisher to polish out the bad inscription. The girdle of most stones
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`looks like ground glass. A polished mark might raise a question about the quality
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`of the stone. There is also a weight loss of the gemstone associated with the
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`polishing.
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`23. The operator’s vision could also be a source of error, since the
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`operator is making manual measurements. To guard against this type of error, a
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`skilled technician would need to spend time carefully making the measurements
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`and inputting them into the computer. As a result, prior art systems, such as set
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`those forth in Gresser and Ehrenwald, were slow and had a limited throughput at
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`which gemstones could be inscribed.
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`24. While the laser inscription systems in Gresser and Ehrenwald could be
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`used to mark some gemstones, because they were somewhat slow, their use in
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`high-volume applications was not feasible. Thus, the systems in Gresser and
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`Ehrenwald were better suited for inscribing high-value stones that constitute a
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`fairly limited volume in the industry. These systems, however, would generally
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`not be used to inscribe smaller stones of typically lower value, but which are sold
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`in higher volume.
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`V.
`
`INVENTION OF THE ’351 PATENT
`25. The ’351 Patent disclosed several improvements over prior art such as
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`Gresser and Ehrenwald, which allowed gemstones to be inscribed faster and
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`without error. The faster inscription could enable the inscription of smaller, low-
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`value stones that are high-volume sellers. Thus, the ’351 Patent contributed to a
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`large improvement in overall inscription throughput. It also took the process from
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`bench-top applications to industrial production levels.
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`26. The ’351 Patent explains that its techniques can be used to inscribe a
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`gemstone in just 90 seconds and tallies the time required for the various steps. (Ex.
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`1001, 19:60-62.) Mounting/dismounting of the stone with its system takes 20-30
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`seconds (id., 19:55-57), locating the inscription content on the gemstone take 30-
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`40 seconds with a “painting” technique (id., 19:57-60), and the actual inscription
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`takes approximately 20-35 seconds (id., 19:42-45). This is considerably faster than
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`prior art systems, such as Gresser and Ehrenwald, which required an experienced
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`technician to make tedious measurements of the gemstone based on viewing it, to
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`input those measurements into a computer, and to then separately input the
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`inscription content in the computer to generate an inscription.
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`27. The combining of image information with inscription content to
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`generate the inscription, for example, by painting the inscription content onto the
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`image, is a large part of speeding up the inscription process. For example, by
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`viewing inscription content superimposed and overlaid onto the gemstone image
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`for positioning (id., 17:8-18), the operator can quickly and accurately locate the
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`inscription content on the gemstone, and have confidence that the actual inscription
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`will be marked at the displayed location. This can be done by a relatively
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`inexperienced operator, using a mouse and keyboard in conjunction with a
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`computer screen. (Id.) In addition, the operator can easily change as needed the
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`size, shape, and content of the inscription in a few keystrokes and mouse
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`movements. These simple operations allow for precise positioning of inscription
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`content onto a gemstone. There is also less chance of error, because the operator is
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`not tediously making measurements with one device (a microscope) and then
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`manually entering those numbers into another device (a computer).
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`Necip Alev
`ja@bestweb.net
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`
`Education
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`Carnegie-Mellon University
`Bachelor of Science in Electrical Engineering and Computer Science
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`Professional Experience
`
`Westinghouse Hagan Systems division
`Digital Design Engineer
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`
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`1969
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`
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`1969 – 1972
`
`•
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`Involved in design and production of highly reliable computers that controlled all
`aspects of Westinghouse built power plants, including Nuclear power
`• Part of the design team of the revolutionary PRODAC 2000 computer, eliminating the
`conventional mother board architecture
`• Disclosed a patentable EPROM driven microcomputer and automated way for
`generating printed circuit layouts which contained artificial intelligence components
`
`
`Carnegie-Mellon University
`Department of Biotechnology
`University of Pittsburg
`Department of Pharmacology
`Research Assistant
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`1972 – 1974
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`
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`• Neurophysiological research involving feline taste sensation
`• Recorded single cell responses of neurons of the cat’s tongue that innervated the
`tongue in response to different chemicals
`• Responsibilities included, but not limited to, surgery, design of instrumentation, design
`of interface with computers and software analysis of data
`• Results published in 'Brain Research Magazine' exhibiting the first time that the feline
`tongue measures amino-acid content not sweet, sour, bitter and salt as previously
`believed
`
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`Harry Winston Inc.
`Director of Research and Development
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`
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`1974 – 1995
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`• Responsible for automating company operations, including computer systems, sorting
`grading, and manufacturing
`• Researched sorting and marking of rough stones, making of final product and
`intervening steps such as cleaving, sawing, bruting and facet cutting in addition to
`grading of final stones into weight, color, cut, and clarity
`• Projects included, but not limited to:
`• A weight sorting machine
`• A color sorting machine
`• A clarity measuring machine
`• A machine for bruting
`• Machines for diamond cutting
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`IPR2015-00024
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`Appendix A - Page 1
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`
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`Necip Alev
`ja@bestweb.net
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`• Laser assisted manufacturing and marking techniques
`• Color improvement and synthesis of diamonds by high pressure or vacuum
`deposition
`
`
`25th Hour
`Founder and President
`
`
`
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`1995 – 1997
`
`• Established online music distribution company
`• Raised venture capital and developed marketing plans
`• Wrote software programs
`• Developed relationships with people at high level in recording companies
`
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`KALYON Inc.
`Founder and President
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`
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`1998 – 2000
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`• Founded and managed company focused on innovative banner advertising on the
`internet
`• Pitched idea to potential customers
`• Collected and analyzed data into database
`• Educated clients regarding web advertising
`• Designed all art work in-house
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`WebMarketing, LLC
`Chief Technology Officer
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`2000 – 2003
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`• Created company and oversaw IT and other web technologies
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`KALYON Inc.
`Founder and President
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`
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`1984 to present
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`• Developed innovative high tech company
`• Managed proprietary projects related to eclectic web technology
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`IPR2015-00024
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`Appendix A - Page 2
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