Paper 7
`Trials@uspto.gov
`571-272-7822
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`Date Entered: July 21, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEMOLOGICAL INSTITUTE OF AMERICA INC.
`Petitioner,
`
`v.
`
`DIAMOND GRADING TECHNOLOGIES LLC
`Patent Owner.
`____________
`
`Case IPR2016-00456
`Patent RE44,963
`____________
`
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: July 21, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEMOLOGICAL INSTITUTE OF AMERICA INC.
`Petitioner,
`
`v.
`
`DIAMOND GRADING TECHNOLOGIES LLC
`Patent Owner.
`____________
`
`Case IPR2016-00456
`Patent RE44,963
`____________
`
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-00456
`Patent RE44,963
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`I. INTRODUCTION
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`
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`
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`Gemological Institute of America, Inc. (“Petitioner”) filed a Petition
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`requesting an inter partes review of claims 1, 14, 16, 17, 32, 34, 35, 53, 55,
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`76, 79, 80, 82, 83, 85, 88, 94, 98, 114, and 120 of U.S. Patent No. RE44,963
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`(Ex. 1001, “the RE’963 patent”). Paper 2 (“Pet.”). Patent Owner, Diamond
`
`Grading Technologies, filed a Preliminary Response. Paper 6 (“Prelim.
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`Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that
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`an inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . and any response . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
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`1 of the claims challenged in the petition.”
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`
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`For the reasons that follow, we determine that Petitioner has not
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`established a reasonable likelihood of prevailing with respect to at least one
`
`of claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79, 80, 82, 83, 85, 88, 94, 98,
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`114, and 120 of the RE’963 patent. Accordingly, we deny the Petition and
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`do not institute an inter partes review.
`
`A. Related Matters
`
`Petitioner and Patent Owner identify the following pending matters as
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`relating to the RE’963 patent: Diamond Grading Technologies LLC v.
`
`American Gem Society LLC, No. 2:14-cv-1161 (E.D. Tx.) and Diamond
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`Grading Technologies LLC v. Gemological Institute of America, No: 2:14-
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`cv-1162 (E.D. Tx.). Pet. 1; Paper 5, 1–2. The RE’963 patent is also the
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`subject of a concurrently filed Petition in IPR2016-00455. Pet. 2; Paper 5, 2.
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`B. The RE’963 Patent
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`The RE’963 patent relates “generally to gemstones, and more
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`particularly to a computer-based system and method for evaluation of a
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`2
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`gemstone by modeling light propagating through the gemstone.” Ex. 1001,
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`
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`1:14–17. By way of background, the RE’963 patent discusses the 1919
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`work of Antwerp diamond cutter Marcel Tolkowsky, who established the
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`mathematical basis for an optimal brilliant cut of a diamond in wide use
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`today. Id. at 1:20–26. However, according to the RE’963 patent,
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`Tolkowsky’s model is two-dimensional and, therefore, does not account for
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`full three-dimensional reflective and refractive effects, nor does it provide
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`for variations in facet types, sizes, positions, or asymmetries in some cuts.
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`Id. at 1:32–37. Moreover, Tolkowsky’s model relies upon a single incident
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`ray of light, which does not account for the normal illumination from a
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`myriad of directions. Id. at 1:38–42.
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`Accordingly, the RE’963 patent describes a computer-based system
`
`for evaluating and grading a gemstone cut using a data set that includes the
`
`material characteristics of the stone and geometrical cut data for an existing
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`or proposed cut. Ex. 1001, 1:53–65. “According to the invention, an
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`illumination model comprised of one or more light sources is used to
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`‘illuminate’ the stone. Light beams from the light sources are traced or
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`modeled as they enter the stone, are reflected among the various facets
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`inside the stone, and exit the stone.” Id. at 2:1–5. Attributes of light exiting
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`the stone, including intensity, dispersion, scintillation, or others, are
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`measured to evaluate the quality of the cut. Id. at 2:5–10.
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` Figure 1 of the RE’963 patent is reproduced below:
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`Figure 1 is a diagram of light source 104 illuminating gemstone 100.
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`Ex. 1001, 6:25–26. In Figure 1, light beam 112 is refracted into stone 100
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`by facet 108, and impinges on facet 116. Id. at 6:29–30. Depending on its
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`angle of incidence at facet 116, beam 112 creates reflected beam 120 or
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`refracted beam 124. Id. at 6:31–32. Although light beam 112 is shown
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`impinging only one facet, in reality it may impinge on multiple facets
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`creating multiple child beams. Id. at 6:50–54. The light beam is traced
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`through subsequent reflections and refractions until the light energy is
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`exhausted or sufficiently diminished, and, in a subsequent step, the light
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`refracted out of the stone is evaluated. Id. at 7:65–8:8.
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`Patent RE44,963
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`C. Illustrative Claim
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`
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`All challenged claims are independent claims. Claims 1 and 17 are
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`illustrative of the claimed invention and are reproduced below without
`
`bracketed text (representing deletions) or italicized text (representing
`
`additions):
`
`1. A method for grading the cut of a gemstone, comprising the
`steps of:
`
`illuminating a computerized gemstone model using a
`computerized illumination model, wherein said gemstone model
`is a full three-dimensional (3D) representation of said gemstone
`that defines the geometry and position of all of the gemstone
`facets, and wherein said illumination model produces a light
`beam;
`
`refracting said light beam into said gemstone model through a
`first facet of said gemstone model to produce a refracted light
`beam, said refracted light beam via said first facet of said
`gemstone model is modeled with a three-dimensional shape and
`the three-dimensional shape of the refracted light beam is defined
`by an area of said first facet;
`
`reflecting said refracted light beam within said gemstone model
`from a second facet of said gemstone model to produce a
`reflected light beam;
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`refracting said refracted light beam out of said gemstone model
`through said second facet of said gemstone model;
`
`refracting said reflected light beam out of said gemstone model
`through a third facet of said gemstone model to produce an
`exiting light beam; and
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`measuring said exiting light beam.
`
`
`17. A method for establishing maximum attribute values for a
`gemstone cut for use in evaluating gemstones having said
`gemstone cut comprising the steps of:
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`varying a proportion parameter, by a hardware processor, for the
`gemstone cut to obtain a plurality of gemstone models, each of
`said gemstone models having a different proportion permutation;
`
`
`
`evaluating each of said gemstone models, by the hardware
`processor, to obtain a set of values for each attribute, at least one
`attribute being an amplitude value used to determine whether a
`refraction is to be processed in determining a grade of said each
`of said gemstone models; and
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`selecting the maximum value of each attribute from said set of
`attribute values to establish maximum attribute values for the
`gemstone cut.
`
`
`Ex. 1001, 64:50–65:7, 67:1–17.
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`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79,
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`80, 82, 83, 85, 88, 94, 98, 114, and 120 are unpatentable based on the
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`following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`Kojima1 and Glassner2
`
`§ 103(a)
`
`1, 14, 16, 17, 32, 34, 35, 53, 55,
`76, 80, 94, 98, 114, and 120
`
`Kojima, Glassner, and
`Dodson3
`Kojima, Glassner, and
`Thomas4
`
`§ 103(a)
`
`83 and 85
`
`§ 103(a)
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`79, 82, and 88
`
`1
`
`
` Japanese Unexamined Patent Application Publication No. JP-57-199944
`(Ex. 1014) and certified English translation thereof (Ex. 1002) (“Kojima”)
`2 AN INTRODUCTION TO RAY TRACING (Andrew S. Glassner ed. 1989) (Ex.
`1003) (“Glassner”)
`3 J.S. Dodson, A Statistical Assessment of Brilliance and Fire for the Round
`Brilliant Cut Diamond, 25 OPTICA ACTA 681 (1978) (Ex. 1004) (“Dodson”)
`4 S.W. Thomas, Dispersive Refraction in Ray Tracing, 2 INT’L J. COMPUTER
`GRAPHICS 3 (1986) (Ex. 1008) (“Thomas”)
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`II. DISCUSSION
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`A. Claim Interpretation
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`In an inter partes review, claim terms in an unexpired patent are given
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`their “broadest reasonable construction in light of the specification of the
`
`patent in which they appear.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
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`Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (holding that the Patent
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`Office had the “legal authority to issue its broadest reasonable construction
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`regulation”). Under the broadest reasonable construction standard, claim
`
`terms are given their ordinary and customary meaning, as would be
`
`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.
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`2007).
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`“light beam”/ “beam of light”
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`Neither party proposes an explicit construction of the claim terms
`
`“light beam” or “beam of light.” However, in summarizing its relied-upon
`
`reference, Petitioner contrasts light beams from light rays as follows:
`
`Glassner discloses beam tracing, a computer graphics
`rendering method that simulates the passage of beams (versus
`rays) of light through an optical system. . . . As disclosed by
`Glassner, “many aspects of the beam tracing algorithm are very
`similar to those of standard ray tracing.” Specifically, “in this
`approach rays are replaced by beams which are cones with
`arbitrary polygonal cross section. That is, a beam consists of “a
`collection of rays which originate at a common apex and pass
`through some planar polygon.”
`
`Pet. 12–13 (internal citations removed) (emphasis added). By contrast,
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`Petitioner contends Kojima models the “cross-sectional shape of a diamond”
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`“through which simulated rays are traced.” Id. at 11 (quoting Ex. 1002, 1).
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`
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`Petitioner does not necessarily contend the rays of Kojima do not constitute
`
`light beams, but contends that “[t]o the extent Kojima’s rays do not
`
`themselves disclose a light ‘beam,’ Glassner specifically discloses a ‘beam
`
`tracing’ illumination model that uses coherence between light rays
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`emanating from a common source to replace multiple rays with one common
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`‘beam.’” Id. at 18–19.
`
`Consequently, without having provided us with an explicit
`
`construction, as our rules require, Petitioner nonetheless requires us to take a
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`position on the interpretation of this term. See 37 C.F.R. § 42.104(b)(4)
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`(requiring a statement identifying “[h]ow the challenged claim is to be
`
`construed.”). For its part, Patent Owner neither provides an explicit
`
`construction of the term, nor takes a position as to whether the “rays” in
`
`Kojima disclose the claimed light beams or whether Glassner is required to
`
`satisfy this limitation.
`
`As to the meaning of the terms, we have considered Petitioner’s
`
`contentions as well as the specification of the RE’963 patent. See Microsoft
`
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“[C]laims
`
`should always be read in light of the specification and teachings in the
`
`underlying patent”). Significantly, as pointed out by Petitioner’s declarant,
`
`Dr. Glassner, the RE’963 patent describes beams of light as having “an
`
`associated cross-sectional intensity.” Ex. 1005 ¶ 61 (quoting Ex. 1001,
`
`14:57–58). This is consistent with various embodiments in which the light
`
`beam is modeled using a data structure, which includes an “area_x” element
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`containing the cross-section area of the beam. Id. at 19:33–37, 19:60–62.
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`Because the light beams have a cross-sectional area and a direction of travel,
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`the beam is three-dimensional. Id. at 21:36–40. As a result, “evaluation of
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`
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`the stone . . . is far superior to that obtainable from two-dimensional
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`models.” Id. at 21:40–42. As such, the specification supports Petitioner’s
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`position that light beams consist of groups of rays with a cross-sectional
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`area.
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`Moreover, this understanding also accords with the Glassner reference
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`in which, as discussed above, beams are described as collections of rays
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`originating at a common point and passing through a polygonal plane. See
`
`Ex. 1003, 243. Glassner also discusses operating on “entire families of rays
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`which are bundled as beams.” Id. at 242.
`
`Accordingly, we determine that the evidence of record (both the
`
`specification and extrinsic evidence) supports Petitioner’s implicit
`
`construction of light beams and beams of light. Therefore, we construe
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`“light beams” and “beams of light” as “light constituting multiple rays and
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`having a cross-sectional area,” as the broadest reasonable interpretation
`
`consistent with the specification.
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`Parties’ proposed terms for construction
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`Petitioner proposes construction of the terms “weight” and
`
`“weighing,” which appear in a number of the challenged claims, as well as
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`for the means-plus-function terms in challenged claims 32, 34, 35, and 53.
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`Pet. 9–10. Patent Owner disputes Petitioner’s proposed constructions.
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`Prelim. Resp. 14–23.
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`We have reviewed the parties’ contentions and, in view of our
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`determination below, determine that construing these terms is unnecessary to
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`resolving the disputed issues before us. We therefore determine that no
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`specific construction of these terms is necessary. Wellman, Inc. v. Eastman
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`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be
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`construed ‘to the extent necessary to resolve the controversy’”) (citing Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`B. Alleged Obviousness of Claims 1, 14, 16, 17, 32,
`34, 35, 53, 55, 76, 80, 94, 98, 114, and 120
`over Kojima and Glassner
`
`Petitioner contends claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 80, 94,
`
`98, 114, and 120 are obvious over the combination of Kojima and Glassner.
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`Pet. 17–51. Petitioner also relies upon Dr. Glassner to support its
`
`contentions. Ex. 1005. We begin our discussion with brief summaries of
`
`the references and then address the parties’ contentions.
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`1. Kojima (Ex. 1002)
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`Kojima describes a simulation for grading the cut of a diamond. Ex.
`
`1002, 1. Figures 6 of Kojima is reproduced below:
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`
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`
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`Figure 6 represents a diamond cross-section measured on an X-Y coordinate
`
`system according to the invention of Kojima. Id. at 3. As shown in Figure
`
`6, light beams L1–LN are directed perpendicularly at the top of the diamond
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`and parallel to the Y axis. Id. at 2. Lq is represented by x=q and intersects
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`one of line segments lm, op, and pl, where it is refracted and enters the
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`
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`interior of the diamond, where its path is determined by Snell’s law. Id.
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`Simulations are performed on each of the N rays of light to determine which
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`N’ rays result in brilliance, which is then used to grade the cut according to
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`N’/N. Id. at 3. Although, the diamond model is only a cross-section, several
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`cross-sections can be simulated and results judged comprehensively. Id.
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`2. Glassner (Ex. 1003)
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`Glassner contains various excerpts from a book edited by Petitioner’s
`
`declarant. See Ex. 1003, Cover. In the excerpted portions, Glassner
`
`describes “ray tracing” as lending itself to “easy representation, efficient
`
`intersection calculations, and great generality.” Id. at 242. Glassner
`
`explains that some of these benefits can be traded for others such as
`
`“exploiting coherence,” and “[o]ne way to do this is to dispense with
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`individual rays and, instead, operate simultaneously on entire families of
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`rays which are bundled as beams, cones, or pencils.” Id. For example, in
`
`one particular beam tracing algorithm, “rays are replaced by beams which
`
`are cones with [an] arbitrary polygonal cross section.” Id. at 243.
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`Figures 26 and 27 of Glassner are reproduced below:
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`Figures 26 and 27 depict perspectives of a beam intersecting a square
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`causing a polygonal “clip out” and reflection where the beam is partially
`
`obstructed by the polygon surface. Ex. 1003, 244.
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`
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`3. Analysis
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`Petitioner presents a proposed mapping of Kojima and Glassner to
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`claim 1. Pet. 17–28; see also Ex. 1005 ¶¶ 122. In particular, Petitioner
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`contends Kojima, as a computer model for evaluating a diamond’s brilliance
`
`by simulating light beams on an upper portion of the cross-section of a
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`diamond model, discloses a method for grading the cut of a gemstone, as
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`recited by claim 1. Pet. 17 (citing Ex. 1001, 1–3).
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`Petitioner also contends Kojima and Glassner teach “illuminating a
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`computerized gemstone model using computerized illumination model . . .
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`wherein said illumination model produces a light beam.” Pet. 17–18
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`(quoting Ex. 1001, 64:52–57). Petitioner further contends a person of
`
`ordinary skill in the art would have been motivated to produce multiple
`
`cross-sections to create a corresponding 3D model of the gemstone with
`
`planar facets. Id. According to Petitioner, to the extent Kojima’s light
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`beams do not disclose the recited “light beams,” as the term is construed,
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`“Glassner specifically discloses a ‘beam tracing’ illumination model that
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`
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`uses the coherence between light rays emanating from a common source to
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`replace multiple rays with one common ‘beam.’” Id. at 18–19 (Ex. 1003,
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`242–246).
`
`Petitioner contends a “plausible rationale” exists for combining
`
`Glassner and Kojima. Id. at 14–15 (citing Broadcom Corp. v. Emulex Corp.,
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`732 F.3d 1325, 1355 (Fed. Cir. 2013)). According to Petitioner, each of
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`Kojima, Glassner, Dodson, and Thomas describe computer programs used to
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`model and simulate light passing through a computerized optical system. Id.
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`(citing Ex. 1005 ¶ 110). Therefore, Petitioner contends, it would have been
`
`straightforward and simple substitution of features for a person of ordinary
`
`skill to substitute Kojima’s algorithm with the beam-tracing algorithm of
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`Glassner to provide additional functionality and performance. Id. at 15
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`(citing Ex. 1005 ¶¶ 113). As evidence of this, Petitioner cites Glassner’s
`
`teaching that rays can be grouped into beams, which lead to faster execution,
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`effective anti-aliasing, and additional optical effects, with the restriction that
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`“all objects must be constructed with planar polygonal facets.” Id. at 16
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`(citing Ex. 1003, 243; Ex. 1005 ¶ 116). Thus, Petitioner concludes, one of
`
`ordinary skill in the art would have modified the computerized cut grading
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`system of Kojima using the beam tracing techniques of Glassner. Id. at 19.
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`Patent Owner disputes that a person of ordinary skill in the art would
`
`have combined Kojima and Glassner to obtain the independent claims with a
`
`reasonable expectation of success. Prelim. Resp. 48–58. According to
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`Patent Owner, the change from the ray tracing model, as used in Kojima, to
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`beam tracing, which is only briefly described in Glassner, is “dramatic,” but
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`Petitioner does not explain how a person of ordinary skill would have made
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`the modifications to obtain the claimed structure. Id. at 49–50. Patent
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`Owner notes Kojima relies on a two-dimensional model of the diamond,
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`illuminated with parallel rays from a limited set of directions. Id. at 51–52.
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`As such, Patent Owner, contends, modifying Kojima to obtain complex
`
`beam tracing through individual facets would render Kojima unsuitable for
`
`its intended purpose of providing a simplified model. Id.
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`We determine that Petitioner has not shown sufficiently that the
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`proposed substitution of Kojima’s two-dimensional ray tracing algorithm
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`with the beam-tracing algorithm discussed in Glassner would have been
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`obvious to a person of ordinary skill in the art at the time of the invention.
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`Kojima is based on a two-dimensional model with incident parallel rays.5
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`The two-dimensional, ray structure is important to Kojima because the
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`simulation is based on a mapping of the cross-section of the diamond to a
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`two-dimensional X-Y coordinate system, where each ray is modeled as a
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`line, whose path follows Snell’s law for refraction and whose angle of
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`incidence equals the angle of reflection for reflected rays. See Ex. 1002, 2.
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`The same process is repeated for each ray, “Lq”. Id. As Glassner makes
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`clear, assuming infinitesimally thin rays lends to easy representation,
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`intersection calculations, and great generality. Ex. 1003, 242.
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`
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`In introducing beam tracing, Glassner notes these benefits of ray
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`tracing, but then observes “some of these benefits can be traded in exchange
`
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`5 Although the translated version of Kojima uses the term beam and ray
`interchangeably (see Ex. 2002, 1–3), Petitioner does not contend Kojima’s
`rays are “light beams,” as that term is construed in the RE’963 patent.
`Moreover, given that construction, discussed above, the rays disclosed in
`Kojima are not shown to consist of multiple rays and have a cross-sectional
`area.
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`for others.” Id. However, in doing so, Glassner acknowledges that,
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`
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`depending on the approach, “we may need to impose constraints . . ., such as
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`restricting the type of primitive objects.” Id. Glassner briefly discusses
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`several approaches to beam tracing, including that of Heckbert and
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`Hanrahan. Id. at 243. In this approach, which appears to be the one
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`Petitioner relies on,6 “rays are replaced by beams which are cones with
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`arbitrary polygonal cross-section. That is, a beam consists of a collection of
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`rays which originate at a common apex and pass through some planer
`
`polygon.” Id. Thus, as evident from these descriptions as well as the
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`representation of beams in Figures 26 and 27 (reproduced above), the
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`proposed beam tracing algorithm dispenses with two assumptions in Kojima:
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`parallel incident rays and a two-dimensional model. Although Kojima also
`
`discusses other non-parallel ray models (see Ex. 2002, 3), none of these
`
`appear to be cone shaped. In addition, because Glassner’s beams are three
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`dimensional, having a direction of travel and planar polygonal cross-section,
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`Petitioner fails to establish how these teachings regarding three dimensional
`
`beams would be used in the context of Kojima’s two-dimensional
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`calculations. See Pet. 17–18.
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`We have considered Petitioner’s reliance on Kojima’s statement that,
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`“[s]ince a diamond has rotational symmetry, a more rational result can be
`
`obtained if several cross-sections are measured and simulated,” it teaches a
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`three-dimensional model. Pet. 18 (quoting Ex. 1002, 3). However, even if
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`several cross-sectional simulations result in a three-dimensional model, as
`
`Petitioner contends (Pet. 18), neither Petitioner nor its declarant address how
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`6 Petitioner cites to excerpts in the discussion of Heckbert and Hanrahan’s
`approach. See, e.g., Pet. 19.
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`15
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`IPR2016-00456
`Patent RE44,963
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`such repeated two-dimensional simulations can be performed using the
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`three-dimensional cone-shaped beams disclosed in Glassner.
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`More significantly, Kojima explains how each simulated ray is
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`refracted as governed by Snell’s law. Ex. 1002, 2 (“Snell's law, which
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`expresses the relationship between the angle of incidence r and the angle of
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`refraction s, sin r/sin s = index of refraction (≈ 2.42)”). Petitioner relies on
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`this disclosure to explain how Kojima satisfies multiple claim limitations
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`directed to refracting light. See Pet. 19–28 (citing Ex. 102, 2). For example,
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`claim 1 requires “refracting said light beam into said gemstone model
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`through a first facet” and “refracting said refracted light beam out of said
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`gemstone model.” Ex. 1001, 64:58–65:3. However, Glassner observes that
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`“[r]efraction is the one phenomenon which does not preserve the nature of
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`beams. Because of nonlinearity, a refracted beam may no longer be a cone.”
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`Ex. 1003, 243 (emphasis added). Although Glassner goes on to state that the
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`effect of refraction can be approximated with a linear transformation, it
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`acknowledges that this is another compromise and provides no further
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`explanation. Id. Here again, neither Petitioner nor its declarant address
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`whether such approximations could be made practicably and with acceptable
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`compromises within the context of Kojima’s system for simulating multiple
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`reflections and refractions of a single ray through a diamond cross-section.
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`Petitioner contends it presented a “plausible rationale” for combining
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`Kojima and Glassner, citing Broadcom Corp. v. Emulex Corp., 732 F.3d
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`1325, 1355 (Fed. Cir. 2013). However, in Broadcom, the Federal Circuit
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`held that even assuming there was motivation to combine the references, the
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`record lacked evidence that there was a “reasonable expectation that this
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`significant change would be successful.” Id. at 1355. Similarly, while
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`16
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`Petitioner here argues it would be a “straightforward” and “simple
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`
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`substitution” to modify Kojima to use Glassner’s beam tracing, it relies
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`solely on the general statements in Glassner to support its argument without
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`addressing any of the issues discussed above, which stem from Glassner
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`itself, including the difference in light source (cone-shaped as opposed to
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`parallel), three-dimensional beams in a two-dimensional model,
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`compromises to the efficiencies obtained by ray tracing, and whether
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`approximations adequately address each of the multiple refractions that
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`occur in the diamond model simulated in Kojima. Pet. 15–16 (citing. Ex.
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`1003, 242–243).
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`Consequently, for the foregoing reasons, we determine Petitioner has
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`not established a reasonable likelihood in prevailing on its proposed grounds
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`of obviousness with respect to claim 1. As best we can discern from the
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`Petition’s cross-references between claim limitations of many of the
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`challenged claims, Petitioner also relies on the combination of Kojima and
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`Glassner (either alone or combination with Dodson and Thomas) for claims
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`14, 16, 32, 34, 55, 76, 79, 80, 82, 83, 85, 88, 94, 98, 114, and 120. Pet. 29–
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`59. Accordingly, for the same reasons, we determine Petitioner has not
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`established a reasonable likelihood in prevailing on its proposed grounds of
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`obviousness with respect to these claims as well.
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`Although claims 17, 35, and 53 are included within Petitioner’s
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`proposed ground of obviousness based on the combination of Kojima and
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`Glassner, we observe that Petitioner relies on Kojima alone as teaching or
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`suggesting the limitations set forth in claims 17, 35, and 53. See Pet. 33–40.
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`17
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`Patent RE44,963
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`Accordingly, we address Petitioner’s contentions separately for these claims
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`
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`on the basis of Kojima’s teachings.
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`C. Alleged Obviousness of Claims 17, 35, and 53
`over Kojima
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`Claim 17 recites a “method for establishing maximum attribute values
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`for a gemstone cut,” including “evaluating each of said gemstone models . . .
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`to obtain a set of values for each attribute, at least one attribute being an
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`amplitude value used to determine whether a refraction is to be processed in
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`determining a grade of said each of said gemstone models” and “selecting
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`the maximum value of each attribute from said set of attribute values.”
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`Ex. 1001, 67:1–17. Kojima describes simulating reflections and refractions
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`of light rays to determine which result in brilliance. Ex. 1002, 3. We
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`understand Petitioner to be mapping the brilliance disclosed by Kojima, as
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`teaching one such “attribute” (i.e., amplitude). Pet. 34–35. As for “selecting
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`the maximum value of each attribute from said set of attribute values,”
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`Petitioner contends Kojima “could be used to model multiple gemstone cuts
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`in order to establish cut parameters that result in maximization of certain
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`attribute values (e.g., brilliance).” Id. at 35–36 (citing Ex. 1005 ¶ 128).
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`
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`Patent Owner contends claim 17 requires a plurality of attributes of
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`light exiting the stone. Prelim. Resp. 34. “These attributes may include
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`‘average angle of spectral deviance, white flux density (brilliance), spectral
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`luminance (dispersion or fire), total refraction count (scintillation), spectral
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`flux density, white optical power, spectral power, white intensity, dispersion
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`intensity, total refraction area, and total refraction area to surface area
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`density.” Id. at 32 (citing Ex. 1001, 48:15–21). Responding to Petitioner’s
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`contention that Kojima could be used to model multiple gemstones to
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`establish parameters that result in a maximization of certain attribute values,
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`18
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`Patent Owner contends the claim recites a different limitation: “to obtain a
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`set of values for each attribute, . . . and selecting the maximum value of each
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`attribute.” Id. at 33.
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`We determine that Petitioner has not shown that there is a reasonable
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`likelihood that it will prevail on any of claims 17, 35, and 53 as obvious over
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`Kojima. In requiring “evaluating each of said gemstone models . . . to
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`obtain a set of values for each attribute, at least one attribute being an
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`amplitude value” and “selecting the maximum value of each attribute from
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`said set of attribute values,” claim 17 requires a plurality of attributes,
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`including an “amplitude” attribute. Kojima discloses calculating brilliance,
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`which Petitioner appears to map to an amplitude attribute, but this is only
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`one attribute. To address this deficiency, Petitioner contends “[i]t would
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`have been obvious to one of skill to evaluate each of these models for a
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`number of attributes (e.g., brilliance).” Pet. 34 (citing Ex. 1005 ¶ 125)
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`(emphasis added). As an initial matter, this assertion, which is repeated
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`verbatim by Petitioner’s declarant, fails to provide evidence or explanation
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`as to why a number of unstated attributes might be considered, and is
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`therefore entitled to little weight. See 37 C.F.R. § 42.65(a). Moreover, even
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`taking this assertion as true, it fails to address how this would satisfy the
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`requirement to evaluate and select the maximum value of each attribute, of a
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`plurality of attributes, for each of the plurality of gemstone models. Prelim.
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`Resp. 33–34. Stated differently, Petitioner’s contention that Kojima could
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`be used to model multiple gemstone cuts to maximize a certain attribute
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`(Pet. 35–36), addresses only one such attribute in isolation, but fails to give
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`effect to the claim 17 requirement to select the maximum value for each
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`attribute, for each of the gemstone models.
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`19
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`IPR2016-00456
`Patent RE44,963
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`Accordingly, for the foregoing reasons, we determine Petitioner has
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`
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`not established a reasonable likelihood in prevailing on its proposed grounds
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`of obviousness with respect to claim 17. For each of claims 35 and 53,
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`which recite similar limitations in means-plus-function form, Petitioner
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`relies on a similar mapping to Kojima. As a result, based on the functional
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`language alone, we find Petitioner has not established a reasonable
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`likelihood in prevailing on its proposed grounds of obviousness with respect
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`to these claims as well.7
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`III. CONCLUSION
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`For the foregoing reasons, we are not persuaded that Petitioner has
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`demonstrated a reasonable likelihood that at least one of the challenged
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`claims of the RE’963 patent is unpatentable based on the asserted grounds.
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`IV. ORDER
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`In consideration of the foregoing, it is
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`ORDERED that the Petition is denied.
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`FURTHER ORDERED that no inter partes review will be instituted
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`pursuant to 35 U.S.C. § 314(a) with respect to any of the challenged claims
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`of the RE’963 patent on the ground of unpatentability asserted in the
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`Petition.
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`7 Consequently, it is unnecessary to address the parties’ respective
`identification of the disclosed structure corresponding to these limitations.
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`20
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`IPR2016-00456
`Patent RE44,963
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`FOR PETITIONER:
`C
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