UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SEABERY NORTH AMERICA, INC.
`Petitioner
`
`v.
`
`LINCOLN GLOBAL, INC.
`Patent Owner
`
`
`Case: IPR2016-01568
`Patent 8,747,116
`
`
`
`
`Title: System and Method Providing Arc Welding Training
`in a Real-Time Simulated Virtual Reality Environment
`Using Real-Time Weld Puddle Feedback
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,747,116
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`Mail Stop PATENT BOARD
`U.S. Patent Trial & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Lincoln Global Ex. 2105
`
`Seabery v. Lincoln Global
`
`Case IPR2016-01568
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`TABLE OF CONTENTS
`
`I.
`
`COMPLIANCE WITH FORMAL REQUIREMENTS .................................. 1
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 1
`
`B.
`
`C.
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 1
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................. 2
`
`D.
`
`Counsel and Service Information (37 C.F.R. § 42.8(b)(3)–(4)) ........... 2
`
`E.
`
`F.
`
`G.
`
`Statement of Precise Relief Requested ................................................. 3
`
`Reasonable Likelihood to Prevail ......................................................... 3
`
`The Petition Is Not Duplicative of IPR2016-00749 to the extent
`that Institution of IPR2016-00749 is Denied on Procedural
`Grounds ................................................................................................. 3
`
`II.
`
`IDENTIFICATION OF CHALLENGE .......................................................... 4
`
`A.
`
`Challenged Claims of the ‟116 Patent ................................................... 4
`
`B.
`
`C.
`
`Prior Art Publications ............................................................................ 9
`
`Brief Statement of Grounds for Challenge ..........................................11
`
`III. THE ‟116 PATENT .......................................................................................12
`
`A.
`
`Background .........................................................................................12
`
`B.
`
`C.
`
`Provisional Patent Application No. 61/090,794 ..................................14
`
`Overview of the ‟116 Patent ................................................................16
`
`D.
`
`Prosecution History of the ‟116 Patent ...............................................20
`
`IV. PERSON OF ORDINARY SKILL IN THE ART ........................................22
`
`V.
`
`CLAIM CONSTRUCTION ..........................................................................22
`
`VI. GRAHAM FACTUAL FINDINGS FOR ALL GROUNDS .........................24
`
`
`
`1
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`A. General Scope and Content of the Prior Art .......................................24
`
`B.
`
`Difference Between The Prior Art And The Claims ...........................25
`
`VII. GROUND 1: THE CHALLENGED CLAIMS ARE OBVIOUS IN
`VIEW OF CHOQUET, SCHIRM, AND PORTER 2006 .............................25
`
`A. Motivation to Combine Choquet, Schirm, and Porter 2006 ...............26
`
`B.
`
`C.
`
`Claims 20 and 27 are Obvious ............................................................29
`
`Claims 21 and 28 are Obvious ............................................................40
`
`D.
`
`Claims 22 and 29 are Obvious ............................................................41
`
`E.
`
`F.
`
`G.
`
`H.
`
`Claims 23 and 30 are Obvious ............................................................43
`
`Claims 24 and 31 are Obvious ............................................................44
`
`Claims 25 and 32 are Obvious ............................................................46
`
`Claims 26 and 33 are Obvious ............................................................47
`
`VIII. GROUND 2: THE CHALLENGED CLAIMS ARE OBVIOUS IN
`VIEW OF CHOQUET, SCHIRM, PORTER 2006, AND ARC 2008 ..........49
`
`A. Motivation to Combine Choquet, Schirm, Porter 2006, and ARC
`2008 .....................................................................................................49
`
`A.
`
`Claims 23 and 30 are Obvious ............................................................49
`
`B.
`
`Claims 25 and 32 are Obvious ............................................................50
`
`IX. GROUND 3: THE CHALLENGED CLAIMS ARE OBVIOUS IN
`VIEW OF CHOQUET AND WAITE ...........................................................51
`
`A. Motivation to Combine Choquet and Waite .......................................51
`
`B.
`
`C.
`
`Claims 20 and 27 are Obvious ............................................................53
`
`Claims 21 and 28 are Obvious ............................................................58
`
`D.
`
`Claims 22 and 29 are Obvious ............................................................58
`
`
`
`2
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`E.
`
`F.
`
`G.
`
`H.
`
`Claims 23 and 30 are Obvious ............................................................60
`
`Claims 24 and 31 are Obvious ............................................................60
`
`Claims 25 and 32 are Obvious ............................................................61
`
`Claims 26 and 33 are Obvious ............................................................61
`
`X.
`
`CONCLUSION ..............................................................................................63
`
`
`
`
`
`
`
`3
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`ABBREVIATIONS
`
`‟116 Patent
`
`Ex. 1101, U.S. Patent No. 8,747,116
`
`AAPA
`
`Applicant Admitted Prior Art
`
`Bohnart Dec.
`
`Ex. 1114, Declaration of Edward Bohnart
`
`BRI
`
`Broadest Reasonable Interpretation
`
`CUDA
`
`Compute Unified Device Architecture
`
`GPU
`
`Graphics Processing Unit
`
`MWT/MWD
`
`Mock Welding Tool
`
`PO
`
`Patent Owner
`
`POSITA
`
`Person of Ordinary Skill In The Art
`
`PPS
`
`VR
`
`Programmable Processor-based Subsystem
`
`Virtual Reality
`
`Zyda Dec.
`
`Ex. 1113, Declaration of Dr. Zyda
`
`
`
`
`
`
`
`
`4
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`1101 U.S. Patent No. 8,747,116 (“the ’116 patent”)
`
`1102 Complaint in Lincoln Electric Co. et al. v. Seabery Soluciones, S.L. et
`
`al., Case No. 1:15-cv-01575-DCN, filed on August 10, 2015, in the
`
`U.S. District Court for the Northern District of Ohio (“Complaint”)
`
`1103 U.S. Provisional Patent Application No. 61/090,794, filed on Aug. 21,
`
`2008
`
`1104
`
`Prosecution file history of the ‟116 patent
`
`1105 U.S. Patent Application Publication No. 2008/0038702, titled “Body
`
`Motion Training and Qualification System and Method,” to Choquet
`
`1106 U.S. Patent No. 8,512,043, titled “Body Motion Training and
`
`Qualification System and Method,” to Choquet (“Choquet”)
`
`1107 U.S. Patent No. 7,580,821, titled “Application Programming Interface
`
`for Fluid Simulations,” to Schirm et al. (“Schirm”)
`
`1108
`
`Porter, Cote, Gifford & Lam, “Virtual Reality Welder Training,”
`
`Journal of Ship Production, August 2006, Vol. 22, No. 3 p.126, with
`
`library stamp and WorldCat search page.
`
`1109
`
`Porter, Cote, Gifford & Lam, “Virtual Reality Welder Trainer,”
`
`Joining Technologies
`
`for Naval Applications, Session 5.B,
`
`http://www.aws.org/conferences/abstracts/05 B.pdf, with
`
`internet
`
`archive affidavit for August 30, 2006 and a copy of conference
`
`proceedings book dated November 13-16, 2005. (“Porter 2006”)
`
`
`
`5
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`1110
`
` “ARC+®: Today‟s Virtual Reality Solution for Welders”, Published in
`
`Proceedings of the IIW International Conference, July 10-11, 2008,
`
`with WorldCat search and attached digital version with Medadata.
`
`(“ARC 2008”).
`
`1111 U.S. Patent No. 7,024,342, titled “Thermal Flow Simulation For
`
`Casting/Molding Processes,” to Waite et al. (“Waite”)
`
`1112 U.S. Patent No. 5,877,777, titled “Fluid Dynamics Animation System
`
`and Method,” to Colwell (“Colwell”)
`
`1113 Declaration of Dr. Michael Zyda (“Zyda Dec.”)
`
`1114 Declaration of Edward Bohnart (“Bohnart Dec.”)
`
`1115 Curriculum Vitae of Dr. Michael Zyda
`
`1116 Curriculum Vitae of Edward Bohnart
`
`1117 LinkedIn Profile of David Zboray, downloaded 3/6/2016
`
`1118 LinkedIn Profile of Matt Bennett, downloaded 3/6/2016
`
`1119 LinkedIn Profile of Matthew Wallace, downloaded 3/6/2016
`
`1120 LinkedIn Profile of Jeremiah Hennessey, downloaded 3/6/2016
`
`1121 LinkedIn Profile of Yvette Dudac, downloaded 3/6/2016
`
`1122 LinkedIn Profile of Zachary Lenker, downloaded 3/6/2016
`
`1123 LinkedIn Profile of Andy Lundell, downloaded 3/6/2016
`
`1124 LinkedIn Profile of Paul Dana, downloaded 3/6/2016
`
`1125 LinkedIn Profile of Eric Preisz, downloaded 3/6/2016
`
`1126 Lindholm, et al., “NVIDIA Tesla: A Unified Graphics and Computing
`
`Architecture,”
`
`IEEE Computer Society, March-April 2008,
`
`(“Lindholm 2008”)
`
`
`
`6
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`1127 William T. Reeves, “Particle Systems - A Technique for Modeling a
`
`Class of Fuzzy Objects,” Lucasfilm Ltd, ACM Transactions on
`
`Graphics, Vol. 2, No. 2, April 1983 (“Reeves 1983”)
`
`1128 Welding Handbook, 9th ed., vol. 1, American Welding Society, 2001,
`
`(“AWS Handbook”)
`
`1129
`
`http://www.vrsim.net/history, downloaded 2/26/2016 10:04:37 pm
`
`(“VRSim History”)
`
`1130
`
`http://customerthink.com/vrsim_plans_virtual_reality_training_
`
`systems_for_the_manufacturing_industry,
`
`downloaded
`
`2/28/2016
`
`9:35:06 am (“VRSim Press Release 2010”)
`
`1131 U.S. Patent No. 483,428, titled “Process of Electric Metal Working”
`
`1132 U.S. Patent No. 428,459,
`
`titled “Process of Welding Metals
`
`Electrically”
`
`1133 U.S. Patent No. 317,063, titled “Casting Apparatus”
`
`1134 Andreas Grahn, “Interactive Simulation of Contrast Fluid using
`
`Smoothed Particle Hydrodynamics,” Jan. 1, 2008,
`
`Master's Thesis in Computing Science, Umeå University, Department
`
`of Computing Science, Umeå, Sweden (“Grahn 2008”)
`
`1135 Marcus Vesterlund, “Simulation and Rendering of a Viscous Fluid
`
`using Smoothed Particle Hydrodynamics,” Dec. 3, 2004, Master's
`
`Thesis in Computing Science, Umeå University, Department of
`
`Computing Science, Umeå, Sweden (“Vesterlund 2004”)
`
`1136 M. Müller, et al., “Point Based Animation of Elastic, Plastic and
`
`Melting Objects,” Eurographics/ACM SIGGRAPH Symposium on
`
`Computer Animation (2004), (“Müller 2004”)
`
`
`
`7
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`1137 Andrew Nealen, “Point-Based Animation of Elastic, Plastic, and
`
`Melting Objects,” CG topics, Feb. 2005 (“Nealen 2005”)
`
`1138 US 2010-0062405, published application of the ‟116 patent
`
`1139 Amended Complaint For Patent Infringement in Lincoln Electric Co.
`
`et al. v. Seabery Soluciones, S.L. et al., filed April 18, 2016.
`
`(“Amended Complaint”)
`
`1140 U.S. Patent No. 6,765,584, titled “System and Method for Creating a
`
`Vector Map in a Hardware Graphics Pipeline,” to Matthias M. Wloka
`
`and Gregory E. James (“Wloka”)
`
`1141 D. Tonnesen, Modeling Liquids and Solids using Thermal Particles,
`
`Proceedings of Graphics Interface'91, pages 255-262, Calgary,
`
`Alberta, 1991 (“Tonnesen 1991”)
`
`1142
`
`“CUDA Programming Guide Version 1.1,” 11/29/2007.
`
`1143 Webster's II new college dictionary, 3rd ed., Houghton Mifflin Co.,
`
`copyright 2005, Boston, MA, p1271, definition of “wake.”
`
`1144 Excerpts of Kenneth R. Fast Declaration from IPR2016-00749
`
`
`
`8
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`Petitioner hereby requests that the United States Patent and Trademark
`
`Office proceed with an inter partes review of claims 20-33 of U.S. Patent No.
`
`8,747,116 (“the ‟116 patent”) (Ex. 1101).
`
`I.
`
`COMPLIANCE WITH FORMAL REQUIREMENTS
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`In accordance with 37 C.F.R. § 42.104(a), Petitioner certifies that the ‟116
`
`patent is available for inter partes review. Petitioner further certifies that
`
`Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the ‟116 patent on the grounds identified in this Petition.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`On August 10, 2015, Patent Owner filed Case No. 1:15-cv-01575-DCN,
`
`filed, in the U.S. District Court for the Northern District of Ohio, against Petitioner
`
`(Seabery North America Inc.), in which Patent Owner alleges that Petitioner
`
`infringes the ‟116 and other patents. (Ex. 1102, Complaint). All of them are
`
`subject to IPRs between the same parties listed here:
`
`Patent
`
`8,747,116
`RE45,398
`9,293,056
`9,293,057
`
`
`IPR Number
`IPR2016-00749
`IPR2016-00840
`IPR2016-00904
`IPR2016-00905
`
`The „056 and „057 patents are continuations in part of the „116 patent. The
`
`„398 Reissue is directed to the same general field, has an inventor in common, and
`
`
`
`1
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`cites to many of the same prior art references. The‟056 and „057 patents were first
`
`added to the civil case in an Amended Complaint filed on April 18, 2016. (Exhibit
`
`1139).
`
`C. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Seabery North America Inc.
`176 West Lane
`Stamford, Connecticut 06905
`
`Seabery Soluciones, S.L.
`Almadraga 5
`Poligono Pesquero Norte
`Huelva, Spain 21002
`
`
`
`Miller Electric Mfg. Co.
`1635 West Spencer Street
`Appleton, Wisconsin 54912
`
`Illinois Tool Works Inc.
`3600 West Lake Avenue
`Glenview, Illinois 60025
`
`D. Counsel and Service Information (37 C.F.R. § 42.8(b)(3)–(4))
`
`Address all e-mails and telephone calls to lead and back up counsel (each
`
`associated with the above Customer Number), listed below:
`
`Lead Counsel
`Eligio Pimentel
`Reg. No. 42,076
`epimentel @mcandrews-ip.com
`Direct: 312-775-8015
`
`Back-Up Counsel
`Wayne H. Bradley
`Reg. No. 39,916
`wbradley@mcandrews-ip.com
`Direct: 312-775-8187
`
`Gregory C. Schodde
`Reg. No. 36,668
`gschodde@mcandrews-ip.com
`Direct: 312-775-8117
`
`
`
`Address all communications to:
`
`Eligio Pimentel
`Wayne H. Bradley
`Gregory C. Schodde
`
`
`
`2
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`MCANDREWS HELD & MALLOY
`500 W. Madison, 34th Flr.
`Chicago, IL 60661
`312-775-8000
`
`Please direct all correspondence regarding this proceeding to the lead
`
`counsel at the address listed above. Patent Owner also consents to electronic
`
`service by e-mail to Seabery-IPR@mcandrews-ip.com.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this proceeding to Deposit Account 13-0017 (Customer ID 23446).
`
`E.
`
`Statement of Precise Relief Requested
`
`In accordance with 37 C.F.R. § 42.22, Petitioner respectfully requests
`
`cancellation of claims 20-33 of the ‟116 patent.
`
`F. Reasonable Likelihood to Prevail
`
`In accordance with 35 U.S.C. § 314(a), this Petition establishes a reasonable
`
`likelihood that Petitioner will prevail with respect to at least one of the claims
`
`challenged in this petition because the Petition provides evidence and supporting
`
`reasoning showing that all of the elements of each of claims 20-33 of the ‟116
`
`patent are unpatentable over the prior art.
`
`G. The Petition Is Not Duplicative of IPR2016-00749 to the extent
`that Institution of IPR2016-00749 is Denied on Procedural
`Grounds
`
`This petition asserts the same substantive grounds as the earlier, 2016-00749
`
`petition. The one year bar date for filing an IPR on the „116 patent runs on the
`
`
`
`3
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`anniversary of service of the complaint in the district court case. Patent Owners
`
`Preliminary Response in the „749 IPR raised procedural objections that Petitioner
`
`does not agree with, but would have no opportunity to cure if the PTAB denied
`
`institution after the anniversary date of the original complaint. A second petition
`
`on the same grounds that cures alleged procedural defects is not duplicative under
`
`35 U.S.C. §325(d) to the extent that proceedings are not instituted on procedural
`
`grounds, Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc., IPR2015-
`
`00545, Paper 25 at 21 (July 29, 2015), and there is no substantive burden on patent
`
`owner since the grounds raised are the same and this petition will go forward only
`
`if the earlier petition is denied wholly or partly on a procedural ground.
`
`II.
`
`IDENTIFICATION OF CHALLENGE
`
`A. Challenged Claims of the ’116 Patent
`
`Table 1. Identification of Claim Elements
`
`Claim/
`
`Element
`
`20.pre
`
`20.a
`
`Claim Language
`
`20. A virtual reality welding
`
`system comprising:
`
`a programmable processor-
`
`based subsystem;
`
`Claim/
`
`Element
`
`27.pre
`
`27.a
`
`Claim Language
`
`27. A virtual reality welding
`
`system comprising:
`
`a programmable processor-
`
`based subsystem;
`
`a spatial tracker operatively
`
`a spatial tracker operatively
`
`20.b
`
`connected to said
`
`27.b
`
`connected to said
`
`programmable processor-
`
`programmable processor-
`
`
`
`4
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
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`based subsystem;
`
`based subsystem;
`
`20.c
`
`at least one mock welding
`
`tool emitting simulated
`
`particles onto a surface of a
`
`welding element map and
`
`at least one mock welding
`
`27.c
`
`tool emitting simulated
`
`particles onto a surface and
`
`[the at least one mock
`
`[the at least one mock
`
`20.d
`
`welding tool] configured to
`
`be spatially tracked by said
`
`27.d
`
`welding tool] configured to
`
`be spatially tracked by said
`
`spatial tracker; and
`
`spatial tracker; and
`
`at least one display device
`
`at least one display device
`
`20.e
`
`operatively connected to said
`
`programmable processor-
`
`27.e
`
`operatively connected to said
`
`programmable processor-
`
`based subsystem;
`
`based subsystem,
`
`wherein said system is
`
`wherein said system is
`
`configured to simulate, in a
`
`configured to simulate, in a
`
`virtual reality space, a weld
`
`virtual reality space, a weld
`
`puddle having real-time
`
`puddle created by those
`
`20.f
`
`molten metal fluidity and
`
`27.f
`
`particles having sufficient
`
`heat dissipation
`
`characteristics, and
`
`heat, and having real-time
`
`molten metal fluidity and
`
`heat dissipation
`
`characteristics, and
`
`display said simulated weld
`
`display said simulated weld
`
`20.g
`
`puddle on said at least one
`
`display device in real-time;
`
`27.g
`
`puddle on said at least one
`
`display device in real-time;
`
`and
`
`and
`
`
`
`5
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`wherein said weld puddle is
`
`wherein said weld puddle is
`
`represented in the virtual
`
`represented in the virtual
`
`reality space as a portion of
`
`reality space as
`
`20.h
`
`said welding element map
`
`comprising a plurality of
`
`welding elements each
`
`having changeable channel
`
`parameter values that
`
`dynamically change in real
`
`time during a simulated
`
`welding process and
`
`represent at least
`
`27.h
`
`20.i
`
`a molten metal fluidity
`
`displacement and
`
`27.i
`
`a puddle displacement layer
`
`overlaid onto
`
`a solid metal displacement,
`
`a solid displacement layer
`
`based upon a cooling
`
`that is modified in real time
`
`threshold value for said
`
`by the puddle displacement
`
`20.j
`
`transition between said
`
`molten metal to a solid
`
`27.j
`
`metal.
`
`layer, based upon a cooling
`
`threshold value for said
`
`transition between said
`
`molten metal to said solid
`
`metal.
`
`21. The system of claim
`
`28. The system of claim
`
`20 wherein said at least one
`
`display device includes at
`
`28
`
`27 wherein said at least one
`
`display device includes at
`
`least one user-viewable face-
`
`least one user-viewable face-
`
`6
`
`21
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`mounted display device
`
`mounted display device
`
`capable of being spatially
`
`capable of being spatially
`
`tracked by said spatial
`
`tracked by said spatial
`
`tracker.
`
`tracker.
`
`22. The system of claim
`
`29. The system of claim
`
`20 wherein said simulated
`
`27 wherein said simulated
`
`weld puddle comprises, in
`
`weld puddle comprises, in
`
`said virtual reality space, a
`
`said virtual reality space, a
`
`22
`
`plurality of temporary virtual
`
`29
`
`plurality of temporary virtual
`
`dynamic fluid particles
`
`dynamic fluid particles
`
`overlaying a portion of a
`
`overlaying a portion of a
`
`virtual surface displacement
`
`virtual surface displacement
`
`map.
`
`map.
`
`23. The system of claim
`
`30. The system of claim
`
`20 further comprising a
`
`27 further comprising a
`
`23
`
`welding user interface
`
`simulating a real-world
`
`30
`
`welding user interface
`
`simulating a real-world
`
`welding power source user
`
`welding power source user
`
`interface in real time.
`
`interface in real time.
`
`24. The system of claim
`
`31. The system of claim
`
`23 wherein said real-time
`
`30 wherein said real-time
`
`molten metal fluidity and
`
`molten metal fluidity and
`
`24
`
`heat dissipation
`
`31
`
`heat dissipation
`
`characteristics of said
`
`characteristics of said
`
`simulated weld puddle are
`
`simulated weld puddle are
`
`generated by a physics
`
`generated by a physics
`
`
`
`7
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`model operating on at least
`
`model operating on at least
`
`one GPU.
`
`one GPU.
`
`25. The system of claim
`
`32. The system of claim
`
`20 wherein said system
`
`27 wherein said system
`
`simulates in said virtual
`
`simulates in said virtual
`
`reality space, a weld bead
`
`reality space, a weld bead
`
`having a real-time weld bead
`
`having a real-time weld bead
`
`wake characteristic resulting
`
`wake characteristic resulting
`
`25
`
`from a real-time fluidity-to-
`
`solidification transition of
`
`32
`
`from a real-time fluidity-to-
`
`solidification transition of
`
`said simulated weld puddle
`
`said simulated weld puddle
`
`as said simulated weld
`
`as said simulated weld
`
`puddle is moved, and
`
`puddle is moved, and
`
`displaying said simulated
`
`displaying said simulated
`
`weld bead on said at least
`
`weld bead on said at least
`
`one display device.
`
`one display device.
`
`26. The system of claim
`
`33. The system of claim
`
`20 further comprising a
`
`27 further comprising a
`
`26.a
`
`welding coupon having at
`
`least one surface and
`
`33.a
`
`welding coupon having at
`
`least one surface and
`
`simulating a real-world part
`
`simulating a real-world part
`
`to be welded,
`
`to be welded,
`
`wherein said at least one
`
`wherein said at least one
`
`26.b
`
`surface of said welding
`
`coupon is simulated in said
`
`33.b
`
`surface of said welding
`
`coupon is simulated in said
`
`virtual reality space as a
`
`virtual reality space as a
`
`
`
`8
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`double displacement layer
`
`double displacement layer
`
`including a solid
`
`including a solid
`
`displacement layer and a
`
`displacement layer and a
`
`puddle displacement layer,
`
`puddle displacement layer,
`
`wherein said puddle
`
`wherein said puddle
`
`displacement layer is capable
`
`displacement layer is capable
`
`of modifying said solid
`
`of modifying said solid
`
`displacement layer.
`
`displacement layer.
`
`
`
`B.
`
`Prior Art Publications
`
`Petitioner relies on the following prior art publications:
`
`1.
`
`U.S. Patent No. 8,512,043, titled “Body Motion Training and
`
`Qualification System and Method,” to Choquet (“Choquet”). Filed in Canada
`
`Sep. 27, 2004; filed with PCT Sep. 26, 2005; filed in U.S. Mar. 27, 2007;
`
`published by PCT Apr. 6, 2006; published in U.S Feb. 14, 2008 (Ex. 1105); and
`
`issued in U.S. Aug. 20, 2013 (Ex. 1106). Choquet is prior art at least under 35
`
`U.S.C. §102(b) and §102(e) (pre-AIA).
`
`2.
`
`U.S. Patent No. 7,580,821, titled “Application Programming Interface
`
`for Fluid Simulations,” to Schirm, et al. (“Schirm”). Provisional dated Aug. 10,
`
`2005, filed in U.S. Jan. 27, 2006; published in U.S. Feb. 15, 2007; and issued in
`
`U.S. Aug. 25, 2009 (Ex. 1107). Schirm is prior art at least under §102(b) and
`
`§102(e) (pre-AIA).
`
`
`
`9
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`3.
`
`Porter et al., “Virtual Reality Welder Trainer” (“Porter 2006”).
`
`Published in the U.S. no later than August 30, 2006 (Ex. 1108, 1109). Porter 2006
`
`is prior art at least under 35 U.S.C. §102(b) (pre-AIA). Porter 2006 was presented
`
`at an American Welding Society Conference in Chicago, Illinois on November 13-
`
`16, 2005, and an electronic version of the paper is and was linked by the American
`
`Welding Society‟s website since at least 2006 as evidenced by the affidavit of an
`
`internet archivist. There is additional substantial evidence of Porter‟s publication
`
`date, sufficient to establish its date under at least F.R.E. 807. A virtually identical
`
`copy of Porter 2006 in substance was published was published in the Journal of
`
`Ship Production, August 2006 (Vol. 22, No. 3) (Ex. 1108, compare with Ex. 1109).
`
`The Journal includes a circulation statement at Ex. 1108 p. 2, and the article itself
`
`shows that the paper was presented at another Symposium on October 19-21, 2005.
`
`Ex. 1108 at p.3. A search in the on-line WorldCat catalog shows that the journal
`
`was subscribed to by multiple libraries. Ex. 1108 at pgs. 16-19. Ex. 1108 bears
`
`the receipt stamp from one of those libraries of August 25, 2006. Ex. 1108 at p.1.
`
`Finally, one co-author on the paper, Timothy Gifford, was a “VRSim” employee,
`
`the predecessor in interest to the Patent Owner. Another co-author, J. Allan Cote,
`
`is an employee of Electric Boat. Electric Boat also employed Ken Fast, who is
`
`Patent Owner‟s expert in the previously filed IPR2016-00749. An excerpt from
`
`the Fast declaration references Porter as background work well prior to the alleged
`
`
`
`10
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`invention of the „116 patent. Ex. 1144 at ¶7.
`
`4.
`
`Claude Choquet, “ARC+®: Today‟s Virtual Reality Solution for
`
`Welders”, (“ARC 2008”) (Ex. 1110). ARC was published in the Proceedings of
`
`the IIW International Conference, July 10-11, 2008 and publicly available on the
`
`internet from 2008 forward. There is substantial evidence of ARC‟s publication
`
`date, sufficient under at least F.R.E. 807 to establish its date. The IIW Proceedings
`
`bear an ISBN identifier, publisher information, and publication date. The article is
`
`also retrievable from the author‟s web site with metadata showing a June 1, 2008
`
`creation date. A WorldCat search on the publication number shows a number of
`
`libraries that have catalogued the book. Ex. 1110 at 20-21.
`
`5.
`
`U.S. Patent No. 7,024,342, titled “Thermal Flow Simulation For
`
`Casting/Molding Processes,” to Waite et al. (“Waite”). Filed in U.S. Jul. 1, 2000;
`
`and issued in U.S. April 4, 20096 (Ex. 1111). Waite is prior art at least under
`
`§102(b) and §102(e) (pre-AIA).
`
`C. Brief Statement of Grounds for Challenge
`
`Petitioner challenges claims 20-33 (“the challenged claims”) of the ‟116
`
`patent on the ground shown in table 2 below.
`
`This Petition, as supported by the declaration of Dr. Zyda (“Zyda Dec”, Ex.
`
`1113) and the declaration of Edward Bohnart (“Bohnart Dec”, Ex. 1114),
`
`demonstrates that there is a reasonable likelihood that Petitioner will prevail with
`
`
`
`11
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`respect to at least one of the challenged claims and that each of the challenged
`
`claims is unpatentable for the reasons cited in this petition. (See 35 U.S.C. §
`
`314(a)).
`
`Table 2. Identification of Grounds for Challenge
`
`Grounds
`
`Claims
`
`Basis for Rejection
`
`1
`
`2
`
`20-33
`
`§103(a) in view of Choquet, Schirm, and Porter 2006
`
` 23, 25,
`30, 32
`
`§103(a) in view of Choquet, Schirm, Porter 2006,
`and ARC 2008
`
`§103(a) in view of Choquet and Waite
`
`3
`
`III. THE ’116 PATENT
`
`20-33
`
`A. Background
`
`The ‟116 patent is titled “System and Method Providing Arc Welding
`
`Training In a Real-Time Simulated Virtual Reality Environment Using Real-Time
`
`Weld Puddle Feedback.” The ‟116 patent describes the use of a computer system
`
`to simulate an arc and the formation of a weld.
`
`The ‟116 patent does not claim to improve upon the process of arc welding.
`
`(Ex. 1115, Ex. 1114, Bohnart Dec. at ¶¶21-26.) The ‟116 patent actually teaches
`
`away from welding in the real world. (See, e.g., 5:46: “the tool would not be used
`
`to actually create a real arc.”)
`
`PO cannot claim to have invented the first virtual reality (VR) system
`
`
`
`12
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`specific to welder training. (Ex. 1113, Zyda Dec. at ¶¶41-43.) Commercial VR
`
`systems specific to welder training were available more than a year before the
`
`filing date of the provisional application related to the ‟116 patent. (Ex. 1110,
`
`1129.) In the summer of 2006, 123 Certification Inc. launched the ARC+ welding
`
`simulator at the annual IIW International Welding Congress in Quebec City. (Ex.
`
`1110 at 14.)
`
`On April 27, 2005, VRSim and Silicon Graphics announced the commercial
`
`availability of the Virtual Reality Welding Trainer (VRWT). (Ex. 1109 at 28.)
`
`VRSim‟s VRWT had computer generated data with physical props, including a
`
`welding helmet and a spatially-tracked welding tool. (Ex. 1130.) According to
`
`VRSim‟s website, PO acquired VRSim‟s VRWT in 2008 (Ex. 1129).
`
`After PO bought this unpatented system from VRSim in 2008, PO filed
`
`Provisional Application 61/090,794 that mentioned the desire to design a “physics
`
`engine” to “model a weld puddle as would be generated in a real world welding
`
`process.” (Ex. 1103, ¶27, Ex. 1113, Zyda Dec. at ¶¶23-25.) Nothing in application
`
`‟794 mentions how the “physics engine” operates. After the provisional was filed,
`
`VRSim hired at least two video game programmers that used well-known
`
`techniques, such as particle emitters and displacement maps, to actually design a
`
`“physics engine.” (Ex. 1113, Zyda Dec. at ¶¶26-27.)
`
`
`
`13
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`B.
`
`Provisional Patent Application No. 61/090,794
`
`The ‟116 patent application was filed on July 10, 2009 (Ex. 1101), and
`
`claims priority to Provisional Application No. 61/090,794 filed on Aug. 21, 2008
`
`(Ex. 1103). The claimed subject matter is not disclosed in this provisional
`
`application. (Ex. 1113, Zyda Dec. at ¶25) For example, the provisional
`
`application fails to describe the “particle” concept which is required for all
`
`challenged claims. (Ex. 1101; Ex. 1103; and Ex. 1113, Zyda Dec. at ¶25.)
`
`Therefore, the priority date of the ‟116 patent is July 10, 2009.
`
`At the time the ‟116 patent was filed, the first seven of the nine inventors
`
`were full-time employees of VRSIM according to their LinkedIn profiles. (Ex.
`
`1117-1123.) The eighth inventor, Paul Dana, was a contractor from C2C
`
`Simulations according to his LinkedIn profile. (Ex. 1124.) The ninth inventor, Eric
`
`Preisz, was the Managing Director of C2C Simulations according to his LinkedIn
`
`profile. (Ex. 1125.) According to their LinkedIn profiles, inventors, Paul Dana and
`
`Jeremiah Hennessey, began working for VRSIM in October 2008 - after
`
`Provisional Application No. 61/090,794 was filed. (Ex. 1124 and Ex. 1120.)
`
`In application ‟794, the PO admitted that the “welding environment”
`
`hardware required for the ‟116 patent is commercially available in the Wii,
`
`manufactured by Nintendo®. (Id. at ¶28.) According to provisional, the PO
`
`viewed the welding simulator as a video game:
`
`
`
`14
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,747,116
`
`
`In one embodiment of the present invention, a virtual weld training
`
`environment may be implemented on a commercially available
`
`gaming system. The Wii, manufactured by Nintendo®, is one
`
`example of such a commercially unavailable (sic, available) gaming
`
`system, although other gaming systems may also be utilized without
`
`departing from the intended scope of coverage of the embodiments of
`
`the subject invention. In this embodiment, a weld training torch may
`
`be provided that interfaces with the control device of the Wii, which
`
`currently incorporates a motion sensor. Alternatively, a weld training
`
`torch may be provided having its own internal motion sensors,
`
`whereby the weld training torch communicates directly to the
`
`hardware of the gaming system. Still, any manner of interfacing a
`
`weld training torch into a commercially available gaming system may
`
`be chosen with sound engineering judgment. The weld training torch
`
`may resemble an actual welding gun or stic