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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORP.,
`Petitioner,
`
`v.
`
`IDEMIA IDENTITY & SECURITY USA LLC
`and L-1 SECURE CREDNTIALING, LLC,
`Patent Owners.
`____________
`
`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`____________
`
`Record of Oral Hearing
`Held: November 15, 2018
`____________
`
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`
`
`

`

`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`LIONEL M. LAVENUE, ESQ.
`Finnegan Henderson Farabow, Garret & Dunner
`Two Freedom Square, 11955 Freedom Drive
`Reston, Virginia 20190
`
`and
`
`GUANG-YU ZHU, ESQ.
`DAVID SEASTRUNK, ESQ.
`Finnegan Henderson Farabow, Garret & Dunner
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`SCOTT A. MCKEOWN, ESQ.
`Ropes & Gray LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006
`
`and
`
`RICHARD L. BROPHY, ESQ.
`MARC VANDER TUIG, ESQ.
`JAMES M. HEINEN, JR., ESQ.
`Armstrong Teasdale LLP
`7700 Forsyth Boulevard, Suite 1800
`St. Louis, Missouri 63105
`
`
`2
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`

`

`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`
`
`
`ALSO PRESENT:
`
`Andrew A. Phillips
`Christopher R. Kirby
`Zara Gerald
`
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`
`November 15, 2018, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE EASTHOM: Good afternoon, everyone. I'm Judge
`Easthom, Judge Margolies is to my left, and soon we will have Judge Zado
`coming in with us from California. Why don't we just wait a second.
`JUDGE ZADO: Hi, this is Judge Zado from California. I'm
`actually here. I don't know if I'm showing up on the screen.
`JUDGE EASTHOM: Oh, now -- thank you, Judge Zado, we see
`you now. You are showing up, Judge Zado.
`JUDGE ZADO: Okay, thank you.
`JUDGE EASTHOM: Okay, this case is HID Global Corp,
`Petitioner, vs. Idemia Identity & Security USA LLC and L-1 Secure
`Credentialing, LLC, Patent Owner. There are four cases here,
`IPR2017-01938 and 01939, for patent 7,207,494 B2; and then the other
`cases are IPR2017-01940, Patent 7,661,600 B2, and then IPR2017-01941,
`Patent 8,083,152 B2.
`We are going to -- we planned in our trial hearing order to have
`this occur for four hours. Petitioner has the burden to show patentability
`generally on the amendments and also in the case in chief, so Petitioner will
`proceed first, followed by Patent Owner, and then Petitioner can reserve any
`rebuttal time. We'll handle that for whatever has been reserved.
`Petitioner, why don't we have you introduce yourself for the
`record, please, first.
`MR. LAVENUE: Hello, Your Honor. Lionel Lavenue from
`Finnegan for HID Global. I will be arguing, along with my colleague,
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
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`Guang-Yu Zhu, from Finnegan, for HID Global. Also behind me I have
`David Seastrunk from Finnegan, and two in-house counsel, Chris Kirby and
`Andrew Phillips, from HID Global.
`JUDGE EASTHOM: Welcome, everyone.
`And how about you, Patent Owner?
`MR. MCKEOWN: Good afternoon, Your Honor. Scott
`McKeown of Ropes & Gray for Patent Owner, Idemia. I was not supposed
`to be here today, but my travel has been cancelled, so happy to be here. I'm
`joined today by Marc Vander Tuig, Richard Brophy, and Jim Heinen of the
`Armstrong Teasdale firm. Richard and I will be making the arguments.
`We're also joined today by Zara Gerald of the client, Idemia.
`JUDGE EASTHOM: All right. Glad you could make it.
`MR. MCKEOWN: Just one clarification.
`JUDGE EASTHOM: Sure.
`MR. MCKEOWN: We would like to request ten minutes rebuttal
`consistent with the Trial Practice Guide, as Patent Owner.
`JUDGE EASTHOM: Is that the updated Trial Guide?
`MR. MCKEOWN: Yes, Your Honor.
`JUDGE EASTHOM: Is that for amendments or in general?
`MR. MCKEOWN: I think we would like it in general.
`JUDGE EASTHOM: I'm not aware. I will have to check the
`Guide, but we will duly note that. I know there are some procedural
`irregularities. We didn't go into the finer points. I think with respect to
`some of the amendments, some of the procedural things may be on the
`Patent Owner, the burden, for example, whether they're responsive, whether
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`there's a broadening of scope, and also -- not written description but whether
`it appears in the -- changes the spec -- we will clarify it in a second, but --
`those three things, but I think we are going to have Patent Owner and
`Petitioner address all those in their case in chiefs if they want to, and if they
`don't, you can raise them in your rebuttal, and then maybe you would have a
`surrebuttal in that instance, but you may have it anyway, so we'll --
`MR. MCKEOWN: Okay, thank you.
`JUDGE EASTHOM: But thanks for raising that.
`I do want to caution you, because Judge Zado is in California now,
`if you could just please try to concentrate and make sure you identify
`whatever slide number you're using so that she can track along, and then we
`will have a decent record also.
`So with that, so, Mr. Lavenue, do you want to reserve some time
`for rebuttal?
`MR. LAVENUE: Yes, Your Honor. Forty minutes for rebuttal,
`please, and that will also include the time that we'll address the motion to
`amend, in our rebuttal time.
`JUDGE EASTHOM: Okay, thank you. So, let's see, that will be
`80 minutes for the case in chief. Let me reset that for a second.
`MR. LAVENUE: And we should address all the issues that you
`mentioned in our opening argument. So I don't believe that any of them -- I
`know you mentioned that the Patent Owner wanted to have for rebuttal at the
`end be appropriate, so we would ask that we have the final word, because we
`are not going to say anything in our rebuttal that would prompt their right to
`have a rebuttal to our rebuttal.
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`
`JUDGE EASTHOM: I appreciate that, Mr. Lavenue, and we will
`think about that, and I am going to take a look at the updated Trial Practice
`Guide in the meantime, and we will go from there. But in the meantime, I
`guess we can get started. Thank you.
`MR. LAVENUE: Thank you.
`So, Your Honor, we do have paper copies. If the two judges who
`are here would like a copy, I can hand those up, of the demonstratives.
`JUDGE EASTHOM: Thank you. Sure.
`JUDGE MARGOLIES: Sure.
`MR. LAVENUE: And we have already provided a copy to the
`court reporter.
`So I see my time has started so I will begin. Good afternoon, Your
`Honors. Lionel Lavenue for HID Global, and we're happy to be here today
`to address the four petitions that we have before us. We have prepared
`slides which we submitted last week and that which you now have copies of.
`In our slides, if you would look at slide 2, this has the table of
`contents, and so what I will be addressing in my opening presentation will
`be slides 1 through 141, and for the motion to amend -- the motions to
`amend, my colleague, Mr. Zhu, will address those in the rebuttal. So if --
`what we have done is we have a couple of tables of abbreviations, but let's
`go first to the overview of the patents.
`But before I get to that, let me just talk a little bit about where we
`are and why we're here. Basically HID Global, we are a company that deals
`with various entry systems, so whether it's an entry system into a building,
`for example, at our law firm, you have a key fob that when you get into the
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`building, you swipe it by a reader, and that allows you to open the door. It is
`made by HID Global, and so that is a typical type of entry system.
`Another type of entry system is, of course, an ID card, such as
`Passport, and so the patents that we're looking at here are for identification
`cards or ID cards, and so HID Global is a competitor with the Patent Owner,
`Idemia, which also makes identification cards. And on these identification
`cards, there's various types of protections, and these types of protections are
`used to keep against photocopying or against implication, improper
`duplication. These patents are all directed to that, and we're here to look at
`those and to consider the prior art references that we have submitted against
`those for purposes of unpatentability.
`So if we, for example, look at slide number 9, we can see in slide
`number 9 the three patents that are at issue, the '494, the '600, and the '152,
`and on slide number 10, a summary of the two basic technologies that we'll
`be looking at the most, and that is the tactile effect, which is the ability to
`feel something on the identification card. If you can feel it, then that is a
`tactile -- using a laser to cut an image or cut information into an
`identification card, and being able to feel that on the card. So that's
`something that if you make -- if you put a card in a photocopier and you put
`your finger over that, you are not going to feel the raised edge, but if you put
`your finger over an identification card that has a raised edge, then you will
`feel that, and you will know that it, for example, is authentic versus
`something that is not authentic.
`The other is a visual effect, such as optical variability, and as
`you've seen from the papers, that is the other type that the patent describes
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`where, when you're looking at a card -- and if you have a Virginia driver's
`license, it has this technology in it -- if you're looking at a card and if you
`look at it at one angle, you can see information in the laminate layer that is
`not printed in the core layer below it. It's just in the laminate layer, a laser
`has etched information into the laminate layer. It's transparent, you can see
`through it, but it allows you to see that at certain angles, and so that's the
`optical variability feature. So these are the two things that we're looking at,
`the tactile effect, being able to feel, and the optical variability feature.
`Now, what are these things on? Well, these things are on, as
`shown on slide 11, an identification card, and so this security feature is put
`into the laminate layer, which is one of the layers that is on the outside of the
`card, and then you also have a core layer inside.
`Now, you may have one or more laminate layers in the security
`feature, and you may put certain information inside the card as well. So you
`may not only have it on the outside, but you may have it on the inside.
`For the optical variability, this is an example on slide 12 from the
`patents of being able to see something at one angle, as shown in the bottom
`left slide, and not being able to see information at a different angle, or being
`able to see it on the right side, but not being able to see it on the left side,
`just like if you look at your driver's license.
`Slide 13, we look at the ability to touch, the tactile feature, which
`is raised edges on the identification card, and we can see the tactile raised
`edges that are here on the card.
`So on slide 14, what we have done is we have summarized the four
`petitions, and that's on the left column, the IPRs 1938 through 1941. In the
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`middle column, we have the instituted grounds, and then we have the claims
`that go with each of those grounds. So these would be familiar from the
`papers that we have.
`The reason I've organized it this way for our presentation is we're
`going to walk through these, to the extent I have time allowed, to walk
`through these and show where we have identified the prior art that matches
`each of the grounds for each of the claims.
`So next we have the overview of the prior art. Now, before I get to
`the prior art, the overview that we have, I would like to note that most of the
`arguments that are made by the Patent Owner against the petitions are not
`against, for the most part, the prior art as it's disclosed, but it's against the
`prior art as the Patent Owner and the Patent Owner's expert has interpreted
`the prior art, which is different from the prior art that you'll see in my
`overview of the prior art.
`And the reason I say that is if you look at the Maurer reference, the
`Patent Owner does not argue against our arguments of Maurer. They create
`a new drawing of Maurer, and they then rebut the new drawing that they
`have created about what they believe Maurer says, not what Maurer actually
`says. We will see this in my presentation.
`Re Bernecker, the same thing. The Patent Owner does not argue
`against our specific Bernecker reference, but they create their own image of
`what they believe Bernecker shows, and then they try to knock that down,
`basically setting up a straw man that they can break down.
`Similar with the Fry reference. They do not attack our specific
`arguments with respect to Fry, but they create a drawing, which is not Fry,
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`which was presented actually for the first time in the demonstratives. If you
`look at their slide number 22, it has a drawing that is nowhere in the
`briefing, nowhere in the expert reports, is presented for the first time in this
`hearing. It's slide number 22 of the Patent Owner's demonstratives.
`And that drawing shows, again, where the Patent Owner is creating
`its own drawings in order to set up a straw man which it can break down. In
`all of those situations, those recreations of the prior art are not the prior art
`that we are actually submitting.
`So let's look at the actual prior art that we're submitting. So first
`we have the Maurer reference. Now, as I noted from the two main features
`that are in the patents at issue, you have tactility, the ability to feel a security
`feature, and you have the optical variability. Well, Maurer, as you know,
`has the ability -- the tactile feature, and you can see on slide 16, you have an
`identification card, you have a security feature identified under the X, and
`there are multiple layers to the security card.
`The tactile feature is shown by raised edges on Figure 2 of Maurer.
`You also have in Maurer the description of a transparent laminate layer that
`is over a darkened core material. So you can see on slide 18, Figure 2 in
`slide 18, that you have the X pointing to a raised feature, which has been
`created for tactile, ability to feel, and then below that, in the 14 layer, you
`have the core material that has been darkened.
`JUDGE MARGOLIES: How do we know the X is pointing to the
`raised feature?
`MR. LAVENUE: The X is pointing to the security feature, which
`includes the raised feature, and we know that it includes the raised feature
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`because the laser has imparted the information onto the security card,
`because if you look to the -- between the Y and the X, that is a nonaffected
`area, and under the X, that is the area where the laser has imparted a groove
`in order to create the security feature of tactility and also has created the
`darkened material under the X in the core material. So all of that is part of
`the security feature that is created by Maurer.
`JUDGE ZADO: I think the question is that -- you know, I'm
`looking at Figure 2 right now, and it looks like the X is pointing to the
`groove rather than the two raised bumps on the sides of the groove, and so I
`think the question really is, how do we know that X is pointing at this entire
`set of a bump, a groove, and a bump, versus just pointing at the groove?
`And I think that was the question, but I'll add a follow-up question to that,
`which is, does it really matter what X is pointing to, or is Petitioner's
`argument that the disclosure, when it describes the security features, is
`referring to the bumps and the groove, not just the groove?
`MR. LAVENUE: Thank you, Judge Zado. The second question is
`exactly right. It really doesn't matter what the X is pointing to, because what
`the reference discloses is a security feature that can be felt by touch, that has
`a raised feature, and whether or not the X is pointing to the groove or
`includes the raised feature, the fact that Maurer discloses having a tactile
`security feature is included.
`JUDGE MARGOLIES: Well, aren't you relying on column 6,
`lines approximately 18 to 22 for your argument that it is disclosing a tactile
`feature?
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
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`MR. LAVENUE: That is part of the disclosure, as with Figure 2.
`So that disclosure, with Figure 2, does incorporate the disclosure that would
`indicate to one skilled in the art that you have a raised security feature that
`can be felt by touch, yes.
`JUDGE MARGOLIES: And isn't the last sentence of that
`paragraph "An example is indicated by arrow X"? So isn't arrow X
`intimately linked with the disclosure that you're relying on?
`MR. LAVENUE: Well, yes, Your Honor, but I guess I'm not sure
`why that would teach away from one of skill in the art to understand Maurer
`as we have described it. That's my confusion from your question, because
`one of skill in the art would look at Figure 2 and look at the description from
`the specification that you're pointing to and, as Dr. Tentzeris, HID's expert,
`has explained, to him, that is clearly indicating a raised feature that is being
`used in order to have a tactile effect.
`And then as the Board noted in its institution decision, also there's
`the fact that there's a description of the relief in Maurer, and the relief would
`indicate also that there is a notch, you know, a going down and a going up,
`that would include the raised feature that would be in Maurer, as one of skill
`in the art would understand.
`JUDGE MARGOLIES: Well, what is your response to I believe
`the testimony of Patent Owner's expert, that when it says that the upper
`cover sheet can be melted concurrently in such a way that relief is formed
`above the line of printed information, that it must -- I think their position is it
`must be a depression only. What is your response to that?
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
`
`
`MR. LAVENUE: Well, they ignore that Figure 2 shows a raised
`feature. They just -- and their expert basically says I don't believe what
`Figure 2 shows, and I don't believe what the Board found in its institution
`decision, that a relief includes a raised feature, and so he just disagrees with
`that.
`
`When he says, when I look at the groove that is put in Maurer,
`what he does is he takes something from eight years later, the concept of
`micromachining, and he says, look, I'm going to take this later technology in
`micromachining, which does allow a laser to cut into a laminate layer
`without raised edges, but micromachining is not described in Maurer, it's not
`described in Bernecker, both of which were before the filing of the patent
`application. It's eight years later.
`Micromachining also results in a darkening of the notch, of the
`groove, which is not shown, because you have a transparent layer in Maurer,
`because in Maurer, as you can see on Figure 2, you have to be able to look
`through the transparent layer to see the darkened core that's shown under the
`X. If you had a darkened groove under the X, you wouldn't be able to see
`the in register information that's below the groove in the core area. So the
`whole micromachining approach that's taken by the Patent Owner's expert
`and by the Patent Owner is basically a red herring, because that's not what's
`disclosed in Maurer.
`JUDGE MARGOLIES: What is your evidence of what the
`understanding of one of ordinary skill in the art at the time of the invention
`is of the term "relief"? I think you are relying, at least -- and you cite it
`twice, and I believe it's the same document you cite -- which is the
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
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`incorporated by reference '872 patent. Is that your only evidence of what
`meaning to one of ordinary skill in the art is of the term "relief"?
`MR. LAVENUE: Well, we believe that the dictionary definition
`identified by the Board is exactly correct, and the dictionary definition
`alternative as proposed by the Patent Owner is incorrect, because it refers to
`the surface, but setting that aside, the understanding of "relief" is you have to
`take that in combination with the understanding of "relief" with Figure 2.
`So if you have the understanding of "relief" aside from Figure 2,
`which is the definition that it includes raised edges, and then you look at
`Figure 2 and you see that it includes raised edges, those two in combination
`clearly show that our understanding of "relief" is consistent with the
`disclosure and the way the technology is depicted in Maurer, because, again,
`if you don't have -- if you use the micromachining that the Patent Owner is
`suggesting, which does not have raised edges -- I mean, for example, look at
`Fry. Even in Fry, there's raised edges shown 30 years prior to the filing of
`the patent application. So, you know, Fry was from 1971, and Figure 2 of
`Fry shows raised edges.
`The Maurer reference is from 1985. It shows raised edges. I
`mean, this is simply the technology that one of ordinary skill in the art at the
`time would have understood when looking at this art. The whole concept of
`micromachining and darkening of the groove, that all came much later, as
`indicated by the date of the micromachining references.
`JUDGE MARGOLIES: Thank you.
`MR. LAVENUE: Okay, thank you.
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
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`
`So with that, let's look at Bernecker, now that we have talked a bit
`about Maurer, on slide 19. Now, in Bernecker, what Bernecker identified
`was that you can take the laser etching of the laminate material that we saw
`in Maurer -- so in Maurer, we had the laser etching of the laminate material,
`plus the darkening of the core in register -- and in Bernecker, Bernecker
`recognized that you could take that etching and use it for other purposes,
`such as for optical variability, and that's what Bernecker discloses, is you
`can actually etch the laminate and have it be able to have various angles,
`where some angles you can see it and some angles you cannot.
`JUDGE EASTHOM: Can we go back to the other issue about the
`raised edges? I think your friends raise an argument about Maurer only
`disclosing melting and you need some sort of ablation or evaporation,
`temperature, as Fry I think makes clear, and Maurer doesn't disclose the
`term, other than "melting," and I take it -- I know your expert's position is
`melting doesn't just mean melting. Can you explain why that's true, please?
`MR. LAVENUE: Yes, Your Honor. So this is a very interesting
`situation where the Patent Owners' expert, he looks at Maurer and he says,
`okay, when I look in Maurer, I see that the word "melting" is used, but I
`don't see that the word "vaporization" is used," and because of that, then I
`don't believe that vaporization occurs in Maurer, and, therefore, that's why I
`throw out Figure 2. I don't believe that Figure 2 has raised edges, because
`both experts agree, when you use a laser to put a groove in laminate
`material, that laser is going to have both melting and vaporization. They
`both agree to that. And when you have both melting and vaporization, you
`will have raised edges, and both agree to that.
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
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`What the Patent Owner doesn't agree to is that Patent Owner says
`that, well, because Maurer only references melting, then it, therefore,
`precludes vaporization, and so the depiction in Figure 2 is impossible, and
`we have to throw that out. Our expert explains, well, no, merely by
`explaining that there's melting does not preclude vaporization, and that is the
`opposite of Fry.
`For example, in Fry, Fry explains that there is not substantial
`vaporization, and then in other areas, it refers to melting. And so by not
`substantially having vaporization, that means that you substantially have
`melting with some vaporization.
`JUDGE EASTHOM: I think that's where Patent Owners' expert
`agreed that there must be some vaporization occurring when there's melting.
`Can you provide a cite for that, please?
`MR. LAVENUE: We will provide a cite for that, Your Honor.
`JUDGE EASTHOM: Thank you. Yes.
`MR. LAVENUE: We will look that up.
`But in the meantime, that is one of the reasons why the Patent
`Owners' expert is so insistent that Figure 2 cannot show raised edges,
`because he believes that you have to have both vaporization and melting.
`Our expert says, well, we do have vaporization and melting, and
`just because the reference Maurer does not specifically say "and
`vaporization" doesn't mean that vaporization is not also occurring. He
`explains that one of ordinary skill in the art would have understood that if
`you are etching a laminate layer, then you are going to have that occur.
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
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`
`So turning back to Fry, Your Honor, in Fry, this is the third
`combination -- the third reference that we use. Fry, we use it for basically
`two reasons. Almost everything that we have is Maurer plus Bernecker.
`Fry, we have two things that we add, and that is the laser ablation -- which
`"ablation" means removing material, the vaporization, which we were just
`referring to -- and the second is that the raised area is caused by bubbles,
`specifically foaming bubbles, and those are the two things that we use Fry
`for, really nothing more than those two things, which we will look at in more
`detail.
`
`And we can see in Fry that Figure 2, looking very much like
`Maurer with the raised edges, that Figure 2 has an unscorched groove and
`raised edges and that the beads include small bubbles. So we will look at
`that as well.
`Now --
`JUDGE MARGOLIES: Counsel, also, just don't forget to identify
`what slide number you're on, please.
`MR. LAVENUE: Oh, thank you. Sorry, Judge Zado. So we are
`now on slide 23. Thank you, Judge.
`On slide 23, we're looking at two other references that we include,
`and we include these for issues that are not disputed by the Patent Owner as
`far as whether or not these references disclose this information. They only
`dispute, for example, the combination of these with our primary references.
`And Ross we use for the creating of different angles of a laser, so
`simply that one thing, and then in Gunn, we use the additional information
`of a bar code, a polycarbonate and semiconductor, being within the
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083-152 B2)
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`identification card. So these are pretty much undisputed. Most of the
`disputes are either about tactility and the raised feature of Maurer or the
`combination of Bernecker with Maurer. That is primarily it, with respect to
`also to Fry and the combination. But as far as Gunn and Ross, there's no
`primary dispute with the Patent Owner on those.
`So as you know, we have on slide 26 the first of the two claim
`construction issues that we are dealing with. There are only two, and we
`submit that the first claim construction issue, the tactile effect, is a non
`sequitur, because the Patent Owner's construction of "tactile feature" or
`"tactile effect" does not make any difference that they have made in their
`briefing. So there is nowhere in their briefing where they've identified, hey,
`if you use our claim construction, then we win for some particular reason.
`So for that reason, we would submit that the "tactile effect" or "tactile
`feature" is not at issue.
`JUDGE EASTHOM: In other words, a tactile effect doesn't have
`to be a raised -- a raised portion, is that correct, or does it?
`MR. LAVENUE: Well, they admit that the -- that Maurer shows a
`tactile effect in that you can feel it. What they dispute is that it is a raised
`feature. So that is disputed by the Patent Owner.
`JUDGE EASTHOM: Okay.
`MR. LAVENUE: What I'm pointing to is that nothing in their
`construction -- for example, the easily perceptibility. Most humans' ordinary
`tactile capabilities, none of that has any --
`JUDGE EASTHOM: Oh, I understand. I understand. Thank you.
`I appreciate that clarification, though.
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`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`