Paper 40
`Trials@uspto.gov
`571-272-7822 Entered: March 14, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORPORATION,
`Petitioner,
`
`v.
`
`MORPHOTRUST USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01940
`Patent 7,661,600 B2
`____________
`
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 14, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORPORATION,
`Petitioner,
`
`v.
`
`MORPHOTRUST USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01940
`Patent 7,661,600 B2
`____________
`
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2017-01940
`Patent 7,661,600 B2
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`HID Global Corporation (“Petitioner”) challenges the patentability of claims
`1–8 of U.S. Patent No. 7,661,600 B2 (Ex. 1001, “the ’600 patent”), owned
`by MorphoTrust USA, LLC. (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has shown by a preponderance of the evidence that claims 1–8 of the ’600
`patent are unpatentable.
`
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1–8 of the
`’600 patent. Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 10 (“Prelim. Resp.”). On March 16, 2018, we instituted an inter
`partes review of claims 1–8 of the ’600 patent on the following grounds:
`References
`Basis
`Challenged Claims
`Maurer1 and Bernecker2
`35 U.S.C. § 103(a)3 1 and 2
`Maurer, Bernecker, and
`35 U.S.C. § 103(a)
`3 and 4
`Gunn4
`Maurer, Bernecker, and Fry5
`35 U.S.C. § 103(a)
`5–8
`
`
`
`1 Maurer et al., U.S. Patent No. 4,544,181, issued Oct. 1, 1985 (Ex. 1005).
`2 Bernecker, U.S. Patent No. 5,958,528, issued Sept. 28, 1999 (Ex. 1006).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of § 103 in this Decision.
`4 Gunn et al., U.S. Patent No. 6,066,594, issued May 23, 2000 (Ex. 1008).
`5 Fry, U.S. Patent No. 3,626,143, issued Dec. 7, 1971 (Ex. 1007).
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`Paper 11 (“Inst. Dec.”), 30.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper
`23, “Reply”). Petitioner relies on the Declaration of Emmanouil M.
`Tentzeris, Ph.D. (Ex. 1002) and the Reply Declaration of Emmanouil M.
`Tentzeris, Ph.D. (Ex. 1015). Patent Owner relies on the Declaration of
`Darran R. Cairns, Ph.D. (Ex. 2009).
`Patent Owner also filed a Contingent Motion to Amend, followed by
`other papers by the parties, as discussed further below in Section III.
`An oral hearing was held on November 15, 2018, and a transcript of
`the hearing has been entered into the record. Paper 39 (“Tr.”).
`
`B. Related Matters
`The parties identify the following pending matters, which may affect,
`or be affected by, a decision in this proceeding: MorphoTrust USA, LLC v.
`United States of America, Case No. 1:16-cv-00227 (Fed. Cl.) and
`MorphoTrust USA, LLC v. CBN Secure Techs., Inc., Case No. 1-16-cv-
`00323 (E.D. Va.). Pet. 53; Paper 8, 2; see 37 C.F.R. § 42.8(b)(2).
`Claims of a patent related to the ’600 patent are at issue in IPR2017-
`01941, for which a final written decision is being issued concurrently with
`this Decision, and also were at issue in IPR2017-01938 and IPR2017-01939,
`for which final written decisions have issued.
`
`C. The ’600 Patent
`The ’600 patent is directed to “[i]dentification documents employing
`laser-etched or –engraved features” in which “[t]actile effects produced by
`the laser-processed features may be felt by touch, helping confirm the
`authenticity of such documents.” Ex. 1001, Abstract. The ’600 patent states
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`that a goal of producing a secure identification document is “to endow the
`card with unique, personalized features that are not easily reproduced by
`conventional means.” Id. at 6:60–64.
`The ’600 patent states that “laser etching helps to provide unique
`personalized features, in that the finished ID document can be uniquely
`altered and personalized at the same time.” Id. at 6:65–7:1. According to
`the patent, “the effect produced by laser etching can be identified easily by a
`person . . . because the laser etching produces a visual effect and/or a tactile
`effect.” Id. at 7:1–4. The ’600 patent states that “the laser removes material
`from the surface of the card and may (optionally) create a pattern that can be
`felt by touch” and that “[t]his tactile property may be used to further verify
`the authenticity of the card.” Id. at 7:13–16.
`The ’600 patent states that a pattern laser etched into the surface of an
`identification document can include “a sequence of small holes, ridges, slits,
`etc. that form the desired text or design.” Id. at 7:35–37. Figures 5A and 5B
`of the ’600 patent illustrate examples of holes (in Figure 5A) and ridges (in
`Figure 5B) “that a laser can etch into the surface of a substrate.” Id. at 7:37–
`41. Figure 6A, below, shows a cross-section of identification document 10
`(shown in Figure 1) and an exemplary pattern of engraving:
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`Id. at 7:41–43. As shown in Figure 6A above, information 54h–54k is
`formed in layer 52 “that is disposed between an overlaminate 58 and the
`core layer 50.” Id. at 7:43–45. According to the ’600 patent, information
`54h–54k “can be formed by any known means, including, many different
`types of conventional printing and also laser marking.” Id. at 7:45–47.
`The ’600 patent states that a laser etching process “creates a pattern
`that can be tactile or non-tactile, but is not readily visible when seen straight
`on (e.g., the pattern is visible only in low angle reflected light).” Id. at 7:50–
`53. The patent states that “our technology is used to create a tactile . . .
`pattern by adjusting the hole depth and area location of the laser engraving.”
`Id. at 7:56–58.
`Figure 6C of the ’600 patent is shown below:
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`Patent 7,661,600 B2
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`
`According to the ’600 patent, Figure 6C above is an enlarged view of section
`C of Figure 6A, “showing a tactile pattern with raised edges 62.” Id. at
`7:58–60.
`The ’600 patent states that “[b]ecause the imparted laser pattern can
`lie below the document’s surface, there is little or no impact on wear during
`the document’s useful life.” Id. at 7:63–65.
`The ’600 patent also explains that the identification document may
`include (i) “[p]ersonalized data,” which can include “data that is unique to a
`specific cardholder,” such as biometric information and image information,
`and data that is “personal to a specific cardholder but not necessarily unique
`to that cardholder,” such as birthdate (id. at 5:6–18), and (ii) “invariant data
`(i.e., data common to a large number of cards, for example the name of an
`employer)” (id. at 2:48–54).
`
`D. Illustrative Claims
`Among the challenged claims (claims 1–8) of the ’600 patent, claims
`1, 5, 7, and 8 are independent. The independent claims—which recite
`“voids,” “a tactile feature,” or “a void pattern” and “raised features”—are
`illustrative of the subject matter of the challenged claims and read as follows
`(with the foregoing features emphasized in italics):
`1. An identity document comprising an outer top
`laminate layer and at least one interior layer, the document
`conveying both invariant and personalized information, the
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`personalized information particularly corresponding to a
`particular person to whom the document is issued, wherein at
`least some of the personalized information is defined by voids
`that extend into, but not through, the laminate layer, said voids
`providing a feature that can be felt by touch.
`5. An identity document comprising at least one interior
`layer and a laminate layer, an outer surface of the laminate layer
`defining a top surface of the document, the document
`conveying both invariant and personalized information, the
`personalized information particularly corresponding to a
`particular person to whom the document is issued, wherein at
`least some of the personalized information is defined by laser-
`ablated voids that extend through the top surface of the
`document, and wherein at least some of said voids are defined
`by sidewalls that are angled obliquely, rather than
`perpendicularly, relative to said top surface.
`7. A method of manufacturing an identification
`document for a person, comprising:
`printing information, including invariant information, on
`a document core;
`applying a laminate layer atop the printed core; and
`laser-ablating the laminate layer to impart a tactile
`feature thereto, without ablating the document core, said tactile
`feature being personalized to correspond to said person.
`8. An identification document comprising at least one
`layer of material, the top surface of the document including a
`laser-formed void pattern creating an indicia, the document
`characterized by raised features that are also laser-formed, said
`raised features comprising foamed material, the raised features
`extending above a nominal top surface level of the document to
`provide a tactile effect that aids in verifying the authenticity of
`the document.
`Id. at 11:6–13, 11:20–12:5, 12:8–23.
`
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`II. DISCUSSION
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s patent claims, Petitioner
`must demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious under § 103
`requires consideration of all four Graham factors, and it is error to reach a
`conclusion of obviousness until all those factors are considered.” Apple Inc.
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`v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
`(citations omitted). “This requirement is in recognition of the fact that each
`of the Graham factors helps inform the ultimate obviousness determination.”
`Id.
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art at the time of the invention. In re GPAC,
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in
`determining the level of ordinary skill in the art include, but are not limited
`to, the types of problems encountered in the art, the sophistication of the
`technology, and educational level of active workers in the field. Id. In a
`given case, one or more factors may predominate. Id. Generally, it is easier
`to establish obviousness under a higher level of ordinary skill in the art.
`Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir.
`2011) (“A less sophisticated level of skill generally favors a determination of
`nonobviousness . . . while a higher level of skill favors the reverse.”).
`Petitioner, citing the testimony of its declarant, Dr. Tentzeris, asserts
`that a person having ordinary skill in the art of the alleged invention “would
`have held at least a bachelor’s degree in engineering or physics and at least
`one year of relevant work experience in either one of the fields of laser
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`processing or security features for identity documents.” Pet. 7 (emphasis
`added) (citing Ex. 1002 ¶¶ 31–34). Petitioner also asserts that “[t]his is the
`level of ordinary skill offered by” Patent Owner’s expert (Henry Dreifus) in
`the Federal Court of Claims related matter. Id. (citing Ex. 1010, 7). We
`note that, in the cited exhibit, Mr. Dreifus states that a person of ordinary
`skill in the art “would have had a Bachelor’s degree in engineering or
`physics and at least one year of relevant work experience in either one of the
`fields of laser processing or security features for identity documents.”
`In our institution decision, we determined that Petitioner’s proposal
`without the “at least” qualifier for the educational background is consistent
`with the challenged patent and the asserted prior art and reflects the level of
`ordinary skill in the art. Inst. Dec. 9. Patent Owner agrees with our
`preliminary determination. PO Resp. 27. Dr. Cairns’ likewise has adopted
`that level of ordinary skill in the art. Ex. 2009 ¶ 27. The parties do not
`argue that any issue in this case turns on the difference between Petitioner’s
`proposal and that of Dr. Cairns.
`Based on the full record, our assessment has not changed. We
`determine that one of ordinary skill in the art of the ’600 patent would have
`held a Bachelor’s degree in engineering or physics and at least one year of
`relevant work experience in either one of the fields of laser processing or
`security features for identity documents.
`
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, we
`construe claim terms in an unexpired patent according to their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
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`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner applies the broadest reasonable construction standard, and
`interprets all terms of the challenged claims “in accordance with their plain
`and ordinary meaning.” Pet. 7. Patent Owner proposes we construe the
`terms “tactile feature” and “tactile effect” and to mean “feature/effect that
`can be easily perceived by touch by most human beings with ordinary
`sensory/tactile capabilities.” PO Resp. 8. However, no dispute arises
`regarding the interpretation of these terms or their application to prior art.
`We determine that no claim terms require express construction in
`order to determine the patentability issues raised in this inter partes review.
`
`D. Asserted Obviousness over Maurer and Bernecker
`Petitioner contends that claims 1 and 2 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Maurer and Bernecker. Pet. 3, 14–23.
`Relying in part on the testimony of Dr. Tentzeris, Petitioner explains how
`the references allegedly teach or suggest the claim limitations and provides
`reasoning for combining the teachings of the references. Id. at 14–23.
`We have reviewed Petitioner’s and Patent Owner’s arguments and
`evidence of record. For the reasons that follow, we determine that Petitioner
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`has shown by a preponderance of the evidence that claims 1 and 2 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Maurer and
`Bernecker.
`
`Summary of Maurer
`1.
`Maurer is a U.S. patent titled “Identification Card.” Ex. 1005, [54].
`Maurer discloses “a multi-layered identification card comprising a card core
`laminated between cover sheets with user information appearing on the card
`inlet.” Id. at Abstract. Maurer discloses providing information on the inlet
`“by means of a laser beam being controlled accordingly so as to protect
`against forgery.” Id. Maurer describes “an underlying, basic need” to
`protect identification cards “as far as conceivably possible from being forged
`and/or counterfeited in entirety.” Id. at 1:13–16.
`Maurer discloses “inscrib[ing] individual features, in particular
`personal data, in the interior of [a] card after lamination of the card blank.”
`Id. at 4:5–7. Maurer discloses that “[a]t the same time as the information is
`provided on the core of the card by means of the laser beam, it is possible to
`concurrently mark the cover sheet which is then accessible to manual
`inspection by virtue of the resultant, permanent relief-type structure on the
`cover sheet.” Id. at 4:25–30. Maurer discloses that in addition to providing
`information such as a photograph which is accessible to visual inspection,
`“each card is also provided with a symbol which is specific for the card
`owner . . . or a pattern which . . . can be provided at some later date on the
`information already placed on the card core.” Id. at 4:56–65.
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`Figures 1 and 2 of Maurer are shown below:
`
`
`
`
`According to Maurer, Figure 2 above is a cross-section of the
`identification card depicted in Figure 1. Id. at 5:26–28. Maurer discloses
`that the polylaminated identification card consists of two cover sheets 10 and
`12 and a card core or inner opaque layer 14. Id. at 5:38–41. Maurer
`discloses that photograph 18 and data areas 20 and 22 are provided on card
`core (also called inlet) 14, and that data area 22 includes personal data. Id.
`at 5:54–57. Maurer also discloses that pattern 24 is individual for the card
`and is applied by means of a laser beam. Id. at 5:57–60. Maurer states that
`“[t]he pattern is arranged such that it covers a portion of the photograph, the
`general paper core as well as areas of the signature strip.” Id. at 5:60–62.
`13
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`Maurer discloses that alphanumeric indicia are printed on the card
`core 14 “by means of an appropriately controlled laser beam.” Id. at 6:14–
`18. Maurer states that “[d]epending on the energy quantum of this laser
`beam, the upper cover sheet 10 can be melted concurrently in such a way
`that a relief is formed above the line of printed information and in register
`therewith which can also be felt manually.” Id. at 6:18–22. Maurer adds
`that “[a]n example is indicated by arrow X” in Figure 2. Id. at 6:22–23.
`Maurer states that the identification card does not need to have all the
`individualizing features shown and that “other features not shown here may
`also be provided by means of the laser beam without departing from the
`scope of the invention.” Id. at 6:68–7:3.
`Maurer also discloses “providing a photograph as an individual
`characteristic directly on the paper core in a manner such as to make it
`inseparable therefrom.” Id. at 8:19–23. Maurer states “[t]he picture is
`‘burned’ into the paper core as a mosaic picture with many shades of gray.”
`Id. at 8:23–24. Maurer also discloses that inscribing a magnetic strip on the
`identification card with appropriate data. Id. at 8:38–42.
`
`Summary of Bernecker
`2.
`Bernecker is a U.S. patent titled “Data Carrier and Method for
`Producing It.” Ex. 1006, [54]. Bernecker describes as background that
`identification documents such as identity cards have “individual, mostly
`user-related, information” and that that information “must be protected
`against manipulation and forgery.” Id. at 1:10–16. Bernecker explains that
`“[t]he increasing spread of high-quality, inexpensive reproduction methods
`and devices . . . makes it ever easier to produce remarkably good imitations
`of authentic identity cards” and that “new and technically more elaborate
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`authenticity features must constantly be developed.” Id. at 1:16–22.
`Bernecker discloses an identity card “which has an authenticity feature that
`is neither manipulable nor copiable and can be produced simply and cost-
`effectively on the finished product.” Id. at 2:9–13.
`Specifically, Bernecker discloses an identity card “with at least one
`plastic layer having information incorporated in certain areas with the help
`of a laser.” Id. at 1:4–7. Bernecker states that “the externally accessible
`plastic film . . . is engraved in the form of characters or patterns, i.e., the
`plastic material is evaporated with the help of the laser so that depressions
`arise in the plastic material in the form of readable information.” Id. at
`3:13–17. Bernecker discloses that “at least parts of the user-related data
`record, e.g.[,] the photo of the owner, are engraved by removal of material
`with a laser.” Id. at 3:30–34.
`Figures 1 and 3 of Bernecker are shown below:
`
`
`
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`Figure 1 above illustrates features of identity card 1 and Figure 3
`shows an embodiment of the security feature of the identity card. Id. at 4:32,
`4:35–36. According to Bernecker, identity card 1 “can be of single- or
`multilayer design” and has “an externally accessible plastic layer.” Id. at
`4:37–40. Bernecker states that the identity card has “usual information 4,”
`which relates to the issuing authority and user, and “authenticity feature 2.”
`Id. at 4:40–42. Bernecker discloses that identity card 1 “can of course have
`further security features or an integrated circuit.” Id. at 4:50–51.
`According to Bernecker, “[a]rea 5 is interrupted by areas 3 which
`show readable information or a pattern or the like and have a different
`surface quality from surroundings 5.” Id. at 4:43–46. Bernecker discloses
`that, as shown in Figure 3, “surface area 5 of plastic material 6 has a
`homogenously smooth surface, while information 3 is incorporated in the
`material in the form of a laser engraving.” Id. at 5:5–8. Bernecker explains
`that the plastic identity card “is provided in a certain area with a microrelief
`in the form of characters, patterns or the like” and that “[t]he microrelief has
`such a fine structure that it cannot be recognized by reflected light and
`appears only at the glancing angle.” Id. at 2:57–65.
`
`3. Analysis
`a. Independent claim 1
`i. Limitations of claim 1
`Petitioner relies on Maurer for teaching all of the limitations of claim
`1, except for the limitation of “wherein at least some of the personalized
`information is defined by voids that extend into, but not through, the
`laminate layer,” which Petitioner asserts the combination of Maurer and
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`Bernecker teaches. Petitioner makes a persuasive showing that the
`combination of Maurer and Bernecker teaches the subject matter of claim 1.
`First, Maurer teaches “[a]n identity document comprising an outer top
`laminate layer and at least one interior layer,” as recited in claim 1. Maurer
`discloses a “multi-layered identification card comprising a card core
`laminated between cover sheets.” Ex. 1005, [57]. Petitioner’s annotated
`version of Figure 2 of Maurer is shown below.
`
`
`
`Figure 2 of Maurer shows a cross-section of “a polylaminated
`identification card consisting of two cover sheets 10, 12, and card core or
`inner opaque layer 14.” Id. at 5:27–28, 5:38–41. Petitioner annotates the
`figure to add labels for the outer top laminate layer, the interior layer, and
`the identity document. Pet. 18. We agree with Petitioner that Maurer
`discloses an identity document (the polylaminated identification card)
`comprising an outer top laminate layer (10) and an interior layer (14).
`Maurer also teaches “the document conveying both invariant and
`personalized information, the personalized information particularly
`corresponding to a particular person to whom the document is issued,” as
`required by claim 1. Figure 1 of Maurer, with Petitioner’s annotations, is
`shown below.
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`Figure 1 above illustrates an identification card that includes data area
`20 with “the name of the issuing authority” and data area 22 “including the
`personal data of the client.” Ex. 1005, 5:26, 5:54–57. Petitioner adds labels
`for the invariant and personalized information. Pet. 19. We agree with
`Petitioner that Maurer discloses that the identity document conveys both
`invariant (the name of the issuing authority) and personalized information
`(personal data such as the person’s name, photograph, and signature) and
`that the personalized information particularly corresponds to a particular
`person to whom the document is issued. Ex. 1005, Fig. 1, 5:54–57; Ex.
`1002 ¶¶ 64–65.
`The combination of Maurer and Bernecker teaches “wherein at least
`some of the personalized information is defined by voids that extend into,
`but not through, the laminate layer,” as recited in claim 1. Maurer discloses
`a security feature in the form of a void that extends into, but not through, the
`laminate layer and Bernecker discloses using a security feature to define at
`least some of the personalized information.
`Maurer discloses “inscrib[ing] individual features, in particular
`personal data, in the interior of said card after lamination of the card blank.”
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`Ex. 1005, 4:3–7. Maurer also discloses that “[a]t the same time as the
`information is provided on the core of the card by means of the laser beam,
`it is possible to concurrently mark the cover sheet which is then accessible to
`manual inspection by virtue of the resultant, permanent relief-type structure
`on the cover sheet.” Id. at 4:25–30. Figure 2 of Maurer—as annotated by
`Petitioner—is shown below.
`
`
`Petitioner annotates Figure 2 of Maurer to identify the void and the
`laminate layer. Pet. 20. As shown above, Maurer teaches that the
`identification card includes a void that extends into but not through the
`laminate layer. Ex. 1005, Fig. 2, 6:18–23.
`Bernecker discloses colorless laser engravings that “can be disposed
`for example directly under or over the particular printed or color-contrasting
`lasered information to permit a quick comparison of the two pieces of
`information.” Ex. 1006, 3:19–26. Bernecker also discloses that “at least
`parts of the personalized data which are produced in the form of a color
`contrast and are thus easily readable are provided on the document once
`again in the form of a colorless laser engraving.” Id. at 3:19–23. One of
`ordinary skill in the art would have recognized that, in addition to defining
`personal information with color-contrasting lasered information, the
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`colorless engraving itself also provides the personal information. Ex. 1002
`¶ 68.
`A person of ordinary skill in the art would have been motivated to
`implement at least part of the personalization data, as taught in Bernecker, in
`the form of Maurer’s transparent, tactile relief in the laminate top layer. Ex.
`1002 ¶¶ 60, 69. Maurer discloses a tactile feature in the transparent laminate
`layer that is formed in conjunction and in register with visible information
`underneath. Ex. 1005, 4:23–26. Bernecker recognizes the value of colorless
`engravings formed in register with printed information, explaining that they
`can be compared with printed information underneath. Ex. 1006, 3:19–25.
`Bernecker also teaches that the laser engravings themselves provide
`information because they can be compared with printed information
`underneath or disposed by themselves in a separate information carrier. Id.
`An ordinarily skilled artisan would have been motivated to use Bernecker’s
`teaching of the laser engravings themselves providing information to
`Maurer’s disclosure of voids in the top layer of the laminate to provide an
`additional security feature in the identification card. Ex. 1002 ¶¶ 56, 57, 60,
`61, 69.
`Finally, Maurer teaches “said voids providing a feature that can be felt
`by touch,” as required by claim 1. As explained above, Maurer discloses
`using a laser beam to “mark the cover sheet[,] which is then accessible to
`manual inspection by virtue of the resultant, permanent relief-type structure
`on the cover sheet.” Ex. 1005, 4:25–30. Maurer further explains that the
`laser beam can melt the cover sheet “in such a way that a relief is formed
`above the line of the printed information and in register therewith which can
`also be felt manually.” Id. at 6:18–23 (emphasis added). Maurer also recites
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`in claim 3 that “information on said transparent cover sheet is in relief and
`can be sensed by touch.” Id. at 9:9–11 (emphasis added).
`ii. Patent Owner’s arguments
`Patent Owner argues that Maurer and Bernecker are “systematically
`different references” and that “combining the blackening laser inscription
`process described in Maurer with the colorless engraving process described
`in Bernecker to develop the security features” required in claim 1 would
`undermine the respective purposes of Maurer and Bernecker (and thus a
`person of ordinary skill in the art would not have combined the references in
`the manner asserted). PO Resp. 27–32 (citing, e.g., Ex. 2009 ¶¶ 115–122).
`Specifically, Patent Owner asserts that Maurer exclusively teaches creating
`blackened inscriptions whereas Bernecker teaches avoiding discoloration at
`all cost. Id. at 31. Patent Owner also asserts that Maurer teaches using laser
`energy to alter the core of the laminated card whereas Bernecker teaches that
`the core should be left undisturbed and that laser processing should only
`affect the outer laminate layer of the card. Id.
`Patent Owner’s arguments and evidence do not undermine Petitioner’s
`persuasive showing. Petitioner shows that a skilled artisan would have been
`motivated to use Maurer’s relief to implement personalized information, as
`taught by Bernecker. Pet. 14–17, 19–21; Ex. 1002 ¶¶ 57, 60, 61, 69.
`Petitioner is not relying on modifying the processes of either Maurer or
`Bernecker. See Reply 15–16. Rather, Petitioner shows that a skilled artisan
`would have been motivated to use the process of Maurer of creating a relief
`in an identification card to provide a relief that conveys particular
`information—personalized information. Ex. 1002 ¶¶ 57, 60, 61, 69.
`Moreover, to the extent Patent Owner is relying on what its declarant
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`characterizes as a “combined security feature” (see Ex. 2009 ¶ 119 (cited at
`PO Resp. 32))—a raised tactile feature with an optically variable quality—
`that feature is not recited in claim 1.
`iii. Conc
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