Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: March 16, 2018
`
`
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 16, 2018
`
`
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01940
`Patent 7,661,600 B2
`
`I. INTRODUCTION
`HID Global Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1–8 of U.S. Patent No. 7,661,600 B2 (Ex. 1001, “the ’600
`patent”). Paper 1 (“Pet.”). MorphoTrust USA, LLC (“Patent Owner”) filed
`a Preliminary Response. Paper 10 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary Response, we
`conclude that the information presented shows that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`claims 1–8 of the ’600 patent.
`
`A. Related Matters
`The parties identify the following judicial proceedings, 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).
`
`B. 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
`that a goal of producing a secure identification document is “to endow the
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`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).
`
`C. 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 an 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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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–8 of the ’600 patent are unpatentable
`based on the following specific grounds (Pet. 3–4, 14–52):
`
`References
`Maurer1 and Bernecker2
`Maurer, Bernecker, and
`Gunn4
`Maurer, Bernecker, and Fry5
`
`Challenged Claims
`Basis
`35 U.S.C. § 103(a)3 1 and 2
`35 U.S.C. § 103(a)
`3 and 4
`35 U.S.C. § 103(a)
`5–8
`
`In its analysis, Petitioner relies on the declaration testimony of Dr.
`Emmanouil Tentzeris (Ex. 1003). Pet. 14–52.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, 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 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
`
`
`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).
`7
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`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).
`Neither party proposes constructions for any of the claim terms. Pet.
`6–7; see generally Prelim. Resp. Although Petitioner generally states that it
`“interprets all claim terms . . . in accordance with their plain and ordinary
`meaning consistent with the specification,” Petitioner does not identify what
`any of those plain and ordinary meanings are. Pet. 6–7. Petitioner also
`states that claim constructions have been proposed in the Court of Federal
`Claims and Eastern District of Virginia related matters, and that none of
`those proposed constructions “would affect the obviousness of the claims.”
`Id. at 7 n.4.
`We determine that no claim terms require express construction in
`order to determine whether or not to institute inter partes review.
`
`B. Level of Ordinary Skill
`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
`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
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`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.”
`Patent Owner does not address Petitioner’s contention regarding the
`level of ordinary skill. See generally Prelim. Resp. Patent Owner’s
`declarant, Dr. Darran Cairns, opines 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.” Ex. 2001 ¶ 19.
`The only difference between the Petitioner’s proposal and Dr.
`Cairns’s proposal is that Petitioner adds “at least” to the educational
`background. However, Petitioner also asserts that its proposal is identical to
`the Patent Owner’s proposal in the Federal Court of Claims litigation, which
`did not include the qualifier “at least” for the educational background. The
`parties do not argue that any issue in the case turns on such a difference. We
`find, based on the current record, 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.
`
`C. 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.
`
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`1. Summary of Maurer
`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.
`11
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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.
`
`2. Summary of Bernecker
`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
`Petitioner contends that the subject matter of claims 1 and 2 of the
`’600 patent would have been obvious over Maurer and Bernecker. Pet. 14–
`23. Petitioner contends that Maurer teaches an identity document having an
`outer top laminate layer and an interior layer, the document conveying both
`invariant and personalized information. Pet. 18–19. Petitioner also contends
`that the combination of Maurer and Bernecker teaches that at least some of
`the personalized information is defined by voids that extend into the
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`laminate layer, and that Maurer teaches that the voids provide a feature that
`can be felt by touch. Id. at 19–22. With respect to claim 2, which recites
`“[t]he identity document of claim 1 in which said voids define a visually-
`perceptible image of said person,” Petitioner additionally asserts that Maurer
`discloses a relief-type structure, that Bernecker discloses implementing a
`photo with laser engraving, and that a person of ordinary skill in the art
`would have found it obvious to implement Maurer’s relief structure to define
`an image of a person. Id. at 22–23.
`Patent Owner argues that Maurer and Bernecker “are systemically
`different references whose combination would undermine their respective
`purposes.” Prelim. Resp. 6. Patent Owner argues that “Maurer exclusively
`teaches the creation of blackened inscriptions where Bernecker teaches
`avoiding discoloration at all cost” and that “Maurer teaches the use of laser
`energy to alter the core of a 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. at 8 (italics emphases
`omitted). Patent Owner asserts that “[i]n light of the facially conflicting
`disclosures in these two references, no skilled artisan would be motivated to
`combine Bernecker and Maurer.” Id. at 9 (emphases omitted).
`Having reviewed the record, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1 and 2 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Maurer and Bernecker. For example, Petitioner sufficiently
`shows that the combination of Maurer and Bernecker teaches an identity
`document with an outer top laminate layer and an interior layer, the
`document conveying invariant and personalized information. Pet. 18–19
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`(citing Ex. 1005, Abstract, Fig. 2, 4:19–24, 5:54–59; Ex. 1002 ¶¶ 62–65).
`Petitioner also sufficiently shows that the combination of Maurer and
`Bernecker teaches that some of the personalized information is defined by
`voids that extend into, but not through, the laminate layer, and that the voids
`provide a feature that can be felt by touch. Id. at 19–22 (citing Ex. 1005,
`Fig. 2, 4:3–7, 4:25–30, 5:41–43, 5:54–59, 6:18–23; Ex. 1006, 3:18–26; Ex.
`1002 ¶¶ 66–69). Petitioner also shows that the combination of Maurer and
`Bernecker teaches that the voids define a visually-perceptible image of said
`person. Id. at 22–23 (citing Ex. 1005, 4:3–7, 4:25–30, 8:16–19, claim 1; Ex.
`1006, 3:30–37; Ex. 1002 ¶¶ 71–74).
`Petitioner also provides, for institution purposes, sufficient reasoning
`with rational underpinning for combining the teachings of Maurer and
`Bernecker as claimed. Id. at 14–17. For example, Petitioner asserts that, in
`view of Bernecker, a person of ordinary skill in the art “would have found it
`obvious and straightforward to implement Maurer’s tactile relief to indicate
`personalized information.” Id. at 16–17 (emphasis omitted) (citing Ex.
`1006, 3:19–25, 3:30–34; Ex. 1002 ¶ 61). Petitioner also explains that
`Maurer recognized the need to protect identification cards “as far as
`conceivably possible from being forged and/or counterfeited in entirety.”
`Pet. 8 (quoting Ex. 1005, 1:13–16). Petitioner asserts that combining
`Maurer’s tactile relief—whether implemented by itself (as taught by
`Bernecker) or in conjunction with printed information underneath—with
`Bernecker’s disclosure of engravings to provide information would provide
`expected functionality to yield predictable results. Id. at 17 (citing Ex. 1002
`¶ 61).
`
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`Patent Owner’s arguments are not persuasive at this preliminary stage
`and on the current record. Patent Owner, relying on testimony of its
`declarant, Dr. Cairns, argues that Maurer and Bernecker have “facially
`conflicting disclosures” (Prelim. Resp. 9) and thus a skilled artisan would
`not have been motivated to combine the teachings of the two references. Id.
`at 6–9 (citing, e.g., Ex. 2001 ¶¶ 30, 31, 34, 36–44, 46). At this preliminary
`stage, to determine whether to institute inter partes review, we view genuine
`issues of material fact created by Dr. Cairns’s declaration testimony in the
`light most favorable to Petitioner. See 37 C.F.R. 42.108(c). Moreover, on
`the current record, Patent Owner does not address the non-limiting
`disclosures in Maurer, such as Maurer’s statement 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.” Ex. 1005, 6:68–7:3.
`
`D. Asserted Obviousness over Maurer, Bernecker, and Gunn
`Petitioner contends that claims 3 and 4 of the ’600 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Maurer, Bernecker,
`and Gunn. Pet. 3–4, 23–29. 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 as claimed. Id. at 23–29.
`
`1. Summary of Gunn
`Gunn is a U.S. patent titled “Identification Document.” Ex. 1008,
`[54]. Gunn explains as background that identification documents include
`“name, address, birth date, signature and [a] photographic image” and may
`include “other variant data (i.e., data specific to a particular card or
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`
`document, for example an employee number) and invariant data (i.e., data
`common to a large number of cards, for example the name of an employer).”
`Id. at 1:10–20. Gunn state that data “crucial to the identification of the
`bearer are often covertly repeated on the document in encrypted form for
`data verification in a magnetic strip, bar code, radio frequency module or
`integrated circuit chip.” Id. at 2:4-8. Gunn also describes as background
`that centrally issued digital identification documents “generally comprise an
`opaque laser or ink jet printed core material, typically either paper or plastic,
`sandwiched between two layers of clear plastic laminate.” Id. at 1:33–38.
`Gunn describes creating an identification document which can be
`issued over the counter and which can mimic the appearance of a centrally
`issued card. Id. at 2:15–19. Among other steps in the process, Gunn
`describes forming indicia on both surfaces of the core layer. Id. at 3:18–25.
`Gunn states that “it is often convenient to provide one or more first indicia
`intended for human reading of the core layer surface which becomes the
`front of the completed identification document, and one or more additional
`first indicia intended for machine reading (e.g., bar codes) on the opposed
`‘back’ surface of the core layer.” Id. Gunn further discloses that
`“[f]ollowing the printing of the first indicium, the two layers of substantially
`transparent polymer are affixed to the core layer.” Id. at 3:39–41.
`According to Gunn, “[t]he polymer layers themselves may be formed from
`any polymer having sufficient transparency, for example polyester,
`polycarbonate[,] polystyrene, cellulose ester, polyolefin, polysulfone, or
`polyimide.” Id. at 3:51–55; see also id. at 6:25–28 (“The printed core layer
`112 is sandwiched between two polymer layers 116 formed from an
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`amorphous or biaxially oriented polyester or other optically clear plastic
`such as polycarbonate.”).
`
`2. Analysis
`Claim 3 recites “[t]he identity document of claim 1 in which at least
`one layer comprises a polycarbonate.” Petitioner asserts that Maurer
`discloses that the cover sheets of laminated cards “preferably consist of
`plastics,” and that Gunn discloses a printed core material “sandwiched
`between two layers of clear plastic laminate” wherein one option for the
`laminate material is polycarbonate. Pet. 26–27 (citing, e.g., Ex. 1005, 6:57–
`58; Ex. 1008, 1:33–36, 3:51–55, 6:25–28). Petitioner contends that an
`ordinarily skilled artisan would have been motivated to use polycarbonate as
`one of the layers in Maurer’s identity document. Id. at 27 (citing Ex. 1002
`¶ 79).
`Claim 4 recites “[t]he identity document of claim 1 that further
`comprises a bar code and a semiconductor device.” Petitioner asserts that
`Maurer, Bernecker, and Gunn disclose providing machine-readable
`information on an identification document and that Gunn in particular
`discloses providing such information in a bar code or integrated circuit chip.
`Id. at 28 (citing, e.g., Ex. 1008, 2:4–8, 3:18–25). Petitioner contends that
`“includ[ing] machine-readable information in the form of a bar code or
`integrated circuit chip, as disclosed in Gunn, in the multi-layered laminated
`identification card of Maurer, as modified by Bernecker” as an alternative to
`magnetic strips would have provided “the benefits of machine reading of
`information and as an extra layer of security.” Id. at 29 (emphases omitted)
`(citing Ex. 1002 ¶ 81).
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`Patent Owner raises the same arguments it raises in connection with
`claims 1 and 2 for why Petitioner’s arguments for claims 3 and 4 should be
`rejected. Prelim. Resp. 10.
`Having reviewed the record, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 3 and 4 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Maurer, Bernecker, and Gunn. Petitioner makes a sufficient
`showing that the combination teaches the subject matter of claims 3 and 4
`and provides sufficient reasoning with rational underpinning for combining
`the teachings as claimed. As explained above, Patent Owner’s arguments
`directed to why a person of ordinary skill in the art would not have been
`motivated to combine the teachings of Maurer and Bernecker as Petitioner
`asserts are not persuasive at this preliminary stage and on the current record.
`
`E. Asserted Obviousness over Maurer, Bernecker, and Fry
`Petitioner contends that claims 5–8 of the ’600 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Maurer, Bernecker, and Fry. Pet.
`4, 29–52. 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
`65–66.
`
`1. Summary of Fry
`Fry is a U.S. patent titled “Scoring of Materials with Laser Energy.”
`Ex. 1007, [54]. Fry describes “[a] process for grooving thermoplastic
`sheet[s] with a laser beam.” Id. at 1:69–70. Fry discloses that “the beam
`degrades the thermoplastic without cutting through the sheet, thereby
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`forming a groove or score in the thermoplastic having a bead that has been
`formed during the operation bordering the groove.” Id. at 1:72–2:3.
`Figure 2 of Fry is shown below:
`
`
`
`
`Figure 2 “shows a typical cross section of a score or groove generated
`by a laser beam 11 in the substrate 12.” Id. at 2:69–70. According to Fry,
`“[w]hen the relative motion between the laser beam and substrate 12 is of
`the correct velocity, a bead 16 forms along the sides of the score or groove.”
`Id. at 2:70–73. Fry states that “[a]side from this bead, the score 14 has a
`neat and clean surface, remaining unscorched after the scoring process has
`ended.” Id. at 2:73–75.
`Fry also provides more details regarding the formation of the beads.
`Fry states that “[w]hen a groove or score is accomplished successfully, a
`bead is formed on both edges of the groove” and that “[m]icroscopic
`examination of the grooves . . . reveals the presence of small bubbles in the
`beads formed on the sides of the groove.” Id. at 3:60–62, 3:63–65. Fry
`states that “[t]here are at least two poss
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