Dynamic Drinkware, LLCv.National Graphics, Inc.

Patent Trial and Appeal Board

Jan 27, 2016

09816435 (P.T.A.B. Jan. 27, 2016)

Trials@uspto.gov Paper No. 24
571.272.7822 Filed: January 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DYNAMIC DRINKWARE, LLC
Petitioner,

v.

NATIONAL GRAPHICS, INC.
Patent Owner.
____________

Case IPR2014-01162
Patent 6,424,467 B1
____________

Before MICHAEL P. TIERNEY, JUSTIN BUSCH, and BARBARA A.
PARVIS, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. §318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Dynamic Drinkware LLC (“Petitioner”), filed a Petition requesting an
inter partes review of claims 1–46 of U.S. Patent 6,424,467 B1 (Ex. 1001,
“the ’467 patent”). Paper 1 (“Pet.”). Patent Owner, National Graphics Inc.
(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
We determined that there was a reasonable likelihood that Petitioner would
prevail in challenging those claims as unpatentable. Pursuant to 35 U.S.C. §
314, therefore, we authorized an inter partes review to be instituted, on
January 29, 2015. Paper 7 (“Dec. on Inst.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
12, “PO Resp.”), and Petitioner filed a Reply (Paper 19, “Reply”).
Additionally, Patent Owner filed a Motion re Real Party in Interest (Paper
16, “Mot.”), and Petitioner filed a response to the motion (Paper 17,
“Opp.”). An oral hearing was held on November 5, 2015. A transcript of
the hearing has been entered into the record of the proceeding as Paper 23
(“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–46 are unpatentable.

A. Related Proceedings
The ’467 patent is not the subject of any currently-pending judicial
matters. Pet. 3.

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B. The ’467 Patent
The ’467 patent is directed to high definition lenticular lenses.
Ex. 1001, 1:11–13. A lenticular lens can be used to produce the illusion of
three dimensionality in a visually perceptible image. Ex. 1002, Abstract.
Lenticular images have been used on a variety of items, including postcards,
business cards, and labeling applications. Ex. 1001, 1:63–67.
Lenticular lenses take the form of a transparent plastic sheet or web
having an array of identical curved or ribbed surfaces that are formed on the
front surface of the plastic sheet. Id. at 1:15–19. The back surface of the
lens is typically flat. Id. at 1:19–20. An interlaced image is then positioned
on the backside of the lens. Figures 1A and 1B of the ’467 patent, depicted
below, provide an example of a lenticular lens and its dimensions.

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In Figure 1A above, 10 is a lenticular lens, the lens having one ribbed side of
lenticules 12, and substantially flat back 14. Id. at 7:7–11. Lens 10 has
image 16 joined to the back side of the lens. Id. at 7:12–15. An adhesive,
not shown, may be used to join lens 10 to image 16. Id. at 7:16–20. As
depicted in Figure 1A, w2 is the width of the lenticule, and g2 is the gauge
thickness. Id. at 7:52–67. In Figure 1B, a2 is the arc angle, b2 is the base
thickness, c2 is the crescent depth, f2 is the focal length, r1 is the lenticule
radius, and w2 is the width of the lenticule. Id.
The ’467 patent states that the relationships between certain
dimensions can be calculated and provides several formulas to determine the
various parameters. Id. at 8:55–64. For example, the ’467 patent states that
lenticule width is a function of both the arc angle and radius of the lenticule.
Id. at 8:65–66.

C. Illustrative Claims
The ’467 patent contains eleven independent claims, each of which is
challenged by Petitioner. Each of the independent claims is directed to a
lenticular lens and requires a specified arc angle, lenticular width, and gauge
thickness. Independent claim 1, and dependent claim 2, are illustrative of
the challenged claims, and are recited below:

1. A high definition lenticular lens comprising:
a front surface comprising a plurality of lenticules, each
of the lenticules having characteristic parameters that comprise
a focal length, an arc angle that is greater than about 90 degrees,
and a width that is less than about 0.006667 inches; and
a substantially flat back surface opposite the front
surface;
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wherein the lens has a gauge thickness that is
substantially equal to the focal length.

2. The high definition lenticular lens of claim 1 wherein the
lens gauge thickness is less than about 10 mils.

D. Prior Art Relied Upon
Petitioner relies upon the following prior art:
U.S. 5,266,995 Quadracci Nov. 30, 1993 (Ex. 1002)
U.S. 5,364,274 Sekiguchi Nov. 15, 1994 (Ex. 1005)
U.S. 5,457,515 Quadracci Oct. 10, 1995 (Ex. 1010)
U.S. 4,414,316 Conley Nov. 8, 1983 (Ex. 1011)
U.S. 4,420,502 Conley Dec.13, 1983 (Ex. 1012)

E. Instituted Grounds of Unpatentability
We instituted the instant trial based on the following grounds of
unpatentability (Dec. 3–4, 20):

Reference(s) Basis Claims challenged
Quadracci ’995 § 102 1, 2, 23, 24, and 27–29
Quadracci ’995 in view of
Sekiguchi and Quadracci ’515
§ 103 30–31, 34–35, 38–39,
42–43, and 46
Quadracci ’995 in view of
Quadracci ’515, Conley ’316, or
Conley ’502
§ 103 3–22, 25–26, 32–33, 36–
37, 40–41, and 44–45

F. Level of Ordinary Skill in the Art
Petitioner’s declarant, Mr. Mark Raymond, testifies that, based
on his experience in the lenticular industry, a person of ordinary skill
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in the lenticular art “is one who has several years of work experience
in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant,
Dr. Garcia, testifies that a person of ordinary skill in the art would
have five or more years of experience in the lenticular lens industry or
have an understanding of optical engineering including first and
higher order geometric and physical optics principles. Ex. 2001 ¶ 13.
The parties’ definitions of one of ordinary skill in the art are
substantially the same and neither party states how any difference in
the parties’ articulated levels of skill impacts the proceeding. For
purpose of this decision, we hold that the level of ordinary skill in the
art is reflected by the prior art of record, such that one of skill in the
art would have had years of experience in the lenticular lens industry
or had an understanding of optical engineering, including higher order
geometric and physical optics principles. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the
appropriate level of ordinary skill in the art).

II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); see In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–80 (Fed. Cir. 2015).
Claim terms are given their ordinary and customary meaning, as understood
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by one of ordinary skill in the art in the context of the entire disclosure. In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).

Petitioner identifies the following five claim terms for construction.
Proposed Construction of Claim Terms in the ’467 Patent
Claim Term Proposed Construction
lenticule “an individual lens formed on the front surface of a
plastic sheet that focuses on, and extends over,
substantially the full length of an underlying image.”
Pet. 12.
focal length “the distance from a focal point of a lens or mirror to the
corresponding principal plane.” Pet. 12.
arc angle “the angle drawn from the center point of a radius (r1)
for a particular lenticule and extends from the first point
of intersection with a first lenticule disposed to one side
of the particular lenticule and to the second point of
intersection with a second lenticule disposed to the
opposite side of the particular lenticule.” Pet. 12–13; see
also Ex. 1001, Fig. 1B.
Width w1 as shown in Patent Owner figures. Pet. 13; see also
Fig. 1A and 1B depicted above.
gauge thickness “measured from the outermost edge of the curved
surface of the lens to the flat back surface of the lens.”
Pet. 13.

Patent Owner does not dispute the proposed constructions, except to state
that, consistent with Petitioner’s definition of focal length, one of ordinary
skill in the art would have understood that focal length in the ’467 refers to
the “effective focal length” of the lens. PO Resp. 3–4.
We adopt Petitioner’s proposed claim constructions as they are
consistent with the Patent Owner’s use of the terms in the ’467 patent
Specification. For example, the term gauge thickness is defined in the ’467
patent with reference to g2 of Fig. 1A and states that the thickness is
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measured from the outermost edge of the curved surface of the lens to the
flat back surface of the lens. Ex. 1001, 2:27–33.

B. Claims 1, 2, 23, 24, and 27–29 Anticipation by Quadracci ’995
To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
describe . . . each and every claim limitation and enable one of skill in the art
to practice an embodiment of the claimed invention without undue
experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d
1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009)).

1. Quadracci ’995 (Ex. 1002)
Quadracci ’995 teaches a lenticular lens web that is said to produce
the illusion of three dimensionality in a visually perceptible image. Ex.
1002, 1:5–12. According to Quadracci ’995, its invention provides
photographically acceptable quality graphic images. Id. at 1:6–12, 4:37–41.
Quadracci ’995’s lenticular lens images are characterized by their
ability to achieve a finished graphic image having photographically
acceptable quality. Id. at 5:25–32. Quadracci ’995 states the preferred
lenticule shape is that of a half cylinder split longitudinally, which provides
an arc angle of 180 degrees. Id. at 10:49–50 and Fig. 1. Quadracci ’995
further states that its most preferred embodiment has at least 300 lenticules
per inch, thus, the width of each lenticule is 0.003333 inches or less. Id. at
8:51–52, 10:42–48. Quadracci ’995 also teaches that it is desirable that each
lenticule has a focal length that coincides with its distance from the image,
which is printed on the back of the lenticule. Id. at 11:39–62. Specifically,
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Quadracci ’995 states explicitly that it is desirable that each lenticule have a
focal length that coincides with its distance from the printing layer. Id. at
11:60–62. The back side of the lenticules is flat. Id. at Figs. 1, 7.

2. Discussion
Petitioner contends that claims 1, 2, 23, 24, and 27–29 are anticipated
under 35 U.S.C. §102(b) by Quadracci ’995. Pet. 14–21. Generally,
Petitioner contends that Quadracci ’995 describes a lenticular lens having
over 300 half cylinder lenticules per inch with a half cylinder shape, giving
the lenticules an arc angle of greater than 90 degrees and a width of less than
.00333 inches. Pet. 15. Petitioner further contends that, using well-known
formulas, one of ordinary skill in the art would have understood the focal
length of Quadracci ’995’s preferred lens to be 0.003411 inches, or 3.4 mils.
Id. (citing Ex. 1013 ¶ 27). According to Petitioner, Quadracci ’995 teaches
lenticules having a focal length that coincides with their distance from a
printing layer. Id. at 15–21. Petitioner states that the lenticular screen of
Quadracci ’995 has a flat rear surface with an image joined to that surface.
Id. at 18 citing Ex. 1002, 7:49–56.
Patent Owner disagrees with Petitioner’s analysis of Quadracci ’995’s
teachings. According to Patent Owner, Quadracci ’995 does not disclose a
lens having a gauge thickness that is substantially equal to the focal length.
PO Resp. 5–12. Patent Owner states that while Quadracci ’995 mentions the
desirability of a focal length coinciding with the printing layer, Quadracci
’995 does not enable a person of ordinary skill in the art to practice such an
embodiment. Id. at 12–14. Further, Patent Owner states that the contrary
testimony of Petitioner’s declarant, Mr. Raymond, is not credible as Mr.
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Raymond failed to account for an adhesive layer and relies upon an
unacceptable index of refraction. Id. at 14–18.

a. Quadracci ’995 Simulations
Patent Owner’s declarant, Dr. Garcia, testifies that he conducted
several simulations of the lenticular lenses described in the challenged
Goggins ’467 patent and Quadracci ’995 and determined that the focal point
of Quadracci ’995 does not lie at the back of the lens, resulting in an image
that is out of focus as compared to that of Goggins. Id. at 5, Ex. 2001 ¶¶ 21–
51. According to Patent Owner, Dr. Garcia’s testimony demonstrates that
Quadracci ’995’s focal length is not substantially equal to the gauge
thickness as required by all of the challenged claims. PO Resp. 12.
Dr. Garcia’s simulations attempt to use equations recited in the ’467
patent to calculate the gauge thickness of a lens according to Quadracci
’995. Ex. 2001 ¶ 30–31. Dr. Garcia testified that by his calculations, the
’467 patent examples he simulated led to an effective focal length that was
closer to the gauge thickness than the examples he simulated from the
Quadracci ’995 patent. Ex. 1017, 35–36. Based on his calculated focal
length, Dr. Garcia concludes that the lenticular images of Quadracci ’995
must be placed closer to the focal point and would require a location far
away from the printing layer at the back of the lenticular lens. Ex. 2001
¶ 50. From this, Dr. Garcia opines that the Quadracci ’995 patent fails to
teach or disclose a lenticular lens having a focal length substantially equal to
the gauge thickness as required by the challenged claims. Id. at ¶ 51. Dr.
Garcia, on cross-examination, stated that one could not design a lens using a
180 degree aperture having a gauge length substantially the same as the
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focal length using the formulas identified in the ’467 patent. Dr. Garcia, on
cross-examination, acknowledged that the ’467 patent claims are not limited
to the specific focal length formulas recited in the patent and agreed that
there “are more calculations or more formulas” for determining focal length
than those listed in the patent. Ex. 1017, 26–27. Dr. Garcia also testified on
cross-examination that using “the Gaussian formula” one could reduce the
thickness of the lens to try to push the focal point closer to the lens but the
resulting lens would have more of a departure from ideal behavior than that
of the challenged claims. Ex. 1017, 45–46. Specifically, the resulting lens
would not look like a sharp, crisp image. Id. at 46.
Quadracci ’995 states that its lenticular lenses produce
photographically acceptable quality graphic images. Ex. 1002, 1:6–12,
4:37–41. Quadracci ’995 further states that it is desirable that each lenticule
have a focal length that coincides with its distance from the printing layer.
Id. at 11:60–62. One skilled in the art would have understood that lenticular
imaging requires that the lenticular lens focus on the image at the back of the
lenticular lens. Ex. 2001 ¶ 67 and Second Declaration of Mr. Raymond,
Ex. 1016 ¶ 4.
Mr. Raymond testifies that he performed a ray tracing analysis on
each sample lens from Dr. Garcia’s Declaration and identified the location
along the ray tracing where the spot size created by the rays is minimized
using root mean square analysis. Ex. 1016 ¶ 5. Mr. Raymond testifies that
the simulated 150 lenticule per inch (LPI), 200 LPI and 250 LPI samples had
gauge lengths substantially equal to the focal length. Id. at 6–8.
We find that Quadracci ’995 taught one skilled in the art to make
lenticular lenses having a gauge thickness that is substantially equal to the
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focal length to produce photographically acceptable quality graphic images.
Quadracci ’995’s teachings are confirmed by Mr. Raymond’s second
declaration testifying that one skilled in the art following Quadracci ’995’s
teachings would create lenses having gauge lengths substantially equal to the
focal length. We have considered Dr. Garcia’s simulations to the contrary
but note that Dr. Garcia acknowledged on cross-examination that one could
produce an image with Quadracci ’995 lenses with a focal point closer to the
end of the lens using the Gaussian formula, albeit without looking as crisp
and sharp.
b. Quadracci ’995 is Enabling
Patent Owner contends that Quadracci ’995 is not enabling as “any
lenticular lens that is designed using this disclosure will have a focal length
that lies well within the lens.” PO Resp. 13. According to Patent Owner,
Quadracci ’995 is directed to a method for joining an image web to a
lenticular lens and its detailed disclosure focuses on the machinery used to
implement this process. Id. at 12–13. Patent Owner states that Quadracci
’995 is not directed to lenticular lens design and its discussion of lens
geometry does not enable a person of ordinary skill in the art to practice the
challenged claims, which require a lens having a gauge thickness that is
substantially equal to the focal length. Id. at 13.
The description of an anticipating reference must be such that a
person of ordinary skill in the field of the invention can practice the subject
matter based on the reference, without undue experimentation. See Amgen
Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1306–07 (Fed. Cir.
2006). Prior art patents, however, are presumed to be enabled. In re Antor
Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012) (“[B]oth claimed and
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unclaimed materials disclosed in a patent are presumptively enabling . . .”).
The burden is on the party challenging the enablement of the prior art patent
to show that the patent is not enabled. Id. at 1288.
Challenged claim 1 requires a lenticular lens having lenticules with an
arc angle greater than 90 degrees and a width of less than about 0.006667
inches where the lens has a gauge thickness that is substantially equal to the
focal length. Quadracci ’995 describes a preferred lenticule shape having a
half cylinder split longitudinally, which provides an arc angle of 180
degrees. Quadracci ’995 further describes that a preferred embodiment
having at least 300 lenticules per inch, i.e., the width of each lenticule is
0.003333 inches or less.
Dr. Garcia created lens simulations based on Quadracci ’995’s
teachings using an arc angle of 180 degrees and 150 LPI, 200 LPI and 300
LPI. Ex. 2001 ¶¶ 40–49. Using the formulas described in the ’467 patent,
Dr. Garcia calculated the focal lengths based on the lenticular width and arc
angle of Quadracci ’995 and concluded that Quadracci ’995 does not
disclose a focal length that is substantially equal to the gauge length. Id. at
¶¶ 40–41 and 51. Specifically, Dr. Garcia stated that it was not physically
possible using the four formulas described in the ’467 patent to have the
focal length substantially equal to the gauge thickness. Id. at 50–51. Dr.
Garcia did not testify, however, that one skilled in the art using known focal
length formulas other than those recited in the ’467 patent, would arrive at
the same conclusion.
Mr. Raymond testifies that a ray tracing analysis with a spot size
created by the rays minimized by root mean square analysis demonstrates
that an arc angle of 180 degrees and a 150 LPI, 200 LPI and 300 LPI lens
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results in gauge lengths substantially equal to the focal length. Ex. 1016 ¶¶
5–10. Mr. Raymond testifies explicitly that the information available in
Quadracci ’995 was sufficient to allow one of ordinary skill in the art to
make a lens having an arc angle greater than 90 degrees, wherein the width
of the lenticules is less than about 0.00667 inches and the lens has a gauge
thickness that is substantially equal to the focal length. Id. at 10.
Based on the evidence of record, we credit the ray tracing testimony
of Mr. Raymond and are persuaded that the lenticular lens disclosure of
Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that
focal length formulas other than those recited in the ’467 patent were known
in the art and Mr. Raymond demonstrates that, consistent with the teachings
of Quadracci ’995, one of ordinary skill in the art could make the described
lenses.
c. Mr. Raymond’s Gauge Thickness and Focal
Length Calculations
Patent Owner states that Mr. Raymond’s thickness calculation in his
first declaration is either wrong, or it uses an unacceptable index of
refraction. Mr. Raymond, in his first declaration, testifies that using the
general lens formulas described in the ’467 patent, he arrived at a gauge
thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not
disclose the index of refraction that he used to determine the gauge
thickness. Expert testimony that does not disclose the underlying data on
which the opinion is based is entitled to little or no weight. 37 C.F.R.
42.65(a). As Mr. Raymond failed to disclose the index of refraction used in
his calculations and provide support for his selected refraction index, we do
not credit Mr. Raymond’s gauge thickness calculation in his first declaration
with respect to Quadracci ’995. As discussed below, however, Mr.
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Raymond’s second declaration identifies the specific index of refraction
used to calculate the gauge thickness.
Patent Owner also contends that Mr. Raymond’s analysis presented in
his first declaration testimony is fatally flawed for failing to take into
account the thickness of Quadracci ’995’s adhesive layer. PO Resp. 14.
During cross-examination, Mr. Raymond acknowledged that Quadracci ’995
does not disclose explicitly the thickness of the adhesive layer. Ex. 2002,
31:1–16. On re-direct examination, Mr. Raymond stated that he thought the
adhesive layer would be very small, something like 5 percent with a
maximum of about 25 microns or 1 mil. Id. at 35:2–25. Patent Owner states
that Mr. Raymond did not account for this extra distance when opining that
the gauge thickness and focal length are substantially equal. PO Resp. 16–
17.
Mr. Raymond’s second declaration states that his prior estimation of
the thickness of the adhesive layer during his deposition was incorrect. Ex.
1016 ¶ 12. According to Mr. Raymond, one of ordinary skill in the art
would have understood that the adhesive layer used in lenticular printing is
so small that it is included within the gauge thickness of the lens and will be
accounted for when designing a lens. Id. Mr. Raymond’s ray tracing
examples in his second declaration used a 0.0787 mil adhesive layer with a
5.69 mil lens, such that the adhesive layer of the lens was just 1.4% of the
total gauge thickness of the lens. Id. Additionally, Mr. Raymond’s ray
tracing employed an index of refraction of 1.56, which is the same index of
refraction used in Dr. Garcia’s simulations. Id. at ¶¶ 6–8.
We agree with Patent Owner that Mr. Raymond’s first declaration did
not specifically take the thickness of the adhesive layer into account. We
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credit, however, Mr. Raymond’s cross-examination testimony that the
adhesive layer is “very small” as this is consistent with Quadracci ’995’s
desire to employ a relatively transparent adhesive layer. Ex. 1002, 11:47–50
Similarly, we credit Mr. Raymond’s second declaration testimony that one
skilled in the art would have understood that the adhesive layer used in
lenticular printing is so small that it will be just over 1% of the total
thickness.

d. Petitioner’s Objections to Alleged New Patent
Owner Arguments at Oral Hearing

Petitioner objected to alleged new Patent Owner arguments at oral
hearing. For the first time at oral hearing, counsel for Patent Owner argued
that printing an image directly to the flat back surface of the lens as required
by challenged claims 28 and 29 is not in Quadracci ’995. Paper 23, 44:9–13.
Petitioner objected to Patent Owner’s counsel’s new argument, contending
that Petitioner did not have an opportunity to respond as Patent Owner did
not brief this contention. Paper 23, 65:20–25. When Patent Owner’s
counsel was asked if they had previously raised this argument in their Patent
Owner Response, counsel for Patent Owner stated “[y]ou know, we did not
raise that.” Id. at 44:18–20.
Parties are not permitted to raise new arguments or evidence at oral
hearing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
(Aug. 14, 2012). Petitioner’s objection to Patent Owner’s new argument
relating to printing an image directly to the flat back surface of the lens is
sustained.
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e. Quadracci ’995 Anticipates Claims 1, 2, 23, 24,
and 27–29
Having reviewed the evidence of record, we find that Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 2, 23, 24,
and 27–29 are unpatentable as anticipated by Quadracci ’995. Specifically,
Quadracci ’995 teaches a photographically acceptable quality lenticular lens
having an arc angle of 180 degrees and at least 300 lenticules per inch and
each lenticule has a focal length that coincides with its distance from the
image. While Dr. Garcia presents several simulations based on general lens
formulas to demonstrate that the focal length of Quadracci ’995 is too short,
Mr. Raymond’s second declaration provides credible and sufficient
testimony to demonstrate that, consistent with the teachings of Quadracci
’995, the gauge thickness of Quadracci ’995’s lenses are substantially equal
to their focal length.
C. Claims 30–31, 34–35, 38–39, 42–43, and 46 Obviousness over
Quadracci ’995 in view of Sekiguchi or Quadracci ’515

Claims 30, 34, 38, 42, and 46 are independent claims, and like
independent claim 1, are directed to a lenticular lens having an arc angle of
greater than 90 degrees, and a width of less than about 0.006667 inches.
Claim 30, however, requires that the lens be part of a package, claim 34
requires the lens be in combination with a container, claim 38 requires the
lens to be with a cup substrate, claim 42 requires a label substrate and claim
46 requires that the image for the lens be at least one of a photographic
image, a bar code image, and a text image. Ex. 1001, 15:61–18:11.
Dependent claims 31, 35, 39, and 43 require that the image be joined at the
base of the lens. Id. at 16:8–17:2.

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1. Sekiguchi (Ex. 1005) and Quadracci ’515 (Ex. 1010)
Sekiguchi describes using lenticular lenses on items, ranging from
packages, cups, and magazines, to product marketing and advertising
displays. Ex. 1005, Abstract, 3:22–62, 6:8–11, 6:43–49, Figures 45 and 53.
Quadracci ’515 teaches that lenticular lenses can be used in a “wide variety
of products,” such as textbooks, automobiles, packaging materials, and
magazine covers. Ex. 1010, 12:55–67.
2. Discussion
Petitioner contends that claims 30, 34, 38, and 42 merely incorporate
the limitations of claim 1 into a package, cup, and label, respectively. Pet.
39. Petitioner states that the use of lenticular lenses for packages, cups, and
labels was known in the art, for example, Sekiguchi and Quadracci ’515. Id.
at 39–40. According to Petitioner, it would have been obvious to one of
ordinary skill in the art to incorporate the high definition lenticular lenses of
Quadracci ’995 into packages, containers, cups, and labels as Sekiguchi and
Quadracci ’515 teach that it was known in the art to combine lenticular
lenses with such objects. Pet. 39–40. Petitioner further contends that, as
shown by Quadracci ’515’s teaching that one can print an image to the lens,
it was known in the art to join an image to the base of a lenticular lens as
required by dependent claims 31, 35, 39, and 43. Pet. 41–42. Additionally,
as to claim 46, Petitioner states that it was known in the art that text images
with small fonts, photographic images, and bar codes were used in the
packaging, publishing, and labelling industry, and that it would have been
obvious to use lenticular lenses with such text, photographic images, and bar
codes. Id. at 39–40, 47; Ex. 1001, 1:63–2:8.
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Patent Owner states that Quadracci ’995 fails to disclose a lens having
a thickness that is substantially equal to the focal length, and therefore this
ground must be denied for the same reasons that the anticipation ground
over Quadracci ’995 must be denied. PO Resp. 19.
For the reasons discussed above, we find that Petitioner has
demonstrated that Quadracci ’995 teaches a preferred lenticular lens
embodiment falling within the scope of the claimed subject matter.
Petitioner has provided sufficient evidence (Sekiguchi and Quadracci ’515)
to demonstrate that it was known in the art to use lenticules with images on
packages, cups, labels, and magazine covers. Petitioner relies upon Mr.
Raymond’s testimony to demonstrate that it would have been obvious to use
or join the lenticular lenses of Quadracci ’995 with packages, cups, labels,
and magazine covers to create attractive displays. Ex. 1013 ¶ 46.
The Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 416 (2007). We conclude that Petitioner has established a sufficient
reason to combine the references in the asserted manner. Specifically,
Petitioner has established that it would have been obvious to join Quadracci
’995’s lenticular lenses with packages, cups, and magazines, as this
represents combining known elements for their known purpose to achieve a
predictable result, a lenticular package, cup, or magazine having an
attractive display.
We hold that Petitioner has demonstrated by a preponderance of the
evidence that claims 30–31, 34–35, 38–39, 42–43, and 46 are unpatentable
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as obvious over the combined teachings of Quadracci ’995, Sekiguchi, and
Quadracci ’515.

D. Claims 3–22, 25–26, 32–33, 36–37, 40–41, and 44–45 Obvious
over Quadracci ’995 in view of Quadracci ’515, Conley ’316,
or Conley ’502
Claims 3–22, 25–26, 32–33, 36–37, 40–41, and 44–45 are dependent
claims that generally recite additional conventional limitations. For
example, the dependent claims further limit the independent claims to
joining the image to the flat back surface of the lens (claim 3), printing the
image onto the back of the lens (claim 4), using web-offset printing (claim
5), using laser printing (claim 6), including an aqueous white flood coating
over the image (claims 7–9), manufacturing the lens using polyester or PVC
(claim 10), using bar code images (claims 11, 26, 33, 37, 41, and 45), and
images with text having specified font sizes (claims 12, 25, 32, 36, 40, and
44). Ex. 1001, 13:65–17:7.
Petitioner cites Quadracci ’995 for its teachings of lenticular lenses,
and Quadracci ’515, Conley ’316, and Conley ’502 for their descriptions of
how the limitations recited in the dependent claims were well-known in the
lenticular arts for use with lenticular lenses and their manufacture. Pet. 47–
59. Petitioner provides detailed claim charts and the testimony of Mr.
Raymond to set forth how the dependent claim limitations were well known
in the art (Quadracci ’515, Conley ’316, or Conley ’502). Id.; Ex. 1013
¶¶ 47–63. For example, Quadracci ’515 is cited for its description of
printing on lenticular lenses using web offset, ink jet, and laser printing
methods. Ex. 1013 ¶¶ 50–51.
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Patent Owner states that Quadracci ’995 fails to disclose a lens having
a thickness that is substantially equal to the focal length and therefore this
ground must be denied for the same reasons that the anticipation ground
over Quadracci ’995 must be denied. PO Resp. 19–20.
For the reasons discussed above, we find that Petitioner has
demonstrated that Quadracci ’995 teaches a preferred lenticular lens
embodiment falling within the scope of the claimed subject matter.
Petitioner has presented sufficient evidence to demonstrate that one of
ordinary skill in the art had reason to combine the references in the
suggested manner to arrive at the claimed subject matter. Quadracci ’995
teaches the use of high-definition lenticular lenses for photographically
acceptable image quality and Quadracci ’515, Conley ’316, and Conley ’502
demonstrate that the additional subject matter recited in the challenged
dependent claims was known to one of ordinary skill in the lenticular art for
use in the manufacture of lenticular lenses. Petitioner has presented
sufficient evidence, on this record, that the claimed subject matter represents
a combination of known elements for their known purpose to achieve a
predictable result, lenticular lenses that provide high quality images.
We hold that Petitioner has demonstrated by a preponderance of the
evidence that claims 3–22, 25–26, 32–33, 36–37, 40–41, and 44–45 are
unpatentable as obvious over the combined teachings of Quadracci ’995,
Quadracci ’515, Conley ’316, and Conley ’502.

E. Patent Owner Motion For Determination Regarding Real
Party-in-Interest (“RPI”)

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Patent Owner filed a motion requesting that Pacur, LLC be determined
to be a real party-in-interest in this proceeding. Paper 16. Petitioner
opposes Patent Owner’s request. Paper 17 (Pet. Opp.)
Whether a party who is not named as a participant in a given
proceeding constitutes an RPI is a highly fact dependent question that takes
into account how courts generally have used the terms to “describe
relationships and considerations sufficient to justify applying conventional
principles of estoppel and preclusion.” Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). Although “rarely will one
fact, standing alone, be determinative of the inquiry” (id. at 48,760), “[a]
common consideration is whether the non-party exercised or could have
exercised control over a party’s participation in a proceeding.” Id. at 48,759.
Patent Owner states that Pacur, LLC (“Pacur”), is a plastic extruder
that makes lenticular lens sheets, among other products. Paper 16, 1.
According to Patent Owner, Pacur is currently selling a product that
potentially infringes the challenged claims. Id. Patent Owner also contends,
although Dynamic Drinkware and Pacur are separate legal entities, Dynamic
Drinkware was formed by Pacur after Pacur purchased the assets of a third-
party. Id. at 2–3, 7. Patent Owner provides an overview of the litigation
history between Pacur and Patent Owner and how Pacur is related to
Petitioner, including sharing common management. Id. at 1–8. Patent
Owner also states that Pacur and Petitioner are (or at least have been)
represented by the same counsel. Id. at 8.
Patent Owner infers that Pacur desires review of the ‘467 patent based
on the history between Patent Owner and Pacur and the allegedly infringing
Pacur product. Id. at 10–11. Patent Owner contends that a reasonable
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inference can be made, given the common management between Pacur and
Petitioner, that Pacur could exercise control over this proceeding, if Pacur is
not actually controlling it. Id. at 11–14. Patent Owner also identifies certain
legal relationships between Pacur and Petitioner and the common alignment
of interests as further evidence that Pacur could control the proceeding. Id.
at 14–15.
Petitioner states that Petitioner Dynamic Drinkware and Pacur are
distinct entities and that Pacur has not been involved in any way in this
proceeding. Pet. Opp. 5–12. As support for its position, Petitioner submits
the declarations of Mr. Johnson, president of both Petitioner Dynamic
Drinkware (Ex. 1014) and Pacur (Ex. 1015). Id. at 8–9. Mr. Johnson
testifies that Petitioner has its own employees and sales staff, website, email
addresses, computer systems and products. Ex. 1014 ¶ 2. Further, Petitioner
maintains its own financial records and Mr. Johnson uses an email address
and contact information specific to Petitioner when conducting business on
behalf of Petitioner. Id. at ¶¶ 4–5. Mr. Johnson further testifies that Pacur
did not direct Petitioner’s filing of the petition and that Pacur did not
exercise control over Petitioner’s involvement in the proceeding or provide
any funding. Ex. 1015 ¶ 5.
A patent owner challenging a petitioner’s RPI disclosure must
produce sufficient evidence to bring a petitioner’s identification of the RPIs
into question. To that end, the evidentiary record before us presents little
information as to how Pacur controlled the proceeding, paid expenses or
participated in the proceeding such that conventional principles of estoppel
and preclusion would apply. The fact that Pacur and Petitioner share
common management and have a pre-existing legal relationship does not
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demonstrate sufficiently that Pacur exercised or could have exercised control
over Petitioner’s filing of the petition. As noted by Petitioner, Petitioner and
Pacur are not in a parent-subsidiary relationship and Patent Owner’s
inferences do not rise to the level of evidence demonstrating that Pacur has
played any role in this particular proceeding or has any opportunity to
exercise control over this proceeding. Pet. Opp. 6–7.
Based upon the evidence presented, we hold that Patent Owner has
failed to establish that Pacur is a real party-in-interest in this proceeding.

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that:
claims 1, 2, 23, 24, and 27–29 of the ’467 patent are unpatentable as
anticipated under 35 U.S.C. § 102(b) by Quadracci ’995; claims 30–31, 34–
35, 38–39, 42–43, and 46 of the ’467 patent are unpatentable under 35
U.S.C. § 103(a), as obvious over Quadracci ’995 in view of Sekiguchi and
Quadracci ’515; and, claims 3–22, 25–26, 32–33, 36–37, 40–41, and 44–45
of the ’467 patent are unpatentable under 35 U.S.C. § 103(a), as obvious
over Quadracci ’995 in view of Quadracci ’515, Conley ’316, and Conley
’502.

IV. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 1–46 of the ’467 patent are held unpatentable;
and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
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comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Patrick Bergin
pbergin@dkattorneys.com

Joseph Heino
jheino@dkattorneys.com

PATENT OWNER:

Michael Griggs
mtg@boylefred.com

Sarah Wong
smw@boylefred.com