Takeaway: A declaration that does not adequately set forth the underlying data on which the opinion is based may potentially be remedied during cross-examination or in a second declaration explaining the basis for the opinion.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-46 are unpatentable. “The ’467 patent is directed to high definition lenticular lenses.”

Trial was instituted on one ground of anticipation by the Quadracci ’995 reference and on two grounds of obviousness based in part on Quadracci ’995. Petitioner had proposed constructions for five claim terms, which Patent Owner largely did not contest. The Board adopted Petitioner’s proposed constructions “as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification.”

Regarding alleged anticipation of claims 1, 2, 23, 24, and 27-29 by Quadracci ’995, Patent Owner argued that Quadracci ’995 does not enable an embodiment of a “lens having a gauge thickness that is substantially equal to the focal length” and that the testimony of Petitioner’s expert was not credible. Patent Owner also relied upon simulations of the lenses described in Quadracci ’995 conducted by its expert to argue that the “focal length [of Quadracci ’995] is not substantially equal to the gauge thickness as required by all of the challenged claims.”

The Board discussed the simulations conducted by Patent Owner’s expert. The Board disagreed with Patent Owner’s assertions that Quadracci ’995 does not disclose the limitations related to the focal length. In particular, the Board credited Petitioner’s second declaration of Mr. Raymond, which analyzed the simulations performed by Patent Owner’s declarant, and also noted that Patent Owner’s expert “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.”

Regarding whether Quadracci ’995 is enabling, the Board noted that “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.” Prior art patents are presumed to be enabled. Patent Owner’s enablement arguments were premised on calculations that were performed in its simulations using only formulae disclosed in the challenged ’467 patent. However, Patent Owner’s expert acknowledged that other formulae were known in the art, and Petitioner’s expert demonstrated “that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses.”

Regarding the credibility of the testimony of Petitioner’s expert, Patent Owner argued that the calculations performed in the first declaration of Mr. Raymond were not reliable because the “index of refraction that he used” was not disclosed. The Board agreed with Patent Owner that “Mr. Raymond’s first declaration did not specifically take the thickness of the adhesive layer into account.” The Board, however, credited “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.” Further, the Board credited “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.”

The Board next addressed Petitioner’s objections to Patent Owner’s argument at oral hearing related to “printing an image directly to the flat back surface of the lens” as being presented for the first time. At oral hearing, the Board asked counsel for Patent Owner “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.’” Accordingly, the Board sustained Petitioner’s objection.

Based on the foregoing, the Board found that Petitioner had shown by a preponderance of the evidence that Quadracci ’995 anticipates claims 1, 2, 23, 24, and 27-29.

The Board then addressed the alleged obviousness of claims 30-31, 34-35, 38-39, 42-43, and 46 over Quadracci ’995 in view of Sekiguchi or Quadracci ’515. For similar reasons discussed above with respect to anticipation based on Quadracci ’995, the Board was persuaded that Petitioner had established unpatentability by a preponderance of the evidence.

Regarding the alleged obviousness of claims 3-22, 25-26, 32-33, 36-37, 40-41, and 44-45, the Board was persuaded that Petitioner established unpatentability by a preponderance of the evidence for similar reasons discussed above.

The Board addressed Patent Owner’s Motion for Determination Regarding Real Party-in-Interest (“RPI”). Patent Owner had alleged that Pacur, LLC should be determined to be an RPI because Petitioner, Dynamic Drinkware, “was formed by Pacur after Pacur purchased the assets of a third-party,” Pacur shares common management with Petitioner, and the two were represented by the same counsel at some point in time. Patent Owner argued that inference could be made based on the common management, that Pacur could have exercised control over this proceeding. Petitioner opposed, relying upon two declarations by Mr. Johnson as president of Petitioner (Ex. 1014) and president of Pacur (Ex. 1015), arguing that the two were separate entities with Pacur not directing or exercising control over the filing of the Petition. Based on the evidence, the Board held that Patent Owner did not establish that Pacur is an RPI.

Dynamic Drinkware, LLC v. National Graphics, Inc., IPR2014-01162
Paper 24: Final Written Decision
Dated: January 27, 2016
Patent: 6,424,467 B1
Before: Michael P. Tierney, Justin Busch, and Barbara A. Parvis
Written by: Tierney