Filed on behalf of: Gemological Institute of America, Inc.
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Timothy P. Cremen (timothycremen@paulhastings.com)
`Paul Hastings LLP
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`Paper No. ___
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`_________________________
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`GEMOLOGICAL INSTITUTE OF AMERICA INC.
`Petitioner
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`v.
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`DIAMOND GRADING TECHNOLOGIES LLC
`Patent Owner
`_________________________
`
`U.S. Patent No. RE44,963
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`_________________________
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`DECLARATION OF ANDREW S. GLASSNER
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`Page 1 of 72
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`GIA EXHIBIT 1005
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`
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Timothy P. Cremen (timothycremen@paulhastings.com)
`Paul Hastings LLP
`
`Paper No. ___
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_________________________
`
`GEMOLOGICAL INSTITUTE OF AMERICA INC.
`Petitioner
`
`v.
`
`DIAMOND GRADING TECHNOLOGIES LLC
`Patent Owner
`_________________________
`
`U.S. Patent No. RE44,963
`
`_________________________
`
`DECLARATION OF ANDREW S. GLASSNER
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`Page 1 of 72
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`GIA EXHIBIT 1005
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by Gemological Institute of America, Inc. as an
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`independent expert consultant to provide expert testimony in support of
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`Petitioner’s Petition for Inter Partes Review (the “Petition”) of Claims 1, 14, 16,
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`17, 32, 34, 35, 53, 55, 76, 79, 80, 82, 83, 85, 88, 94, 98, 114, and 120 (“Challenged
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`Claims”) of U.S. Patent No. RE44,963 (“the ’RE963 Patent;” Ex. 1001).
`
`2.
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`I have reviewed and am familiar with the ’RE963 Patent and its file
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`history, which have been provided to me as Exhibits 1001 and 1013. I understand
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`these to be exhibits to the Petition.
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`3.
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`I have also been provided, reviewed, and am familiar with 1002-1012,
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`which I understand to be the remaining exhibits to the Petition.
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`4.
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`I have been asked to consider, among other things, whether certain
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`references make obvious Claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79, 80, 82,
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`83, 85, 88, 94, 98, 114, and 120 of the ’RE963 Patent. My opinions as to these
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`issues are set forth below.
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`5.
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`I am being compensated at my normal consulting rate for the time I
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`spend on this matter. No part of my compensation is dependent on the outcome of
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`this proceeding or any other proceeding involving the ’RE963 Patent. I have no
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`other interest in this proceeding.
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`1
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`II. QUALIFICATIONS
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`6.
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`I have over 30 years of experience in computer graphics and optical
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`system technologies.
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`7.
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`I have worked as a publishing research scientist in computer graphics
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`since the 1980s.
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`8.
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`I have a Bachelor’s Degree in Computer Engineering from Case
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`Western Reserve University.
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`9.
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`I have a M.S. and a Ph.D. in Computer Science from the University of
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`North Carolina at Chapel Hill.
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`10.
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`I have been principally employed as a researcher at the Xerox Palo
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`Alto Research Center (PARC), and then at Microsoft Research in Redmond, WA,
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`and now at my own company, The Imaginary Institute in Seattle, WA.
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`11. From the 1980s to the present, I have written hundreds of thousands
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`of lines of computer programs in many different languages and for many different
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`systems.
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`12.
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`I have published many original technical articles, written or edited
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`over a dozen books, and have been issued eight patents involving computer
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`graphics.
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`13.
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`I have served in many important technical positions in my field,
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`including Chairman of the Special Interest Group on Graphics and Interactive
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`2
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`Techniques (“SIGGRAPH”) 1994 Papers Committee, Editor-in-Chief of ACM
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`Transactions on Graphics, and Founding Editor of the Journal of Graphics Tools. I
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`have served as a technical reviewer and committee member for many international
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`journals and graphics conferences.
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`14.
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`I created the popular Graphics Gems book series, and served as series
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`editor for all five volumes. I published a regular bi-monthly technical column in
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`IEEE Computer Graphics & Applications for almost 10 years. My two-volume
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`textbook, “Principles of Digital Image Synthesis,” has been widely used as a
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`university-level class text in computer graphics.
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`15. Through my online course “2D Animation and Interaction,” I have
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`taught computer graphics to independent students all over the world.
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`16.
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`I invented and published one of the first algorithms for ray tracing that
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`allowed it to be a practical tool. I also invented and published an algorithm that
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`made ray tracing practical for creating animation.
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`17.
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`I chaired and taught several courses devoted to ray tracing at annual
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`meetings of ACM SIGGRAPH.
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`18.
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`I created, edited, and wrote several chapters for the book, “An
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`Introduction to Ray Tracing,” which helped popularize the technique and has been
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`used as a text in universities.
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`3
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`19. My Spectrum architecture was a test bed for state-of-the-art research
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`in ray tracing and other rendering techniques. I led a group that demonstrated how
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`to use ray tracing to produce images customized to the limited display ranges of
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`different devices.
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`20.
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`I have given invited talks, guest lectures, and colloquia for institutions
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`and companies from Toronto to New Zealand and the United States. I have
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`consulted for a broad range of companies as a computer graphics expert, from
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`Electronic Arts and IBM to Tableau and Microsoft Research.
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`21. A copy of my curriculum vitae is Exhibit 1006.
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`III. SUMMARY OF OPINIONS AND LEGAL BASES THEREFORE
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`22. My opinions expressed herein are based on: (i) my education,
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`experience, and background in the fields discussed above, along with my
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`professional judgment; (ii) the contents of the documents I cite and discuss herein,
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`including Exhibits 1001-1013, each of which I have reviewed and am familiar
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`with; and (iii) my understanding of the legal bases for finding a patent claim
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`anticipated and obvious, which I explain below.
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`A. Legal Basis for Obviousness
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`23.
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`It has been explained to me that under 35 U.S.C. § 103, a claim may
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`be found to be obvious, and therefore invalid, when the differences between the
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`claim and the prior art reference or references would have been obvious at the time
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`4
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`the invention was filed to a person having ordinary skill in the art to which the
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`patent pertains.
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`24.
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`I understand that obviousness is determined based on an analysis of
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`four factors: (i) the scope and content of the prior art; (ii) the differences between
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`the prior art and the claims at issue; (iii) the level of ordinary skill in the pertinent
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`art; and (iv) secondary considerations of nonobviousness.
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`25. With respect to the second factor, determining the differences between
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`the prior art and claims is a two–step analysis comprising: (i) determining the
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`meaning of the claim elements; and (ii) comparing those terms with the prior art.
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`26.
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`I understand that the disclosure of a limitation in a prior art reference
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`may be explicit or inherent. Explicit means that the limitation or feature is
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`expressly described in the reference. Inherent means that the limitation or feature
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`is necessarily present in the disclosure (i.e., the feature is a deliberate or necessary
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`consequence of the reference’s disclosure) even if the reference does not expressly
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`describe the feature. One of ordinary skill in the art must recognize that the feature
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`is inherent to the disclosure, but inherency does not require that the person of
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`ordinary skill in the art would have necessarily recognized the inherent disclosure
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`at the time of the reference.
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`27.
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`It has been explained to me that the level of ordinary skill in the art is
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`determined by analyzing such things as: (i) the prior art; (ii) the types of problems
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`encountered in the art; (iii) the rapidity with which innovations are made; (iv) the
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`sophistication of the technology involved; and (v) the educational background of
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`those actively working in the field, as well as the inventors.
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`28.
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`I am also aware for one of ordinary skill in the art at the time of the
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`alleged invention to have found it obvious to combine references, there must have
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`been some motivation to make the combination covered by the patent claims. I am
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`told that motivation can be implicit.
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`29.
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`It is also my understanding that to determine whether it would have
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`been obvious to combine known elements in a manner claimed in a patent, one
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`may consider such things as: (i) the combination being a predictable variation; (ii)
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`the combination having been used to improve similar devices; (iii) the combination
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`being obvious to try; (iv) if the combination merely applying a known technique to
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`a known device to yield predictable results; (v) a teaching or suggestion in the
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`references themselves that the combination was possible; (vi) common sense; (vii)
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`the effects of demands known to the design community or present in the
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`marketplace; and (viii) the background knowledge of one with ordinary skill in the
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`art.
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`B. My Opinion – A Person of Ordinary Skill in the Art
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`30.
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`In view of the legal bases above, I have been asked to provide an
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`opinion as to the level of a person of ordinary skill in the art at the time of the
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`6
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`purported invention of the ’RE963 Patent, which I have been asked to initially
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`assume is January 10, 1997.
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`31. Also in view of the above, my opinions below have been guided by
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`my appreciation of how a person of ordinary skill in the art would have understood
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`the disclosure and claims of the ’RE963 Patent at the time of the alleged invention.
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`32. Based upon the considerations described above, it is my opinion that
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`one of ordinary skill in the art relevant to the technology of the ’RE963 Patent at
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`its purported priority date of January 10, 1997 is someone who has a computer
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`science or other related technical degree at the undergraduate level, and on the
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`order of one to two years of experience working with and programming computer
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`systems for creating realistic computer graphics and a general knowledge of the
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`published literature in the field. Superior experience in one of these areas would
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`compensate for lesser experience in the other.
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`33.
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`I base this opinion on my direct experience developing algorithms for
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`ray-tracing and other computer rendering methods, my work as a public research
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`scientist in computer graphics, as well as my knowledge and understanding of the
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`skill levels of others working in the field.
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`34. My opinion is further based on my knowledge of the level of
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`education and experience of persons actively working in the field in the late-1990s
`
`to early 2000s, the types of problems encountered in the art at that time, and the
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`prior art solutions to those problems, including such purported solutions as those
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`recited in the claims of the ’RE963 Patent.
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`35. My opinion as to the level of a person of ordinary skill in the art
`
`would not substantively change if the time of the purported invention of the
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`’RE963 Patent was a few years before or after January 10, 1997. Nor do I believe
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`that my opinions below would substantively change if the level of a person of
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`ordinary skill in the art were ultimately found to be marginally different than my
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`opinion herein, although I reserve my right to consider and respond to any other
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`opinions or findings as to such a level.
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`C. My Opinion – Claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79, 80, 82,
`83, 85, 88, 94, 98, 114, and 120 of the ’RE963 Patent Are Not
`Patentable Over The Prior Art
`
`
`36. Based on the considerations identified above, it is my opinion that: (i)
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`Claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 80, 94, 98, 114, and 120 are each obvious
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`under 35 U.S.C. § 103 based on the combined teachings of “A Ray Tracing Study
`
`of Gem Quality” by Hardy et al. (“Hardy”) and “An Introduction to Ray Tracing”
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`edited by A. Glassner (“Glassner”); (ii) Claims 76, 83, and 85 are each obvious
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`under 35 U.S.C. § 103 based on the combined teachings of Hardy, Glassner, and
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`“A Statistical Assessment of Brilliance and Fire for the Round Brilliant Cut
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`Diamond” by Dodson (“Dodson”); and (iii) Claims 79, 82, and 88 are each obvious
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`under 35 U.S.C. § 103 based on the combined teachings of Hardy, Glassner, and
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`“Dispersive Refraction in Ray Tracing” by Thomas (“Thomas”).
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`37. The bases for my opinion are set forth in Section VI, below.
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`IV. OVERVIEW OF THE ’RE963 PATENT
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`A. Background/Admitted Prior Art
`38. The “grade” of a gemstone’s “cut” indicates the quality of the stone’s
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`interaction with incident light, with higher grades equating to superior light-
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`handling characteristics.
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`39. Generally, to grade a gemstone’s cut, it is illuminated by a light
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`source. When the light strikes the gemstone—depending on the angle of incidence
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`and other factors—some of the light will reflect off the stone’s surface and some
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`will bend while passing through the surface (i.e., refraction).
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`40. The light that is refracted into the stone will then reflect or refract
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`when it strikes another surface of the gemstone (from the inside), and so on.
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`41. Each of these reflections and refractions are governed by the laws of
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`physics.
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`42. Light that ultimately exits the gemstone can be measured to provide
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`the “cut” grade for the stone.
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`43. Mathematical representations of physical gemstone cuts started to
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`come into play in the early 1900s, and these analyses became computer-based
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`decades ago.
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`44. The ’RE963 Patent relates to such computer-based methods for
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`“evaluating and grading the cut of a gemstone.” Ex. 1001 at col. 1:56-58.
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`45. The ’RE963 Patent is the result of the December 6, 2010 reissue
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`Application No. 12/961,361 (Ex. 1013; “the ’361 Application”), of previously
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`granted U.S. Patent No. 5,966,673 (the “’673 Patent), which was originally filed as
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`Application No. 08/782,889 (Ex. 1012; “the ’889 Application”) on January 10,
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`1997 and issued on October 12, 1999.
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`46. The ’RE963 Patent concedes this long history of mathematical cut
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`analyses, and specifically recognizes that “the basis for conventional cut grading of
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`gemstones was established in 1919 by Marcel Tolkowsky . . . in his mathematical
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`dissertation entitled ‘Diamond Design, A Study of the Reflection and Refraction of
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`Light in a Diamond[.]’” Ex. 1001 at col. 1:19-25; Ex. 1010.
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`47. The ’RE963 Patent further concedes that that study “established
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`mathematically an optimal brilliant cut for a diamond that is still widely used
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`today.” Ex. 1001 at col. 1:25-27.
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`48. While the ’RE963 Patent criticizes the Tolkowsky model as being
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`“based upon a two-dimensional model” (Ex. 1001 at col. 1:32-35) and as using “a
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`single incident light ray,” (Ex. 1001 at col. 1:38-40), it later makes the
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`unremarkable observation (and important concession) that “[r]ay tracing could be
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`used to extend the Tolkowsky technique from two dimensions to three
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`dimensions.” Ex. 1001 at col. 21:46-47.
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`49. The ’RE963 Patent does not provide any indication that it would not
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`have been obvious to do so and, as discussed herein, three-dimensional ray tracing
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`techniques have long been known in the art.
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`B.
`50.
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`Summary of the Purported Invention
`
`In its “Summary of the Invention,” the’RE963 Patent states that it is
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`directed to the broad category of “modeling and evaluating the propagation of light
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`through an optical system.” Ex. 1001 at col. 1:48-50.
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`51. More specifically, it aims to evaluate “properties of a gemstone using
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`a gemstone model” (Ex. 1001 at col. 1:50-53 where its “key feature” is providing
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`“a computer-based system and method for evaluating and grading the cut of a
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`gemstone which can be used for determining an ideal or near-ideal cut.” Ex. 1001
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`at col. 1:53-56 (emphasis added).
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`52. This “computer-based system” is disclosed as software on a generic
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`computer with standard components (e.g., processor, memory, display, and UI).
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`Ex. 1001 at col. 53:15-43, 54:19-25.
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`53. A high-level description of the purported inventive process follows.
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`54. First, a 3D digital model of the gemstone to be evaluated is created
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`based on various “parameters such as the type of cut (round, emerald, princess,
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`etc.), the facet types (break, main, star, etc.), the number and location of the
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`various facet types, and the dimensions of the stone.” Ex. 1001 at col. 7:7-10.
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`55. These “[c]ut proportion[s] can be used to determine the physical
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`locations of the facets.” Ex. 1001 at col. 7:10-11.
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`56. The model is then generated using computer software. Ex. 1001 at col.
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`8:46-55.
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`57. Second, “the gemstone model is illuminated using an illumination
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`model.” Ex. 1001 at col. 7:34-35.
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`58. The illumination model represents a set of one or more light sources
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`used to model an illumination of the gemstone.” Ex. 1001 at col. 7:15-17; 18-24.
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`59. Third, “each beam of light refracted into the stone by a facet is traced
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`as it is reflected within the stone and is refracted out of the stone by one or more
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`facets.” Ex. 1001 at col. 10:14-18.
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`60. The light beam is “traced through each of its subsequent reflections
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`and refractions until the light energy in the beam is exhausted or sufficiently
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`diminished such that it adds nothing significant to the outcome of the modeling
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`process.” Ex. 1001 at col. 7:65-8:3.
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`61. The ’RE963 Patent further discloses that “[e]ach beam propagated
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`within the gemstone has an associated cross-sectional intensity.” Ex. 1001 at col.
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`14:57-58.
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`62. When a “beam strikes a facet, the cross-sectional intensity of the
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`resulting reflected [] beams (reflected and refracted, if any) is derived from the
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`cross-sectional intensity of the incident beam.” Ex. 1001 at col. 14:64-67.
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`63. Finally, the quantity of light (e.g., flux) exiting the gemstone is
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`measured and used in determining the gemstone’s cut grade. Ex. 1001 at col.
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`14:67-15:5.
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`64. Specifically, when a beam refracts out of the gemstone, “[its flux] is
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`determined by the camera capturing the refracting beam by multiplying the cross-
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`sectional intensity of the refracted beam by the area of the facet illuminated by
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`refraction perceived by that camera, based on the relative orientations of the
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`camera and facet….” Ex. 1001 at col. 14:67-15:5.
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`65. Based on measurements taken of such light beams, factors relating to
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`a gemstone’s cut grade (i.e., brilliance, fire, scintillation) are evaluated and
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`compared to ideal values. Ex. 1001 at col. 49:14-17.
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`V. CLAIM CONSTRUCTION
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`66. As discussed above, I understand that the first step of comparing a
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`claim to a prior art reference is to determine the meaning of the claim elements.
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`67.
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`I understand that in these types of proceedings before the United
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`States Patent and Trademark Office, a claim receives the “broadest reasonable
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`interpretation,” or “BRI,” in light of the specification of the patent in which it
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`appears.
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`68.
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`I also understand that such a “broadest reasonable interpretation” is
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`different from, and broader than, that applied in district court litigations.
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`69.
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`I also understand that the meaning of claims terms is viewed through
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`the lens of one of ordinary skill in the art at the time of the invention, and that
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`specific terms of the claims are generally given the ordinary and accustomed
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`meaning the one of skill would ascribe to them.
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`70.
`
`I have followed these principles in my analysis below and address the
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`scope of particular claim terms as necessary when they arise. To the extent I do
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`not address a particular term or phrase, I have used what I consider the plain
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`meaning of that term.
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`71. As a general matter, I have read each claim term to have at least the
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`scope which the Patent Owner has asserted in its Infringement Contentions against
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`Petitioner’s products (Ex. 1007).
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`72.
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`I have been asked to provide my opinion as to the proper BRI
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`constructions of the terms below.
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`14
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`a.
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`“Weight”/“Weighting”
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`73. The terms “weight”/“weighting” appear in the first element of each
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`Challenged Claims 55, 76, 79, 80, 82, 83, 85, 98, 114, and 120.
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`74.
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`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the terms “weight/weighting” as “to use the measured
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`light exiting the gemstone model in a subsequent operation.”
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`75.
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`I agree that “to use the measured light exiting the gemstone model in a
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`subsequent operation” is the proper broadest reasonable interpretation of the terms
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`“weight”/“weighting” for at least the following reasons, and have used this
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`construction in my analysis below.
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`76. There is no explicit definition (and little use of) “weight” in the
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`specification of the ’RE963 Patent, although the patent does disclose measuring the
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`exiting light and then using this light in a subsequent operation to evaluate a
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`property relating to cut. Ex. 1001 at col. 2:10-17, 5:48-54, 6:5-7, 10:23-24.
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`77. Based on all of the above, it is my opinion that the broadest
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`reasonable interpretation of “weight/weighting” is “to use the measured light
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`exiting the gemstone model in a subsequent operation.”
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`b. Means-Plus-Function Claim Terms
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`78. Challenged Claims 32, 34-35, and 53 contain a number of means-
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`plus-function limitations. Ex. 1001 at col. 68:46-69:12, 69:55-70:19, 73:54-74:11.
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`79.
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`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the terms is their plain and ordinary meaning.
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`80.
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`I understand that the Petitioner has offered that the corresponding
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`structure for each means-plus-function limitation to be software implemented on a
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`generic computer system.
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`81.
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`I agree that the plain and ordinary meaning is the proper broadest
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`reasonable interpretation of these limitations and the corresponding structure for
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`each means-plus-function limitation is software implemented on a generic
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`computer system for the reasons stated above in ¶¶ 38 - 65.
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`82.
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`I make my opinion without conceding that any claim of the ’RE963
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`Patent is valid under 35 U.S.C. § 112.
`
`VI. CLAIMS 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79, 80, 82, 83, 85, 88, 94, 98,
`114, AND 120 OF THE ’RE963 PATENT ARE NOT PATENTABLE
`OVER THE PRIOR ART
`
`A. A Ray Tracing Study of Gem Quality (“Hardy”)
`83. Hardy discloses “a computerized three-dimensional ray tracing
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`technique” for evaluating gemstone quality by “simulating and ray tracing” light.
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`Ex. 1002 at 801.
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`84.
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`In sum, Hardy teaches applying the mathematical analysis set forth by
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`Tolkowsky (Ex. 1010) three-dimensionally in a computer program.
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`85. Hardy discloses a computer program for “simulating and ray tracing”
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`light through a gemstone (Ex. 1002 at 801-02) that is used to “correlate some
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`commonly used [gemstone] cuts with subjective cut quality criteria.” Ex. 1002 at
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`801-02.
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`86. The computerized ray tracing model
`
`used in the study “first [] generates a diamond and
`
`determines its orientation with respect to [a] set of
`
`impinging parallel [light] rays . . . . The second part
`
`of the program simulates the interaction of light with the gem.” Ex. 1002 at 802.
`
`87. Specifically, data representing the dimensions of the gemstone to be
`
`analyzed are input into the computer program. Ex. 1002 at 802.
`
`88.
`
` The program then generates polygons representing the gemstone
`
`facets and rays of light to interact with the gemstone, and the rays of light are
`
`traced through the gemstone and the resulting data is displayed and analyzed. Ex.
`
`1002 at 802.
`
`89. As illustrated in FIG. 2 of Hardy, its computer program generates a
`
`complete 3D gemstone model that is fully described by “the crown angle, pavilion
`
`angle, the number of facets, etc.” Ex. 1002 at 802.
`
`90. This input data is used to determine “[t]he coordinates of all corners
`
`and their correspondence to facets[.]” Ex. 1002 at 802.
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`
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`17
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`Page 18 of 72
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`
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`91. A “computer drawing of [] a diamond” is created “based on the
`
`above-mentioned parameters.” Ex. 1002 at 802-03; Figure 2.
`
`92. Hardy describes “simulat[ing] the interaction of light with the gem”
`
`by projecting “a set of parallel rays, incident perpendicularly to the table of the
`
`brilliant [cut gemstone].” Ex. 1002 at 802.
`
`93. Hardy discloses that, upon intersection with a gemstone facet, each
`
`ray of light is “either reflected or refracted in accordance with Snell's law and
`
`Fresnel’s formulae.” Ex. 1002 at 802.
`
`94. The portion of the ray that is refracted through the first facet
`
`“continue[s] inside the gem” and “[t]he simulation of reflections and refractions
`
`goes on until the computed intensity of the ray drops below a predetermined
`
`value . . . .” Ex. 1002 at 802.
`
`95. Hardy teaches that, after the light rays exit the gemstone model, “all
`
`scattered rays with the same direction of propagation are grouped together, taking
`
`into account their relative intensity, thus producing a far-field pattern which is
`
`represented as a spot diagram on a spherical surface.” Ex. 1002 at 803.
`
`96. Hardy further discloses that these patterns are used to evaluate
`
`parameters relating to gemstone’s cut grade. Ex. 1002 at 801, 808-809.
`
`
`
`18
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`Page 19 of 72
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`
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`B. An Introduction to Ray Tracing (“Glassner”)
`97. Glassner discloses beam tracing, a computer graphics rendering
`
`method that simulates the passage of beams (versus rays) of light through an
`
`optical system. See, e.g., Ex. 1003 at 242-46.
`
`98. As disclosed by Glassner, “many aspects of the beam tracing
`
`algorithm are very similar to those of standard ray tracing.” Ex. 1003 at 243.
`
`99. Specifically, “in this approach rays are replaced by beams which are
`
`cones with arbitrary polygonal cross section. Ex. 1003 at 243.
`
`100. That is, a beam consists of “a collection of rays which originate at a
`
`common apex and pass through some planar polygon.” Ex. 1003 at 243.
`
`101. Although using beam tracing may require certain restrictions, for
`
`example, that all objects be constructed with “planar polygonal facets,” (a
`
`condition satisfied by all the diamond models under discussion here), the algorithm
`
`allows for “faster execution, effective anti-aliasing, and even additional optical
`
`effects.” Ex. 1003 at 242-43.
`
`C. A Statistical Assessment of Brilliance and Fire for the Round
`Brilliant Cut Diamond (“Dodson”)
`102. Dodson discloses the use of a computer program to assess the effect of
`
`a gemstone’s cut on select grading metrics. Ex. 1004 at 683-87.
`
`
`
`19
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`Page 20 of 72
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`
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`103. Dodson discloses a computer program written to calculate and trace
`
`light rays through and exiting a faceted 3D model using vector ray tracing
`
`equations. Ex. 1004 at 685-86.
`
`104. The resulting spot pattern of the exiting light beam is then statistically
`
`analyzed to calculate the gemstone’s brilliance, sparkliness, and fire. Ex. 1004 at
`
`686.
`
`D. Dispersive Refraction in Ray Tracing (“Thomas”)
`105. Thomas discloses the use of a computer algorithm to model the
`
`dispersive refraction of light in a gemstone model. Ex. 1008 at 3, 7
`
`106. Thomas was published in The Visual Computer, Vol. 2, Issue 1 in
`
`1986, and therefore is prior art to the ’RE963 Patent under 35 U.S.C. § 102(b) (pre-
`
`AIA).
`
`107. Thomas discloses an algorithm to compute the dispersion wavelength
`
`vectors of light rays (i.e., the spatial and angular separation of light of different
`
`wavelengths) as light traverses a gemstone model (Ex. 1008 at 4-5), and a form of
`
`ray-tracing designed to model dispersion, in which each ray carries two new pieces
`
`of information: “the portion of the spectrum covered by the ray” and the ray’s
`
`“angular spread.” Ex. 1008 at 5.
`
`108. As disclosed by Thomas, modeling such dispersion produces a more
`
`accurate model as it avoids having to make “the simplifying assumption that the
`
`
`
`20
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`Page 21 of 72
`
`
`
`index of refraction of an object is constant over the entire wavelength range of the
`
`visible spectrum.” Ex. 1008 at 3.
`
`E. Reason to Combine the References
`109. I understand that obviousness requires a showing that a person of
`
`ordinary skill in the art at the time of the invention would have thought to combine
`
`the prior art, such as “a plausible rational [sic] as to why the prior art references
`
`would have worked together.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325,
`
`1335 (Fed. Cir. 2013).
`
`110. Here, such a reason or “plausible rationale” is straightforward.
`
`111. Each of Hardy, Glassner, Dodson, and Thomas describe a computer
`
`program used to model and evaluate simulated light as it passes through a
`
`computerized optical system.
`
`112. They are therefore each directed to the same problem, which would
`
`have led one of skill in the art at the time of the purported invention of the ’RE963
`
`Patent (“one of skill”) to consult each reference and combine their teachings to
`
`provide the most efficient and capable method and system for computer modeling
`
`and grading of gemstones.
`
`113. Because Hardy, Glassner, Dodson and Thomas disclose similar steps
`
`and algorithms that are highly compatible, it would be natural for one of skill to
`
`contemplate adding to, or substituting Hardy’s algorithm with (i) the beam-tracing
`
`
`
`21
`
`Page 22 of 72
`
`
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`algorithm of Glassner; (ii) the specific metrics of brilliance, fire, and sparkliness in
`
`Dodson; and (iii) and/or the modeling of dispersion in Thomas.
`
`114. It would have been a straightforward matter for one of skill to have
`
`combined their respective teachings to provide additional functionality and
`
`improved performance, such as by simple substitution or addition of features (e.g.,
`
`the substitution of a ray with a beam (Glassner) or the addition of the ray’s angular
`
`spread (Thomas) in the algorithm used to model light passage through a gemstone).
`
`115. For example, Glassner states that “[t]hough the simple form of [] rays
`
`leads to easy representation, efficient intersection calculations, and great
`
`generality, some of these benefits can be traded in exchange for others.” Ex. 1003
`
`at 242.
`
`116. One way to do this is to dispense with individual rays and, instead,
`
`operate simultaneously on entire families of rays which are bundled as beams,
`
`cones, or pencils.” Ex. 1003 at 242.
`
`117. Glassner further explains: “[t]he advantages gained [by grouping rays]
`
`can include faster execution, effective anti-aliasing, and even additional optical
`
`effects” and that “[t]he restriction placed on the environment by [the beam tracing]
`
`algorithm is that all objects must be constructed with planar polygonal facets.” Ex.
`
`1003 at 243.
`
`118. Thus, recognizing that gemstones can be accurately modeled to have
`
`
`
`22
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`Page 23 of 72
`
`
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`planar polygonal sides, one of skill would have understood that substituting the ray
`
`tracing approach from Hardy with Glassner’s beam tracing approach could provide
`
`improved modeling efficiency and data quality.
`
`119. Further, Thomas provides a specific algorithm of modeling dispersion
`
`in a gemstone model. Ex. 1008 at 7.
`
`120. Thomas discloses that the advantages of accounting for such
`
`dispersion to accurately model a gemstone’s “fire,” which avoids the “simplifying
`
`assumption that the index of refraction of an object is constant over the entire
`
`wavelength range of the visible spectrum.” Ex. 1008 at 3.
`
`121. Motivation to combine can further be found in the references
`
`themselves.
`
`122. For example, Hardy specifically references Dodson and notes that
`
`Dodson “took advantage of the computer ray tracing approach in order to evaluate
`
`three statistical parameters which he associated with more intuitive definitions of
`
`beauty, namely brilliance, sparkliness and fire.” Ex. 1002 at 801.
`
`123. Thus, it would have been obvious to one of skill to combine the
`
`disclosures of the cited prior art to provide the features identified below.
`
`
`
`23
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`Page 24 of 72
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`
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`F.
`
`Hardy and Glassner in Combination Render Obvious Challenged
`Claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 80, 94, 98, 114, and 120
`
`124.
`
`In my opinion and as shown in the charts below, a combination of
`
`Hardy and Glassner discloses each and every feature recited in Claims 1, 14, 16,
`
`17, 32, 34, 35, 53, 55, 80, 94, 98, 114, and 120.
`
`1.
`
`Claim 1
`
`125.
`
`I have prepared the following claim chart showing how each and
`
`every element of Claim 1 reads on the disclosure of Hardy and Glassner-
`
`Hard and Glassner
`To the extent that the preamble is considered a
`limitation, Hardy discloses, teaches, or suggests its
`features.
`
`Hardy discloses a computer program for “simulating
`and ray tracing” light through a gemstone used to
`“correlate some commonly used [gemstone] cuts with
`subjective cut qualit
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