Paper 7
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: July 21, 2016
`
`
`
`
`
`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.
`____________
`
`Case IPR2016-00455
`Patent RE44,963
`____________
`
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: July 21, 2016
`
`
`
`
`
`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.
`____________
`
`Case IPR2016-00455
`Patent RE44,963
`____________
`
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`I. INTRODUCTION
`
`
`
`
`
`Gemological Institute of America, Inc. (“Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1, 14, 16, 17, 32, 34, 35, 53, 55,
`
`76, 79, 80, 82, 83, 85, 88, 94, 98, 114, and 120 of U.S. Patent No. RE44,963
`
`(Ex. 1001, “the RE’963 patent”). Paper 2 (“Pet.”). Patent Owner, Diamond
`
`Grading Technologies, filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that
`
`an inter partes review may not be instituted “unless . . . the information
`
`presented in the petition . . . and any response . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.”
`
`
`
`For the reasons that follow, we determine that Petitioner has not
`
`established a reasonable likelihood of prevailing with respect to at least one
`
`of claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79, 80, 82, 83, 85, 88, 94, 98,
`
`114, and 120 of the RE’963 patent. Accordingly, we deny the Petition and
`
`do not institute an inter partes review.
`
`A. Related Matters
`
`Petitioner and Patent Owner identify the following pending matters as
`
`relating to the RE’963 patent: Diamond Grading Technologies LLC v.
`
`American Gem Society LLC, No. 2:14-cv-1161 (E.D. Tx.) and Diamond
`
`Grading Technologies LLC v. Gemological Institute of America, No: 2:14-
`
`cv-1162 (E.D. Tx.). Pet. 1; Paper 5, 1–2. The RE’963 patent is also the
`
`subject of a concurrently filed Petition in IPR2016-00456. Pet. 2; Paper 5, 2.
`
`B. The RE’963 Patent
`
`The RE’963 patent relates “generally to gemstones, and more
`
`particularly to a computer-based system and method for evaluation of a
`
`2
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`gemstone by modeling light propagating through the gemstone.” Ex. 1001,
`
`
`
`1:14–17. By way of background, the RE’963 patent discusses the 1919
`
`work of Antwerp diamond cutter Marcel Tolkowsky, who established the
`
`mathematical basis for an optimal brilliant cut of a diamond in wide use
`
`today. Id. at 1:20–26. However, according to the RE’963 patent,
`
`Tolkowsky’s model is two-dimensional and, therefore, does not account for
`
`full three-dimensional reflective and refractive effects, nor does it provide
`
`for variations in facet types, sizes, positions, or asymmetries in some cuts.
`
`Id. at 1:32–37. Moreover, Tolkowsky’s model relies upon a single incident
`
`ray of light, which does not account for the normal illumination from a
`
`myriad of directions. Id. at 1:38–42.
`
`Accordingly, the RE’963 patent describes a computer-based system
`
`for evaluating and grading a gemstone cut using a data set that includes the
`
`material characteristics of the stone and geometrical cut data for an existing
`
`or proposed cut. Ex. 1001, 1:53–65. “According to the invention, an
`
`illumination model comprised of one or more light sources is used to
`
`‘illuminate’ the stone. Light beams from the light sources are traced or
`
`modeled as they enter the stone, are reflected among the various facets
`
`inside the stone, and exit the stone.” Id. at 2:1–5. Attributes of light exiting
`
`the stone, including intensity, dispersion, scintillation, or others, are
`
`measured to evaluate the quality of the cut. Id. at 2:5–10.
`
` Figure 1 of the RE’963 patent is reproduced below:
`
`3
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`
`
`
`
`
`Figure 1 is a diagram of light source 104 illuminating gemstone 100.
`
`Ex. 1001, 6:25–26. In Figure 1, light beam 112 is refracted into stone 100
`
`by facet 108, and impinges on facet 116. Id. at 6:29–30. Depending on its
`
`angle of incidence at facet 116, beam 112 creates reflected beam 120 or
`
`refracted beam 124. Id. at 6:31–32. Although light beam 112 is shown
`
`impinging only one facet, in reality it may impinge on multiple facets
`
`creating multiple child beams. Id. at 6:50–54. The light beam is traced
`
`through subsequent reflections and refractions until the light energy is
`
`exhausted or sufficiently diminished, and, in a subsequent step, the light
`
`refracted out of the stone is evaluated. Id. at 7:65–8:8.
`
`
`
`4
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`C. Illustrative Claim
`
`
`
`All challenged claims are independent claims. Claims 1 and 17 are
`
`illustrative of the claimed invention and are reproduced below without
`
`bracketed text (representing deletions) or italicized text (representing
`
`additions):
`
`1. A method for grading the cut of a gemstone, comprising the
`steps of:
`
`illuminating a computerized gemstone model using a
`computerized illumination model, wherein said gemstone model
`is a full three-dimensional (3D) representation of said gemstone
`that defines the geometry and position of all of the gemstone
`facets, and wherein said illumination model produces a light
`beam;
`
`refracting said light beam into said gemstone model through a
`first facet of said gemstone model to produce a refracted light
`beam, said refracted light beam via said first facet of said
`gemstone model is modeled with a three-dimensional shape and
`the three-dimensional shape of the refracted light beam is defined
`by an area of said first facet;
`
`reflecting said refracted light beam within said gemstone model
`from a second facet of said gemstone model to produce a
`reflected light beam;
`
`refracting said refracted light beam out of said gemstone model
`through said second facet of said gemstone model;
`
`refracting said reflected light beam out of said gemstone model
`through a third facet of said gemstone model to produce an
`exiting light beam; and
`
`measuring said exiting light beam.
`
`
`17. A method for establishing maximum attribute values for a
`gemstone cut for use in evaluating gemstones having said
`gemstone cut comprising the steps of:
`
`5
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`varying a proportion parameter, by a hardware processor, for the
`gemstone cut to obtain a plurality of gemstone models, each of
`said gemstone models having a different proportion permutation;
`
`
`
`evaluating each of said gemstone models, by the hardware
`processor, to obtain a set of values for each attribute, at least one
`attribute being an amplitude value used to determine whether a
`refraction is to be processed in determining a grade of said each
`of said gemstone models; and
`
`selecting the maximum value of each attribute from said set of
`attribute values to establish maximum attribute values for the
`gemstone cut.
`
`
`Ex. 1001, 64:50–65:7, 67:1–17.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 76, 79,
`
`80, 82, 83, 85, 88, 94, 98, 114, and 120 are unpatentable based on the
`
`following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`Hardy1 and Glassner2
`
`§ 103(a)
`
`Hardy, Glassner, and Dodson3 § 103(a)
`Hardy, Glassner, and Thomas4 § 103(a)
`
`1, 14, 16, 17, 32, 34, 35, 53,
`55, 80, 94, 98, 114, and 120
`76, 83, and 85
`
`79, 82, and 88
`
`1
`
`
` Hardy et al., A Ray Tracing Study of Gem Quality, 28 OPTICA ACTA 801
`(1981) (Ex. 1002) (“Hardy”)
`2 AN INTRODUCTION TO RAY TRACING (Andrew S. Glassner ed. 1989)
`(Ex. 1003) (“Glassner”)
`3 J.S. Dodson, A Statistical Assessment of Brilliance and Fire for the Round
`Brilliant Cut Diamond, 25 OPTICA ACTA 681 (1978) (Ex. 1004) (“Dodson”)
`4 S.W. Thomas, Dispersive Refraction in Ray Tracing, 2 INT’L J. COMPUTER
`GRAPHICS 3 (1986) (Ex. 1008) (“Thomas”)
`
`6
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`
`
`
`
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their “broadest reasonable construction in light of the specification of the
`
`patent in which they appear.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (holding that the Patent
`
`Office had the “legal authority to issue its broadest reasonable construction
`
`regulation”). Under the broadest reasonable construction standard, claim
`
`terms are given their ordinary and customary meaning, as would be
`
`understood 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).
`
`“light beam”/“beam of light”
`
`Neither party proposes an explicit construction of the claim terms
`
`“light beam” or “beam of light.” However, in summarizing its relied-upon
`
`reference, Petitioner contrasts light beams from light rays as follows:
`
`Glassner discloses beam tracing, a computer graphics
`rendering method that simulates the passage of beams (versus
`rays) of light through an optical system. . . . As disclosed by
`Glassner, “many aspects of the beam tracing algorithm are very
`similar to those of standard ray tracing.” Specifically, “in this
`approach rays are replaced by beams which are cones with
`arbitrary polygonal cross section. That is, a beam consists of “a
`collection of rays which originate at a common apex and pass
`through some planar polygon.”
`
`Pet. 12–13 (internal citations removed) (emphasis added). By contrast,
`
`Petitioner contends Hardy specifically models light as a “set of impinging
`
`7
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`parallel rays” from a “source light.” Id. at 18 (quoting Ex. 1002, 802).
`
`
`
`Petitioner does not necessarily contend the rays of Hardy do not constitute
`
`light beams, but contends that “[t]o the extent Hardy’s rays do not
`
`themselves disclose a ‘beam,’ Glassner specifically discloses a ‘beam
`
`tracing’ illumination model that uses coherence between light rays
`
`emanating from a common source to replace multiple rays with one common
`
`‘beam.’” Id. at 18–19.
`
`Consequently, without having provided us with an explicit
`
`construction, as our rules require, Petitioner nonetheless requires us to take a
`
`position on the interpretation of this term. See 37 C.F.R. § 42.104(b)(4)
`
`(requiring a statement identifying “[h]ow the challenged claim is to be
`
`construed.”). For its part, Patent Owner neither provides an explicit
`
`construction of the term, nor takes a position as to whether the “rays” in
`
`Hardy disclose the claimed light beams or whether Glassner is required to
`
`satisfy this limitation.
`
`As to the meaning of the terms, we have considered Petitioner’s
`
`contentions as well as the specification of the RE’963 patent. See Microsoft
`
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“[C]laims
`
`should always be read in light of the specification and teachings in the
`
`underlying patent”). Significantly, as pointed out by Petitioner’s declarant,
`
`Dr. Glassner, the RE’963 patent describes beams of light as having “an
`
`associated cross-sectional intensity.” Ex. 1005 ¶ 61 (quoting Ex. 1001,
`
`14:57–58). This is consistent with various embodiments in which the light
`
`beam is modeled using a data structure, which includes an “area_x” element
`
`containing the cross-section area of the beam. Id. at 19:33–37, 19:60–62.
`
`Because the light beams have a cross-sectional area and a direction of travel,
`
`8
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`the beam is three-dimensional. Id. at 21:36–40. As a result, “evaluation of
`
`
`
`the stone . . . is far superior to that obtainable from two-dimensional
`
`models.” Id. at 21:40–42. As such, the specification supports Petitioner’s
`
`position that light beams consist of groups of rays with a cross-sectional
`
`area.
`
`Moreover, this understanding also accords with the Glassner reference
`
`in which, as discussed above, beams are described as collections of rays
`
`originating at a common point and passing through a polygonal plane. See
`
`Ex. 1003, 243. Glassner also discusses operating on “entire families of rays
`
`which are bundled as beams.” Id. at 242.
`
`Accordingly, we determine that the evidence of record (both the
`
`specification and extrinsic evidence) supports Petitioner’s implicit
`
`construction of light beams and beams of light. Therefore, we construe
`
`“light beams” and “beams of light” as “light constituting multiple rays and
`
`having a cross-sectional area,” as the broadest reasonable interpretation
`
`consistent with the specification.
`
`Parties’ proposed terms for construction
`
`Petitioner proposes construction of the terms “weight” and
`
`“weighing,” which appear in a number of the challenged claims, as well as
`
`for the means-plus-function terms in challenged claims 32, 34, 35, and 53.
`
`Pet. 9–10. Patent Owner disputes Petitioner’s proposed constructions.
`
`Prelim. Resp. 14–24.
`
`We have reviewed the parties’ contentions and, in view of our
`
`determination below, determine that construing these terms is unnecessary to
`
`resolving the disputed issues before us. We therefore determine that no
`
`specific construction of these terms is necessary. Wellman, Inc. v. Eastman
`
`9
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be
`
`construed ‘to the extent necessary to resolve the controversy’”) (citing Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`B. Alleged Obviousness of Claims 1, 14, 16, 17, 32,
`34, 35, 53, 55, 80, 94, 98, 114, and 120
`over Hardy and Glassner
`
`Petitioner contends claims 1, 14, 16, 17, 32, 34, 35, 53, 55, 80, 94, 98,
`
`114, and 120 are obvious over the combination of Hardy and Glassner.
`
`Pet. 17–50. Petitioner also relies upon Dr. Glassner to support its
`
`contentions. Ex. 1005. We begin our discussion with brief summaries of
`
`the references and then address the parties’ contentions.
`
`1. Hardy (Ex. 1002)
`
`Hardy describes a computer-based ray tracing method to evaluate
`
`gemstone quality. Ex. 1002, 801. Figure 1 of Hardy is reproduced below:
`
`
`
`Figure 1 of Hardy depicts the experimental set-up simulated by computer.
`
`Id. at 802. In Figure 1, light from source S is transposed through lens L into
`
`a set of parallel rays which impinge on diamond D. Id. The computer
`
`program contains a model of D based on several parameters of a brilliant cut
`
`diamond, including crown angle, pavilion angle, and the number of facets.
`
`Id. Each simulated ray is propagated until it intersects with one of the facets
`
`10
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`and is reflected or refracted within the gem. Id. The simulation goes on
`
`
`
`until the intensity of the rays drops below a predetermined value. Id. at 802–
`
`803. Eventually, all scattered rays with the same direction of propagation
`
`are grouped, and based on their intensity, produce a far-field pattern on a
`
`spherical surface as shown in Figure 4. Id. at 803–804.
`
`2. Glassner (Ex. 1003)
`
`Glassner contains various excerpts from a book edited by Petitioner’s
`
`declarant. See Ex. 1003, Cover. In the excerpted portions, Glassner
`
`describes “ray tracing” as lending itself to “easy representation, efficient
`
`intersection calculations, and great generality.” Id. at 242. Glassner
`
`explains that some of these benefits can be traded for others such as
`
`“exploiting coherence,” and “[o]ne 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.” Id. For example, in
`
`one particular beam tracing algorithm, “rays are replaced by beams which
`
`are cones with [an] arbitrary polygonal cross section.” Id. at 243.
`
`Figures 26 and 27 of Glassner are reproduced below:
`
`
`
`11
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`
`
`
`Figures 26 and 27 depict perspectives of a beam intersecting a square
`
`causing a polygonal “clip out” and reflection where the beam is partially
`
`obstructed by the polygon surface. Ex. 1003, 244.
`
`
`
`3. Analysis
`
`Petitioner presents a proposed mapping of Hardy and Glassner to
`
`claim 1. Pet. 17–28; see also Ex. 1005 ¶¶ 121. In particular, Petitioner
`
`contends Hardy discloses a method for grading the cut of a gemstone, as
`
`recited by claim 1, in its description of “a computer program for ‘simulating
`
`and ray tracing’ light through a gemstone used to correlate some commonly
`
`used [gemstone] cuts with subjective cut quality criteria.” Pet. 17 (quoting
`
`Ex. 1002, 801–802 (bracketed text added by Petitioner)).
`
`Petitioner also contends Hardy and Glassner teach “illuminating a
`
`computerized gemstone model using computerized illumination model . . .
`
`wherein said illumination model produces a light beam.” Pet. 18 (quoting
`
`Ex. 1001, 64:52–57). According to Petitioner, to the extent Hardy’s rays do
`
`not disclose a beam, “Glassner specifically discloses a ‘beam tracing’
`
`illumination model that uses the coherence between light rays emanating
`
`from a common source to replace multiple rays with one common ‘beam.’”
`
`12
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`Id. at 18–19 (Ex. 1003, 242–246).
`
`
`
`
`
`Petitioner contends a “plausible rationale” exists for combining
`
`Glassner and Hardy. Id. at 14–15 (citing Broadcom Corp. v. Emulex Corp.,
`
`732 F.3d 1325, 1355 (Fed. Cir. 2013)). According to Petitioner, each of
`
`Hardy, Glassner, Dodson, and Thomas describe computer programs used to
`
`model and simulate light passing through a computerized optical system. Id.
`
`at 15 (citing Ex. 1005 ¶ 110). Therefore, Petitioner contends, it would have
`
`been straightforward and simple substitution of features for a person of
`
`ordinary skill to substitute Hardy’s algorithm with the beam-tracing
`
`algorithm of Glassner to provide additional functionality and performance.
`
`Id. (citing Ex. 1005 ¶¶ 113–114). As evidence of this, Petitioner cites
`
`Glassner’s teaching that rays can be grouped into beams, which lead to faster
`
`execution, effective anti-aliasing, and additional optical effects, with the
`
`restriction that “all objects must be constructed with planar polygonal
`
`facets.” Id. at 16 (citing Ex. 1003, 243; Ex. 1005 ¶ 117). Thus, Petitioner
`
`concludes, one of ordinary skill in the art would have modified the
`
`computerized cut grading system of Hardy using the beam tracing
`
`techniques of Glassner. Id. at 19.
`
`Patent Owner disputes that a person of ordinary skill in the art would
`
`have combined Hardy and Glassner to obtain the independent claims with a
`
`reasonable expectation of success. Prelim. Resp. 48–58. According to
`
`Patent Owner, the change from the “simplified ray tracing model,” as used
`
`in Hardy, to beam tracing, which is only briefly described in Glassner, is
`
`“dramatic,” but Petitioner does not explain how a person of ordinary skill
`
`would have made the modifications to obtain the claimed structure. Id. at
`
`49–50. Patent Owner notes Hardy relies on parallel rays for example
`
`13
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`impinging on a simplified model to simplify the problem and minimize
`
`
`
`computer time. Id. at 51. As such, Patent Owner, contends, modifying
`
`Hardy to obtain complex beam tracing through individual facets would
`
`render Hardy unsuitable for its intended purpose of providing a simplified,
`
`computationally efficient model. Id.
`
`We determine that Petitioner has not shown sufficiently that the
`
`proposed substitution of Hardy’s ray tracing algorithm with the beam-tracing
`
`algorithm discussed in Glassner would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention. Hardy is specifically
`
`based on simulating a “set of impinging parallel rays” and “only a set of
`
`parallel rays is incident perpendicularly to the table of the brilliant [cut
`
`diamond] is considered.”5 Ex. 1002, 802. The parallel ray structure appears
`
`to be integral to Hardy, which simulates each incident ray, one-by-one, until
`
`all rays have been simulated:
`
`Each ray, from the incident set is propagated until it intersects
`with one of the facets. There it is either reflected or refracted in
`accordance with Snell’s law and Fresnel’s formulae. . . . The
`simulation of reflections and refractions goes on until the
`computed intensity of the ray drops below a predetermined value
`(typically 0.01 of the input intensity). The same process is
`repeated with all other rays.
`
`Id. at 802–803 (emphasis added); see also id., Fig. 3. As Glassner itself
`
`makes clear, assuming infinitesimally thin rays lends to easy representation,
`
`intersection calculations, and great generality. Ex. 1003, 242.
`
`
`5 Petitioner does not contend Hardy’s rays are “light beams,” as that term is
`construed in the RE’963 patent. Moreover, given that construction,
`discussed above, the rays disclosed in Hardy are not shown to consist of
`multiple rays and have a cross-sectional area.
`
`14
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`
`In introducing beam tracing, Glassner notes these benefits of ray
`
`
`
`tracing, but then observes “some of these benefits can be traded in exchange
`
`for others.” Id. However, in doing so, Glassner acknowledges that,
`
`depending on the approach, “we may need to impose constraints . . ., such as
`
`restricting the type of primitive objects.” Id. Glassner briefly discusses
`
`several approaches to beam tracing, including that of Heckbert and
`
`Hanrahan. Id. at 243. In this approach, which appears to be the one
`
`Petitioner relies on,6 “rays are replaced by beams which are cones with
`
`arbitrary polygonal cross-section. That is, a beam consists of a collection of
`
`rays which originate at a common apex and pass through some planer
`
`polygon.” Id. Thus, as evident from these descriptions as well as the
`
`representation of beams in Figures 26 and 27 (reproduced above), the
`
`proposed beam tracing algorithm dispenses with a principle assumption
`
`made in Hardy, replacing its parallel incident rays with cone-shaped beams
`
`that are not parallel. Neither Petitioner, nor its declarant, address how Hardy
`
`would be adapted to use the different light source model—consisting of
`
`cones emanating from a common point—proposed in Glassner.
`
`
`
`More significantly, Hardy explains how each simulated ray is
`
`“reflected or refracted in accordance with Snell’s law and Fresnel’s
`
`formulae.” Ex. 1002, 802. Petitioner relies on this disclosure to explain
`
`how Hardy satisfies multiple claim limitations directed to refracting light.
`
`See Pet. 19–27 (citing Ex. 102, 802). For example, claim 1 requires
`
`“refracting said light beam into said gemstone model through a first facet”
`
`and “refracting said refracted light beam out of said gemstone model.”
`
`
`6 Petitioner cites to excerpts in the discussion of Heckbert and Hanrahan’s
`approach. See, e.g., Pet. 19.
`
`15
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`Ex. 1001, 64:58–65:3. However, Glassner observes that “[r]efraction is the
`
`
`
`one phenomenon which does not preserve the nature of beams. Because of
`
`nonlinearity, a refracted beam may no longer be a cone.” Ex. 1003, 243
`
`(emphasis added). Although Glassner goes on to state that the effect of
`
`refraction can be approximated with a linear transformation, it acknowledges
`
`that this is “another compromise” and provides no further explanation. Id.
`
`Here again, neither Petitioner nor its declarant address whether such
`
`approximations could be made practicably and with acceptable compromises
`
`within the context of Hardy’s system for simulating multiple reflections and
`
`refractions of a single ray through a brilliant cut diamond.
`
`
`
`Petitioner contends it presented a “plausible rationale” for combining
`
`Hardy and Glassner, citing Broadcom Corp. v. Emulex Corp., 732 F.3d
`
`1325, 1355 (Fed. Cir. 2013). However, in Broadcom, the Federal Circuit
`
`held that even assuming there was motivation to combine the references, the
`
`record lacked evidence that there was a “reasonable expectation that this
`
`significant change would be successful.” Id. at 1355. Similarly, while
`
`Petitioner here argues it would be a “straightforward” and “simple
`
`substitution” to modify Hardy to use Glassner’s beam tracing, it relies solely
`
`on the general statements in Glassner to support its argument without
`
`addressing any of the issues discussed above, which stem from Glassner
`
`itself, including the difference in light source (cone shaped as opposed to
`
`parallel), compromises to the efficiencies obtained by ray tracing, and
`
`whether approximations adequately address each of the multiple refractions
`
`that occur in the diamond model simulated in Hardy. Pet. 16 (citing Ex.
`
`1003, 242–243).
`
`Consequently, for the foregoing reasons, we determine Petitioner has
`
`16
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`not established a reasonable likelihood in prevailing on its proposed grounds
`
`of obviousness with respect to claim 1. As best we can discern from the
`
`Petition’s cross-references between claim limitations of many of the
`
`challenged claims, Petitioner also relies on the combination of Hardy and
`
`Glassner (either alone or combination with Dodson and Thomas) for claims
`
`14, 16, 32, 34, 55, 76, 79, 80, 82, 83, 85, 88, 94, 98, 114, and 120. Pet. 28–
`
`59. Accordingly, for the same reasons, we determine Petitioner has not
`
`established a reasonable likelihood in prevailing on its proposed grounds of
`
`obviousness with respect to these claims as well.
`
`Although claims 17, 35, and 53 are included within Petitioner’s
`
`proposed ground of obviousness based on the combination of Hardy and
`
`Glassner, we observe that Petitioner relies on Hardy alone as teaching or
`
`suggesting the limitations set forth in claims 17, 35, and 53. See Pet. 32–38.
`
`Accordingly, we address Petitioner’s contentions separately for these claims
`
`on the basis of Hardy’s teachings.
`
`C. Alleged Obviousness of Claims 17, 35, and 53
`over Hardy
`
`Claim 17 recites a “method for establishing maximum attribute values
`
`for a gemstone cut,” including “evaluating each of said gemstone models . . .
`
`to obtain a set of values for each attribute, at least one attribute being an
`
`amplitude value used to determine whether a refraction is to be processed in
`
`determining a grade of said each of said gemstone models” and “selecting
`
`the maximum value of each attribute from said set of attribute values.”
`
`Ex. 1001, 67:1–17. Hardy describes simulating reflections and refractions
`
`until the computed intensity drops below a predetermined value. Ex. 1002,
`
`802–803. Although not clear, we understand Petitioner to be mapping the
`
`computed intensity disclosed by Hardy, as teaching one such “attribute.”
`
`17
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`Pet. 34. As for “selecting the maximum value of each attribute from said of
`
`
`
`attribute values,” Petitioner contends Hardy “could be used to model
`
`multiple gemstone cuts to establish cut parameters that result in
`
`maximization of certain attribute values (e.g., to determine the best cut).”
`
`Id. at 35 (citing Ex. 1005 ¶ 128).
`
`
`
`Patent Owner contends claim 17 requires a plurality of attributes of
`
`light exiting the stone. Prelim. Resp. 33. “These attributes may include
`
`‘average angle of spectral deviance, white flux density (brilliance), spectral
`
`luminance (dispersion or fire), total refraction count (scintillation), spectral
`
`flux density, white optical power, spectral power, white intensity, dispersion
`
`intensity, total refraction area, and total refraction area to surface area
`
`density.” Id. at 32 (citing Ex. 1001, 48:15–21). Responding to Petitioner’s
`
`contention that Hardy could be used to model multiple gemstones to
`
`establish parameters that result in a maximization of certain attribute values,
`
`Patent Owner contends the claim recites a different limitation: “to obtain a
`
`set of values for each attribute, . . . and selecting the maximum value of each
`
`attribute.” Id. at 33.
`
`
`
`We determine that Petitioner has not shown that there is a reasonable
`
`likelihood that it will prevail on any of claims 17, 35, and 53 as obvious over
`
`Hardy. In requiring “evaluating each of said gemstone models . . . to obtain
`
`a set of values for each attribute, at least one attribute being an amplitude
`
`value” and “selecting the maximum value of each attribute from said set of
`
`attribute values,” claim 17 requires a plurality of attributes, including an
`
`“amplitude” attribute. Hardy discloses calculating intensity, which is only
`
`one attribute. See Ex. 1002. To address this deficiency, Petitioner contends
`
`“[o]ne of skill would appreciate that this decision of whether to process
`
`18
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`further reflections and/or refractions could depend on other factors in place
`
`
`
`of computed intensity, including amplitude.” Pet. 35 (citing Ex. 1005 ¶ 128)
`
`(emphasis added). As an initial matter, this assertion, which is repeated
`
`verbatim by Petitioner’s declarant, fails to provide evidence or explanation
`
`as to why these “other factors” might be considered, and is therefore entitled
`
`to little weight. See 37 C.F.R. § 42.65(a). Moreover, even taking this
`
`assertion as true, it fails to address how each of these “other factors” (i.e.,
`
`attributes) would satisfy the requirement to evaluate and select the maximum
`
`value of each attribute, for each of the plurality of gemstone models. Prelim.
`
`Resp. 33–34. Stated differently, Petitioner’s contention that Hardy could be
`
`used to model multiple gemstone cuts to maximize a certain attribute (Pet.
`
`35), addresses only one such attribute, intensity (or another “factor” in place
`
`of intensity), but fails to give effect to the claim 17 requirement to select the
`
`maximum value for each attribute, for each of the gemstone models.
`
`
`
`Accordingly, for the foregoing reasons, we determine Petitioner has
`
`not established a reasonable likelihood in prevailing on its proposed grounds
`
`of obviousness with respect to claim 17. For each of claims 35 and 53,
`
`which recite similar limitations in means-plus-function form, Petitioner
`
`relies on a similar mapping to Hardy. As a result, based on the functional
`
`language alone, we find Petitioner has not established a reasonable
`
`likelihood in prevailing on its proposed grounds of obviousness with respect
`
`to these claims as well.7
`
`
`7 Consequently, it is unnecessary to address the parties’ respective
`identification of the disclosed structure corresponding to these limitations.
`
`19
`
`
`
`
`IPR2016-00455
`Patent RE44,963
`
`
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that at least one of the challenged
`
`claims of the RE’963 patent is unpatentable based on the asserted grounds.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that the Petition is denied.
`
`FURTHER ORDERED that no inter partes review will be instituted
`
`pursuant to 35 U.S.C. § 314(a) with respect to any of the challenged claims
`
`of the RE’963 patent on the ground of unpatentability asserted in the
`
`20
`
`
`Petition.
`
`
`
`FOR PETITIONER:
`
`Christopher W. Kennerly
`Naveen Modi
`Timothy Creme
`Paul Hastings LLP
`chriskennerly@paulhastings.com
`naveenmodi@paulhastings.com
`timothycremen@paulhastings.com
`
`
`
`FOR PATENT OWNER:
`
`Gregory Gonsalves
`Gonsalves Law Firm
`gonsalves@gonsalveslawfirm.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
