HID Global Corporation v. IDEMIA IDENTITY & SECURITY USA LLC1

1. Case Identification

• Case #: IPR2017-01939
• Patent #: 7,207,494
• Filed: August 18, 2017
• Petitioner(s): HID Global Corporation
• Patent Owner(s): MORPHOTRUST USA, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Security Feature for an Identification Document and Method of Making Same
• Brief Description: The ’494 patent describes a security feature for identification documents, such as ID cards, created by laser-etching the outer laminate layer. The feature produces either a tactile effect (raised/recessed pattern), a visual effect (an optically variable quality making it visible only at an angle), or both, to verify authenticity and resist counterfeiting.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 and 19-20 are obvious over Maurer, Bernecker, and Fry

• Prior Art Relied Upon: Maurer (Patent 4,544,181), Bernecker (Patent 5,958,528), and Fry (Patent 3,626,143).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’494 patent claims a combination of well-known, pre-existing security features. Maurer taught creating a tactile, laser-etched relief feature on the transparent cover sheet of a multi-layer laminated identification card to be sensed by touch. Bernecker taught a different security feature: a colorless, laser-engraved pattern on a plastic film that is not visible when viewed directly but "appears only at the glancing angle," making it resistant to photocopying. Fry disclosed the specific implementation details for using a laser to score thermoplastic materials (like those in ID cards) to create grooves with raised beads and bubbles ("foaming") without scorching or discoloration. Petitioner asserted that combining Maurer's tactile concept with Bernecker's visual, anti-copying concept, using the methods taught by Fry, would result in the security feature claimed in the ’494 patent. This combination addresses claims requiring a tactile effect (like claim 13), a visual effect (like claim 1), and those requiring both (like claim 7).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Maurer and Bernecker to create a single, more robust security feature offering multiple layers of protection. The motivation was to combine the benefit of easy tactile verification (from Maurer) with the benefit of resistance to copying (from Bernecker). Petitioner contended it was an obvious design choice to implement these known benefits together in one feature on a single identification document to enhance its overall security.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination was straightforward. Fry provided a detailed roadmap, disclosing specific laser parameters and material interactions for creating raised, colorless laser markings on various plastics. This teaching demonstrated that producing a feature with both tactile relief and the desired optical properties was well within the skill of a POSITA, yielding predictable results.

Ground 2: Claims 15-18 are obvious over Maurer, Bernecker, Gunn, and Fry

• Prior Art Relied Upon: Maurer (Patent 4,544,181), Bernecker (Patent 5,958,528), Fry (Patent 3,626,143), and Gunn (Patent 6,066,594).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 by addressing claims 15-18, which additionally require the identification document to convey a bar code. The combination of Maurer, Bernecker, and Fry taught the core laser-etched security feature with tactile and/or optically variable effects, as argued in Ground 1. Gunn was introduced to teach the addition of a bar code. Gunn explicitly disclosed that identification documents, such as multi-layered driver's licenses, conveniently included machine-readable information like bar codes in addition to human-readable data (e.g., portrait, signature).
  • Motivation to Combine: The motivation for adding a bar code, as taught by Gunn, to the card designed from Maurer, Bernecker, and Fry was to add another layer of security and convenience. Gunn explained that bar codes were often used to covertly repeat information for data verification. A POSITA would have found it obvious to add this conventional, well-known, and non-interfering feature to an ID card to provide an alternative, machine-readable method for encoding and verifying information, thereby enhancing the card's functionality and security.
  • Expectation of Success: Adding a separate, standard feature like a bar code to an identification card was a routine and predictable modification. A POSITA would have expected this addition to work without affecting the functionality of the laser-etched tactile/visual security feature, as the two features are distinct and operate independently.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the IPR petition was not time-barred under §315(b). Petitioner was a third-party defendant in a related case at the Court of Federal Claims. It asserted that, based on prior Board precedent, a third-party defendant in such a case is not considered to have been "served with a complaint" within the meaning of the statute. This is because the third-party defendant is not in privity with the government and lacks a "full and fair" opportunity to litigate invalidity due to an inability to appeal the court's final judgment.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’494 patent as unpatentable.