HID Global Corporation v. IDEMIA IDENTITY & SECURITY USA LLC1

1. Case Identification

• Case #: IPR2017-01940
• Patent #: 7,661,600
• Filed: August 18, 2017
• Petitioner(s): HID Global Corporation
• Patent Owner(s): MORPHOTRUST USA, LLC
• Challenged Claims: 1-8

2. Patent Overview

• Title: Laser-Etched Security Feature for Identification Documents
• Brief Description: The ’600 patent relates to a security feature for an identification document, such as an ID card. The feature is formed by using a laser to create a tactile and visually perceptible pattern, such as personalized information, within an outer laminate layer of the document.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 2 are obvious over Maurer in view of Bernecker.

• Prior Art Relied Upon: Maurer (Patent 4,544,181) and Bernecker (Patent 5,958,528).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Maurer taught the key structural elements of a multi-layer identification card with a tactile security feature. Specifically, Maurer disclosed creating a "permanent relief-type structure" (i.e., a void) in the transparent cover sheet of a laminated card using a laser, a feature that could be felt by touch. Bernecker taught that such colorless laser engravings could be used to define personalized information, such as a photograph of the owner, which is visually perceptible. Petitioner contended that combining these teachings renders obvious a document with a tactile feature comprising voids that define personalized information (claim 1) in the form of a visually perceptible image (claim 2).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to implement the personalized information taught by Bernecker (e.g., a photo) using the known tactile relief structure taught by Maurer. This combination represented a straightforward and obvious design choice to enhance the security of a laminated identification card with a personalized, tactile feature.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as combining a known method for creating tactile features with a known type of personalized data would predictably result in a functional and more secure identification document.

Ground 2: Claims 3 and 4 are obvious over Maurer and Bernecker, further in view of Gunn.

• Prior Art Relied Upon: Maurer (Patent 4,544,181), Bernecker (Patent 5,958,528), and Gunn (Patent 6,066,594).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Maurer and Bernecker. Petitioner asserted that Gunn taught the remaining limitations of claims 3 and 4. Gunn disclosed using polycarbonate as a material for layers in a laminated identification document, satisfying the limitation of claim 3. Gunn also taught including machine-readable "add-on features" like bar codes and semiconductor devices (integrated circuits) to add extra security, directly mapping to the limitations of claim 4.
  • Motivation to Combine: A POSITA, having combined Maurer and Bernecker, would have found it an obvious design choice to use polycarbonate, a material commonly used for identification cards as taught by Gunn, for the card’s layers. Furthermore, a POSITA would have been motivated to add the bar codes and semiconductor devices taught by Gunn to the base card to provide an additional, machine-readable layer of security, a common practice at the time.
  • Expectation of Success: Incorporating a well-known material like polycarbonate and standard security features like bar codes and chips into the laminated card of Maurer and Bernecker would have been a predictable and straightforward implementation.

Ground 3: Claims 5-8 are obvious over Maurer and Bernecker, further in view of 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: This ground focused on the physical characteristics of the tactile feature. While Maurer taught a tactile groove, Petitioner argued that Fry provided the specific implementation details. Fry disclosed a process for laser-scoring thermoplastics that resulted in "laser-ablated voids" (claim 5) by vaporizing or decomposing the material. Fry’s process also created "raised features" along the groove (claim 8) that included microscopic bubbles, which Petitioner argued constituted "foamed material" (claim 8). This combination allegedly rendered claims 5-8 obvious.
  • Motivation to Combine: A POSITA seeking to implement the tactile feature of Maurer would have been motivated to look to known techniques for grooving thermoplastic, such as the detailed process disclosed in Fry. Fry provided the specific "how-to" for creating Maurer's more conceptual feature, making the combination a logical step to achieve a desired result.
  • Expectation of Success: Applying Fry's well-defined laser-scoring techniques to create the tactile feature on the card taught by Maurer and Bernecker would predictably result in a laser-ablated void with raised, foamed edges, thereby achieving the functionality described in the challenged claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the one-year time bar for filing an IPR under 35 U.S.C. §315(b) did not apply. Petitioner, a third-party defendant in a related Court of Federal Claims case, contended that service of a complaint on the government does not constitute service on the Petitioner for the purposes of starting the one-year clock. It was also argued that the service of a Rule 14 notice and summons does not constitute service of a "complaint" that would trigger the statutory bar.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 1-8 of Patent 7,661,600 as unpatentable under 35 U.S.C. §103.