HID Global Corporation v. IDEMIA IDENTITY & SECURITY USA LLC1

1. Case Identification

• Case #: IPR2017-01941
• Patent #: 8,083,152
• Filed: August 18, 2017
• Petitioner(s): HID Global Corporation
• Patent Owner(s): MorphoTrust USA, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Laser-Etched Security Feature
• Brief Description: The ’152 patent describes a laser-etched security feature on the outer surface of an identification document, such as an ID card. The feature creates a tactile effect (can be felt by touch) by forming voids, raised edges, and/or foamed material, and is used to convey personalized information to enhance security and prevent counterfeiting.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, and 6 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 core structure of the invention: a multi-layered identification card with a transparent cover sheet where a laser creates a permanent, tactile relief structure (voids) that can be felt manually. Bernecker taught using colorless laser engraving, which is perceptible only at a glancing angle, to define personalized information (e.g., a photo) as a security feature, either by itself or in register with printed data. The combination of Maurer's tactile structure with Bernecker's teaching of using such features for personalization allegedly renders the core limitations of independent claim 1 obvious.
  • Motivation to Combine: A POSITA would combine the references to improve the security of Maurer’s identification card. It would have been a straightforward design choice to use Maurer's known tactile relief structure to implement the personalized security features taught by Bernecker, thereby creating a more robust, difficult-to-forge document.
  • Expectation of Success: A POSITA would have had a high expectation of success because both references relate to laser-engraving on identification documents. Combining a known method for creating tactile features (Maurer) with a known purpose for those features (personalization taught by Bernecker) was a predictable application of existing technologies.

Ground 2: Claims 2-4 and 7-9 are obvious over Maurer and Bernecker 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 builds on Ground 1 by adding Fry, which Petitioner asserted disclosed specific implementation details for creating tactile features with a laser. Fry taught a process for scoring thermoplastics that results in grooves (voids) formed by laser ablation, with raised beads along the sides containing microscopic bubbles ("foamed" material). This directly teaches the limitations in dependent claims 2, 3, 7, and 9 concerning voids formed by "laser-ablating," "raised features," and "foamed material." For claim 4 ("solid state CO2 laser"), Fry taught using a nitrogen-carbon dioxide laser, which a POSITA would understand falls within the scope of the claimed laser type.
  • Motivation to Combine: Since Maurer provided limited detail on how to create its tactile relief, a POSITA seeking to implement the combined Maurer/Bernecker concept would have been motivated to look to known techniques for laser-grooving thermoplastics. Fry provided these well-established implementation details, making it a natural and obvious reference to consult.
  • Expectation of Success: The combination was expected to be successful because Fry provided a detailed blueprint for achieving the exact physical structures (ablated voids, raised foamed beads) desired for a tactile security feature on a plastic card, confirming the feasibility of the structure broadly disclosed in Maurer.

Ground 3: Claims 10 and 11 are obvious over Maurer and Fry in view of Gunn

• Prior Art Relied Upon: Maurer (Patent 4,544,181), Fry (Patent 3,626,143), and Gunn (Patent 6,066,594).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Maurer and Fry by adding Gunn to address claims requiring a polycarbonate layer (claim 10) and a semiconductor device (claim 11). Petitioner argued Gunn explicitly taught using polycarbonate as a clear plastic laminate material for identification cards. Gunn also disclosed that it was convenient and common to include semiconductor chips (e.g., for RF modules or integrated circuits) in identification documents to covertly repeat and verify human-readable information, adding a layer of security.
  • Motivation to Combine: A POSITA would combine Gunn's teachings for both predictable and security-enhancing reasons. Using polycarbonate, as taught by Gunn, was an obvious design choice as it was a common and suitable material for identification cards at the time. Likewise, adding a semiconductor device, as taught by Gunn, was a known method for increasing security by allowing for machine-readable data verification, an obvious enhancement to the card disclosed by Maurer and Fry.
  • Expectation of Success: A POSITA would have expected success because Gunn demonstrated that polycarbonate was a standard material for laminates and that integrating chips was a common practice in the field of identification documents. These were simple, known modifications that would predictably work with the base card structure.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 12 based on the combination of Maurer, Bernecker, and Fry in view of Ross (Patent 5,830,529). Ross was cited for its teaching of varying the laser's angle of incidence to create distinctive patterns that are difficult to replicate, addressing the limitation in claim 12 of performing laser etching at an angle other than 90 degrees for added security.

4. Key Claim Construction Positions

• "solid state CO2 laser" (Claim 4): Petitioner argued this term should be construed to mean "a solid state laser or a CO2 laser." The petition asserted that a laser cannot be both a "solid state" laser (which uses a solid crystal gain medium) and a "CO2" laser (which uses a gas gain medium). Therefore, a POSITA would understand the phrase as presenting two distinct alternatives, not requiring an impossible combination of both properties.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-12 of Patent 8,083,152 as unpatentable under 35 U.S.C. §103.