PTAB

IPR2018-00178

HOYA Optical Labs of America v. Inland Diamond Products Co.

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1. Case Identification

2. Patent Overview

  • Title: Beveling wheel, method for forming a beveled lens for use with eyeglasses and a beveled lens
  • Brief Description: The ’360 patent discloses a method and apparatus for creating beveled plastic eyeglass lenses. The invention centers on forming a lens bevel with a vertex angle that is smaller than the angle of the receiving channel in the eyeglass frame, creating an "interference fit" where the vertex of the bevel is in compression against the bottom of the frame's channel to securely hold the lens.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 3 are obvious over Gottschald in view of Schaeffer.

  • Prior Art Relied Upon: Gottschald (WO 1999040494A1) and Schaeffer (Application # 2008/0125013).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gottschald taught all key elements of the claimed invention. Gottschald disclosed a method for grinding plastic spectacle lenses where the grinding wheel creates a lens bevel angle (φ1) that is intentionally smaller than the frame's V-groove angle (φ0). This configuration, as shown in Gottschald's Figure 6, resulted in the "tip of the bevel" bearing "against the bevel base of the spectacle frame," which Petitioner contended taught the claimed contact and compression at the vertex. Schaeffer was cited to explicitly supply the "prescription" nature of the plastic lens, a common characteristic in the art that Gottschald did not expressly name.
    • Motivation to Combine: A POSITA would be motivated to apply Gottschald's superior beveling method to the well-known category of prescription plastic lenses disclosed by Schaeffer. This combination was presented as the application of a known technique to a known device, ready for improvement, to yield predictable results.
    • Expectation of Success: A POSITA would have a clear expectation of success, as combining the teachings involved applying a lens edging technique to a standard prescription lens blank, a routine practice in the field.

Ground 2: Claims 1-6, 9, and 10 are obvious over Nomura, Santinelli, Nakagawa1, Berndt, and Deeg.

  • Prior Art Relied Upon: Nomura (Japanese Application JP61245131), Santinelli (Patent 4,394,099), Nakagawa1 (Patent 5,096,457), Berndt (DE Publication 19727226A1), and Deeg (Patent 4,135,792).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted this combination rendered the claims obvious by assembling known features from the art. Nomura taught the core concept of fitting a lens into a frame where the lens's apex angle is smaller than the frame's V-groove angle, causing the apex to contact the bottom of the groove. Santinelli was used to supply specific, common dimensions for a plastic prescription lens bevel (an angle of 110° and height of 0.38 mm), which fell within the ’360 patent's claimed ranges. Berndt provided a typical frame groove angle (120°), establishing the claimed relationship where the frame angle is greater than the bevel angle. Deeg was cited to explain that mounting plastic lenses involves "relatively high circumferential clamping pressures," which, when applied to the point-contact configuration of Nomura, would inherently cause the claimed "compression" and "interference fit."
    • Motivation to Combine: A POSITA would combine these references as they all addressed aspects of the same problem: securely fitting a plastic lens into a frame. The motivation was to use the specific, efficient beveling techniques from Santinelli to create a lens as taught by Nomura, fit it into a standard frame like Berndt's, with the resulting forces and fit being well-understood from Deeg. Nakagawa1 further supplied the motivation of using plastic lenses, which had become the industry standard.

Ground 3: Claims 1, 3-5, 7, and 12 are obvious over Raffaelli, Berndt, and Deeg.

  • Prior Art Relied Upon: Raffaelli (Patent 6,840,851), Berndt (DE Publication 19727226A1), and Deeg (Patent 4,135,792).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground leveraged a patent, Raffaelli, assigned to the Patent Owner. Raffaelli explicitly taught a beveling wheel for commercial production that creates a lens bevel with a typical angle of "about 105 degrees." Petitioner argued this directly contradicted representations made during prosecution of the ’360 patent, where the applicant stated that "all current commercial lenses have a bevel angle of at least 120 degrees" to overcome prior art. When Raffaelli’s 105° lens is combined with Berndt’s typical 120° frame groove and the clamping pressures described by Deeg, the combination disclosed all limitations of the challenged claims, including the required angular relationship and resulting interference fit.
    • Motivation to Combine: A POSITA would be motivated to use the commercially-oriented beveling process of Raffaelli to create a lens for insertion into a standard frame, such as that shown in Berndt. The resulting fit and forces were predictable based on the principles outlined in Deeg.
    • Key Aspects: The core of this argument was that the Patent Owner's own prior art allegedly invalidated the challenged claims and undermined the arguments it made to the USPTO to secure the patent.

  • Additional Grounds: Petitioner asserted numerous other grounds, including:

    • Obviousness challenges building on Gottschald by adding ANSI Z80.5-1997 (for a two-lens "spectacle") and Page/Webb (for "intermittent" bevels on semi-rimless frames).
    • A challenge to claim 11 adding Umeda to the Nomura combination to explicitly teach that plastic lenses are "deformed" under pressure.
    • Further variations substituting references like Walsh or Igarashi1 for Berndt or Santinelli to show the same claimed dimensional relationships were known in the art through various sources.

4. Key Claim Construction Positions

  • "Interference fit": This term was central to Petitioner's invalidity case. Petitioner argued that, for the purposes of the IPR, the term should be construed according to its broadest reasonable interpretation in light of the ’360 patent's specification. Petitioner contended that the applicant repeatedly used "interference fit" synonymously with "in contact with" and "in prolonged contact with" throughout the specification and file history to distinguish from prior art where the bevel vertex did not touch the channel bottom. This construction, if adopted, would make the claimed feature easier to find in prior art that simply showed contact, as opposed to requiring a more technical showing of a friction-based press fit.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12 of the ’360 patent as unpatentable under 35 U.S.C. §103.