PTAB

IPR2018-00596

Hoya Optical Labs Of America v. Inland Diamond Products Co

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Petition

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 ’130 patent discloses a method and beveling wheel for forming a beveled prescription plastic lens for eyeglasses. The invention centers on creating an interference fit where the vertex of the lens bevel, having an angle smaller than the frame's receiving channel, contacts the bottom of the channel and is held in compression.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gottschald et al. - Claims 1, 3, 6, and 7 are obvious over Gottschald, ANSI, Schaeffer, and Deeg.

  • Prior Art Relied Upon: Gottschald (WO 1999/040494), ANSI (ANSI Z80.5-1997 standard), Schaeffer (Application # 2008/0125013), and Deeg (Patent 4,135,792).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gottschald taught forming a lens bevel with an angle smaller than the spectacle frame's groove angle, causing the bevel's tip to bear against the groove's base. This configuration meets the key limitations of independent claim 1 regarding the angular relationship and vertex contact. Schaeffer was cited to teach that the plastic lens could be a prescription lens, and ANSI was used to provide standard definitions for terms like "eyeglasses."
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Schaeffer's teaching of a prescription lens with Gottschald’s method as a routine step to produce a standard pair of eyeglasses. Deeg was cited for its teaching that conventional mounting techniques apply high circumferential clamping pressures, which a POSITA would expect to apply to Gottschald's frame, thereby satisfying the "in compression" limitation.
    • Expectation of Success: The combination was presented as a straightforward application of known techniques to achieve the predictable result of securely fitting a prescription plastic lens into a frame.
    • Key Aspects: Petitioner emphasized that Gottschald explicitly disclosed the key geometric relationship (bevel angle < groove angle) that the patent owner had argued was novel during prosecution of a related application.

Ground 2: Obviousness over Nomura et al. - Claims 1-3, 6, and 11 are obvious over Nomura, Igarashi1, Schaeffer, Kennedy, and Deeg.

  • Prior Art Relied Upon: Nomura (Japanese Application # JP61245131), Igarashi1 (Patent 6,623,339), Schaeffer (Application # 2008/0125013), Kennedy (Patent 6,203,409), and Deeg (Patent 4,135,792).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Nomura taught the "general rule" that a lens bevel's apex angle does not match the V-shaped groove of the frame and specifically depicted the bevel angle being smaller than the groove angle, resulting in contact at the apex. Igarashi1 was used to supply the teaching of a lens machining apparatus suitable for finishing the edge of a prescription plastic lens to a specific shape, like that shown in Nomura.
    • Motivation to Combine: A POSITA would use the machining method of Igarashi1 to produce the lens geometry taught by Nomura to fulfill the known need to finish a lens edge for insertion into a frame. The teachings would be combined to achieve the predictable benefits of improved vision (from Schaeffer) and reduced weight (from Kennedy).
    • Expectation of Success: Combining a known lens shape (Nomura) with a known machining process (Igarashi1) for known materials would have yielded predictable results without requiring any innovation.

Ground 3: Obviousness over Raffaelli and Igarashi2 et al. - Claims 1, 3-5, and 7 are obvious over Raffaelli, Igarashi2, and other references.

  • Prior Art Relied Upon: Raffaelli (Patent 6,840,851), Igarashi2 (Patent 6,845,678), and Deeg (Patent 4,135,792).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Raffaelli, a patent assigned to the Patent Owner, taught a beveling wheel for plastic lenses that produces a bevel angle of about 105 degrees. Igarashi2 taught a spectacle frame with a "generally formed" V-groove having a 110-degree angle. The combination of Raffaelli's lens (105° bevel) with Igarashi2's frame (110° groove) directly taught the claimed relationship where the lens bevel angle is less than the frame groove angle.
    • Motivation to Combine: A POSITA would be motivated to fit a lens produced by Raffaelli's method into a standard frame like that of Igarashi2, as it was customary for patients to select frames with such generally formed grooves.
    • Expectation of Success: Fitting a lens with a known bevel angle into a frame with a known, slightly larger groove angle was a standard and predictable process in the art.
    • Key Aspects: This ground highlighted that art assigned to the Patent Owner itself contradicted factual representations made to the USPTO during prosecution of a related application, where the applicant had argued that all commercial lenses maintained a bevel angle of at least 120 degrees.
  • Additional Grounds: Petitioner asserted seven additional obviousness challenges based on various combinations of the cited prior art, including specific grounds for intermittently present bevels (claim 8) and specific dimensional ranges (claims 2, 4, 5, and 10).

4. Key Claim Construction Positions

  • "in compression": Petitioner argued this term means "being pressed or squeezed together" and does not inherently require deformation of the lens. This construction was based on the applicant's explicit distinction between "compression" and "deformation" during prosecution of the parent application to overcome prior art.
  • "interference fit": Petitioner asserted that the broadest reasonable interpretation of this term is synonymous with "in contact with." This was supported by the patent's specification and prosecution history, where the term "in compression" was added separately to the claims, indicating that "interference fit" alone does not impart a compressive state.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-12 of Patent 9,405,130 as unpatentable under 35 U.S.C. §103.