PTAB

IPR2018-00596

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 ’130 patent discloses a method and apparatus (a beveling wheel) for forming a beveled plastic lens for eyeglasses. The core inventive concept asserted during prosecution was creating a lens bevel with an angle smaller than the receiving channel of the eyeglass frame, causing an interference fit where the vertex of the bevel is in compression against the bottom of the frame's channel.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Gottschald (WO 1999040494A1), ANSI (ANSI Z80.5-1997), Schaeffer (Application # 2008/0125013), and Deeg (Patent 4,135,792).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gottschald taught the core concept of the ’130 patent: a method for forming a spectacle lens bevel (angle φ1) that is smaller than the angle of the frame's receiving groove (angle φ0), causing the tip of the bevel to bear against the base of the groove. Schaeffer was cited to establish that applying this method to "prescription plastic lenses" was obvious. ANSI provided the standard definition of "eyeglasses," and Deeg was cited to show that conventional lens mounting subjects plastic lenses to "relatively high circumferential clamping pressures," thus teaching the "in compression" limitation.
    • Motivation to Combine: A POSITA would combine these references to produce a standard pair of prescription eyeglasses. It would have been obvious to apply Gottschald's lens edging technique to the prescription plastic lens blanks of Schaeffer to produce a finished lens. The resulting compression taught by Deeg was argued to be a necessary and predictable consequence of mounting the lens as taught by Gottschald in a standard frame.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying a known edging method to a common lens material to achieve the predictable result of a securely mounted lens.

Ground 2: Claim 8 is obvious over Gottschald, ANSI, Schaeffer, Page, and Line.

  • Prior Art Relied Upon: Gottschald (WO 1999040494A1), ANSI, Schaeffer, Page (Patent 2,756,631), and Line (Patent 2,254,746).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to challenge dependent claim 8, which recites that "the bevel is intermittently present." Page was introduced to teach a semi-rimless eyeglass frame where pliable rim members only partially surround the lens, necessitating an intermittent bevel. Line was cited as teaching that such designs use tension to hold lenses securely in a "firm grip," which Petitioner equated to the "in compression" limitation.
    • Motivation to Combine: A POSITA would have been motivated to modify the lens from the primary combination of Ground 1 with the intermittent bevel taught by Page. This modification would be a common design choice for use with semi-rimless frames to avoid a visible but non-functional bevel on the un-rimmed portion of the lens, a known cosmetic and functional consideration.
    • Expectation of Success: Applying an intermittent bevel to a lens for use in a semi-rimless frame was argued to be a well-known and predictable design choice.

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

  • Prior Art Relied Upon: Nomura (Japanese Patent 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: This ground presented an alternative to Gottschald. Petitioner asserted that Nomura taught the "general rule" that a lens bevel's apex angle should be smaller than the frame's V-shaped groove, causing the apex to contact the bottom of the groove. Igarashi1 was cited for its disclosure of a lens machining apparatus particularly effective for creating beveled plastic lenses. Kennedy was used to show that such an interfit "helps to secure the lens," and Schaeffer and Deeg were used, as in Ground 1, to supply the "prescription" and "in compression" aspects, respectively.
    • Motivation to Combine: A POSITA would have been motivated to use the machining method of Igarashi1 to produce the lens-frame fit described by Nomura, as this represented a combination of known techniques to achieve the desired, predictable outcome of a securely fitted lens. The combination simply assembled elements for their intended purposes.
    • Expectation of Success: The combination was presented as a predictable substitution of one prior art lens-fitting technique (Nomura) for another (Gottschald), yielding no unexpected results.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including grounds combining Nomura with references like Berndt and Walsh to teach specific claimed bevel angle ranges (claims 4-5). Other grounds combined Nomura with Brooks to teach unequal bevel slopes (claims 9 and 12), and with Ace and/or Walsh to teach specific channel depth ranges (claim 10). Further grounds based on a combination around Raffaelli were also presented.

4. Key Claim Construction Positions

Petitioner dedicated significant argument to the construction of two key phrases, asserting they were central to the invalidity analysis.

  • "in compression": Petitioner argued this term should be construed as "being pressed or squeezed together." Based on the prosecution history of the grandparent ’360 patent, Petitioner asserted that the applicant explicitly distinguished "compression" from "deformation," arguing that a lens could be in compression without deforming. Therefore, the term does not require the lens to be pressed into a smaller space or deformed.
  • "interference fit": Petitioner argued that the broadest reasonable interpretation of this term, based on its use in the specification, is simply "in contact with." Petitioner noted that during prosecution, the applicant added the term "in compression" as a separate and distinct limitation from "interference fit." This action was argued to be a disclaimer, preventing a construction where "interference fit" would inherently require the lens to be in compression.

5. Relief Requested

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