Giesecke+Devrient GmbH v. Lumenco LLC

1. Case Identification

• Case #: IPR2024-00836
• Patent #: 10,189,294
• Filed: May 1, 2024
• Petitioner(s): Giesecke+Devrient GmbH, Giesecke+Devrient Currency Technology GmbH, and Papierfabrik Louisenthal GmbH
• Patent Owner(s): Lumenco, LLC
• Challenged Claims: 1, 6-14, 28, and 32-39

2. Patent Overview

• Title: Visual Display Assembly for Security Elements
• Brief Description: The ’294 patent discloses a visual display assembly for use as a security element on currency or product labels. The technology uses an array of micro-mirrors on a substrate to generate images that appear to float in spatial planes above or below the substrate surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fuhse262 - Claims 1, 6-13, 28, 32, 33, and 35-38 are obvious over Fuhse262

• Prior Art Relied Upon: Fuhse262 (German Patent Application Publication No. 102010048262A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fuhse262 discloses all limitations of the independent claims. It teaches a security "depiction element" with a substrate and an array of micro-mirrors that reflects ambient light to create "light-spot images" that appear to float above or below the substrate. Petitioner asserted that Fuhse262 teaches assigning different sets of micro-mirrors to generate each pixel, defining a "sphere of influence" on the substrate for each image point. Fuhse262 allegedly discloses orienting the mirrors in a fixed manner using calculated normal vectors to direct light to the desired image point. This convergence of multiple reflected light beams inherently creates a voxel at each image point, which produces the effect of a point source of light, as Fuhse262 describes a cone of light originating from the image point. For claims 28 and 35, Petitioner contended Fuhse262 also discloses displaying multiple, distinct images that are visible at different viewing angles.
  • Motivation to Combine: The argument relied on combining different embodiments within Fuhse262 itself. Petitioner contended a POSITA would combine the general principles of Fuhse262's Figure 2 (showing concave mirrors) with the specific implementation of its Figures 8-10 (showing flat micro-mirror arrays). The motivation was explicit, as Fuhse262 states that replacing curved mirrors with flat micro-mirrors achieves "higher resolution" and that "flat surfaces are easier to calculate and produce."
  • Expectation of Success: Petitioner asserted success was expected because the combined embodiments operate on the same optical principles. The petition argued that since Fuhse262 explicitly teaches the substitution, and the operation of micro-mirror arrays in security applications was well-understood, a POSITA would have been able to implement the combination without difficulty.

Ground 2: Obviousness over Fuhse262 in view of Fuhse925 - Claims 1, 6-13, 28, 32, 33, and 35-38 are obvious over Fuhse262 in view of Fuhse925

• Prior Art Relied Upon: Fuhse262 (German Patent Application Publication No. 102010048262A1) and Fuhse925 (Patent 10,639,925).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground leveraged Fuhse262 for the core features, as in Ground 1. Petitioner argued Fuhse925 was added to provide more explicit detail for the limitation requiring the body of each micro-mirror to be "rotated about at least one of first and second rotation axes extending through the body." While Fuhse262’s equations for the normal vector imply such rotation, Petitioner argued Fuhse925 explicitly teaches breaking down the mirror’s overall orientation into two "inclination components" (N∥ and N⊥) that directly correspond to the amount of rotation about the x-axis and y-axis, respectively. This teaching allegedly provides a clear and detailed method for achieving the claimed orientation.
  • Motivation to Combine: A POSITA would combine the references because they share an inventor and assignee, relate to the same field of optical security elements, and address the same technical challenges. Petitioner argued that Fuhse925 provides the explicit implementation details for the more general orientation concepts described in Fuhse262. A POSITA seeking to implement Fuhse262’s system would have naturally looked to Fuhse925 for this level of detail.
  • Expectation of Success: Petitioner claimed success was expected as the references describe highly similar and compatible micro-mirror structures and manufacturing methods. Applying the specific inclination component calculations from Fuhse925 to orient the mirrors in Fuhse262’s system was presented as a straightforward application of a known technique to improve a known device with predictable results.

• Additional Grounds: Petitioner asserted further obviousness challenges against claims 1, 6-13, 28, 32, 33, and 35-38 by adding Jordan (Application # 2014/0367957) to the primary combinations, arguing it further teaches the use of such security elements on coin currency and product labels as recited in the preambles. Petitioner also challenged dependent claims 14, 34, and 39 by adding Fuhse172 (Application # 2013/0093172) to the primary combinations to teach the use of dielectric layers to configure the micro-mirrors to display images with color.

4. Arguments Regarding Discretionary Denial

• §314(a) / Fintiv Factors: Petitioner argued that discretionary denial under Fintiv would be inappropriate. While a co-pending district court case exists with a scheduled trial date, Petitioner noted the case may be transferred, discovery was not advanced, and the Markman hearing had not yet occurred at the time of filing. Petitioner contended that the strong merits of the petition, which allegedly show the claims cover known techniques published years before the priority date, weigh heavily in favor of institution to promote efficiency and fairness.
• §325(d) / Same or Substantially Same Art: Petitioner argued against denial under §325(d), asserting the grounds presented are not the same as or cumulative to arguments considered during prosecution. The petition emphasized that key references Fuhse925, Jordan, and Fuhse172 were never before the Examiner. Furthermore, while the applicant cited Fuhse262 late in prosecution, the Examiner never substantively applied it or considered the combination of its internal embodiments as presented in Ground 1. Petitioner argued the Examiner erred by overlooking these critical disclosures, which are materially different from the prior art (e.g., Raber) that was applied.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 6-14, 28, and 32-39 of Patent 10,189,294 as unpatentable.