Giesecke+Devrient GmbH v. Lumenco LLC

1. Case Identification

• Case #: IPR2024-00838
• Patent #: 10,901,191
• 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: 1-12

2. Patent Overview

• Title: Method of Fabricating a Security Element
• Brief Description: The ’191 patent discloses a method for fabricating anti-counterfeiting security elements, such as those used on currency or product labels. The method involves forming an array of micro-mirrors on a substrate, where different sets of micro-mirrors are oriented to reflect ambient light toward specific points (pixels), creating one or more images that appear to float above the substrate surface.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1 and 6 over Fuhse262

• Prior Art Relied Upon: Fuhse262 (German Patent Application Publication No. 102010048262A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that combining different embodiments within Fuhse262 itself renders the independent claims obvious. Fuhse262 was asserted to teach a security element with an array of micro-mirrors on a substrate that reflects ambient light to create a "light-spot image" that appears to "float" above the surface. It allegedly discloses assigning different sets of micro-mirrors to each "light spot" (the claimed pixel) and provides calculations for rotating each mirror body about x and y axes to direct light to the correct point. Petitioner contended the convergence of these reflected light beams creates a voxel at each pixel location, producing the claimed effect of a floating point source of light.
  • Motivation to Combine: Petitioner asserted Fuhse262 provides express motivation to combine its own embodiments, stating that replacing the "curved concave mirror" of its Figure 2 embodiment with the flat micro-mirrors of its Figures 8-10 embodiments achieves "higher resolution" and is "easier to calculate and produce."
  • Expectation of Success: A Person of Ordinary Skill in the Art (POSITA) would have a high expectation of success as the combination involved different aspects of the same disclosed invention that operate on identical principles.

Ground 2: Obviousness of Claims 1 and 6 over Fuhse262 in view of Fuhse925

• Prior Art Relied Upon: Fuhse262, and Fuhse925 (Patent 10,639,925).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the teachings from Fuhse262 as outlined in Ground 1 but incorporated Fuhse925 to provide more explicit detail for the limitation requiring micro-mirrors to be rotated about first and second axes. Petitioner argued that while Fuhse262 describes the required orientation generally using a normal vector, Fuhse925 explicitly teaches breaking down this orientation into two "inclination components" representing the precise rotation or tilt angle needed for each axis.
  • Motivation to Combine: A POSITA would combine the references because they share a common inventor and assignee and address the same technical field. Petitioner argued that Fuhse925 provides a known, more detailed method for implementing the precise mirror orientations described conceptually in Fuhse262, representing a predictable improvement.
  • Expectation of Success: Success was expected because the structures in both references are similar and compatible, and implementing the specific inclination angles from Fuhse925 into the Fuhse262 system would be a routine application of known techniques.

Ground 3: Obviousness of Claims 2-4 and 7-11 over Fuhse262 in view of Fuhse395

• Prior Art Relied Upon: Fuhse262, and Fuhse395 (Application # 2012/0319395).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Fuhse262 teachings from Ground 1 to address dependent claims related to specific manufacturing methods. Fuhse395 was introduced to teach forming the micro-mirror array by "casting" with an "embossing tool" on a clear, energy-cured polymer substrate (claims 2, 7-8). It also was asserted to teach the specific step of metallizing the mirror surfaces with a layer of aluminum, gold, or silver (claims 3, 9) and performing this embossing prior to metallization (claims 4, 10-11).
  • Motivation to Combine: Petitioner asserted a POSITA would look to Fuhse395, which shares a common inventor with Fuhse262, to find explicit details on the embossing process mentioned in Fuhse262. Fuhse395 provides a known, detailed method for manufacturing the exact type of embossed micro-mirror structures disclosed in Fuhse262.
  • Expectation of Success: The art of fabricating optical variable devices using embossing and casting on polymer substrates was well-developed and predictable, ensuring a high expectation of success in combining the teachings.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Fuhse262 with Sauvage-Vincent (Application # 2014/0285892) for alternative manufacturing details and with Morford (a 2006 SPIE article) for filler material properties. Further grounds combined Fuhse262 and Fuhse925 with Fuhse395, Sauvage-Vincent, or Morford.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both 35 U.S.C. §314(a) (Fintiv) and §325(d).
• Fintiv Factors: Petitioner asserted the factors weigh in favor of institution. It argued that a stay in the co-pending district court litigation is likely or the case may be transferred, making the trial date uncertain relative to the IPR timeline. Furthermore, Petitioner contended the petition's merits are exceptionally strong, as the challenged claims cover techniques known years before the patent's priority date.
• §325(d) Factors: Petitioner argued the art and arguments presented are not the same as or cumulative to those considered during prosecution. Several key references (Fuhse925, Fuhse395, Sauvage-Vincent, Morford) were never considered by the Examiner. Critically, Petitioner contended the Examiner never substantively analyzed or applied the primary reference, Fuhse262, nor considered the asserted combination of different embodiments within Fuhse262 itself. Petitioner argued this failure to consider the specific, asserted combinations and references constituted a material error by the Office.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of Patent 10,901,191 as unpatentable under 35 U.S.C. §103.