Giesecke+Devrient GmbH v. Lumenco LLC

1. Case Identification

• Case #: IPR2024-00839
• Patent #: 11,448,863
• Filed: May 2, 2024
• Petitioner(s): Giesecke+Devrient GmbH, Giesecke+Devrient Currency Technology GmbH, and Papierfabrik Louisenthal GmbH
• Patent Owner(s): Lumenco, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method of Fabricating Security Element
• Brief Description: The ’863 patent discloses methods for fabricating optically variable security elements, such as those used on banknotes, currency, and product labels. The technology uses arrays of micro-mirrors to generate multiple "floating" images that appear in different spatial planes above or below the surface of the security element.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fuhse847 and Rich - Claims 1-2, 4-6, and 12-14 are obvious over Fuhse847 in view of Rich.

• Prior Art Relied Upon: Fuhse847 (International Publication No. WO 2012/048847) and Rich (Patent 10,859,851).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fuhse847 taught the core invention: a security element with a micro-mirror array that produces floating 2D or 3D images by reflecting light to specific "light spots" or pixels. Fuhse847 allegedly disclosed assigning micro-mirrors to different pixels to form multiple images at different heights. However, Petitioner contended Fuhse847 did not explicitly detail the software or processor-based design process. Rich allegedly supplied this missing element by teaching a computer-implemented method using a processor and an "array design module" to take an input image, determine the required pattern and orientation of micro-mirrors, and generate a design output file for manufacturing a master.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Fuhse847's system, which involves a large number of micro-mirrors requiring complex calculations, would be motivated to look for an automated software solution. Petitioner asserted that Rich provided such a solution for the same technical problem—designing micro-optic arrays—making it an obvious addition to improve Fuhse847's method.
  • Expectation of Success: Petitioner claimed a POSITA would have a high expectation of success because software methods for micro-optic design were mature and well-understood before 2015. Combining a known design process (Rich) with a known optical structure (Fuhse847) was presented as a predictable application of known techniques.

Ground 2: Obviousness over Fuhse847, Rich, and Fuhse925 - Claims 3 and 6-14 are obvious over Fuhse847 and Rich in view of Fuhse925.

• Prior Art Relied Upon: Fuhse847, Rich, and Fuhse925 (Patent 10,639,925).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Fuhse847 and Rich from Ground 1. Petitioner argued that Fuhse925 provided additional explicit detail for limitations related to specific mirror orientations and achieving a predefined angular offset between images. While Fuhse847 taught the concept of rotating mirrors to direct light, Fuhse925 allegedly taught the specifics of breaking down a normal vector into two "inclination components" to define the precise rotation of each mirror about its respective x and y axes. This was used to meet the limitation in claim 12 of a body rotated about first and second rotation axes. Fuhse925 also allegedly disclosed creating different images visible at different viewing angles with a specific offset (e.g., 10 degrees), satisfying claim 6.
  • Motivation to Combine: Petitioner argued that a POSITA would combine Fuhse925 because it provided an explicit, detailed implementation for the general principles taught in Fuhse847. The fact that Fuhse847 and Fuhse925 shared the same inventor and assignee was presented as a strong motivation to combine their teachings.
  • Expectation of Success: The structural compatibility and similar teachings on micro-mirror dimensions and fabrication in Fuhse847 and Fuhse925 would have given a POSITA a reasonable expectation of success in incorporating the more detailed orientation teachings of Fuhse925 into the system of Fuhse847.

Ground 3: Obviousness over Fuhse847, Rich, and Sauvage-Vincent - Claims 15-18 are obvious over Fuhse847 and Rich in view of Sauvage-Vincent.

• Prior Art Relied Upon: Fuhse847, Rich, and Sauvage-Vincent (Application # 2014/0285892).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted the manufacturing claims. While Fuhse847 disclosed that its optical elements were "embossed structures," it allegedly lacked explicit detail on the manufacturing process. Petitioner argued that Sauvage-Vincent remedied this by teaching the use of a "die" or "master" tool for a "stamping operation" to produce the desired microstructure patterns. This combination was argued to teach claim 15 (casting with a mirror tool), claim 16 (using a clear, energy-cured polymer), claim 17 (metallization with silver, aluminum, or gold), and claim 18 (embossing prior to metallization).
  • Motivation to Combine: A POSITA seeking to implement the "embossed structures" of Fuhse847 would have naturally looked to the art for known embossing and stamping techniques for optical security elements. Petitioner asserted Sauvage-Vincent provided this explicit detail, making it an obvious reference to combine.
  • Expectation of Success: Given that device fabrication art was mature, combining a known fabrication method (Sauvage-Vincent) with the optical design of Fuhse847 was presented as a predictable endeavor with a high likelihood of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Morford (a 2006 SPIE publication) to teach claims 19-20 related to filling recessed surfaces with a UV varnish filler having a specific refractive index.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 314(a) based on Fintiv factors would be inappropriate. It was contended that institution is favored because a stay has been sought in the parallel district court litigation, and that case may be transferred to the Court of Federal Claims, making the trial date uncertain. Petitioner also argued that the merits of the petition are compelling.
• Petitioner further argued against discretionary denial under 35 U.S.C. § 325(d), asserting that the grounds and prior art combinations presented in the petition are not the same or substantially the same as those considered during prosecution. It was noted that key references like Rich, Fuhse925, and Sauvage-Vincent were not cited or substantively considered by the examiner.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 11,448,863 as unpatentable.