Dynamic Drinkware, LLCv.National Graphics, Inc.

Patent Trial and Appeal Board

Sep 12, 2014

09718695 (P.T.A.B. Sep. 12, 2014)

Trials@uspto.gov Paper 42
Tel: 571-272-7822 Entered: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DYNAMIC DRINKWARE LLC,
Petitioner,
v.
NATIONAL GRAPHICS, INC.,
Patent Owner.

Case IPR2013-00131
Patent 6,635,196

Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
GIANNETTI, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Dynamic Drinkware (“Petitioner”) filed a corrected Petition
requesting inter partes review of claims 1, 8, 12, and 15 of U.S. Patent No.
6,635,196 to Goggins (Ex. 1001, “the ʼ196 patent”). Paper 10 (“Pet.”).
National Graphics, Inc. (“Patent Owner”) filed a Preliminary Response.
Paper 15. Based on these submissions, we instituted trial, but only as to
claims 1 and 12 of the ʼ196 patent. Paper 16 (“Institution Decision”).
After institution, Patent Owner filed a Response (Paper 22; “PO
Resp.”) and Petitioner filed a corrected Reply (Paper 34; “Pet. Reply”). In
addition Patent Owner filed a Motion to Amend (Paper 23) and Petitioner
filed a corrected Opposition to that motion (Paper 33). Oral Hearing was
held on July 24, 2014, and the Hearing Transcript (“Tr.”) has been entered in
the record. Paper 41.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a). We conclude that
Petitioner has failed to prove by a preponderance of the evidence that claims
1 and 12 of the ʼ196 patent are unpatentable.
A. Related Proceeding
Petitioner has identified, as a related proceeding, a district court case
in which Petitioner is a defendant involving the ʼ196 patent and other
patents, captioned National Graphics, Inc. v. Brax Ltd., Case Number 12-C-
1119 (E.D. Wis.). Pet. 2.

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B. The ʼ196 Patent
The ʼ196 patent issued October 21, 2003, from an application filed
November 22, 2000. The patent identifies, and claims benefit of, a
provisional application filed on June 12, 2000. Ex. 1001, col 1, ll. 4-5.
The ʼ196 patent is directed to methods for making molded plastic
articles bearing a “lenticular” image. Id. at col. 1, ll. 8-14. As described in
the patent, a lenticular image is a segmented image comprising one or more
component images. Id. at col. 1, ll. 49-51. The segments are interlaced in
any conventional manner and mapped (i.e., aligned) to a lenticular lens. Id.
at col. 1, ll. 51-53. The interlaced images can be viewed through the lens to
create visual effects such as motion or depth. Id. at col. 3, ll. 43-56.
As discussed in the patent specification the aesthetic requirements for
molded plastic parts depend on their end use and the specification gives a
number of examples where aesthetics would be important:
For those products that are used in applications in which their
use is visible to an end user, or in which their appearance is
important to their sale, e.g., promotional items, automobile and
appliance facie, cups, bottles, bottle caps/enclosures,
snowboards or wake boards, skis (e.g., water, snow), cameras,
computer cases (e.g., laptop cases), cell phone (or other
electronic) cases, cosmetic cases, collectibles, signs, magnets,
coasters, display posters, menu boards, postcards, business
cards, and packaging on boxes, the aesthetics of the product are
important.

Ex. 1001, col. 1, ll. 35-45 (emphasis added).
As described in the Background section of the ʼ196 patent, lenticular
images are one way of improving the look of a product:
One way to improve the look of a product is to incorporate into
it bright color schemes and fancy or even glitzy decor so as to
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attract and keep a viewer’s attention. The application of a
lenticular image is one form of such a decor.

Id. at col 1, ll. 46-49.
C. Illustrative Claim
Both claims 1 and 12 are independent process claims. Claim 1,
reproduced below, is illustrative:
1. A method for making a molded article having a
lenticular image attached thereto, the method comprising the
steps of:
providing a mold having a mold cavity in which to form the
molded article having a lenticular image, the lenticular image
comprising a lenticular lens and interlaced image, the mold
cavity having a size that is appropriate to the molded article
with the lenticular image;
inserting the lenticular image into the mold cavity;
introducing a molten plastic into the mold cavity having the
lenticular image therein to form the molded article with the
lenticular image attached thereto, the molten plastic introduced
at at least one of a temperature, a pressure, and a turbulence that
minimizes any distortion to the lenticular lens and any
degradation to the interlaced image; and
removing the molded article having the attached
lenticular image from the mold cavity.

(Emphasis added).

II. ANALYSIS
A. Claim Construction
The claim constructions provided in our Institution Decision were not
challenged by the parties, including our construction of the “minimizing”
limitation, italicized in claim 1 above, which limitation appears also in claim
12. For the purposes of this Final Decision, therefore, we adopt for that
limitation the following construction from our Institution Decision:
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We interpret “minimizes any distortion to the lenticular lens
and any degradation to the interlaced image” to require that the
claimed methods sufficiently prevent distortion to the lenticular
lens or degradation of the interlaced image so that the intended
visual effect of the lenticular image still functions properly
within the finished molded article.

Institution Decision 8 (emphasis added). The other claim constructions from
our Institution Decision are not material to this decision and therefore will
not be discussed further.
B. Antedating Raymond
The Petition challenged claims 1, 8, 12, and 14 of the ʼ196 patent on
several grounds. Trial was instituted, however, for two claims only (claims
1 and 12), based upon one ground: anticipation by U.S. Patent No. 7,153,555
(Ex. 1003; “Raymond”).
Patent Owner’s Response does not attempt to distinguish claims 1 and
12 from the teachings of Raymond. Instead, Patent Owner contends that
Raymond does not qualify as prior art because the subject matter of claims 1
and 12 was reduced to practice before Raymond’s effective date as prior art
under 35 U.S.C. § 102(e). PO Resp. 7.
i. Effective Date of Raymond
The parties dispute the effective date of Raymond as prior art. The
application for Raymond was filed on May 5, 2000, claiming benefit of a
provisional application filed on February 15, 2000. Ex. 1003, col. 1, ll. 6-8.
Patent Owner argues that Petitioner has failed to meet the burden of
establishing Raymond is entitled to benefit of the earlier provisional filing
date; therefore, Raymond’s effective date under 35 U.S.C. § 102(e) is its
May 5, 2000, filing date. PO Resp. 3-7. In response, Petitioner attempts to
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rebut this by presenting a chart comparing claim 1 of the ʼ196 patent to the
Raymond provisional. Reply 4-5. No similar chart is provided for claim 12.
We agree with Patent Owner that Petitioner has failed to prove by a
preponderance of the evidence that Raymond is entitled to the benefit of the
earlier provisional filing date. To be entitled to rely on the February 15,
2000 provisional filing date, Petitioner had to establish that it relies on
subject matter from Raymond that is present in and supported by its
provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010)
(“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if
another’s patent discloses the same invention, which was carried forward
from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88
USPQ2d 1606 (BPAI 2008) (precedential).
In Yamaguchi, the appellants challenged the Examiner’s rejections
based on a patent to Narayanan under 35 U.S.C. § 102(e). 88 USPQ2d at
1608. The Board noted that the filing date of Narayanan’s underlying
provisional application would antedate the earliest effective filing date of the
rejected application. Id. at 1613. But appellants took the position that the
Examiner had failed to show that the provisional application properly
supports the subject matter of the patent relied on in making the rejection.
Id. The Board disagreed, and provided a chart correlating the Examiner’s
fact findings on anticipation with both the Narayanan patent and Narayanan
provisional application. Id. at 1614. The chart demonstrated that the
Examiner’s findings were supported by subject matter common to the patent
and the provisional application. Id.
Petitioner has not provided the analysis of common subject matter
required by Yamaguchi and Giacomini. Instead, Petitioner’s chart compares
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only one ʼ196 patent claim to the Raymond provisional. It does not compare
the portions of Raymond’s patent relied on by Petitioner to the Raymond
provisional, to demonstrate that those portions were carried over from the
provisional. We therefore conclude that Petitioner has failed to carry its
burden of proof that Raymond’s effective date is earlier than May 5, 2000.
ii. Reduction to Practice
As a result of our determination that Raymond’s effective prior art
date is May 5, 2000, if Patent Owner can prove a reduction to practice of
claims 1 and 12 prior to that date, Patent Owner can antedate Raymond and
eliminate it as a reference. See, e.g., Mahurkar v. C.R. Bard, Inc., 79 F.3d
1572, 1577 (Fed. Cir. 1996); In re Facius, 408 F.2d 1396, 1404 (CCPA
1969).
Petitioner contends that Patent Owner has failed to meet its burden to
antedate Raymond. Pet. Reply. 6. We disagree. Having reviewed this
record, we conclude that Patent Owner has carried successfully its burden of
establishing by a preponderance of the evidence an actual reduction to
practice of claims 1 and 12 prior to Raymond’s effective date.
iii. Summary of Testimony
To establish prior actual reduction to practice, Patent Owner relies on
declaration testimony from two fact witnesses: Don Krause (Ex. 2003;
“Krause Decl.”) and Matt Walker (Ex. 2004; “Walker Decl.”). In
opposition, Petitioner relies on declaration testimony from named inventor
Timothy Goggins (Ex. 1028; “Goggins Decl.”) and expert David Roberts
(Ex. 1029; “Roberts Decl.”). The testimony of these witnesses is
summarized below.

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Don Krause
Krause, the founder and president of Patent Owner (“NGI”), testifies
that in November 1999, NGI was interested in implementing technology for
making injection molded lenticular articles. Krause Decl. ¶¶ 1-2. An NGI
sales representative, Walker, contacted Rexam, an injection molding
company, about producing an injection-molded lenticular cosmetic case. Id.
¶¶ 3-4. Krause refers to logs of Walker’s phone calls with Rexam. Id. ¶ 5.
Krause also identifies the sample cosmetic case (Ex. 2002) produced
at Rexam “during the first successful injection molding run.” Id. ¶ 6. The
cosmetic case is pictured below.

Exhibit 2002 (Cosmetic Case)
Relying on Walker’s phone logs, Krause testifies that the “first test run
occurred sometime between March 15, 2000 and March 28, 2000.” Id. ¶ 6.
Krause also testifies about various meetings that took place at NGI
and identifies notes he took at those meetings. Id. ¶¶ 8-10. He identifies a
page from the notebook of Tim Goggins, the named inventor of the ʼ196
patent, who worked for NGI at the time. Id. ¶ 11. See Ex. 2008. The page,
dated June 5, 2000, identifies Rexam and states “Initial test on a custom part
were succesfull [sic] . . . .” Id.

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Matt Walker
Walker, a former NGI employee, had been a sales representative with
prior experience in the cosmetics industry. Walker Decl. ¶¶ 1-2. He testifies
that he suggested using a cosmetic case to implement injection molded
lenticular lens technology at NGI. Id. ¶ 3. Accordingly, he “reached out” to
various injection molders, and Rexam, an injection molding company in
Wisconsin, expressed interest. Id. ¶¶ 4-5.
Walker identifies his phone log (Ex. 2005) and testifies to the dates of
various communications he had with Rexam concerning the project. Id.
¶¶ 6-9. He also identifies the sample cosmetic case (Ex. 2002, pictured
above), which he testifies was molded by Rexam between March 15 and
March 28, 2000. Walker Decl. ¶ 10. He testifies that the lenticular portion
is the cover of the case. Id.
Referring to the sample, Walker testifies that this was the first
successful test run of NGI’s injection molding process for forming a
lenticular article. Id. ¶ 11. He testifies that the test run was successful. Id.
Based upon his inspection of the mold prior to the test run, he testifies as to
his understanding of the process used to make the cosmetic case. Id.

Timothy Goggins
Goggins worked for NGI from 1984 to March 17, 2004. Goggins
Decl. ¶ 2. Currently he is employed by Pixalen Studios, LLC, as Studio
Director. Id. ¶¶ 1-2. He testifies that Pixalen is “a company that is related
to” Petitioner. Id. ¶ 4. At Pixalen, Goggins designs lenticular artwork for
molded lenticular products and has been active in the lenticular industry
since at least 1994. Id. ¶ 4-5.
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While employed at NGI, Goggins was assigned by Krause to develop
an in-mold lenticular product. Id. ¶ 7. At the time, he had worked on other
lenticular projects, but had no experience with plastic molding. Id. ¶¶ 7-8.
He testifies he has reviewed the Krause and Walker testimony, and was
present at Rexam when most of the cosmetic case mold testing was done.
Id. ¶¶ 9-11.
Referring to Rexam, Goggins testifies while the testing did result in
molded lenticular products, “the products that were molded exhibited
degradation to the lenticular image and distortion to the lenticular lens.” Id.
¶ 11. He testifies that “[n]one of the testing we performed at Rexam resulted
in an acceptable lenticular product.” Id. ¶ 12. “None of the products
produced at Rexam represented a molded lenticular item in which distortion
to the interlaced image had been minimized or in which degradation of the
lenticular lens had been minimized in a way that was consistent with the
claims of the ʼ196 patent.” Id. ¶ 13.
Goggins testifies that his June 5, 2000, notebook entry “confirms that
we still had a long way to go to prepare a molded lenticular item in which
distortion to the interlaced image has been minimized or in which
degradation of the lenticular lens has been minimized.” Id. ¶ 14. In support,
he discusses a number of specific entries from the notebook. Id.
Goggins further testifies that when the Rexam tests failed to make a
good lenticular part, NGI started experimenting with coatings to protect the
ink on the printed surface. Id. ¶¶ 15-16. NGI partnered with Grimm
Industries, another injection molding company. He visited Grimm and was
present when they tested injection molded lenticular parts. Id. ¶¶ 17-18. He
states the work with Grimm resulted in a successful molded lenticular cup
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that became Figure 10 of the ʼ196 patent. Id. ¶¶ 19-20. That cup is pictured
below:

(Photograph of Cup)
Id. ¶ 21. Goggins does not believe the Grimm cup was molded when his
provisional application was filed on June 12, 2005. The cup quality was not
“perfect,” showing slight misalignment of the image and some damage to
the protective layer. Id. ¶ 23. A sample of the Grimm cup was provided to
Rexam. Id. ¶ 24. He kept a later sample of the Grimm cup.

David Roberts
Roberts is an expert in molded lenticular products. Roberts Decl. ¶ 1.
He inspected the sample cosmetic case (Ex. 2002) both visually and using a
portable 300X microscope. Id. ¶ 11. From a visual inspection he describes
the lenticular image as “fuzzy and indistinct.” Id. ¶ 12. He describes other
aspects of the image as having “problems.” Id. ¶¶ 11-14. His further
analysis is based on microscopic images of the sample. Id. ¶¶ 15-26.
He concludes: “In my professional opinion, the cosmetic case does
not represent a molded lenticular item in which distortion to the interlaced
image has been minimized or in which degradation of the lenticular lens has
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been minimized.” Id. ¶ 27. He further concludes: “Nor is this a situation in
which distortion of the lenticular image and degradation of the lenticular
lens has been functionally eliminated.” Id. He further testifies:
In my professional opinion, the intended visual effect of
the lenticular image in the cosmetic case is substantially
destroyed by the distortion of the interlaced image, the loss of
the lenticular image in the gate area where molten resin has
pushed the image into an unrecognizable blob, and the
degradation of the lenticular lens.

Id. ¶ 28. He concludes that the sample “does not constitute a successful
reduction to practice of the invention claimed in the ʼ196 patent.” Id. ¶ 29.
iv. Principles of Law
To establish an actual reduction to practice, the inventor must prove
(1) that he constructed an embodiment or performed a process that meets all
the claimed limitations of the invention, and (2) determined that the
invention worked for its intended purpose. Cooper v. Goldfarb, 154 F.3d
1321, 1327 (Fed. Cir. 1998). “The essential inquiry here is whether the
advance in the art represented by the invention . . . was embodied in a
workable device that demonstrated that it could do what it was claimed to be
capable of doing.” Scott v. Finney, 34 F.3d 1058, 1063 (Fed. Cir. 1994)
(quoting Farrand Optical Co. v. United States, 325 F.2d 328, 333 (2d Cir.
1963)). “In tests showing the invention’s solution of a problem, the courts
have not required commercial perfection nor absolute replication of the
circumstances of the invention’s ultimate use.” Id. “Less complicated
inventions and problems do not require stringent testing.” Mahurkar v. C.R.
Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996) (citing Scott, 34 F.3d at
1062).
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The testing that is required depends upon the intended use of the
invention. As the Federal Circuit explains,
We reiterate that testing is relevant in that it is evidence of
whether the inventor would have known that an invention is
suitable for its intended purpose. As one of this court’s
predecessors, the Court of Claims, explained, “the inquiry is not
what kind of test was conducted, but whether the test conducted
showed that the invention would work as intended in its
contemplated use.”

Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256 (Fed. Cir. 2002)
(quoting E. Rotorcraft Corp. v. United States, 384 F.2d 429, 431 (Ct. Cl.
1967)). As an example, in Sellner v. Solloway, 267 F.2d 321 (CCPA 2002),
actual reduction to practice of the invention — an exercise chair — was
established by witnesses who tried the chair out at a birthday party. Id. at
323.
There is no requirement that the invention, when tested, be in a
commercially satisfactory stage of development. Steinberg v. Seitz, 517
F.2d 1359, 1363 (Fed. Cir. 1975) (citing In re Dardick, 496 F.2d 1234, 1238
(CCPA 1974)); DSL Dynamic Sciences Ltd. v. Union Switch & Signal, 928
F.2d 1122, 1126 (Fed. Cir. 1991). The fact that further refinements of the
invention were made is not relevant. Farrand Optical, 325 F.2d at 332;
Loral Fairchild Corp. v. Matushita Elec. Indus. Co., Inc., 266 F.3d 1358,
1362-63 (Fed. Cir. 2001) (“Once the invention has been shown to work for
its intended purpose, reduction to practice is complete. Further efforts to
commercialize the invention are simply not relevant to determining whether
a reference qualifies as prior art against the patented invention.”) (internal
citation omitted).

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v. Analysis
Patent Owner contends that the methods of claims 1 and 12 were
reduced to practice by March 28, 2000, when the sample cosmetic case (Ex.
2002) was produced at Rexam using the claimed process. PO Resp. 7-11.
Alternatively, should the effective filing date of Raymond be determined to
be February 15, 2000, Patent Owner contends that there is a sufficient
showing of diligence to antedate the Raymond reference. Id. at 17. Because
we have determined that Raymond effectively was filed on May 5, 2000 (see
supra), we do not address this alternative argument or Petitioner’s response.
Pet. Reply 8-9.
Petitioner first argues that Raymond, not Goggins, is the “first
inventor,” Raymond having conceived of his invention “well prior to
December 2, 1999” and diligently reduced it to practice. Pet. Reply 1. We
are not persuaded by this argument. The Raymond patent is a reference
under 35 U.S.C. § 102(e); its effective date here cannot be moved back by
Raymond’s pre-filing activities. See Sun Studs, Inc. v. ATA Equip. Leasing,
Inc., 872 F.2d 978, 983 (Fed. Cir. 1989)(“When patents are not in
interference, the effective date of a reference United States Patent as prior art
is its filing date in the United States, as stated in § 102(e), not the date of
conception or actual reduction to practice of the invention claimed or the
subject matter disclosed in the reference patent.”).
Petitioner further contends that Patent Owner’s proffered “non-
inventor” testimony (i.e., Krause, Walker) is unreliable. Pet. Repl. 6-7.
1

Petitioner points instead to Goggins’s testimony, e.g., that a reduction to

1
It is well-established that inventor testimony is not necessary to prove
reduction to practice. Borror v. Herz, 666 F.2d 569, 575 (CCPA 1981).
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practice did not take place until after May 2000, when Goggins began
working with Grimm. Id. at 7. Petitioner also contends that the other
evidence of reduction to practice presented by Patent Owner is inadequate.
Pet. Reply 9. Petitioner focuses this argument mainly on the sample
cosmetic case of Exhibit 2002, asserting that it was not produced by a
process that meets all the claim limitations, and that it does not work for its
intended purpose. Pet. Reply 9-10.
Petitioner identifies various deficiencies in the sample, including “the
lenticular image is fuzzy and indistinct;” and “[p]roblems with the interlaced
image are visible with the naked eye.” Id. at 10. Referring to the Roberts
testimony, Petitioner also asserts “[u]nder microscopic evaluation, it is clear
that there are problems with both distortion to the lenticular lens and
degradation of the lenticular image.” Id. Petitioner, however, does not
challenge the descriptions provided by Krause and Walker of the work done
at Rexam producing the sample or their evidence of the process by which the
sample was made, facts that are corroborated largely by the Goggins
testimony.
At the outset of our analysis, we note that the conflicting testimony in
this case presents an unusual situation. Normally, when priority of invention
is the issue, testimony of the patentee is proffered to establish the earliest
invention date. Here, just the opposite is true: Goggins’s testimony is
proffered to establish a reduction to practice date that is later than the date
asserted by the Patent Owner.
This is explained, in part, by the admission in Goggins’s declaration
that he currently is employed by a company that is “related” to the
Petitioner. Goggins Decl. ¶ 4. At oral argument, Petitioner’s counsel, when
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asked to elaborate, advised the Board that Goggins’s current employer,
Pixalen Studios (which he created and is now its Studio Director) and
Petitioner are under common ownership. Tr. 10, ll. 1-15. Moreover, it is
clear from Goggins’s testimony (and confirmed at the hearing) that Pixalen’s
work falls within the field of molded lenticular products to which the ʼ196
patent is directed. Tr. 9, ll. 13-24. As Petitioner’s counsel stated, “He
[Goggins] does not have a direct financial interest in the outcome of these
proceedings, but his employer does.” Tr. 12, ll. 17-19.
As a consequence, Goggins’s current interests are aligned against his
patent, and therefore, we must give close scrutiny to his conclusions
concerning perceived defects in the sample cosmetic case or whether the
tests at Rexam produced a sample that met the requirements of the ʼ196
patent claims. The Federal Circuit has warned us that the oral testimony of
interested witnesses is unreliable. “[T]here is a very heavy burden to be met
by one challenging validity when the only evidence is the oral testimony of
interested persons and their friends, particularly as to long-past events.”
Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
1998).
More telling evidence than his testimony is Goggins’s June 5, 2000,
notebook page identifying Rexam and stating that the initial test on a custom
part was “succesfull [sic].” Ex. 2008.
2
At the time of the notebook entry,
Goggins was employed by Patent Owner and had no motivation to be
untruthful.
Nor do we credit Goggins’s testimony explaining the rest of the
notebook entry. He testifies that the entry “confirms that we still had a long

2
See Ex. 1016 for the entire notebook entry.
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way to go to prepare a molded lenticular item in which distortion to an
interlaced image has been minimized or in which degradation of the
lenticular image has been minimized.” Goggins Decl. ¶ 14. He then goes
on to describe his work on the project at Grimm leading to the cup pictured
in the patent.
This testimony from Goggins does not persuade us that the claimed
process was not reduced to practice in March 2000. Evidence of further
work perfecting the invention for commercialization does not prove that no
reduction to practice occurred. Loral Fairchild Corp., 266 F.3d at 1362-63.
Thus, we discount the testimony about his further experiments with Grimm.
Goggins Decl. ¶¶ 17-25.
Nor are we convinced by the Roberts testimony concerning alleged
defects in the sample cosmetic case produced at Rexam prior to March 28,
2000. The ʼ196 patent specification makes clear the intended use of the
invention is “products that are used in applications in which their use is
visible to an end user, or in which their appearance is important to their
sale.” Ex. 1001, col. 1, ll. 35-45. The patent specifically provides examples
of these products, which include cups, bottles, cell phone cases, cosmetic
cases, signs, magnets, coasters, and others where “the aesthetics of the
product are important.” Id. at col 1, ll. 39-45.
Roberts’s microscopic evaluation of the cosmetic case does not reflect
the setting in which an end user such as a consumer normally would evaluate
such products, e.g., in a store or at home. See Slip Track Sys., Inc., 304 F.3d
at 1267; Sellner, 267 F.2d at 323. Roberts testified at his deposition that “[a]
consumer wouldn’t necessarily notice a defect because they’re not trained in
that area.” Ex. 2010 (“Roberts Dep.”) 18:24-19:1.
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Our visual inspection of the sample cosmetic case at the hearing did
not confirm that the defects pointed to by Petitioner would be “visible to the
naked eye.” See Pet. Reply 10. For instance, on inspection at the hearing,
and confirmed by counsel, the “distortion to the image near the gate” (id.)
cited by Petitioner turned out to be a small (“a little wider than a millimeter,”
Tr. 71, ll. 6-7) portion along the side of the case. Roberts testified that it was
on the hinge side of the lid, which our inspection confirmed. Roberts Dep.
38:20-22. Walker testified at his deposition that the image still had
“movement,” “depth,” and “changes in color,” which our inspection also
confirmed. Ex. 1025 (“Walker Dep.”) 42:1-2.
Petitioner’s arguments that there was “ongoing development” on the
process, or that “testing and experimentation continued well past March
2000” are not persuasive. Pet. Reply 11-14. As discussed previously,
commercial perfection is not a requirement for reduction to practice. Scott,
34 F.3d at 1063. And while we agree with Petitioner that Krause (like
Goggins) is an interested witness, the facts concerning the work done at
Rexam set forth in his declaration and in Walker’s are not challenged and in
fact are corroborated by Goggins. Compare Ex. 2003 ¶¶ 5–6, with Ex. 2004
¶¶ 9–10 and Ex. 1028 ¶¶ 7, 11, 14, 15. We also consider the facts that
Walker is employed by neither party and has prior experience with lenticular
images and advertising in the cosmetics field, where the sample product
would be used (Walker Dep. 8:11-16; 11:16-17), when crediting his
testimony that the test at Rexam was successful.
We conclude, therefore, that Patent Owner has shown by a
preponderance of the evidence that by March 28, 2000, a sample product
was produced for Patent Owner demonstrating that the Rexam process was
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suitable for its intended purpose. The testimony establishes that the Rexam
process was successful in injection molding a plastic product with a
lenticular image that would be acceptable to the intended end user. Walker
Decl. ¶ 11; Krause Decl. ¶ 7.
The question remains, however, whether all the claim elements were
met. The only element challenged by Petitioner is that addressed in the
Roberts declaration, namely, the “minimizing” limitation: “the molten
plastic be ‘introduced at at least one of a temperature, a pressure, and a
turbulence that minimizes any distortion to the lenticular lens and any
degradation to the interlaced image.’” Pet. Reply 12 (emphasis added). We
note that neither the Patent Owner’s Response nor the Petitioner’s Reply
focuses on the temperature, pressure, or turbulence recitations or other
aspects of the claims; the dispute between Petitioner and Patent Owner
centers on the portion of the claim (italicized above) dealing with
minimizing distortion to the lens and degradation to the image which
Petitioner contends is not met in the Rexam process. Id.; Goggins Decl.
¶ 13; Roberts Decl. ¶¶ 27-29. That is not surprising, for the ʼ196 patent
claims do not claim specific pressure, temperature, or turbulence levels. The
claims say only that “the molten plastic is introduced at at least one of a
temperature, a pressure, and a turbulence.” (Emphasis added). None of the
witnesses, including Goggins, disputes that this much of the claim is met by
the Rexam process.
Our construction of the “minimizes” limitation requires “that the
claimed methods sufficiently prevent distortion to the lenticular lens or
degradation of the interlaced image so that the intended visual effect of the
lenticular image still functions properly within the finished molded article.”
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Patent 6,635,196
20
Institution Decision 8 (emphases added). Thus, under this construction the
focus of the inquiry is on the intended visual effect, which we determine is
similar to the “suitable for its intended purpose” standard for determining
reduction to practice. We conclude, therefore, that our previous analysis of
“suitability for intended purpose” applies also to our consideration of this
claim element.
We are persuaded, for the reasons stated above, that Patent Owner has
carried its burden of showing that this element was reduced to practice on or
before by March 28, 2000. Our inspection of the compact case at the
hearing confirms Patent Owner’s evidence that its intended visual effect,
while not perfect, functions properly, taking into account the nature of the
product and its end users. We further conclude that the testimony from
Goggins and Roberts fails to address whether the resulting sample would be
acceptable to a consumer and is therefore not persuasive. On this issue, we
find Walker’s testimony and Goggins’s notebook entry to be more
persuasive evidence.
Finally, we are not persuaded by Petitioner’s arguments that Patent
Owner has previously “declined to attempt to antedate Raymond” or has
“expressly disclaimed knowledge of the facts.” Pet. Reply 14-15. For
example, the argument that Patent Owner did not attempt to antedate
Raymond in its Preliminary Response is unavailing in that such responses
are optional. See 37 C.F.R. § 107(a) (“The patent owner may file a
preliminary response to the petition.”) (emphasis added). We see no reason
why this and other such prior positions cited by Petitioner should be
determinative here.

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Patent 6,635,196
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D. Motion to Amend
Patent Owner’s Contingent Motion to Amend (Paper 23) proposes
two substitute claims, numbered 17 (substitute for claim 1) and 18
(substitute for claim 12). Patent Owner states, “These substitutions are
strictly contingent on the Board finding each respective original claim
unpatentable, as discussed below.” Motion to Amend 1. As discussed,
because we determine that claims 1 and 12 are not proven unpatentable, we
dismiss Patent Owner’s Motion to Amend as moot.
E. Patent Owner’s Motion for Observations
We have considered Patent Owner’s Motion (Paper 36), and to the
extent that Patent Owner’s observations are relevant they have been
incorporated into our analysis.
III. CONCLUSION
Petitioner has not demonstrated, by a preponderance of the evidence,
that claims 1 and 12 of the ʼ196 patent are anticipated by Raymond under
35 U.S.C. § 102(e).
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1 and 12 of the ʼ196 patent have not been
shown to be unpatentable; and
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend is dismissed as moot.
This is a Final Decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

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Patent 6,635,196
22

PETITIONER:
Joseph S. Heino
Patrick M. Bergin
DAVIS AND KUELTHAU, S.C.
jheino@dkattorneys.com
pbergin@dkattorneys.com
PATENT OWNER:
Michael T. Griggs
Keith M. Baxter
Sarah Wong
BOYLE FREDERICKSON, S.C.
mtg@boylefred.com
kmb@boylefred.com
smw@boylefred.com