for patent infringement of two LKI patents – U.S. Patent No. 6,476,351 a “Laser Marking System” (“the ’351 patent“), issued in 2002, and No. 7,010,938 “Microinscribed Gemstone” (“the ’938 patent”), issued in 2006. In response to LKI’s claim of infringement, Photoscribe Technologies filed a counterclaim seeking a declaration of invalidity.
The ‘351 patent claims a system that uses a laser to create micro-inscriptions which are used to authenticate gemstones. Claims 1 and 7 of the ‘351 patent were at issue in the case. Claim 1 states the method of microinscribing a gemstone with the final limitation requiring “controlling the directing of the focused laser energy based on marking the instructions of the imaging, to selectively generate a marking on the gemstone based on the instructions.” Claim 7 states a similar final limitation.
The district court construed the “controlling” limitations to mean “include control based on either automated or manual feedback derived from optical images of a gemstone, before or during the laser burn process.”
After a jury trial in 2008, the district court found that the patents were not infringed, but it also found that they were not invalid.
Unfortunately, the patent system changed with the passage of the America Invents Act of 2011 (AIA) and the establishment of the Patent Trial and Appeal Board (PTAB). Due to ambiguities and loopholes in the legislation, patent infringers have been able to successfully challenge patents.
In 2014, Tiffany and Company, a global multinational corporation and a customer of Photoscribe, filed a petition with the PTAB seeking review of claims 1 and 7 of the ‘351 patent. The PTAB is the administrative “tribunal” within the U.S. Patent and Trademark Office (USPTO). However, it seems, by its track record, that the PTAB’s role is to invalidate patents previously issued by the USPTO.
The staggering amount of patent invalidations is carried out by Administrative Patent Judges (APJs), who are not judges but, rather, are basically attorneys whose main experience is in law rather than in the technologies or specifics of the patents they are “judging.” Yet, after a short hearing they regularly overturn the work of the USPTO patent examiner(s), individuals who are actual experts regarding the technologies of the patented inventions.
The PTAB construed the same “controlling” limitation to mean “control based on either automated or manual feedback derived from optical images either before or during the laser inscription process”, which was the same claim construction that the district court had already adopted in 2008.
However, in 2016, not quite a year after George passed away at age 97, the PTAB went the opposite direction of the court and ruled that under that claim construction, the patent was unpatentable and therefore invalid.