National Graphics prevails in suit over Lenticular In-Mold patent

Lenticular images have become a popular way to decorate various consumer items such as movie promotional cups at theaters, cosmetic cases, and cell-phone protective cases. The lenticular images change as the product is moved from side to side or up and down, making for a really cool way to attract consumers to the product.

LenticularHowever, National Graphics Inc. (NGI; Waukesha, WI) just announced that its patents on in-mold lenticular images survived an inter partes review (IPR) brought by Dynamic Drinkware of Oshkosh, WI. The review of the patent was initiated after NGI started an infringement lawsuit (NGI v Brax, et al.), asserting that Dynamic Drinkware was among four companies infringing at least one of NGI's patents.

According to a release from NGI, as defined by the US Patent & Trademark Office, "IPR is a new trial proceeding conducted at the [Patent Trial and Appeal] Board to review the patentability of one or more claims in a patent. . . ." Michael Griggs of Boyle Fredrickson, attorney for NGI, explained: "Inter partes review enables a third party to challenge the validity of a patent. A patent that survives an inter partes review unscathed, such as NGI's Lenticular In-Mold patent, emerges stronger, having been held to be patentable over the third party challenge by a panel of three administrative judges."

The inter partes review examined four claims on patent 6,635,196 (‘196), claims 1, 8, 12, and 15 of the patent that was issued Oct. 21, 2003, from an application filed Nov. 22, 2000. The IPR "instituted trial" but only as to claims 1 and 12 of the ‘196 patent, according to the IPR's final written decision.

Both claims (1 and 12) are independent process claims, and comprise 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 molted plastic into the mold cavity and having the lenticular image therein to form the molded article with the lenticular image attached thereto, 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."

The patent pertains to molded articles (i.e., cups, bottles, cell phone cases, cosmetic cases, etc.) bearing a lenticular image. Images printed on a lenticular lens are transformed from static images into dynamic art through special effects such as 3D, motion, morph, zoom, or flip, explained NGI's information.

According to the IPR's final written decision, NGI was interested in developing in-mold lenticular lens products in November 1999, and Rexam, an injection molding company, helped NGI produce an in-mold lenticular cosmetic case. The first runs of the case occurred "sometime between March 15 and 28, 2000." Tim Goggins, the named inventor of the ‘196 patent, worked for NGI at the time. Krause's notes revealed an entry dated June 5, 2000, that identified Rexam and stated, "Initial test on a custom part were successful [sic] . . ."

Goggins worked for NGI from 1984 to March 17, 2004, but currently is employed by Pixalen Studios LLC, as Studio Director, where he designs lenticular artwork for molded lenticular products. Pixalen is a subsidiary of Oshkosh, WI–based Pacur, a polymer sheet extruder and maker of the lenticular material.

Goggins testified before the IPR 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." He also testified that when the Rexam tests failed to make a good part, NGI experimented with a protective coating and partnered with Grimm Industries, another injection molding company, for further testing.

"National Graphics has put a lot of money and effort into developing our patent portfolio," said Donald Krause, founder and President of NGI, the patent owner. "Logically we will put money and effort into defending our patents. The validity of our Lenticular In-Mold patent was challenged, and our patent has come out the stronger for it."

Barry Johnson, President of Dynamic Drinkware LLC in Oshkosh, WI, in a written comment to PlasticsToday, said, "While Dynamic Drinkware LLC is disappointed by the IPR decision, the scope of the review was limited. Dynamic is confident that the ‘196 will be invalidated in the parallel litigation in the Eastern District of Wisconsin based on the substantial additional evidence that could not be considered by the IPR panel. In any event, Dynamic will continue to produce the highest quality molded lenticular products using its patented process."

Krause noted that "National does license some of its patents, including the Lenticular In-Mold patent," adding that the company has In-Mold Lenticular patents in other countries as well.

National Graphics Inc., established in 1976, was the originator of lithographic lenticular imaging. The company designed the first commercially viable lenticular lens, which is now an industry standard. With their patented Extreme Vision process, National Graphics provides the highest quality lithographic lenticular product in the world and owns one of the most comprehensive portfolios of intellectual property in the industry, according to NGI.

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