Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 14
`Entered: April 3, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN LIOWN ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DISNEY ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01785
`Patent 8,721,118 B2
`____________
`
`
`
`Before J. JOHN LEE, WILLIAM M. FINK, and JESSICA C. KAISER,
`Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`

`

`IPR2016-01785
`Patent 8,721,118 B2
`
`
`
`
`Shenzhen Liown Electronics Co., Ltd. (“Petitioner”) filed a Petition
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`pursuant to 35 U.S.C. §§ 311–319 requesting an inter partes review of
`
`claims 1, 3, 8, and 10 of U.S. Patent No 8,721,118 B2, issued on May 13,
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`2014 (Ex. 1001, “the ’118 patent”). Paper 2 (redacted) (“Pet.”); Paper 3
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`(confidential). Luminara Worldwide, LLC, acting under authority of Disney
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`Enterprises, Inc. (collectively, “Patent Owner”), filed a Preliminary
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`Response. Paper 8 (“Prelim. Resp.”). Applying the standard set forth in
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`35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
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`that Petitioner would prevail with respect to at least one challenged claim,
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`we grant Petitioner’s request and institute an inter partes review of all
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`challenged claims.
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`
`
`A. The ʼ118 Patent (Ex. 1001)
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`I. BACKGROUND
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`The ’118 patent relates to “simulating a flickering flame providing
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`kinetic light movement,” such as the simulation of a single candle flame.
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`Ex. 1001, 1:22–26. Figure 1 of the ’118 patent is reproduced below:
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`IPR2016-01785
`Patent 8,721,118 B2
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`Figure 1 illustrates an embodiment of the kinetic flame device, in
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`accordance with the claimed invention, resembling a conventional wax
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`candle. Ex. 1001, 3:65–67, 5:20–25. As shown in Figure 1, coil 101 may be
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`distributed about the central axis of the device to act upon upper and lower
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`pendulum members 111 and 121. Id. at 5:51–56. Specifically, energized
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`coil 101 produces a time-varying magnetic field, which acts upon magnet
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`114 on lower or first-stage pendulum 111 to produce kinetic motion D1Kinetic.
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`Id. at 6:1–3, 6:15–22. First-stage pendulum 111 is “pivotally supported” by
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`support 113, which may be a rod, axle, wire, or the like, and which passes
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`through hole 112 to allow the kinetic motion about the pivot point. Id. at
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`7:14–22. Second stage 105 is similar in construction and operation to the
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`first stage, with second-stage pendulum 121 pivotally mounted on support
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`element 123. Id. at 8:66–9:13. Flame silhouette 125 extends from the top of
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`second-stage pendulum 121 and is formed into a flame-shaped outline. Id.
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`at 9:34–39. Flame silhouette 125 moves with kinetic movement D2Kinetic of
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`IPR2016-01785
`Patent 8,721,118 B2
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`second-stage pendulum 121 and is illuminated by spotlight 107. Id. at
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`
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`10:39–48. Although Figure 1 represents a two-stage embodiment, single-
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`stage-only embodiments are also described, such as depicted in Figure 7. Id.
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`at 15:26–35, Fig. 7.
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`
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`B. Illustrative Claim
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`Of the challenged claims, claim 1 is an independent claim. Claim 1 is
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`illustrative of the claims at issue and is reproduced below:
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`1. An electronic lighting device, comprising:
`a core which comprises an enclosure provided with a
`through hole on a top thereof;
`a flame sheet movably supported or suspended on the
`enclosure, wherein the flame sheet comprises an upper sheet
`which is of a flame-like shape and the upper sheet is configured
`to expose above the top of the enclosure through the through hole
`of the enclosure;
`a light-emitting element installed on a sidewall of the
`enclosure such that an outgoing direction of a light from the
`light-emitting element is inclined upward and passes through the
`through hole of the enclosure, wherein the outgoing direction is
`intersected with a surface of the upper sheet, so that the light from
`the light-emitting element is projected on the surface of the upper
`sheet; and
`a swing mechanism disposed beneath the flame sheet,
`wherein the swing mechanism is configured to apply a force on
`the flame sheet to actuate the flame sheet to sway or swing.
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`Id. at 23:42–61.
`
`
`
`C. Related Proceedings
`
`Petitioner and Patent Owner identify a related litigation in the District
`
`of Minnesota involving the ʼ118 patent and related patents titled, Luminara
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`Worldwide, LLC v. RAZ Imports, Inc., No. 15-cv-03028 (D. Minn.),
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`consolidated with Luminara Worldwide, LLC v. Shenzhen Liown Elecs. Co.,
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`No. 14-cv-03103 (D. Minn.). Pet. 2; Paper 7, 1. Petitioner and Patent
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`IPR2016-01785
`Patent 8,721,118 B2
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`Owner also identify a number of inter partes reviews challenging related
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`
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`patents. Pet. 2; Paper 7, 1–2.
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`D. Level of Skill in the Art
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`Petitioner contends that “[a] person of ordinary skill in the art of the
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`’118 Patent (‘POSITA’) would have a Bachelor’s degree in mechanical
`
`engineering and 1-3 years of mechanical design experience.” Pet. 9. Patent
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`Owner does not dispute this level of ordinary skill at this stage. See Prelim.
`
`Resp. 46. For purposes of this Decision, we adopt Petitioner’s definition of
`
`the person of ordinary skill in the art.
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`
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`E. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
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`construed according to their broadest reasonable interpretation in light of the
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`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
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`that standard, claim terms are generally given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art, in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
`
`Petitioner contends that all claim terms should be afforded their plain
`
`and ordinary meaning pursuant to the broadest reasonable interpretation
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`standard, but states that “Luminara has tried to salvage the instituted claims
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`[in related IPRs] by taking the position that all claims in this patent family
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`require ‘chaotic pivoting.’” Pet. 9. Patent Owner argues that the challenged
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`claims require “chaotic pivoting,” which Patent Owner contends should be
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`construed as “aperiodic, unpredictable behavior arising in a system that is
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`extremely sensitive to initial conditions.” Prelim. Resp. 40–41.
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`IPR2016-01785
`Patent 8,721,118 B2
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`1. chaotic pivoting
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`
`
`Independent claim 1 recites, in relevant part, a flame sheet “moveably
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`supported or suspended on the enclosure” and a swing mechanism
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`“configured to apply a force on the flame sheet to actuate the flame sheet to
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`sway or swing.” Ex. 1001, 23:42–61.
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`Based on a recent decision from the Federal Circuit involving a
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`related patent, Luminara Worldwide, LLC v. Liown Electronics Co., 814
`
`F.3d 1343 (Fed. Cir. 2016), Patent Owner argues that the claims of the ’118
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`patent require “chaotic pivoting,” which “is a key structural characteristic of
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`the claimed movably supported or suspended structure.” Prelim. Resp. 38–
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`39. In Luminara, the Federal Circuit reviewed a related patent (US
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`8,696,166, the “’166 patent”) to determine whether, in a related district court
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`action, Luminara (i.e., Petitioner) had raised a substantial question of
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`validity sufficient to avoid a preliminary injunction. Luminara, 814 F.3d at
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`1351–54. In Luminara, the court held that the ’166 patent’s specification
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`(which is substantially the same in relevant part as the specification of the
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`’118 patent at issue here) “disclaims non-chaotic pivoting” and “devices
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`driven by rhythmic or metronomic patterns,” with “no further requirements
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`on movement.” Id. at 1353–54 (internal quotations omitted). The court
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`further held that Schnuckle ’4551 “undisputedly teaches pivoting in two
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`axes” and “seems” to disclose chaotic movement. Id. at 1354. As a result,
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`the court determined that Petitioner’s anticipation argument based on
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`Schnuckle ’455 raised a substantial question of validity and vacated the
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`district court’s grant of a preliminary injunction against Petitioner. Id.
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`
`1 US 7,261,455 B2 (“Schnuckle ’455”) is a reference in three of the five
`asserted grounds in the Petition here as discussed further below.
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`IPR2016-01785
`Patent 8,721,118 B2
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`For purposes of this Decision, we determine that the disclaimer of
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`non-chaotic pivoting (and, thus, the requirement of “chaotic pivoting”)
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`applied by the Federal Circuit in Luminara applies to the claims of the ’118
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`patent at issue here. Although the term “chaotic” does not appear in any
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`claim of the ’118 patent, the same was true of the ’166 patent in Luminara.
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`The same was also true for the related patent (US 8,534,869) at issue in
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`IPR2015-01657, where both parties as well as the Board agreed that the
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`disclaimer of non-chaotic pivoting applied to the claim term “pivotally
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`mounted” in claim 1 of that patent. See Shenzhen Liown Elecs. Co. v.
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`Disney Enters., Inc., Case IPR2015-01657, slip op. at 9 (PTAB Feb. 7,
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`2017) (Paper 47) (citing Patent Owner Response and Petitioner Reply).
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`Significantly, the portions of the ’166 patent relied upon by the Federal
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`Circuit in applying a disclaimer based on the specification are recited
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`verbatim in the specification of the ’118 patent. Compare Luminara, 814
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`F.3d at 1353 (quoting ’166 patent, 2:13–16, 2:23–25), with Ex. 1001, 2:9–
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`12, 2:19–21. The Federal Circuit’s reasoning, therefore, applies here as
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`well.
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`We have considered the fact that (unlike in the ’166 patent in
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`Luminara) the term “pivot” is not used in the claims of the ’118 patent, but
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`note that claim 1 does require the “moveably supported” flame sheet to
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`“sway or swing.” The specification does not indicate there are any material
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`differences between “pivot” and “sway or swing.” See Ex. 1001, 8:9–10
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`(“[P]endulum 111 swings or pivots freely about support wire 113.”). The
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`Federal Circuit did not base the disclaimer on the plain and ordinary
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`meaning of the claim term “pivot,” but on the description of the invention.
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`See Luminara, 814 F.3d at 1353 (“Being ‘free to pivot’ does not require
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`IPR2016-01785
`Patent 8,721,118 B2
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`chaotic motion.”). Thus, the fact that the ’118 patent claims recite “sway or
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`
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`swing,” as opposed to “pivot,” does not alter our determination that the
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`specification disclaimer of non-chaotic pivoting held to apply in Luminara
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`applies here as well.
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`Patent Owner contends that the term “chaotic” in “chaotic pivoting”
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`means “aperiodic, unpredictable behavior arising in a system that is
`
`extremely sensitive to initial conditions.” Prelim. Resp. 40–41. Petitioner
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`disagrees, contending that, in the ’118 specification, “‘chaotic’ is used
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`interchangeably with ‘unpredictable’ and ‘random,’” but says nothing about
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`sensitivity to initial conditions or non-linear and multi-axis movement.
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`Pet. 13 (citing Ex. 1001, 14:19–22, 19:15–20); id. at 14–15. Rather,
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`Petitioner contends such a “mathematical-chaos construction”—as Petitioner
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`refers to it—improperly uses extrinsic evidence, excludes embodiments from
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`the specification, and misapplies the science. Id. at 13–17.
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`Patent Owner acknowledges that a person of ordinary skill “would not
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`have understood ‘mathematical’ theories” (Prelim. Resp. 44 n.14, 45), but
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`cites to, for example, a mathematical text in asserting that use of the term
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`“unpredictable” in the ’118 specification supports the requirement of being
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`sensitive to initial conditions (id. at 44 (citing Ex. 2005, 7–8)).2
`
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`2 Patent Owner argues that in a related case, Petitioner’s declarant testified
`that a person of ordinary skill “would have understood the ‘broad
`descriptions that are included in the introductory books on chaos [such as
`Cencini (Ex. 1018) and Tel (Ex. 2005)] that do not require in-depth
`analysis.’ (Ex. 2001, 107:2-5.)” Prelim. Resp. 49 (additional text by Patent
`Owner). We note that this appears to be an inaccurate characterization of
`the cited testimony. As Patent Owner appears to acknowledge earlier in the
`Preliminary Response (see Prelim. Resp. 46), Petitioner’s expert was asked
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`Patent 8,721,118 B2
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`We are not persuaded that being sensitive to initial conditions is
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`required for “chaotic” in “chaotic pivoting.” To begin with, the ’118
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`specification does not suggest a requirement for sensitivity to initial
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`conditions. Moreover, as Petitioner’s declarant Dr. Nathan J. Delson points
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`out, the ’319 specification (which is substantially similar to the ’118 patent
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`(see also Ex. 1010 (family tree))3 uses “chaotic” interchangeably with
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`random, and “random motion is independent from prior motion.” Ex. 1002
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`¶ 134. Petitioner’s declarant also points out that claim 3 of the ’319 patent
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`depends from claim 1 and recites “the pendulum member with the flame
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`silhouette element is displaced in a random pattern over time.” Id. ¶ 135;
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`Ex. 2020, 21:47–48. Because claim 1 requires chaotic pivoting of the
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`pendulum member (as non-chaotic pivoting is disclaimed), it follows that
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`such “chaotic pivoting” must encompass the “random pattern” of claim 3.
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`At this stage of the proceeding, the evidence supports that random motion
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`does not require sensitivity to initial conditions. See Ex. 1002 ¶ 134. Based
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`on the current record, we determine that “chaotic pivoting” does not require
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`sensitivity to initial conditions, as argued by Patent Owner.
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`As discussed above, we determine that the Federal Circuit’s
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`determination of specification disclaimer of non-chaotic pivoting applies to
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`whether “a mechanical engineering student with a degree from your
`university [would] be unable to understand the basic concepts of chaos”
`discussed at his deposition. Ex. 2001, 106:22–25. In the cited portion of the
`deposition, Dr. Delson testified that his students “could learn some general
`things about chaos” at the undergraduate level. Id. at 107:2–22 (emphasis
`added). What undergraduate students could learn, however, says little about
`how a person of ordinary skill would have understood “chaotic” in the
`context of the ’118 patent.
`3 U.S. Patent 8,070,319 is the patent at issue in IPR2015-01656.
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`IPR2016-01785
`Patent 8,721,118 B2
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`the ’118 patent; thus, we determine that the required “chaotic pivoting” does
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`
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`not include “devices driven by rhythmic and metronomic patterns.” See
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`Luminara, 814 F.3d at 1353–54. However, we find that “chaotic pivoting”
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`does not require sensitivity to initial conditions. We determine that it is
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`unnecessary to further interpret “chaotic pivoting” at this stage of the
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`proceedings to resolve the issues before us.
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`
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`F. References
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`Petitioner relies on the following references:
`
`1. “Li-2011” (U.S. Patent Application Publication No.
`2012/0134157 A1) (Ex. 1003)
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`2. “Schnuckle ’455” (U.S. Patent No. 7,261,455 B2; issued Aug. 28,
`2007) (Ex. 1003);
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`3. “Harrison” (UK Patent Application GB 2,323,159 A; published
`Sept. 16, 1998) (Ex. 1005);
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`4. “Cornell” (U.S. Patent No. 2,984,032; issued May 16, 1961) (Ex.
`1006); and
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`5. “Li-2010” (Chinese Published Application No. CN101865413A;
`published Oct. 20, 2010) (Ex. 1007) and certified English
`translation of Ex. 1007 (Ex. 1008)).
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`G. Grounds Asserted
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`
`
`Petitioner challenges the patentability of the challenged ʼ118 patent
`
`claims on the following grounds:
`
`
`Reference(s)
`Li-2011
`
`
`
`
`Basis
`35 U.S.C. § 102(e)
`
`
`Claim(s)
`1, 3, 8, and 10
`
`Schnuckle ’455 and Harrison
`
`35 U.S.C. § 103(a)
`
`1 and 8
`
`Schnuckle ’455, Harrison,
`and Cornell
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`35 U.S.C. § 103(a)
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`10
`
`Li-2010
`
`35 U.S.C. § 102(b)
`
`1, 3, and 8
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`
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`10
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`IPR2016-01785
`Patent 8,721,118 B2
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`Reference(s)
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`Schnuckle ’455, Harrison,
`and Li-2011
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`
`
`
`Basis
`35 U.S.C. § 103(a)
`
`
`Claim(s)
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`3 and 10
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`Petitioner also relies on expert testimony from Dr. Delson (Ex. 1002,
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`“Delson Decl.”).
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`II. ANALYSIS
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`A. Priority Date of Challenged Claims
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`The filing date of the ’118 patent is December 10, 2012. Ex. 1001, at
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`[22]. However, the ’118 patent claims priority to earlier applications
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`through continuation and continuation-in-part relationships. Id. at [60], [63],
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`1:6–15. In particular, the ’118 patent is a continuation of its parent
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`application, which is a continuation-in-part of the application for the ’319
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`patent, filed on August 6, 2010. See id. Because the Li-2010 and Li-2011
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`references are dated after the filing date of the application for the ’319
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`patent, their status as prior art depends on whether the challenged claims
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`(i.e., claims 1, 3, 8, and 10) can claim priority to the ’319 patent. See
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`Prelim. Resp. 22–24.
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`To obtain the benefit of the filing date of an earlier application, the
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`claims of the later-filed application must be supported by the written
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`description in the earlier application in sufficient detail that a person of
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`ordinary skill in the art would conclude that the inventor had invented the
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`claimed subject matter as of the earlier application. Anascape, Ltd. v.
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`Nintendo of Am., Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010). However, this
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`standard can be satisfied through the doctrine of inherent disclosure. Yeda
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`Research & Dev. Co. v. Abbott GMBH & Co. KG, 837 F.3d 1341, 1345
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`(Fed. Cir. 2016). Whether the claims of the later patent application are
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`IPR2016-01785
`Patent 8,721,118 B2
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`adequately supported by the earlier disclosure is addressed on a
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`
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`claim-by-claim basis. Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710,
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`719 (Fed. Cir. 2008).
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`Here, Petitioner contends that the ’319 patent’s written description
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`does not provide sufficient support for any of the challenged claims (see Pet.
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`20–32), while Patent Owner disagrees and provides a chart with a proposed
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`mapping of the ’319 patent’s specification to the limitations of each
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`challenged claim (see Prelim. Resp. 25–38).
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`1. Claim 1
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`Petitioner contends none of the priority applications disclose the
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`recited “core which comprises an enclosure with a through hole on a top
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`thereof,” and, for comparison purposes, points out this “top surface” feature
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`in Li-2011.4 Pet. 21. Petitioner acknowledges that, during prosecution, the
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`Examiner determined that at least claim 1 was supported by the ’355 patent
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`(US 7,837,355)––the great-grandparent of the ’118 patent—based on the
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`applicant’s arguments that Figures 1 (reproduced above) and 2 support the
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`claims. See Pet. 22; Ex. 1011, 30 (citing Ex. 1009, 8:23–10:65, Figs. 1 & 2).
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`Both figures and their accompanying written description also are included in
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`the ’319 patent’s specification. Nonetheless, Petitioner argues that housing
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`104 (in Figure 1) does not include a top, let alone a top with a through hole
`
`on it. See Pet. 23. According to Petitioner, “the 355 Patent specification
`
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`4 Petitioner contends the claims of the ’118 patent were copied from
`Li-2011. Pet. 21. Although we acknowledge the parties’ allegations of
`copying and inequitable conduct (see Pet. 6–8; Prelim. Resp. 4–20), the
`legally cognizable issues before us are whether Li-2010 and/or Li-2011 are
`prior art and whether they disclose or teach the specific limitations of the
`’118 patent as Petitioner contends.
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`describes the upper-most portion of housing 104 not as a ‘top’ but rather as
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`
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`‘the upper edges of the sidewall.’” Id. at 24 (quoting Ex. 1009, 8:38–41).
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`Patent Owner contends that “the plain language of claim 1 does not
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`require a top ‘surface’ or lip, [as shown in Li-2011.] . . . Nor does it matter
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`what Li-2011 shows.” Prelim. Resp. 26 (citing Pet. 21). We agree that the
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`focus is on the priority application disclosure, not Li-2011. Moreover, the
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`recited limitation recites “a top,” not a “top surface,” and the top edge of
`
`housing 104 indisputably has “a top” even if only referred to as an upper end
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`in the specification of the ’319 patent. See Koito Mfg. Co. V.
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`Turn-Key-Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004) (noting that the
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`written description requirement does not require an “in haec verba”
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`recitation of the claimed invention, and may be satisfied with words,
`
`structures, figures, diagrams, formulas, etc.). Similarly, we also determine
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`that the opening at the top of housing 104 is “a through hole” even if it, too,
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`is not referred to as such in the specification of the ’319 patent.
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`In addition, Petitioner argues that Figures 9 and 10 of the ’319 patent
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`also fail to provide sufficient support. Specifically, Petitioner contends these
`
`figures disclose outer casing or candle body 950, which includes hole 955,
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`but argues that the outer casing is not a “core,” which means “a ‘central . . .
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`part usu[ally] distinct from the enveloping part.’” Pet. 25–26 (citing Ex.
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`1013). Moreover, Petitioner contends that claim 2 recites the “casing in
`
`which the core is installed,” and, therefore, a person of ordinary skill in the
`
`art would not recognize the outer casing in Figure 9 as part of the core. Id.
`
`at 26 (citing Ex. 1002 ¶¶ 30–31, 37–45). Petitioner also notes that claim 1
`
`requires “the flame sheet to be ‘movably supported or suspended on the
`
`enclosure.’” Id. Petitioner contends that, by contrast, the flame sheet in
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`Patent 8,721,118 B2
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`Figures 9 and 10 is supported on the interior housing (i.e., 102, 104), not on
`
`
`
`outer casing 950. Id.
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`In its Preliminary Response, Patent Owner relies on the interior
`
`housing shown in Figures 9 and 10 (i.e., 102/104), not outer casing/candle
`
`body 950, as disclosing the core that comprises an enclosure. Prelim. Resp.
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`26–27 (citing Ex. 2020, 6:44–45, 16:15–16, Figs. 9 & 10). Figure 9 is
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`reproduced below:
`
`Figure 9 depicts an alternative embodiment with outer casing (or candle
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`
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`body) shown.
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`IPR2016-01785
`Patent 8,721,118 B2
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`
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`We agree with Patent Owner for reasons similar to our reasoning
`
`above with respect to Figures 1 and 2. Specifically, we find that interior
`
`housing 102/104 is a core (including under Petitioner’s definition that a core
`
`be central and distinct from the enveloping part) and it comprises an
`
`enclosure, as claim 1 requires. Moreover, such a mapping does not conflict
`
`with claim 2’s separate requirement for a casing in which the core is
`
`installed, as inner housing 102/104 is installed in, and distinct from, outer
`
`casing 950. This mapping also does not conflict with claim 1’s requirement
`
`that the flame sheet be moveably supported on the enclosure, as “support
`
`element 123 is mounted at each end to the sidewall of housing 104.”
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`Ex. 2020, 16:32–33. Finally, as in Figure 1, housing 102/104 has a through
`
`hole to allow the flame sheet to extend through the top of the enclosure.
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`Accordingly, for these reasons, we determine that Figures 9 and 10 and
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`associated descriptions in the ’319 specification provide support for claim 1
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`of the ’118 patent.
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`We have reviewed Patent Owner’s proposed mapping of the ’319
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`patent to the other limitations of claim 1 (see Prelim. Resp. 26–28), and
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`agree that the ’319 specification supports the priority of claim 1.
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`2. Claim 3
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`Claim 3 depends from claim 1 and further recites a “left cap and a
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`right cap having symmetrical shapes with each other,” “each of the . . . caps
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`having a semicircular notch on top,” and “respective left and right notches
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`on their sidewalls, . . . concaved inwardly and inclined at a certain angle” “in
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`such a way that an installation location for a LED light is formed.”
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`Ex. 1001, 24:3–17. Petitioner contends that none of the priority applications
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`discloses these limitations. Pet. 30–31. With respect to the symmetrical left
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`and right caps, Petitioner argues that the cutaway view of Figure 1 of the
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`
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`’355 patent with housing shown split in half is simply a “cutaway
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`perspective view of an embodiment,” which is a type of drawing used to
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`illustrate the design and does not mean the outer shell is actually split to
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`form symmetrical caps. Id. at 31 & n.7 (quoting Ex. 1001, 3:65–67, and
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`citing Ex. 1002 ¶¶ 59–61).
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`Patent Owner contends that, as shown in annotated Figure 9
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`reproduced below, the “caps making up the enclosure, e.g., 102/104, have
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`male/female connections that mate with corresponding and symmetrical
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`cap.” Prelim. Resp. 30.
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`Annotated Figure 9 depicts male or female cap connectors, according to
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`Patent Owner. Id. As further support for this position, Patent Owner also
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`contends the “’319 patent explains elsewhere that the housing or ‘enclosure,’
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`e.g., 102/104, may be made up of parts ‘mated or coupled together to form a
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`candle or device body with a solitary or unitary appearance.’” Id. at 30–31
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`(quoting Ex. 2020, 8:56–585).
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`At this stage of the proceeding, we find that Patent Owner’s
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`contentions are insufficiently supported. Although we recognize that the
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`highlighted portions of Figure 9 could constitute mating connectors, Patent
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`Owner has not provided any evidence that a person of ordinary skill in the
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`art would have this understanding based solely on that diagram. Patent
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`Owner’s contention regarding the enclosure being comprised of parts mated
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`or coupled together is not persuasive, because the relied-upon quotation
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`refers specifically to mating or coupling separate upper and lower housings
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`102/104 together to form a solitary or unitary appearance. See Ex. 2020,
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`8:53–58. Accordingly, for purposes of this Decision, we are not persuaded
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`that the ’319 specification supports the symmetrical left and right cap
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`limitation of claim 3.
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`3. Claim 8
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`Claim 8 depends from claim 1, and Petitioner contends that claim 8 is
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`not supported for the same reasons as claim 1. Pet. 32. However, we
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`disagree with Petitioner’s contentions regarding claim 1 as discussed above.
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`Moreover, we have reviewed Patent Owner’s proposed mapping of the ’319
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`patent’s disclosure to claim 8 (see Prelim. Resp. 35 (citing, e.g., Ex. 2020,
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`11:29–43, 11:47–48, Fig. 2)), and agree that the ’319 specification supports
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`the priority of claim 8 for the reasons provided by Patent Owner.
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`5 Patent Owner erroneously cites column 10, lines 56–58 for this quotation.
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`4. Claim 10
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`
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`Claim 10 depends from claim 1 and further recites “the light of the
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`light-emitting element is projected onto the depression [on the concaved
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`flame sheet] produces a stereovision effect.” Ex. 1001, 25:8–13. Petitioner
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`contends that claim 10 is not supported because none of the parent
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`applications “contain any mention of a ‘stereovision effect.’” Pet. 32.
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`Patent Owner contends the ’319 patent describes the flame body (of
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`Figure 11) as having a “concave or recessed flame silhouette element to
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`provide a desired . . . light reflection/absorption effect.” Prelim. Resp. 36
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`(citing Ex. 2020, 4:32–35, Fig. 11), 38. Patent Owner also relies on the
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`statement that the concaved flame silhouette is concave or recessed “to
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`provide a more desirable light receiving surface (e.g., to provide a curved
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`portion to receive/reflect light from a light engine/source).” Id. at 36
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`(quoting Ex. 2020, 21:3–8). We agree with Patent Owner.
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`As an initial matter, it is not necessary for the ’319 patent to explicitly
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`use the claim term “stereovision effect.” See Koito, 381 F.3d at 1154.
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`Patent Owner provides evidence that the term “stereovision” refers to the
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`visual perception of objects in three dimensions. Prelim. Resp. 37 (citing
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`Ex. 2021; Ex. 2022). As Patent Owner points out, the flame silhouette is
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`explicitly described as concave (i.e., three-dimensional) to provide a desired
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`reflection absorption effect. Furthermore, because the objective of the ’319
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`patent is to provide a convincing simulation of a natural flame (see id.
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`(quoting Ex. 2020, 1:35–38, 10:14–22 (“flame silhouette element . . . shaped
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`. . . to produce a desirable effect”))), we find that the evidence supports the
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`conclusion that a viewer would perceive the concave flame silhouette in
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`three dimensions consistent with the claim requirement. Accordingly, we
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`
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`agree that the ’319 specification supports the priority of claim 10.
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`5. Li–2010 and Li-2011 as Prior Art
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`For the foregoing reasons, at this stage of the proceeding, Li-2010 and
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`Li-2011 are available as prior art against only claim 3. Neither reference is
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`available as prior art against claims 1, 8, and 10, which have an effective
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`priority date of no later than August 6, 2010.
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`B. Asserted Obviousness Over Schnuckle ’455 and Harrison
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`1. Overview of Schnuckle ’455
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`Schnuckle ’455, which shares a common inventor with the ’118 patent
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`(Pet. 43), describes an imitation candle comprising a simulated candle
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`housing and a simulated flame mounted on a pendulum within the housing.
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`Ex. 1004, Abstract, Figs. 2, 7, 12.
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`Figures 7 and 12 of Schnuckle ’455 are reproduced below:
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`Figures 7 and 12 above illustrate an artificial candle in accordance with the
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`
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`invention of Schnuckle ’455. Ex. 1004, 2:49–50, 2:56–57. As shown in
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`Figure 12, teardrop shaped element 502 resembling a flame is secured to the
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`upper end of channel 500. Id. at 6:47–49. Rod 18 passes through hole 503
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`in channel 500. Id. at 6:49–50. Rod 18 is disposed in grooves 24 and 24’ of
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`ring shaped member 20 of the gimbal mechanism. Id. at 3:55–65, 6:49–52,
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`Figs. 2, 12. Ring shaped member 20 is connected to housing 32 by pins 22
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`and 23, “each pin 22, 23 being fixedly secured to the outer periphery of
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`member 20 and rotatably secured to the inner wall of housing 32.” Id. at
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`3:56–60. “The pins 22 and 23 thus permit the member 20 of the gimbal
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`mechanism to rotate about the longitudinal axes of pins 22 and 23.” Id. at
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`3:60–62.
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`Air from a fan is blown or injected against the components from the
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`bottom of the candle housing to cause the components to move on the
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`gimbal mechanism. Id. at 3:41–45. The Figure 7 embodiment is similar but
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`for the use of electromagnets 316 instead of air to drive the lower end of the
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`pendulum to simulate the movement of the flame blowing in the wind. Id. at
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`5:13–32, 6:53–62.
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`2. Overview of Harrison
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`Harrison describes “[a] simulated flame device [that] uses a flame
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`spaced piece of flexible light reflecting and absorbing material.” Ex. 1005,
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`Abstract. Figure 1 of Harrison is reproduced below:
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`Figure 1 depicts a simulated “candle” in accordance with the invention of
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`Harrison. Id. at 2:22–24; 3:5–6. In Figure 1, simulated candle 2 includes
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`housing 4, fan 10, cable 14, and lamp 18 “mounted to one side of the
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`housing as shown so that the beam crosses the vertical axis of the housing.”
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`Id. at 3:9–4:1. A piece of flexible material 12 at the top of the housing
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`simulates a flame. Id. at 4:8–9. Lamp 18 may be mounted a few
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`centimeters below opening 22 and its position adjusted to strike the material
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`to simulate different flame effects. Id. at Abstract.
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`3. Claims 1 and 8
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) when in the reco