Trials@uspto.gov
`571-272-7822
`
`Paper: 14
`Entered: January 17, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEVITATION ARTS, INC.,
`Petitioner,
`
`v.
`
`FLYTE LLC,
`Patent Owner.
`____________
`
`Case PGR2018-00073
`Patent D799,100 S
`____________
`
`Before JOHN C. KERINS, GRACE KARAFFA OBERMANN, and  
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review of the Challenged Claim
`35 U.S.C. § 324(a)
`
`
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`I. INTRODUCTION
`A. Background
`Levitation Arts, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting post-grant review of the sole design claim for a “levitating light
`bulb and base” as disclosed in U.S. Patent D799,100 S (Ex. 1001,
`“the ’100 Patent”). Flyte LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 13 (“Prelim. Resp.”).
`We have authority to determine whether to institute a post-grant
`review under 35 U.S.C. § 324. Based on the information presented in the
`Petition and the Preliminary Response, we determine that Petitioner fails to
`demonstrate that it is more likely than not that the claim of the ’100 Patent is
`unpatentable. We, thus, deny the Petition and do not institute a post-grant
`review of the challenged claim.
`
`B. Related Matters
`For purposes of this Decision, we accept Petitioner’s statement that
`“[t]here are no pending legal matters involving the ’100 Patent.” Pet. 1.
`Patent Owner did not file mandatory notices as required by our rules or
`oppose Petitioner’s statement of related matters. See 37 C.F.R. § 42.8(a)(2)
`(requiring patent owner to file mandatory notices that identify, among other
`things, related matters, within 21 days of service of a petition); see generally
`Prelim. Resp. (nowhere disputing Petitioner’s statement of related matters).
`
`C. The Claim of the ’100 Patent
`The ’100 Patent relates to and claims an “ornamental design for a
`levitating light bulb and base, as shown and described” in seven
`accompanying figures. Ex. 1001, [57]. Figures 1, 2, and 6, reproduced
`below, are illustrative of the claimed design.
`
`2 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`
`Ex. 1001, Fig. 1. Figure 1 of the ’100 Patent is a line drawing of a front,
`right perspective view of a levitating light bulb and base.
`
`
`Ex. 1001, Fig. 2. Figure 2 of the ’100 Patent is a line drawing of a right
`view of the levitating light bulb and base shown in Figure 1.
`
`3 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`
`Ex. 1001, Fig. 6. Figure 6 of the ’100 Patent is a line drawing of a top view
`of the levitating light bulb and base shown in Figure 1.
`
`D. The Effective Filing Date of the ’100 Patent
`The ’100 Patent issued from an application filed on April 19, 2016.
`Ex. 1001, [22]; Ex. 1020 (file history). The ’100 Patent, however, claims
`priority from a European application filed on November 4, 2015. Ex. 1001,
`[30]; see Ex. 1002 (“the European application”). A key disputed issue is
`whether the challenged claim is entitled to the filing date of the European
`application. Compare Pet. 5–12 (asserting effective filing date of April 19,
`2016), with Prelim. Resp. 9–15 (asserting effective filing date of
`November 4, 2015).
`We adopt Petitioner’s convention and refer to the design depicted in
`the European application as “the 2015 Model.” Pet. 6. The European
`
`4 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`application includes photographs of the 2015 Model. We reproduce below
`three of those photographs (“the priority photographs”).
`
`
`Ex. 1002, Fig. 1.2. Figure 1.2 is a photograph of a front perspective view of
`a levitating light bulb and base reproduced from the European application.
`
`
`Ex. 1002, Fig. 1.1. Figure 1.1 is a photograph of an elevational view of a
`levitating light bulb and base reproduced from the European application.
`
`5 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`
`Ex. 1002, Fig. 1.6. Figure 1.6 is a photograph of a top view of a levitating
`light bulb and base reproduced from the European application.
`In Petitioner’s view, the ’100 Patent line drawings depict “seven
`LEDs”— light emitting diodes—“arranged in a hexagonal horizontal pattern
`with a horizontally oriented LED located at each point of the hexagon and a
`seventh LED vertically oriented at the center of the design.” Pet. 5 (citing
`Ex. 1003 ¶ 35). Petitioner asserts that “[t]he vertical alignment of the seven
`LEDs gives the design, claimed in the ’100 Patent, the appearance of a
`single horizontal lightbulb filament from an elevational view.” Id.
`According to Petitioner, “there is nothing in the 2015 Model that would
`suggest that the Patent Owner was in possession of a base and floating light
`bulb with the horizontally aligned seven LED lighting element[s] claimed in
`the ’100 Patent.” Id. at 7. By way of support, Petitioner advances an
`illustration that depicts, in side-by-side comparison, examples of the patent
`
`6 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`line drawings (on the left) alongside examples of priority photographs (on
`the right). We reproduce that illustration below.
`
`
`
`Pet. 8. The above illustration is a side-by-side comparison of elevational
`and top view line drawings from the ’100 Patent (on the left) and elevational
`and top view photographs from the European application (on the right).
`Petitioner advances a second illustration in support of the allegedly
`priority-defeating difference. Pet. 9. That illustration isolates, enlarges, and
`compares a relatively small segment of a patent line drawing alongside an
`
`7 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`enlarged area within a priority photograph. Id. We reproduce that
`illustration below.
`
`
`Id. The above illustration is a side-by-side comparison of an enlarged line
`drawing of the light bulb filament portion of the claimed design (on the left)
`and an enlarged area of a priority photograph that depicts a lighted bulb
`filament (on the right). We refer to the above illustration as “the enlarged
`filament comparison.”
`Focusing on the enlarged filament comparison, Petitioner submits that
`the “horizontally aligned seven LED lighting element” of the patent line
`drawings (Pet. 7) is not supported by “the part of the bulb that light[s] up” in
`the priority photographs (id. at 9). Patent Owner, for its part, counters that
`the patent line drawings find “literal support in” the priority photographs.
`Prelim. Resp. 9. For reasons that follow, taking account of the information
`presented in the Petition and the Preliminary Response, we find that Patent
`Owner has the better position.
`As Patent Owner correctly points out, “[n]ot just any change in the
`design defeats a priority claim as a matter of law.” Prelim. Resp. 13 (citing
`In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998)). On the contrary, a
`design patent “applicant ‘does not have to describe exactly the subject matter
`
`8 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`claimed” to derive the benefit of the filing date of a priority application, but
`must provide a description that will “clearly allow persons of ordinary skill
`in the art to recognize that [the applicant] invented what is claimed.” In re
`Daniels, 144 F.3d at 1456 (quotation omitted).
`The critical inquiry is whether the European application “reasonably
`conveys to the artisan that the inventor had possession at that time of the
`later claimed subject matter.” Pet. 6; Prelim. Resp. 9 (both parties,
`enunciating the applicable standard by citation to In re Kaslow, 707 F.2d
`1366, 1375 (Fed. Cir. 1983)). We reproduce below three illustrations
`advanced by Patent Owner that compare complete line drawings from
`the ’100 Patent (not isolated or enlarged portions of those drawings) to
`complete priority photographs (not isolated or enlarged areas within the
`photographs).
`
`
`Prelim. Resp. 10. The above illustration compares a front perspective view
`of the levitating light bulb and base design as claimed in the ’100 Patent (on
`the left) with a priority photograph from the European application (on the
`right).
`
`9 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`Id. at 10. The above illustration compares an elevational view of the
`levitating light bulb and base design as claimed in the ’100 Patent (on the
`left) with a priority photograph from the European application (on the right).
`
`
`
`
`Id. at 12. The above illustration compares a top view of the levitating light
`bulb and base design as claimed in the ’100 Patent (on the left) with a
`priority photograph from the European application (on the right).
`In our view, Petitioner’s micro-analysis of an enlarged and isolated
`feature (namely, the light bulb filament) is misplaced. Pet. 9 (enlarged
`filament comparison). The relevant inquiry is whether “the design depicted
`in the original photographs” falls “within a range of reasonableness
`required for providing sufficient written description.” Id. (quoting Skechers
`
`10 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`U.S.A., Inc. v. Nike, Inc., IPR2016-00870 (“IPR870”), Paper 8) (emphasis
`added). As explained below, both parties direct us to prior case decisions
`that support a finding that the priority photographs at issue here fall squarely
`within that “range of reasonableness.” Id.
`The Skechers decision, advanced by Petitioner, is especially
`instructive and, in fact, supports Patent Owner’s position on the priority
`issue. Id. The Board in Skechers determined that patent line drawings
`directed to a shoe sole design disclosed six “hash marks,” where priority
`photographs depicted two “hash marks” on either side of the number “4.0.”
`IPR870, Paper 8, 14–15 (including visual comparison). Further, in Skechers,
`the patent line drawings disclosed “an ‘undivided midsole’” where the
`priority photographs depicted a gap or “flex groove” in the midsole. Id. at
`16 (including visual comparison). The Board found the petitioner’s
`“comparison of certain aspects of the sole design between the photographs
`and line drawings” to be “an excessively critical micro-analysis that any
`observer, when comparing the photograph to the respective line drawing[s],
`would be hard-pressed to discern”—an observation that applies with equal
`force to Petitioner’s enlarged filament comparison in the present case.
`IPR870, Paper 8, 14; see Pet. 9 (citing Ex. 1003 ¶¶ 45, 47–51)1; see also
`supra 8 (reproducing Petitioner’s enlarged filament comparison).
`
`                                                            
`1 The cited paragraphs from Mr. Krumpe’s declaration include additional
`information that is not discussed in the Petition; therefore, we accord it no
`weight. 37 C.F.R. § 42.6(a)(3) (prohibiting a petitioner from incorporating
`by reference information from a supporting document into a petition).
`Alternatively, the additional information provides no stronger support for
`Petitioner’s position than does the information actually discussed in the
`Petition. See, e.g., Ex. 1003 ¶ 44 (red and green annotations to enlarged
`filament comparison), ¶ 47 (enlarged filament comparison from top view
`
`11 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`In Skechers, the Board viewed the differences asserted by the
`petitioner as “almost imperceptible” when compared “to the finally issued
`patent claim and,” further, found that “the corresponding elements shown in
`the underlying parent photograph are essentially mechanical drawing
`inconsistency or due in part to the nature of the view itself.” IPR870,
`Paper 8, 21. In the present case, Petitioner identifies a difference that
`derives, at least in part, from the limitation of capturing in a line drawing the
`reflections and illuminated boundaries observable in a photograph of a
`lighted bulb. See supra 8; Pet. 9. Any variation in the placement of the
`central diode in the bulb filament of the claimed design, as compared to the
`priority photographs, is barely perceptible and does no more to defeat
`priority in this case than did the multiple differences identified in the
`Skechers decision. See IPR870, Paper 8, 13–21 (determining that the
`priority photographs supported patent line drawings notwithstanding
`multiple, discernible differences between the two).
`Patent Owner, for its part, directs us to a district court case that
`involved a barbeque grill, in which an amended patent drawing of the grill
`was supported by priority photographs, notwithstanding differences that
`included an “omitted . . . edge of the center point” and “shelves” that
`“appeared flush” in the patent line drawings but “recessed slightly down and
`inward” in the priority photographs. Prelim. Resp. 14 (citing Weber-Stephen
`Prods. LLC v. Sears Holding Corp., No. 13 C 01686, 2015 U.S. Dist. Lexis
`
`                                                            
`perspective). Mr. Krumpe engages in “an excessively critical micro-analysis
`that any observer” of the actual patent line drawings and priority
`photographs “would be hard-pressed to discern.” IPR870, Paper 8, 14; see,
`e.g., Ex. 1003 ¶¶ 44, 47 (reproducing actual patent figures and priority
`photographs, but relying on enlarged, isolated views of the bulb filament).
`
`12 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`170989 *54 (N.D. Ill. 2015)). Those differences were insufficient to defeat
`priority in the Weber-Stephen case. Id. Similarly, in the present case, the
`relatively minor difference in a single aspect of the overall appearance,
`amplified by Petitioner in the enlarged filament comparison, is insufficient
`to defeat priority. See supra 8 (reproducing enlarged filament comparison).
`Petitioner also directs us to a Federal Circuit decision, arguing that
`“the introduction of a single boundary on a previously disclosed surface
`constituted new matter resulting in [a] priority document failing to support
`the claimed invention.” Pet. 7 (citing In re Owens, 710 F.3d 1362, 1366
`(Fed. Cir. 2013)). The Owens case concerned a bottle design, and the
`Federal Circuit determined that an original line drawing of an “undivided
`center-front panel” on the bottle did not reasonably convey possession of a
`“trapezoidal top portion of that center-front panel,” which the applicant
`sought to claim separately in a continuation application. In re Owens, 710
`F.3d at 1368. We reproduce below figures from the Owens decision that
`illustrate the design differences that were before the Federal Circuit:
`
`
`In re Owens, 710 F.3d at 1363–66. The above figures depict three line
`drawings of a bottle as set forth in the Owens decision. The drawing on the
`left includes a boundary line added by the applicant during prosecution of a
`
`13 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`continuation application; the drawing in the center shows the original
`drawing; and the drawing on the right shows (as annotated by the Federal
`Circuit) new matter in the amended design that was not supported by the
`original drawing. Id. at 1366–67.
`The Owens decision turns on the unremarkable observation that “the
`undivided pentagonal center-front panel” disclosed in the original line
`drawing did not support a claim to “the trapezoidal top portion of that
`center-front panel.” Id. at 1368. Nothing in the Owens decision undercuts a
`finding that the priority photographs at issue in the present case reasonably
`convey possession of the design claimed in the ’100 Patent. Here, all
`elements appear in both the priority document and the patent, unlike in
`Owens, where a new element, i.e., a previously unclaimed trapezoidal top
`portion, was added. As Patent Owner points out, the Owens decision does
`not disturb the test for sufficient disclosure, which turns on “whether the
`disclosure of the application relied upon reasonably conveys to those skilled
`in the art that the inventor had possession of the claimed subject matter as of
`the filing date.” Prelim. Resp. 9 (citations and quotation omitted).
`On this record, the European application “reasonably conveys”
`possession of the design claimed in the ’100 Patent. In re Kaslow, 707 F.2d
`at 1375. We, thus, accord the challenged claim an effective filing date of
`November 4, 2015, the date of filing of the European application. Ex. 1001,
`[30]. That finding materially impacts our analysis of the grounds of
`unpatentability asserted in the Petition, which we address in the next section.
`
`II. ANALYSIS
`Petitioner asserts five grounds of unpatentability against the
`’100 Patent claim, all of which are based on obviousness under 35 U.S.C.
`
`14 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`§ 103(a). Pet. 3–4 (chart of the asserted grounds of unpatentability). We
`organize our analysis into two parts. First, we address the four grounds that
`rely on the Event Page.2 Id. We then turn to the remaining ground, which
`advances Lieberman3 in combination with other references. Id. at 4.
`As an initial matter, we accept Petitioner’s view of the level of
`ordinary skill in the art, which is supported by Mr. Krumpe testimony. Id.
`(citing Ex. 1003 ¶¶ 39–40). We observe, however, that the result in this case
`would not change by applying the somewhat different characterization
`advanced by Patent Owner. Prelim. Resp. 8. We agree with Petitioner,
`moreover, that the challenged claim is interpreted using “the broadest
`reasonable construction in light of the specification of the patent.” 37 C.F.R.
`§ 42.200(b); see Pet. 14 (citation omitted) (referring to the same standard).4
`
`
`
`                                                            
`2 We adopt Petitioner’s convention and refer to Exhibit 1007 as “the Event
`Page.” Pet. 3. Petitioner describes the Event Page as “a public event page
`on Facebook.com that included [an] image of a floating light bulb.” Id. at;
`see id. at vii (identifying Ex. 1007).
`3 We adopt Petitioner’s convention and refer to Exhibit 1009 as
`“Lieberman.” Pet. 4. Petitioner describes the reference as “Content
`retrieved from the Wayback Machine in association with the Wayback
`URLs https://web.archive.org/web/20140513181836/http://bea.st:80/
`sight/lightbulb and https://web.archive.org/web/20140513181836/
`http://bea.st:80/sight/lightbulb/pics/full.01.jpg.” Pet. vii (identifying
`Ex. 1009).
`4 A recent amendment to the rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`
`15 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`A. Grounds Based on the Event Page
`Four of the five grounds of unpatentability advanced in the Petition
`
`assert the Event Page as prior art. Pet. 3–4 (grounds chart). Even if we
`accept that Petitioner shows sufficiently that the Event Page (Exhibit 1007)
`was publicly available to interested persons as of April 9, 2015 (Pet. 17), we
`are not persuaded that the Event Page is prior art to the challenged claim.
`The effective filing date of the challenged claim is November 4, 2015. See
`supra 4–14. As Patent Owner correctly observes, the Event Page “was at
`best published well within the one year window to file a” United States
`patent application. Prelim. Resp. 15. Accordingly, on this record, we find
`that Petitioner fails to show sufficiently that the Event Page is prior art; and,
`therefore, also fails to show sufficiently that the challenged claim is
`unpatentable over the Event Page alone or in combination with other
`references. Pet. 3–4 (grounds chart), 25–38 (argument supporting the
`grounds based on the Event Page); Prelim. Resp. 15 (Patent Owner’s counter
`argument on those grounds).
`
`B. Ground Based on Lieberman
`We next turn to the ground based on Lieberman. Petitioner argues
`that the subject matter of the claimed design would have been obvious over
`Lieberman in combination with three other references. Pet. 38–47. “[T]he
`first step in an obviousness analysis for a design patent,” however, “requires
`a search of the prior art for a primary reference,” which involves a two-step
`analysis: “(1) discern[ing] the correct visual impression created by the
`patented design as a whole and; and (2) determin[ing] whether there is a
`single reference that creates ‘basically the same’ visual impression” as the
`
`16 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`patented design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
`(Fed. Cir. 1996). We address those two steps in turn.
`The line drawings set forth in the ’100 Patent reveal the correct visual
`impression created by the patented design as a whole. Ex. 1001, Figs. 1–7.
`Those figures reveal a design that creates an overall impression of a light
`bulb levitating above a square base, in which the light bulb includes a
`smooth region somewhat larger than the bottom portion of the bulb (aptly
`described by Patent Owner as “a cylindrical cap tapering towards the top of
`the bulb” (Prelim. Resp. 3)) and, further, in which the light bulb is
`transparent, revealing two internal, parallel vertical wires and seven LEDs in
`a hexagonal arrangement forming the light bulb filament. See, e.g., supra 3–
`4 (reproducing Ex. 1001, Figs. 1, 2, 6).
` We next determine whether Petitioner identifies a single reference
`that creates basically the same visual impression as the patented design.
`Durling, 101 F.3d at 103. Such a reference, commonly called a Rosen
`reference, must have “design characteristics” that “are basically the same as
`the claimed design.” Prelim. Resp. 2 (quoting In re Rosen, 673 F.2d 388,
`391 (CCPA 1982)).
`Petitioner asserts that “Lieberman discloses the same basic design as
`Figures 1–7 of the ’100 Patent.” Pet. 38 (citing Ex. 1003 ¶ 84). For support,
`Petitioner relies on the following design disclosed in Lieberman (re-oriented
`for comparison to the claimed design):
`
`
`17 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`
`
`
`Pet. 39; Ex. 1009, 2. The above illustration is a photograph of Lieberman’s
`levitating light bulb and base design. The light bulb is opaque, and any
`“hidden circuitry” within the opaque, levitating light bulb is not visible in
`Lieberman’s design. Ex. 1009, 2.
`
`Even if we accept that Petitioner establishes that Lieberman discloses
`a levitating light bulb and base that was publicly available by June 11, 2011
`(Pet. 21–22), we are not persuaded that Petitioner shows sufficiently that
`Lieberman is a proper Rosen reference. Petitioner presents a side-by-side
`comparison that reveals significant differences between Lieberman’s design
`and the claimed design. We reproduce Petitioner’s comparison below.
`
`18 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`
`
`
`Pet 39. The above illustration presents a side-by-side comparison of
`Lieberman’s design (on the left) and two elevational views of the levitating
`light bulb and base design claimed in the ’100 Patent (in the center and on
`the right).
` “There are no features of a claimed design that are immaterial or not
`important.” Prelim. Resp. 2 (citing In re Blum, 374 F.2d 904, 907 (CCPA
`1967)). The claimed design includes ornamental features that are entirely
`absent or significantly different in the Lieberman design, and which
`contribute to the overall appearance of the design. Specifically, Lieberman’s
`bulb includes a standard threaded end, whereas the claimed design includes
`a bulb having a cylindrical cap portion “near the base and a tapered portion
`near the bulb” that is not threaded. Pet. 28 (citing Ex. 1003 ¶ 71); compare
`Ex. 1001, Fig. 1. Petitioner repeatedly acknowledges that “no threading is
`visible” in the claimed design. Pet. 28 (citing Ex. 1003 ¶¶ 60–63, 71); see
`id. at 15 (“no screw threading is visible on the bulb” in the patented design).
`We agree with Patent Owner that Lieberman’s “threaded end” creates an
`
`19 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`entirely different visual impression compared to the “smooth robust
`cylindrical shape” of the bulb cap in the claimed design, which “lacks all
`threads.” Prelim. Resp. 5
`Further, Lieberman’s design conveys an overall visual impression that
`includes a solid, white light bulb that is opaque—in other words, any
`structures inside Lieberman’s bulb are not visible. Pet. 39 (comparison
`illustration, reproduced above (supra 18)). The claimed design, by contrast,
`creates an overall visual impression that includes a transparent—not
`opaque—light bulb, having two visible internal vertical wires and a filament
`formed by seven LEDs in a hexagonal arrangement, which contribute
`ornamental features that are entirely absent in Lieberman’s design. Id.
`Petitioner argues, however, that Lieberman’s bulb would have
`included internal structures. Pet. 41–42 (citing Ex. 1003 ¶¶ 112–114).
`Lieberman, in fact, describes “hidden circuitry” within the bulb. Ex. 1009,
`2. In that regard, Petitioner advances an illustration, reproduced below, that
`includes a representation of the “Lieberman Bulb” that appears nowhere in
`the Lieberman reference. Pet 42 (citing Ex. 1003 ¶ 112); see Ex. 1009.
`
`
`
`20 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`Ex. 1003 ¶ 112; see Pet. 42 (citing Ex. 1003 ¶ 112). The above illustration is
`a side-by-side comparison of a photograph labeled “Lieberman Bulb” that
`does not appear in the Lieberman reference (on the left) and a line drawing
`of the bulb portion of the levitating bulb and base design claimed in the
`’100 Patent (on the right). In this illustration, Lieberman’s “hidden
`circuitry” is superimposed over Lieberman’s opaque light bulb. Ex. 1009, 2.
`We refer to this illustration as “the overlaid image.” See Ex. 1003 ¶ 112 n.7
`(explaining that the “Lieberman Bulb” depicted in the illustration represents
`“[t]wo images from Lieberman reference overlaid”).
`Petitioner does not explain how or why “hidden” structures (Ex. 1009,
`2) that are not visible in Lieberman’s levitating light bulb and base design
`contribute to the overall visual impression of Lieberman’s design. Pet. 39–
`43. Further, the overlaid image includes disorganized wires and a disorderly
`LED arrangement that does not remotely suggest a hexagon. Ex. 1003
`¶ 112. The claimed design, by contrast, includes two parallel, vertical wires
`and seven LEDs in a hexagonal arrangement in a bulb having a cylindrical
`cap with no threading. The overlaid image, even if somehow representative
`of the overall visual impression of the Lieberman design, does not create
`basically the same visual impression as the patented design.
`Petitioner fails to identify “a single reference that creates ‘basically
`the same’ visual impression” as the patented design. Durling, 101 F.3d at
`103. Given that failure, we do not reach the second step of the obviousness
`inquiry, which involves assessing whether the additional references are so
`related that the appearance of certain ornamental features in one would
`suggest the application of those features to the other. In re Rosen, 673 F.2d
`at 391; In re Glavas, 230 F.2d 447, 450 (CCPA 1956).
`
`21 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`
`Accordingly, on this record, we find that Petitioner fails to show that
`the challenged claim more likely than not is unpatentable over Lieberman in
`combination with the other references asserted in the fifth and final ground
`of unpatentability advanced in the Petition.
`III. CONCLUSION
`Based on the information presented in the Petition and the Preliminary
`
`Response, we hold that Petitioner has not demonstrated adequately that the
`claim of the ’100 Patent is more likely than not unpatentable.
`IV. ORDER
`
`It is
`ORDERED that the Petition is denied and a post-grant review is not
`
`instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`22 
`
`

`

`PGR2018-00073
`Patent D799,100 S
`
`FOR PETITIONER:
`
`Brian Lynch
`Matthew McAndrews
`NIRO MCANDREWS, LLC
`blynch@niro-mcandrews.com
`mmcandrews@niro-mcandrews.com
`
`FOR PATENT OWNER:
`
`Nigamnarayan Acharya
`LEWIS BRISBOIS BISGAARD & SMITH LLP
`Nigam.acharya@lewisbrisbois.com
`
`23 
`
`