Shenzhen Liown Electronics Co., Ltd.v.Luminara Worldwide, LLC

Patent Trial and Appeal Board

Feb 8, 2016

12506460 (P.T.A.B. Feb. 8, 2016)

Trials@uspto.gov Paper 7
571-272-7822 Date Entered: February 8, 2016

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 IPR2015-01655
Patent 7,837,355 B2
____________

Before HOWARD B. BLANKENSHIP, TRENTON A. WARD, and
WILLIAM M. FINK, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Shenzhen Liown Electronics Co., Ltd., filed a Petition
requesting an inter partes review of claims 16–19, 21–23, 26, and 27 of U.S.
Patent No. 7,837,355 B2 (Ex. 1001, “the ’355 patent”). Paper 2 (“Pet.”).
Disney Enterprises, Inc. (“Disney”) is the owner of the ’355 patent and
granted exclusive licensee and real party-in-interest, Luminara Worldwide,
LLC (“Luminara”), authority to conduct this inter partes review on behalf of
Patent Owner. Paper 5, 1 (citing App’x 1 (agreement)). Luminara1 filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). We have statutory
authority under 35 U.S.C. § 314, which provides that an inter partes review
may not be instituted “unless . . . the information presented in the petition
. . . shows that there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition.”
For the reasons that follow, we deny institution of an inter partes
review of claims 16–19, 21–23, 26, and 27 of the ’355 patent.
A. Related Matters
Petitioner and Patent Owner identify the following pending judicial
matters as relating to the ‘355 patent: Luminara Worldwide, LLC v. Liown
Electronics Co., No. 14-cv-03103, United States District Court for the
District of Minnesota, filed August 5, 2014; Luminara Worldwide, LLC v.
Liown Electronics Co., No. 15-1671, United States Court of Appeals for the
Federal Circuit, filed May 21, 2015; RAZ Imports, Inc. v. Luminara
Worldwide, LLC, No. 3-15-cv-02223, United States District Court for the
Northern District of Texas, filed July 3, 2015; and Luminara Worldwide,

1 As Luminara is conducting this inter partes review on behalf of Patent
Owner, we will refer to it as Patent Owner for the sake of convenience.
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LLC v. RAZ Imports, Inc., No. 15-cv-03028, United States District Court for
the District of Minnesota, filed July 10, 2015. Pet. 1–2; Paper 5, 1–2.
Patent Owner also identifies four other inter partes reviews filed by
Petitioner as related to the ’355 patent or related patents: IPR2015-013522
and IPR2015-01658 (U.S. Patent No. 8,696,166); IPR2015-01656 (U.S.
Patent No. 8,070,319); and IPR2015-01657 (U.S. Patent No. 8,534,869).
Paper 5, 2.
B. The ’355 Patent
The ’355 patent relates to “simulating a flickering flame providing
kinetic light movement,” such as the simulation of a single candle flame.
Ex. 1001, 1:15–16. Figure 1 of the ’355 patent is reproduced below:

2 We instituted inter partes review of U.S. Patent No. 8,696,166 in
IPR2015-01352 on December 16, 2015.
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Figure 1 illustrates an embodiment of the kinetic flame device, in
accordance with the claimed invention, resembling a conventional wax
candle. Ex. 1001, 3:57–59, 4:44–49. As shown in Figure 1, a single
coil 101 may be distributed about the central axis of the device to act upon
the pendulum members 111 and 121. Id. at 5:13–20. Specifically,
energized coil 101 produces a time-varying magnetic field, which acts upon
magnet 114 on lower or first-stage pendulum 111 to produce kinetic motion
D1Kinetic. Id. at 5:37–51, 5:61–6:6. “Pendulum support wire 13 is attached to
the walls of housing 102 for support at the locations selected to place
pendulum 111 generally in the center of the hollow space defined by walls
of housing 102 so that support wire 113 spans a diameter when housing 102
has a circular cross section.” Id. at 7:20–24. Hole 112 in pendulum
member 111 is sufficiently larger than the diameter of support wire 113 such
that pendulum 111 swings or pivots freely about support wire 113. Id. 7:31–
34. Pendulum member 111 moves freely within housing 102 about the pivot
location defined by the apex or valley in support wire 113. Id. 7:44–48. The
support element is mounted at each end to the side wall of the housing 104,
such as at the upper edges of the sidewall at opposite locations to stretch
across the space or void defined within the sidewall of the housing 104. Id.
8:38–41.
C. Illustrative Claim
Claims 16 and 22 are independent claims. Claims 17–19 and 21
depend from claim 16, and claims 23 and 26–27 directly depend from
independent claim 22. Independent Claims 16 and 22 are reproduced below
with certain portions emphasized.

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16. A flame simulator, comprising:
an electrically driven motion engine including a coupling
member, wherein the motion engine generates chaotic motion at
the coupling member in at least two dimensions;
a movable flame body magnetically coupled to the
coupling member such that the chaotic motion of the coupling
member is transferred to the movable flame body, and
a light projector emitting a spot of light towards the flame
body,
wherein the motion engine further comprises:
a hollow housing a sidewall defining a first end and a
second end;
an electromagnetic coil proximate to the first end of the
housing;
a drive circuit coupled to the coil and providing a signal to
the drive coil to produce a time-varying magnetic field in a
vicinity of the drive coil;
a support wire spanning across the housing and affixed to
the housing sidewall wherein the support wire is V-shaped so
that a vertex of the support wire is near a midpoint of the
housing, wherein the support wire is located at a position along
the sidewall that is closer to the second end than to the first end;
and
a pendulum having a hole, wherein the support wire passes
through the hole allowing the pendulum to pivot about the hole
on the support wire.

22. A flame simulator, comprising:
an electrically driven motion engine including a coupling
member, wherein the motion engine generates chaotic motion at
the coupling ember in at least two dimensions;
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a movable flame body magnetically coupled to the
coupling member such that the chaotic motion of the coupling
member is transferred to the movable flame body;
a light projector emitting a spot of light towards the flame
body;
a hollow housing having a sidewall defining a first end and
a second end; and
a flame support wire spanning across the housing and
affixed to the housing sidewall wherein the support wire is V-
shaped so that a vertex of the support wire is near a midpoint of
the housing, wherein the support wire is located at a position
along the sidewall that is closer to the second end than to the first
end,
wherein the flame body comprises a pendulum having a
hole, wherein the flame support wire passes through the hole
allowing the pendulum to pivot about the hole on the flame
support wire, the pendulum having a first end proximate to the
first end of the housing and a second end proximate to the second
end of the housing.

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D. Asserted Grounds of Unpatentability
Petitioner asserts that claims 16–19, 21–23, 26, and 27 of the ’355
patent are unpatentable based on the following grounds:
Reference(s) Basis Challenged Claim(s)
Schnuckle ’4553 and Meeker4 § 103(a) 16–19, 22, 23, 26, and 27
Schnuckle ’455, Meeker, and
Encarta5 § 103(a) 21
Schnuckle ’455, Meeker, and
Nagashima6 § 103(a)
16–19, 22, 23, 26, and
27
Schnuckle ’455, Meeker, Nagashima,
and Encarta § 103(a) 21
Schnuckle ’455, Helmer,7 Long,8 and
Hartstock9 § 103(a)
16–19, 22, 23, 26, and
27
Schnuckle ’455, Helmer, Long, and
Hartstock, and Encarta § 102(b) 21

II. DISCUSSION
A. Alleged Statutory Bar
Patent Owner alleges Petitioner was served with a complaint alleging
infringement of the ’355 patent on December 3, 2012, more than one year
prior to the filing of the Petition. Prelim. Resp. 55. As such, Patent Owner

3 U.S. Patent No. 7,261,455, issued Aug. 28, 2007 (Ex. 1003) (“Schnuckle
’455).
4 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1004) (“Meeker”).
5 Encarta, World English Dictionary (St. Martin’s Press 1999) (Ex. 1006)
(“Encarta”).
6 NAGASHIMA AND BABA, INTRODUCTION TO CHAOS, PHYSICS AND
MATHEMATICS OF CHAOTIC PHENOMENA (1992) (Ex. 1005) (“Nagashima”).
7 U.S. Patent No. 817,772, issued Apr. 17, 1906 (Ex. 1009) (“Helmer”).
8 U.S. Patent No. 6,781,270 B2, issued Aug. 24, 2004 (Ex. 1007) (“Long”).
9 U.S. Patent No. 3,425,157, issued Feb. 4, 1969 (Ex. 1008) (“Hartsock”).
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contends the instant Petition is time-barred for failure by 35 U.S.C. § 315(b),
which states inter partes review “may not be instituted if the petition
requesting the proceeding is filed more than 1 year after the date on which
the petitioner . . . is served with complaint.” See id.
Although conceding the parties agreed to dismiss the 2012 civil action
without prejudice, Patent Owner argues the statute makes no exception for
“such an event.” Prelim. Resp. 55. Patent Owner notes that in some
contexts dismissal without prejudice “‘renders the proceedings a nullity’ and
‘leaves the parties as though the action had never been brought.’” Id. at 56
(citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville
Assocs. Ltd. P’ship v. Barram, 165 F.3d 1360, 1364 (Fed. Cir. 1999)).
However, Patent Owner argues, this general rule has exceptions, such as the
“two dismissal rule” or the fact that a court may impose sanctions for a case
even though voluntarily dismissed without prejudice. Id. (citation omitted).
Patent Owner also analogizes the voluntary dismissal here, with the
facts of Flowers v. Secretary of Department of Health & Human Services,
49 F.3d 1558 (Fed. Cir. 1995). Prelim. Resp. 57. In Flowers, according to
Patent Owner, the plaintiff filed her Court of Federal Claims (“CFC”) action,
during her co-pending state court action, but, after learning that the Vaccine
Act prohibited parallel proceedings in state court and the CFC, voluntarily
dismissed her state court action. Id. (citing Flowers, 49 F.3d at 1559, 1562).
Despite this, according to Patent Owner, the Federal Circuit held the CFC
was required by the statute to dismiss for lack of jurisdiction. Id. As with
the Vaccine Act’s statutory bar, Patent Owner argues, the fact of the
voluntary dismissal without prejudice of the 2012 infringement suit at issue
here does not affect the application of the § 315(b) bar. Id.
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The Board’s recent precedential opinion in LG Electronics, Inc. v.
Mondis Technology Ltd., Case IPR2015-00937 (PTAB Sept. 17, 2015)
(Paper 8) addresses Patent Owner’s argument. In LG, the Board determined
that a proceeding was time-barred even though the prior case (in which a
complaint was served more than one year prior to the Petition) was
dismissed with prejudice in part and without prejudice in part. Id. at 6. The
Board found that such a dismissal did not leave the parties in the position
that they would have been in had the prior complaint never been brought at
least as to certain accused products. Id. Therefore, the Board found the
exception to prior complaints, later dismissed without prejudice, did not
apply. Id.
Here, Patent Owner concedes the 2012 case was dismissed without
prejudice and does not allege any circumstances that would tend to show the
parties are not in the position they were in had the complaint never been
served. Consequently, the facts here are similar in pertinent part to Oracle
Corp. v. Click-to-Call Technologies, L.P., Case IPR2013-00312, slip op. at 4
(PTAB Dec. 18, 2013) (Paper 40) and Macauto, U.S.A. v. BOS GmbH &
KG, Case IPR2012-00004, slip op. at 15–16 (PTAB Jan. 24, 2013) (Paper
18), in which the Board, analyzing the Federal Circuit’s opinions in Graves
and Bonneville, held that dismissal without prejudice rendered the prior case
a nullity for purposes of § 315(b). Patent Owner does not direct us to
decisions by the Board, nor are we aware of any, in which a case was time
barred under the facts alleged here.
We have reviewed the Federal Circuit’s decision in Flowers and
determine that it does not compel a different result. Although Patent Owner
summarizes some of the relevant facts of Flowers, we point out one
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important difference not addressed by Patent Owner. As explained in
Flowers, the Vaccine Act’s bar, as originally enacted, specifically permitted
voluntary withdrawal of a parallel state court proceeding at any time before
judgment to avoid the effect of a bar on filing a CFC petition:
(B) If a plaintiff who on the effective date of this subtitle had
pending a civil action for damages for a vaccine-related injury or
death does not withdraw the action under subparagraph (A), such
person may not file a petition under subsection (b) of this section
for such injury or death.

49 F.3d at 1560 (quoting 42 U.S.C. §§ 300aa–11(a)(5)(B) (1988)). The
Federal Circuit noted, however, that Congress revised the statute in 1989 and
deleted the exception (underlined above) permitting withdrawal of the
parallel proceeding. Id. at 1560–61 (citing 42 U.S.C. §§ 300aa–11(a)(5)
(Supp. V. 1989)). The Federal Circuit reasoned that, because the 1989
amendment expanded the exclusionary scope of paragraph (B) to encompass
all cases involving a co-pending civil action, “one could reasonably
conclude that Congress ultimately thought it necessary to address co-
pendency concerns beyond the single class of pre-enactment cases.” Id. at
1561.
By contrast, Patent Owner does not direct us to any such indication of
legislative intent that the § 315(b) bar was designed to apply to
circumstances in which prior complaints were voluntarily dismissed without
prejudice, as it apparently was here. In the absence of such legislative
intent, we are not persuaded that the result in Flowers should be applied to
§ 315(b) in contravention to the Board’s decisions discussed above. We
therefore decline to apply the statutory bar based on the 2012 complaint
served on Petitioner and later dismissed without prejudice.
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B. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015) (“Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO
regulation”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 2016
WL 205946 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner contends that all claim terms other than “coupling
member,” recited in claims 16 and 22, should be construed to have their
ordinary and plain meaning in light of the specification of the ’355 patent
pursuant to the broadest reasonable interpretation standard. Pet. 12.
However, only those terms that are in controversy need to be construed, and
only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because we
decline to institute inter partes review for reasons discussed below and
unrelated to construction of “coupling member,” it is unnecessary for us to
construe this term.
Claim 16 recites:
a support wire spanning across the housing and affixed to the
housing sidewall wherein the support wire is V-shaped so that a
vertex of the support wire is near a midpoint of the housing
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Ex. 1001, 16:64–67. Patent Owner argues that this recitation in claim 16,
and the similar recitation in claim 22, would have been understood by a
person of ordinary skill in the art to require that a single support wire run all
the way across the interior of the housing, that the support wire be fixedly
attached to both sides of the housing side walls, and that the vertex of the v-
shape be in the middle of the portion of the wire that spans across the
housing. Prelim. Resp. 22.
Furthermore, Patent Owner argues that Figure 1 of ’355 patent
illustrates a single support wire that runs all the way across the flame
element housing, attaching to the sidewalls, and forming a v-shape with its
vertex in the middle of the wire. An excerpt of Figure 1 is reproduced
below.

Ex. 1001, Fig. 1. Patent Owner argues that the specification of the
’355 patent states that “support element 123 is mounted at each end to the
sidewall of the housing 104” and that the support wire is affixed to the
sidewall “at opposite locations to stretch across the space or void defined
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within the sidewall of housing 104.” Prelim. Resp. 22 (quoting Ex. 1001,
8:38–41). Furthermore, Patent Owner notes that the specification of the
’355 patent characterizes the attachment of the support wire to the housing
as being “tethered [at its] ends.” Prelim. Resp. 22–23 (quoting Ex. 1001,
3:31–36).
Additionally, Patent Owner argues that the “V-shape” requirement for
the support wire is disclosed as helping to control the position of the flame
body such that the pendulum moves freely about the pivot location defined
by the apex, preventing mechanical interaction with the sidewalls so that the
flame effect is smoother. Prelim. Resp. 23 (citing Ex. 1001, 7:24–28, 44–48,
55–59).
Our interpretation of the claim terms begins with the language of the
claim. See Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1299 (Fed.
Cir. 2015). Claims 16 and 22 require a “support wire spanning across the
housing and affixed to the housing sidewall” (emphasis added). Patent
Owner argues that this requires the support wire to run all the way across the
interior of the housing and that the support wire be fixedly attached to both
sides of the housing side walls. For purposes of this decision, we agree. We
are persuaded for purposes of this decision that claims 16 and 22 require the
support wire to span across the housing and, thus, to run all the way across
the housing. Furthermore, we are persuaded for purposes of this decision
that claims 16 and 22 require the support wire to be “affixed” to the housing
sidewall and, thus, to be fixedly attached to the housing.
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C. Alleged Anticipation of Claims 16–19, 22, 23, 26, and 27
by Schnuckle ’455 and Meeker
Petitioner contends claims 16–19, 22, 23, 26, and 27 are rendered
obvious by Schnuckle ’455 and Meeker. Pet. 15–33. Petitioner also relies
upon its proffered declarant to support its contentions. Patent Owner
counters that the proposed combination does not render the challenged
claims obvious. Prelim. Resp. 25–29. We begin our discussion with a brief
summary of Schnuckle ’455 and Meeker and then address the parties’
contentions.
1. Schnuckle ’455 (Ex. 1003)
Schnuckle ’455, which shares a common inventor with the ’355 patent
(Prelim. Resp. 1–2), describes an imitation candle comprising a simulated
candle housing and a simulated flame mounted on a pendulum within the
housing. Ex. 1003, Abstract, Figs. 2, 7, 12.
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 invention of Schnuckle ’455. Ex. 1003, 2:49–50, 2:56–57. As
shown in Figure 12, a teardrop shaped element 502 resembling a flame is
secured to the upper end of channel 500. Id. at 6:47–49. A rod 18 passes
through hole 503 in channel 500. Id. at 6:49–50. Rod 18 is disposed in
grooves 24 and 24’ of ring shaped member 20 of the gimbal mechanism. Id.
at 3:55–65, 6:49–52, Figs. 2, 12. The ring shaped member 20 is connected
to housing 32 by a pair of pins, 22 and 23, “each pin 22, 23 being fixedly
secured to the outer periphery of member 20 and rotatably secured to the
inner wall of housing 32.” Id. at 3:56–60. “The pins 22 and 23 thus permit
the member 20 of the gimbal mechanism to rotate about the longitudinal
axes of the pins 22 and 23.” Id. at 3:60–62.
Air from a fan is blown or injected against the components from the
bottom of the candle housing to cause the components to move on the
gimbal mechanism. Id. at 3:41–45. The Figure 7 embodiment is similar but
for the use of electromagnets 316 instead of air to drive the lower end of the
pendulum to simulate the movement of the flame blowing in the wind. Id. at
5:13–32, 6:53–62.
2. Meeker (Ex. 1004)
Meeker describes a toy that includes a jointed figure 7 made of sheet
metal and a supporting arm 6 from which the figure is suspended. Ex. 1004,
1:27–29, 1:42–46, 1:51–60.
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Figures 1 and 2 are reproduced below:

Figures 1 and 2 represent the dancing toy invention of Meeker. As
shown in Figure 2, the toy figure rests in the downwardly curved portion 20
of the supporting arm 6, which protrudes through a hole 19 in the body. Ex.
1004, 1:67–75. This allows the body to swing transversely and
longitudinally while remaining in place. Id. Turning crank 31 imparts
motion upon “vibratory platform 21,” transmitting motion to the toy figure.
Id. at 1:81–2:13.
3. Analysis
Petitioner provides a proposed mapping of Schnuckle ’455 and
Meeker to independent claim 16 of the ’355 patent. Pet. 15–25. Petitioner
contends Schnuckle ’455 teaches most of the limitations of claim 16, but
relies on Meeker in combination with Schnuckle ’455 as teaching or
suggesting the following limitation of claim 16:
a support wire spanning across the housing and affixed to the
housing sidewall wherein the support wire is V-shaped so that a
vertex of the support wire is near a midpoint of the housing
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Pet. 23–25 (quoting Ex. 1001, 16:44–17:5). With respect to the above claim
limitation, Petitioner contends that Schnuckle ’455 discloses a support
element in the form of gimbals and associated pins and rods that are attached
to the housing sidewall. Pet. 23. Specifically, Petitioner argues that
Schnuckle ’455 discloses a rod 18 that passes through hole 503 in the
pendulum’s body to allow the pendulum to pivot. Pet. 24 (citing Ex. 1003,
3:63–67, Fig. 12). Furthermore, Petitioner argues that Meeker discloses a
supporting wire with a low spot where the body of the dancing figure rests.
Pet. 24 (citing Ex. 1004, 1:67–75, Figs. 1, 2). Petitioner argues that a person
of ordinary skill in the art would have been guided by the teachings in
Schnuckle ’455 and Meeker to combine them in designing a pendulum-
based imitation candle device that produces flickering flame effects. Pet. 25.
More particularly, Petitioner argues that the combination would “include a
support wire with a V-shaped section, as taught or suggested by Meeker, to
replace rigid rod 18 . . . of Schnuckle 455 (Fig. 12), with its ends attached to
walls of the imitation candle housing.” Pet. 25.
Patent Owner disputes the Petitioner’s contention that Schnuckle ’455
and Meeker teach or suggest the claimed support wire. Prelim. Resp. 33–36.
Specifically, Patent Owner argues Schnuckle ’455 does not teach a support
wire affixed to the housing sidewall, but rather an arrangement of pins 22,
23, which are “rotatably secured to the inner wall of the housing” allowing
the pendulum to rotate. Id. at 34 (citing Ex. 1003, 3:56–62). Patent Owner
argues that neither rod 18 nor pins 22 and 23 of Schnuckle ’455 span all the
way “across the housing,” as recited in claim 16. Id. at 34. Patent Owner
also argues that neither pins 22 and 23 nor rod 18 in Schnuckle ’455 are
“affixed to the housing sidewall,” as recited in claim 16. Id. Furthermore,
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Patent Owner argues that the gimbal structure disclosed in Schnuckle ’455 is
a complex arrangement of rings and pins, none of which is a single support
member spanning all way across the housing and affixed to the housing wall.
Id.
We are persuaded by Patent Owner’s argument. Petitioner and its
declarant Dr. Delson do not sufficiently explain how Schnuckle ’455 is to be
modified to obtain the claimed support wire. Analyzing the specific
combination proposed by Petitioner, we note that Petitioner proposes that the
Meeker support wire “replace the rigid rod 18 . . . of Schnuckle ’455 (Fig.
12), with its ends attached to the walls of the imitation candle housing.”
Pet. 25. As shown in Figure 12 of Schnuckle ’455 below, however, rod 18
neither spans the inside of the housing, nor is it affixed to the housing
sidewall.
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As shown above in Figure 12 and disclosed in Schnuckle ’455, rod 18 is not
even affixed to ring-shaped member 20, but sits in grooves 24 and 24’. See
Ex. 1003, 3:63–65 (“rod 18 disposed in grooves 24, 24’”), 6:49–52, Fig. 12.
Dr. Delson confirms this understanding in his opinion that substituting
Meeker’s support wire “would have eliminate[d] the risk of rod 18 and
channel 500 becoming dislodged by slipping off the grooves 24 in the
gimbal’s ring-shaped member 20.” Ex. 1002 ¶ 73. This acknowledgment
by Petitioner and its declarant Dr. Delson that rod 18 could become
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dislodged is a concession that it is not “affixed” to ring-shaped member 24.
Additionally, Schnuckle ’455 expressly acknowledges that pins 22 and 23
are also not “affixed to the housing sidewall,” as recited in claim 16.
Specifically, Schnuckle ’455 states that “each pin 22, 23 being fixedly
secured to the outer periphery of member 20 and rotatably secured to the
inner wall of housing 32.” Id. at 3:56–60. Thus, Schnuckle ’455 expressly
distinguishes between being rotatably secured and fixedly secured (i.e.,
fixedly attached) and discloses that pins 22 and 23 are rotatably secured to
the housing sidewall rather than fixedly secured. See id. As stated above,
for purposes of this decision we construe claim 16 to require the support
wire to be “affixed” to the housing sidewall and, thus, to be fixedly attached
to the housing.
Neither Petitioner nor its declarant explains how the proposed
pendulum member will be able to rotate in accordance with its operation if it
was “affixed.” Consequently, Petitioner’s combination is deficient in
regards to the recitation in claim 16 regarding the support wire.
Claim 22 provides a similar limitations to those in claim 16 regarding
the support wire. Petitioner’s proposed ground of obviousness for claim 22
relies upon a combination of the same teachings from Schnuckle ’455 and
Meeker. In view of the foregoing, we are similarly unpersuaded by
Petitioner’s proposed combination of Schnuckle ’455 and Meeker and
determine Petitioner’s proposed combination is deficient in regards to the
recitation in claim 22 regarding the support wire.
Accordingly, based on the record before us, we determine that
Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
challenge that independent claims 16 and 22, and claims 17–19, 23, 26, and
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27 dependent therefrom, would have been obvious in view of
Schnuckle ’455 and Meeker.
D. Alleged Obviousness of Claim 21
over Schnuckle ’455, Meeker, and Encarta
Petitioner contends claim 21, which depends directly from claim 16, is
obvious over Schnuckle ’455, Meeker, and Encarta. Pet. 33–34; see also
Ex. 1002 ¶ 89. Specifically, Petitioner relies Encarta for its disclosure with
respect to an electromagnet in relation to the claim 21 recitation of a
“magnetic core positioned to shape the electromagnetic field produced by
the coil.” Pet. 33 (citing Ex. 1006, 577).
Petitioner does not rely upon Encarta for any teachings regarding the
claimed support wire; thus, we determine that the addition of Encarta fails to
overcome the identified deficiencies in the combination of Schnuckle ’455
and Meeker with respect to independent claim 16, from which claim 21
depends. Accordingly, based on the record before us, we determine that
Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
challenge that claim 21 would have been obvious in view of Schnuckle ’455,
Meeker, and Encarta.
E. Alleged Obviousness of Claims 16–19, 22, 23, 26, and 27
over Schnuckle ’455, Meeker, and Nagashima
Petitioner contends claims 16–19, 22, 23, 26, and 27 are obvious over
Schnuckle ’455, Meeker, and Nagashima. Pet. 34–35; see also Ex. 1002 ¶¶
90–93. Specifically, Petitioner relies on the combination of Schnuckle ’455
and Meeker to disclose the limitations of claims 16 and 22, as discussed
above. Pet. 34. In addition, Petitioner relies on Nagashima, a textbook on
chaos and chaotic motions (Ex. 1005, 1–2, Fig. 1.1, and Back Cover), as
disclosing how to generate a “chaotic data pattern . . . and store the data
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pattern in memory 408 of Schnuckle 455.” Pet. 35. Petitioner relies on
Nagashima for teachings unrelated to the claimed support wire; thus, the
addition of Nagashima fails to overcome the identified deficiencies in the
combination of Schnuckle ’455 and Meeker with respect to claims 16 and
22. Accordingly, based on the record before us, we determine that Petitioner
fails to demonstrate a reasonable likelihood of prevailing in its challenge that
claims 16–19, 22, 23, 26, and 27 would have been obvious in view of
Schnuckle ’455, Meeker, and Nagashima.
F. Alleged Obviousness of Claim 21 over Schnuckle ’455, Meeker, and
Nagashima, and Encarta
Petitioner contends claim 21, which depends directly from claim 16, is
obvious over Schnuckle ’455, Meeker, Nagashima, and Encarta. Pet. 35–36.
As above, Petitioner relies Encarta for its disclosure with respect to an
electromagnet in relation to the claim 21 recitation of a “magnetic core
positioned to shape the electromagnetic field produced by the coil.” Pet. 36.
In view of the foregoing and based on the record before us, we determine
that Petitioner fails to demonstrate a reasonable likelihood of prevailing in
its challenge that claim 21 would have been obvious in view of
Schnuckle ’455, Meeker, Nagashima, and Encarta.
G. Alleged Obviousness of Claims 16–19, 22, 23, 26, and 27
over Schnuckle ’455, Helmer, Long, and Hartstock
Petitioner contends claims 16–19, 22, 23, 26, and 27 are obvious over
Schnuckle ’455, Long, Hartsock, and Helmer. Pet. 43–59; see also Ex. 1002
¶¶ 94–135. Patent Owner counters that the combination of Schnuckle ’455,
Long, Hartsock, and Helmer does not render the challenged claims obvious.
Prelim. Resp. 29–31, 33–36. Similar to the arguments we agreed with above
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with respect to the combinations based on Schnuckle ’455 and Meeker,
Patent Owner contends the combination of Schnuckle ’455, Long, Hartsock,
and Helmer also fails to teach or suggest the claimed support wire. Id. at 36.
Because Petitioner relies on Helmer in particular for this limitation, we
begin our discussion with a brief summary of Helmer and then address the
parties’ contentions.
1. Helmer (Ex. 1009)
Helmer describes a toy that includes a jointed figure (e.g., a dancer or
acrobat) and a structure for supporting the jointed figure but not interfering
with its free movement. Ex. 1006, 1:8–18. Figures 1 and 4 of Helmer are
reproduced below:

Figure 1 of Helmer is an embodiment of the dancing toy invention.
Figure 4 provides a detailed view of the spring support. In Helmer, the
crank 12 is turned to cause movement of jointed figure 1, which freely
oscillates, but is retained in place upon the horizontal portion 4 of
spring-wire 2. Ex. 1006, 1:53–69, Fig. 4.
2. Analysis
Petitioner contends that, similar to Meeker, Helmer describes support
wire 2 that includes a horizontally extended low spot that is suitable for
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pivotally supporting a body. Pet. 49 (citing Ex. 1009, 1:45–52, Figs. 1, 4
(reproduced above)). Petitioner contends a person of ordinary skill in the art
would have used support wire 2 of Helmer to replace rod 18 and the
associated gimbal and pins, and passing through hole 503 to support the
pendulum member, with its ends attached to the walls of the housing.
Pet. 49–50. Patent Owner contends this combination fails to meet the
“support wire spanning across the housing and affixed to the housing
sidewall” limitation as required by claims 16 and 22 for the same reason as
discussed with respect to Meeker. Prelim. Resp. 37 (Petitioner’s arguments
“parallel those made with respect to the combination of Schnuckle and
Meeker,” and “the deficiencies of Helmer correspond with the deficiencies
in Meeker”).
We are persuaded by Patent Owner’s argument. Petitioner and its
declarant Dr. Delson do not sufficiently explain how Schnuckle ’455 is to be
modified to obtain the claimed support wire. Analyzing the specific
combination proposed by Petitioner, we note that Petitioner proposes that the
Helmer support wire “replace the rigid rod 18 and the associated gimbal and
pins in the single-channel embodiment of Schnuckle ’455 (Fig. 12, or Fig.
11), and passes through the hole 503 in the pendulum-like channel 500.”
Pet. 50. Contrary to Petitioner’s proposal, rod 18 in Schnuckle ’455 neither
spans the inside of the housing, nor is it affixed to the housing sidewall. As
shown above in Figure 12 of Schnuckle ’455, rod 18 is not even affixed to
ring-shaped member 20, but sits in grooves 24 and 24’. See Ex. 1003, 3:63–
65, 6:49–52, Fig. 12. Dr. Delson confirms this understanding in his opinion
that substituting Helmer’s support wire would “eliminate the risk that rod 18
(and thus channel 500) could become dislodged by slipping off the grooves
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24 in the ring-shaped member 20.” Ex. 1002 ¶ 132. This acknowledgment
by Petitioner and its declarant Dr. Delson that rod 18 could become
dislodged is a concession that it is not “affixed” to ring-shaped member 20.
Additionally, Schnuckle ’455 expressly acknowledges that pins 22 and 23
are not “affixed to the housing sidewall,” as recited in claim 16.
Specifically, Schnuckle ’455 states that “each pin 22, 23 being fixedly
secured to the outer periphery of member 20 and rotatably secured to the
inner wall of housing 32.” Id. at 3:56–60. Thus, Schnuckle ’455 expressly
distinguishes between being rotatably secured and fixedly secured (i.e.,
fixedly attached) and discloses that pins 22 and 23 are rotatably secured to
the housing sidewall rather than fixedly secured. See id. As stated above,
for purposes of this decision we construe claims 16 and 22 to require the
support wire to be “affixed” to the housing sidewall and, thus, to be fixedly
attached to the housing. The combination of Schnuckle ’455 and Helmer
proposed by Petitioner fails to meet this requirement. Consequently,
Petitioner’s combination of Schnuckle ’455 and Helmer is deficient in
regards to the recitation in claims 16 and 22 regarding the support wire.
Accordingly, based on the record before us, we determine that
Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
challenge that independent claims 16 and 22, and claims 17–19, 23, 26, and
27 dependent therefrom, would have been obvious in view of Schnuckle
’455, Helmer, Long, and Hartsock.
H. Alleged Obviousness of Claim 21 over Schnuckle ’455,
Helmer, Long, Hartstock, and Encarta
Petitioner contends claim 21, which depends directly from claim 16, is
obvious over Schnuckle ’455, Helmer, Long, Hartsock, and Encarta.
Pet. 59–60. Specifically, Petitioner relies on Encarta for its disclosure with
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respect to an electromagnet in relation to the claim 21 recitation of a
“magnetic core positioned to shape the electromagnetic field produced by
the coil.” Pet. 59 (citing Ex. 1006, 577).
Petitioner does not rely upon Encarta for any teachings regarding the
claimed support wire; thus, we determine that the addition of Encarta fails to
overcome the identified deficiencies in the combination of Schnuckle ’455,
Helmer, Long, and Hartsock with respect to claim 16, from which claim 21
depends. Accordingly, based on the record before us, we determine that
Petitioner fails to demonstrate a reasonable likelihood of prevailing in its
challenge that claim 21 would have been obvious in view of Schnuckle ’455,
Helmer, Long, Hartsock, and Encarta.

III. CONCLUSION
For the foregoing reasons, we determine that Petitioner fails to
demonstrate a reasonable likelihood of prevailing on its challenge to the
patentability of claims 16–19, 21–23, 26, and 27 of the ʼ355 Patent.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that the petition is denied as to all challenged claims of
the ’355 Patent.

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PETITIONER:

Thomas N. Millikan
Bing Ai
Joseph P. Reid
Babak Tehranchi
PERKINS COIE LLP,
11988 El Camino Real, Suite 350
San Diego, CA 92130
TMillikan@perkinscoie.com
Ai-ptab@perkinscoie.com
JReid@perkinscoie.com
BTehranchi@perkinscoie.com

PATENT OWNER:

David K.S. Cornwell
Jon E. Wright
Richard D. Coller III
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 New York Avenue NW
Washington, DC 20005
davidc-PTAB@skgf.com
jwright-PTAB@skgf.com
rcoller-PTAB@skgf.com

Ryan S. Dean
John van Loben Sels
FISH & TSANG, LLP
2603 Main Street, Suite 1000
Irvine, CA 92614-4271
rdean@fishiplaw.com
jvanlobensels@fishiplaw.com
patents@fishiplaw.com