Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: March 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SHENZHEN LIOWN ELECTRONICS Co., LTD.,
`Petitioner,
`
`Vv.
`
`DISNEY ENTERPRISES,INC.,
`Patent Owner.
`
`Case IPR2016-01835
`Patent 8,727,569 B2
`
`Before J. JOHN LEE, WILLIAM M.FINK,and JESSICA C. KAISER,
`Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 CFR. § 42.108
`
`

`

`IPR2016-01835
`Patent 8,727,569 B2
`
`Shenzhen LiownElectronics Co., Ltd. (“Petitioner”) filed a Petition
`
`pursuant to 35 U.S.C. §§ 311-319 requesting an inter partes review of
`claims 1, 2, 4, 5, 17, 20, 21, 24, and 25 of U.S. Patent No. 8,727,569 B2,
`
`issued on May 20, 2014 (Ex. 1001, “the ’569 patent”). Paper 2 (“Pet.”).
`
`Luminara Worldwide, LLC,acting under authority of Disney Enterprises,
`
`Inc. (collectively, “Patent Owner”), filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`
`which requires demonstration of a reasonable likelihood that Petitioner
`
`would prevail with respect to at least one challenged claim, we grant
`Petitioner’s request andinstitute an inter partes review ofall challenged
`
`claims.
`
`I. BACKGROUND
`
`A. The ’569 Patent (Ex. 1001)
`
`The ’569 patentrelates to “simulating a flickering flame providing
`kinetic light movement,” suchas the simulation of a single candle flame.
`Ex. 1001, 1:24-30. Figure 1 of the ’569 patent is reproduced below:
`
`

`

`IPR2016-01835
`Patent 8,727,569 B2
`
`
`
`FIG.1
`Figure 1 illustrates an embodimentof the kinetic flame device,in
`
`accordance with the claimed invention, resembling a conventional wax
`
`candle. Ex. 1001, 3:65-67, 5:20-25. As shownin Figure 1, coil 101 may be
`
`distributed about the central axis of the device to act upon upper and lower
`
`pendulum members 111 and 121. Jd. at 5:33-36, 5:56-63. Specifically,
`energized coil 101 produces a time-varying magnetic field, which acts upon
`magnet 114 on lowerorfirst-stage pendulum 111 to produce kinetic motion
`Dkinetic. Id. at 6:13-15, 6:22-6:27. First-stage pendulum 111 is “pivotally
`supported” by support 113, which may bearod,axle, wire, or the like, and
`which passes through hole 112 to allow the kinetic motion about the pivot
`point. Jd. at 7:14-22. The second stage 105is similar in construction and
`operation to thefirst stage, with second-stage pendulum 121 pivotally
`mounted on support element 123. Jd. at 8:66-9:13. Flamesilhouette 125
`extends from the top of second-stage pendulum 121 and is formedinto a
`flame-shaped outline. Jd. at 9:34-39. Flamesilhouette 125 moves with
`
`3
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`

`IPR2016-01835
`Patent 8,727,569 B2
`
`kinetic movement D2kinetic of second-stage pendulum 121 andis illuminated
`
`by spotlight 107. Jd. at 10:39-48. Although Figure 1 represents a two-stage
`
`embodiment, single-stage only embodiments are also described, such as
`depicted in Figure 7.
`/d. at 15:26-35, Fig.7. |
`B. Illustrative Claim
`
`Ofthe challenged claims, claims 1, 20, and 24 are independentclaims.
`
`Claim | is illustrative of the claims at issue and is reproduced below:
`
`1. An apparatus for simulating a flickering flameeffect,
`comprising:
`a housing including an interior space;
`a pendulum memberpivotally mounted within the
`interior space, wherein the pendulum memberincludesfirst and
`second ends with a flame element extending from the second
`end suchthat at least a portion of the flame element extends
`outwardly from the housing and wherein the pendulum member
`is pivotally mounted within the interior space using a pendulum
`support membercoupled to the housing;
`a first light source transmitting light onto the pendulum
`member; and
`a drive mechanism positionedat least partially in the
`housing and configured to generate chaotic motion of the
`pendulum memberin at least two dimensions; and
`a drive circuit coupled to the drive mechanism and
`providing a time-varying signal to the drive mechanism that at
`least in part defines the chaotic motion of the pendulum
`member.
`
`Id. at 23:42-61.
`
`C. Related Proceedings
`Petitioner and Patent Owneridentify a related litigation in the District
`of Minnesota involving the ’569 patent andrelated patentstitled, Luminara
`
`Worldwide, LLC v. RAZ Imports, Inc.et al., No. 15-cv-03028 (D. Minn.),
`
`consolidated with Luminara Worldwide, LLC v. Shenzhen Liown Elecs. Co.
`
`4
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`IPR2016-01835
`Patent 8,727,569 B2
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`Ltd., Case No. 14-cv-03103 (D. Minn.). Pet. 2; Paper 4, 1. Petitioner and
`
`Patent Owneralso identify a numberof inter partes reviews challenging
`
`related patents, and IPR2016-01834, which also challenges claimsofthe
`
`°569 patent. Pet. 2-3; Paper 4, 1-2.
`
`D. Level ofSkill in the Art
`Petitioner contendsthat “[a] person of ordinary skill in the art of the
`
`569 Patent (‘POSITA’) would have a Bachelor’s degree in mechanical
`
`engineering and 1-3 years of mechanical design experience.” Pet. 10.
`Patent Ownerdoesnot appear to dispute this level of ordinary skill. See
`
`Prelim. Resp. 9. For purposes of this decision, we adopt Petitioner’s
`
`definition of the person of ordinary skill in the art.
`
`E. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`construed accordingto their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016). Under
`that standard, claim termsare generally given their ordinary and customary
`meaning, as would be understood by oneofordinary skill in the art, in the
`context of the entire disclosure. Jn re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`Petitioner proposes constructions for two terms: “chaotic motion” and
`“intermittently interrupted.” Pet. 10-14. Petitioner contendsthat the
`remaining claim terms shouldbe afforded their plain and ordinary meaning.
`Id. at 14. Patent Ownerarguesthat the challenged claims require “chaotic
`pivoting,” which Patent Owner contends should be construed as “aperiodic,
`unpredictable behaviorarising in a system that is extremely sensitive to
`
`5
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`IPR2016-01835
`Patent 8,727,569 B2
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`initial conditions.” Prelim. Resp. 2-3. Below we address whether the
`
`claims require “chaotic pivoting,” and we further address the construction of
`
`“chaotic motion.” We determine we need not address the construction of
`
`any other term to resolve the issues before us. See Vivid Techs., Inc. v. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only
`
`those terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”).
`
`1. chaotic pivoting
`
`Independentclaim 1 recites, in relevant part, a pendulum member
`
`“pivotally mounted” within the housing; a drive mechanism “configured to
`
`generate chaotic motion of the pendulum memberin at least two
`
`dimensions”; and a drive circuit providing a time-varying signal that “at
`
`least in part defines the chaotic motion of the pendulum member.”
`
`Ex. 1001, 23:42-61. Certain dependentclaims further provide that “the
`
`chaotic motion is enhanced.” Id. at 24:8-10.
`
`Based on a recent decision from the Federal Circuit involving a
`
`related patent, Luminara Worldwide, LLC v. Liown Electronics Co. Ltd., 814
`
`F.3d 1343 (Fed. Cir. 2016), Patent Owner arguesthat the claims of the *569
`
`patent require “chaotic pivoting,” which “is a structural characteristic of the
`claimed pivotal mounting” separate from “chaotic motion.” Prelim. Resp.2.
`
`In Luminara, the Federal Circuit reviewed a related patent (US 8,696,166) to
`
`determine whether, in a related district court action, Luminara(i.e.,
`
`Petitioner) had raised a substantial question of validity sufficient to avoid a
`
`preliminary injunction. Luminara, 814 F.3d at 1351-54. The court held that
`the ’166 patent’s specification (which is substantially the sameas the
`
`specification of the ’569 patent at issue here) “disclaims non-chaotic
`
`6
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`IPR2016-01835
`Patent 8,727,569 B2
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`pivoting” and“devices driven by rhythmic or metronomicpatterns,” with
`“no further requirements on movement.” /d. at 1353-54 (internal quotations
`omitted). The court further held that Schnuckle ’455' “undisputedly teaches
`pivoting in two axes” and “seems”to disclose chaotic movement. Jd. at
`1354. Asa result, the Court determined that Petitioner’s anticipation
`
`argumentbased on Schnuckle 455 raised a substantial question ofvalidity
`and vacatedthe district court’s grant of a preliminary injunction against
`
`Petitioner. Jd.
`
`Wedetermine that we need not read “chaotic pivoting”into the claims
`
`of the ’569 patent or construe that term in this proceeding. The Federal
`Circuit preliminarily construed claim 1 of the ’166 patent, whichrecites “the
`body is free to pivot when supported by the flame support element” but does
`not recite whether such pivoting results in chaotic motion. See id. at 1352.
`
`Both the district court and the Federal Circuit determined the “pivot”
`
`limitation of that claim required chaotic movement. Jd. at 1352-54. In
`
`particular, the Federal Circuit found that portions of the ’166 patent
`specification referring to “real but chaotic movements”disclaimed “devices
`driven by rhythmic or metronomicpatterns.” Jd. at 1354.
`In contrast to claim 1 of the ’166 patent before the Federal Circuit,
`independentclaim 1 expressly requires chaotic motion of the pendulum
`member, and independent claim 24 expressly requires chaotic motion ofthe
`flame element. Thus, for those claims and challenged dependentclaims2,4,
`5, 17, and 25, no additional limitations are needed to accountfor the
`disclaimer found by the Federal Circuit; that disclaimeris already recited in
`
`| US 7,261,455 B2 (Ex. 1003, “Schnuckle 455”) is a reference in both
`asserted groundsin the Petition here as discussed further below.
`7
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`

`IPR2016-01835
`Patent 8,727,569 B2
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`the claims. In particular, we note that the Federal Circuit relied on the
`
`specification’s statements about movementin finding a specification
`disclaimer and not on anyparticular structural characteristic of the pivotal
`
`mounting. See Luminara, 814 F.3d at 1353-54.
`
`Patent Ownerarguesthat the Federal Circuit’s decision requires we
`
`read “chaotic pivoting” as an additional limitation of the challenged claims
`
`here because according to Patent Owner, “a simple kick of the pendulum,
`without any modulation or control, is capable of producing chaotic pivoting”
`(Prelim. Resp. 14), and “the pivotal mounting structure is why the pendulum
`
`pivots chaotically” (id. at 15). We are not persuadedthat the Federal
`Circuit’s decision or the ’569 specification requires any limitations to claims
`
`1 and 24 (and the challenged claims depending therefrom) beyondthose
`
`already recited.
`Although the Federal Circuit cited a portion ofthe specification
`stating “the present invention stimulates and/or perturbs a complex
`interaction betweengravity, mass, electromagnetic field strength, magnetic
`fields, air resistance, and light, but the complex interaction is not directly
`
`modulated or controlled,” neither this portion of the specification nor the
`court’s decision suggests that chaotic motion must occurin the presence of a
`“simple kick” as argued by Patent Owner. See Luminara, 814 F.3d at 1353-
`54. Rather, the Federal Circuit found that “the patentee disclaims devices
`driven by rhythmic or metronomicpatterns,” as accounting for the chaotic
`pivoting requirement. Id. at 1354. In addition, we note that chaotic motion
`of the pendulum memberis already accounted for by the recited drive
`mechanism thatis “configured to generate chaotic motion of the pendulum
`
`

`

`1PR2016-01835
`Patent 8,727,569 B2
`
`memberin at least two dimensions.” Ex. 1001, 23:55—57 (claim 1); see also
`
`id. at 26:17—19 (claim 24).
`Although independentclaim 20 recites “motion” rather than “chaotic
`motion,” we find that construing “motion”in claim 20 as “chaotic motion”
`accounts for the disclaimer found by the Federal Circuit.*- Thus, for
`
`purposesofthis decision, we construe “motion”as recited in claim 20 to
`require “chaotic motion,” and we do not read “chaotic pivoting” into any
`
`challenged claim of the ’569 patent or construe that term.
`
`2. chaotic motion
`
`Having determined that we need not read the term “chaotic pivoting”
`into the challenged claims, we proceed to construe the term “chaotic
`motion.” Although Patent Owner’s argumentsare directed towards “chaotic
`pivoting,” we have considered those arguments in construing “chaotic
`
`motion”as discussed below.
`
`Petitioner argues that “chaotic motion” should be construed as
`“motion that is unpredictable or random.” Pet. 10. According to Petitioner,
`the 569 specification “uses ‘chaotic’ interchangeably with ‘random’ and
`‘unpredictable.’” Jd. at 11 (citing Ex. 1001, 14:19-22, 19:15—20). Petitioner
`also contendsboth a dictionary definition and Patent Owner’s arguments in a
`related litigation are consistent with its proposed construction.
`/d. at 11-13.
`Patent Ownercharacterizes Petitioner’s proposed construction of
`
`“chaotic motion” as being similar to Patent Owner’s proposed construction
`of “chaotic pivoting.” See Prelim. Resp. 5. Patent Ownerfurther argues,
`
`2 We observe that claim 21, which dependsfrom claim 20,recites “the
`chaotic motion,” further suggesting that “motion”in claim 20 is chaotic
`motion.
`
`9
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`IPR2016-01835
`Patent 8,727,569 B2
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`however, that the ordinary meaning of “chaos” requiresit to be sensitive to
`
`initial conditions. Jd. at 6-7. Patent Owner acknowledgesthat a person of
`
`ordinary skill “would not have understood ‘mathematical’ theories” (id. at 8
`
`n.3; id. at 9), but cites to, for example, a mathematicaltext in asserting that
`
`use of the term “unpredictable”in the ’569 specification supports the
`
`requirement of being sensitive to initial conditions(id. at 8 (citing Ex. 2005,
`
`7-8)).3
`
`Weare not persuadedthat being sensitive to initial conditions is
`required for “chaotic motion”asrecited in the challenged claims. To begin
`with, the 569 specification does not suggest a requirementforsensitivity to
`
`initial conditions. As Petitioner’s expert Dr. Delson points out, the °569
`
`specification uses “chaotic”interchangeably with random, and “random
`motion is independent from prior motion.” Ex. 1002 { 183. Petitioner’s
`expert also points out that claim 19 of the 569 depends from claim 1 and
`
`3 Patent Ownerarguesthatin a related case, Petitioner’s expert testified that
`a person ofordinaryskill “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. 12 (addition in original). We note that this appears
`to be an inaccurate characterization of the cited testimony. As Patent Owner
`appears to acknowledgeearlier in the Preliminary Response (see Prelim.
`Resp. 9-10), Petitioner’s expert was asked whether “a mechanical
`engineering student with a degree from your university [would] be unableto
`understand the basic concepts of chaos”discussed at his deposition.
`Ex. 2001, 106:22—25. In thecited portion of the deposition, Dr. Delson
`testified that his students “could learn some general things about chaos”at
`the undergraduate level. Jd. at 107:2-22 (emphasis added). What
`undergraduate students could learn, however, sayslittle about how a person
`of ordinary skill would have understood “chaotic motion”as recited in the
`challenged claims.
`
`10
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`IPR2016-01835
`Patent 8,727,569 B2
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`recites “the pendulum member[is] displaced in a ‘random’ pattern over time
`
`[in response to the drive mechanism].” Jd. { 184; Ex. 1001, 24:56-58.
`
`Because claim 1 recites chaotic motion of the pendulum member,it follows
`
`that such “chaotic motion” must encompassthe “random pattern” of claim
`
`19. Based on the current record, we determinethat “chaotic motion”as
`
`recited does not require sensitivity to initial conditions, as argued by Patent
`
`Owner.
`
`As discussed above, we determine that the Federal Circuit’s finding of
`
`specification disclaimeris already accounted for by “chaotic motion”recited
`
`in the challenged claims; thus, we determine that “chaotic motion” does not
`
`include “devices driven by rhythmic and metronomic patterns.” Luminara,
`
`814 F.3d at 1353-54. We further determinethat “chaotic motion”as recited
`
`does not require movementin a “system extremely sensitive to initial
`
`conditions.” We determine that we need not further construe “chaotic
`
`motion”at this stage of the proceedings to resolve the issues beforeus.
`
`F. References
`
`Petitioner relies on the following references:
`
`. “Schnuckle ?455” (U.S. Patent No. 7,261,455 B2; issued Aug.28,
`2007) (Ex. 1003);
`2. “Andrews” (U.S. Patent No. 4,728,871; issued Mar. 1, 1988)
`(Ex. 1007); and
`3. “Christensen” (U.S. Patent No. 5,072,208; issued Dec. 10, 1991)
`(Ex. 1008).
`
`11
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`

`t
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`o~
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`IPR2016-01835
`Patent 8,727,569 B2
`
`G. Grounds Asserted
`
`Petitioner challenges the patentability of the challenged ’569 patent
`
`claims on the following grounds:
`
`
`
`
`
`Schnuckle °455 and
`Andrews
`
`Schnuckle °455, Andrews, 35 U.S.C. § 103(a)|4,5, 17, 20, 21, 24,
`and Christensen
`and 25
`
`
`35 U.S.C. § 103(a)
`
`
`
`
`Petitioner also relies on expert testimony from Dr. Nathan J. Delson
`
`(Ex. 1002, “Delson Decl.”).
`
`If. ANALYSIS
`
`A. Asserted Obviousness Over Schnuckle ’455 and Andrews
`
`1. Overview ofSchnuckle ’455
`
`Schnuckle ’455, which shares a commoninventor with the ’569 patent
`
`(Pet. 23), 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.
`
`12
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`

`IPR2016-01835
`Patent 8,727,569 B2
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`Figures 7 and 12 of Schnuckle ’455 are reproduced below: FIG, 12
`
`Figures 7 and 12 aboveillustrate an artificial candle in accordance
`
`with the invention of Schnuckle 455. Ex. 1003, 2:49-50, 2:56—-57. As
`
`shownin Figure 12, teardrop shaped element 502 resembling a flameis
`
`secured to the upper end of channel 500. Jd. at 6:47-49. Rod 18 passes
`
`through hole 503 in channel 500.
`/d. at 6:49-50. Rod 18 is disposed in
`grooves 24 and 24’ of ring shaped member20 of the gimbal mechanism. Id.
`at 3:55-65, 6:49-52, Figs. 2, 12. Ring shaped member20 is connected to
`
`housing 32 by pins 22 and 23, “each pin 22, 23 being fixedly secured to the
`outer periphery of member20 androtatably securedto 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.
`
`13
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`Air from a fan is blownor injected against the components from the
`
`bottom of the candle housing to cause the components to move on the
`
`/d. at 3:41-45. The Figure 7 embodimentis similar but
`gimbal mechanism.
`for the use of electromagnets 316 instead ofair to drive the lower end ofthe
`pendulum to simulate the movementof the flame blowing in the wind. Jd. at
`
`5:13-32, 6:53-62.
`
`2. Overview ofAndrews
`Andrewsis titled ‘““Novelty Electric Motor” anddescribes a permanent
`magnet armature and an induction coil connectedto an electric currentthat
`
`produces a magnetic field to accelerate the movementof the armature. Ex.
`1007, at [54], Abstract. Andrews’ armature can be in the form of a
`
`“randomly oscillating pendulum.” /d. at 2:21—24, Fig. 9. In particular,
`
`Andrewsdiscloses that it achieves its unpredictable, random motion by
`
`placing the permanent magnets in a symmetrical pattern aboutthe vertical
`
`axis of the induction coil. Id. at 7:3-35.
`
`3. Claims I and 2
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented andthe priorart are such
`that the subject matter as a whole would have been obviousat the time the
`invention was madeto a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousnessis resolved onthe basis of underlying
`factual determinations including: (1) the scope and contentof the prior art;
`(2) any differences between the claimed subject matter andthepriorart;
`(3) the level of ordinary skill in the art; and (4) whenin the record,objective
`evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1,
`
`14
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`17-18 (1966). In that regard, an obviousness analysis “need not seek out
`precise teachings directedto the specific subject matter of the challenged
`claim, for a court can take accountof the inferences and creative steps that a
`
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`Petitioner contends that the subject matter of claims 1 and 2* would
`
`have been obvious over Schnuckle ’455 and Andrews. Pet. 23-42. We have
`
`reviewed the information provided by Petitioner, including the relevant
`
`portions of the supporting Delson Declaration (Ex. 1002), and are persuaded,
`
`based on the current record, that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on this challenge.
`
`Petitioner’s obviousness analysis, as supported by the Delson
`
`Declaration, demonstrates where each elementof claims 1 and 2 is disclosed
`
`in Schnuckle ’455 and Andrews. Pet. 28-42. Specifically, Petitionerrelies
`
`on Schnuckle ’455 as teachingall of the limitations of claims 1 and 2 (id.)
`
`and further relies on Andrewsforits teaching of using “permanent magnets
`
`to further enhance the irregular movements of the magnetic pendulum”(id.
`
`at 37).
`
`For example, Petitioner contends Schnuckle °455 discloses a multi-
`
`segmented housing in Figure 7 (items 318, 320, and 322). Jd.at 30.
`Petitioner further contends that in Figure 7, a “rod-like pendulum 328 with
`
`flame element 326 is pivotally mounted in the housing using gimbal 324,”
`allowing the pendulum and flame elementto “move about the elongated
`
`4 We note that Petitioner says “Schnuckle [’]455 renders claim 2 as a whole
`obvious.” Pet. 42. In light of Petitioner’s arguments regarding claim 1, as
`discussed below, from which claim 2 depends, we understandthat Petitioner
`relies on the combination of Schnuckle ’455 and Andrewsin its challenge to
`claim 2.
`
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`axes of pins 400, 401 and up and down within member403.” Jd. at 33
`
`(quoting Ex. 1003, 5:32-48). Petitioner contends a light source 308 in
`
`Figure 7 transmits light onto the flame-shaped element of the pendulum. Jd.
`
`at 35.
`
`Petitioner argues Schnuckle °455’s electromagnets 316 are “a drive
`
`mechanism positioned within the housing” and “are configured to generate
`
`unpredictable [i.e., chaotic] motion of the pendulum memberin two
`dimensions.” Id. at 36. Petitioner further contends that Andrews discloses
`
`“producing ‘an unpredictable, random motion’ ofits pendulum byplacing
`
`permanent magnets in a symmetrical pattern around the axis of symmetry of
`
`the coil.” Jd. at 37.
`
`Petitioner contends it would have been obviousto a person of
`
`ordinary skill to combine the teachings of Schnuckle 455 and Andrews
`
`because they both describe decorative or novelty devices and use magnetic
`forces to induce random and unpredictable motion of a suspended pendulum.
`
`Id. at 28. Petitioner further contendsthat a person ofordinary skill would
`
`have appreciated several advantages of using Andrew’s permanent magnet
`placement with Schnuckle ’455’s drive mechanism,including “enhancing
`the randomnessor unpredictability of movement, providing an additional
`mechanism for producing unpredictable pendulum movements, and
`. the
`increasing the battery life of the imitation candle device because .
`.
`permanent magnets[] do not require electric power.” Jd. (citing Ex. 1002
`{{ 122-127); see id. at 37-38 (citing Ex. 1002 J 130-131).
`Petitioner also contends that Schnuckle °455 discloses the recited
`
`drive circuit (e.g., “a control board 302 having suitable electronics(e.g.,
`currentpulsing circuits, memory module, micro-controller, portable power
`
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`source, powerconverter, etc.), represented by microcontroller 408”). Jd. at
`
`38 (quoting Ex. 1003, 5:13-17) (emphasis omitted).
`
`Petitioner further provides a claim chart detailing where it contends
`
`each limitation of claim 1 is taught or suggested by Schnuckle ’455 and
`
`Andrewsas well as detailed analysis of the additional limitations of
`
`dependent claim 2. Jd. at 40-42. We have reviewed Petitioner’s evidence
`
`and argument, and find that Petitioner has sufficiently shown Schnuckle
`
`455 and Andrewsteachesor suggests each limitation of the challenged
`claimsand that Petitioner has providedsufficiently persuasive reasoning for
`combining those teachingsat this stage of the proceeding.
`Patent Ownerargues “Schnuckle does not teach or suggest ‘chaotic
`pivoting,’ alone or in combination with any other cited reference.” Prelim.
`
`Resp. 17. More specifically, Patent Owner contends “‘it is the lack of
`
`modulation or control over the pivotally mounted structure that create[s]
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`lighting effects driven by real but chaotic physical movements.” Jd. at 20
`(internal quotations omitted). As discussed in our claim construction section
`above, however, we do not read “chaotic pivoting” into the challenged
`
`claims. See supra Section I.E.1. Further, as discussed above, weare not
`persuadedthat the Federal Circuit’s Luminara decision requires “lack of
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`modulation or control” for chaotic motion. See id. Thus, we are not
`
`persuaded by Patent Owner’s argument that Schnuckle ’455 aloneorin
`combination with any othercited reference does not teach “chaotic
`
`pivoting.”
`Patent Owneralso argues that Schnuckle ’455 does not describe the
`motion of the pendulum resulting from the driving force as being chaotic.
`Prelim. Resp. 21 (citing Ex. 2003 ff] 57-58). In particular, Patent Owner
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`and its expert argue that Schnuckle °455 describes the external or internal
`force driving the pendulum,but not the motion of the pendulumitself, as
`
`being chaotic. Jd.; Ex. 200357-58.
`At this stage of the proceeding, we are not persuaded. Petitioner’s
`expert opines that it would have been obviousto a person ofordinary skill
`that a realistic flickering effect as taught in Schnuckle 455 “would have
`been produced due to random or unpredictable movementofthe pendulum
`rather than a rhythmic or periodic movement.” Ex. 1002 {| 76-77. Patent
`
`Ownerandits expert contend that only Schnuckle ’455’s driving force is
`chaotic, but do not explain why a chaotic driving force would not result in
`
`chaotic motion of Schnuckle ’455’s pendulum. At most, Patent Owner’s
`expert’s> testimony creates a genuineissue of material fact which we view in
`the light most favorable to Petitioner for purposes of deciding whetherto
`institute this inter partes review. See 37 C.F.R. § 42.108(c).© Wealso note
`that the Federal Circuit preliminarily determined that the requirement of
`chaotic movement seemed to be met by Schnuckle ’455’s “discussion of
`
`5 We note that Patent Owner’s expert’s testimony wasprepared for other
`proceedings and does not directly address the challengedclaimsat issue in
`this proceeding. See Ex. 2003.
`6 We also disagree with Patent Owner’s contention that Dr. Delson,
`Petitioner’s expert, admitted that Schnuckle ’455 includesinsufficient
`information to determine whetherit teaches chaotic motion. Prelim. Resp.
`21-24. Whenthat testimony is viewed as a whole,it is clear that Dr. Delson
`was asked to assume certain embodiments in Schnuckle ’455 lacked any
`driving force other than someone moving the pendulum membertothe side
`andletting it fall. See Ex. 2001, 57:16-73:21. Dr. Delsonalso qualified his
`answers during his testimonyas limited to mathematical chaos(see id.), and
`as discussed above, Patent does not appear to propose that we adopt a
`mathematical definition of chaos in this proceeding (see Prelim. Resp.8 n.3,
`9).
`
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`chaotic forces that can articulate the flame reflector of the candle device.”
`
`Luminara,814 F.3d at 1354.
`
`Patent Ownerarguesfurther that Andrews does not teach “chaotic
`pivoting”or “chaotic motion” and, therefore, does not remedythe alleged
`deficiency in Schnuckle ’455. Prelim. Resp. 25—26. As discussed above, we
`find Schnuckle ’455 teaches the recited “chaotic motion,” and we do not
`
`read “chaotic pivoting” into the claims as a separate requirement. See
`
`Sections I.E.1. and ILA.
`
`For the reasons discussed above, based on the current record, we
`
`determine Petitioner has shown a reasonable likelihood of prevailing with
`
`respect its obviousness challenge to claims 1 and 2 based on Schnuckle *455
`
`and Andrews.
`
`B. Asserted Obviousness Over Schnuckle ’455, Andrews, and
`Christensen
`:
`
`1. Overview of Christensen
`
`Christensen describes an “electromechanical chaotic chiming
`
`mechanism”with a pendulum suspended centrally among the chimes. Ex.
`1008, Abstract. Figures 2 and 2a of Christensen are reproduced below:
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`12
`
`11
`
`10
`
`14
`
`17
`
`
`
`Fig. 2
`
`Fig. 2a
`
`Figures 2 and2aillustrate an electromechanical chaotic chiming mechanism
`as described in Christensen. In Figure 2, body 12 supports chimes 10 and
`
`chime hammer14. Jd. at 3:23-35. As shownin Figure 2a, the pendulum
`
`contains permanent magnet 15, which is suspended over drive electromagnet
`18. Jd. at 3:62-67. Current pulses are supplied to the drive electromagnet,
`which Christensen discloses can take the form of square waves and can be
`
`interrupted. See id. at 4:38-61, 6:1-48, Fig. 5a.
`
`2. Claims 4, 5, 17, 20, 21, 24, and 25
`
`Petitioner contends that claims 4, 5, 17, 20, 21, 24, and 25 would have
`
`been obvious over Schnuckle ’455, Andrews, and Christensen. Pet. 42-57.
`
`Wehavereviewed the information provided by Petitioner, including the
`relevantportions of the supporting Delson Declaration (Ex. 1002), and are
`persuaded, based onthe current record, that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this obviousnesschallenge.
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`For example, dependent claims4, 5, 21, and 25 all recite limitations
`
`related to the time-varying signal being a square wavethat is intermittently
`interrupted. Ex. 1001, 24:5-10, 25:11-16, 26:24—26. Petitioner contends
`Christensen discloses “a time-varying signal (or current) that has a square-
`
`wave shape.” Pet. 46-47 (citing Ex. 1008, 4:38-55, 4:64—5:4, 6:34-48,Fig.
`
`5a). Petitioner further contends that Christensen teaches that its current
`
`pulses can be interrupted. Jd. at 48 (citing Ex. 1008, 2:5—-10, 4:50—54, 58-
`
`60, 6:27-49).
`
`Petitioner also provides a sufficiently persuasive rationale for
`
`combining the teachings of Christensen with those of Schnuckle °455 and
`
`Andrewsat this stage of the proceeding. Jd. at 48-49. Specifically,
`
`Petitioner contends that it would have been obviousto a person of ordinary
`
`skill “to combine the teachings in Schnuckle 455, Andrews, and Christensen
`
`to include [Christensen’s] drive signal interruptions when energizing
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`electromagnets 316 in the Schnuckle 455-Andrews combination.” Jd. at 48.
`Petitioner contendsa person of ordinary skill “would have been motivated to
`implement such a combination becausethe signal discontinuities would have
`added another mechanism of the random or unpredictable movementpattern
`
`of the pendulum, and would have provided an ability to better simulate a
`
`flickering flame.” Jd. at 48-49.
`Petitioner provides further analysis of claims 4, 5, 17, 21, and 25, as
`well as independentclaims 20 and 24. Id. at 49-57. We have reviewed
`Petitioner’s evidence and argument, and, for purposes of this Decision, find
`
`that Petitioner has sufficiently shownthe cited references teach each
`
`limitation of claims 4, 5, 17, 20, 21, 24, and 25, and that Petitioner has
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`provided a sufficiently persuasive rationale for combining those teachings.
`
`Id. at 48-49.
`Patent Ownerarguesonly that Christensen does not teach “chaotic
`pivoting” or “chaotic motion”and, therefore, does not remedythe alleged
`deficiency in Schnuckle ’455. Prelim. Resp. 25-26. As discussed above, we
`find Schnuckle ’455 teaches the recited “chaotic motion,” and we do not
`
`read “chaotic pivoting” into the claims as a separate requirement. See
`
`Sections I.E.1. and II.A.
`
`For the reasons discussed above, based on the current record, we
`
`determine Petitioner has showna reasonable likelihood of prevailing with
`
`respect to its obviousnesschallenge to claims 4, 5, 17, 20, 21, 24, and 25
`
`over Schnuckle ’455, Andrews, and Christensen.
`
`C. Redundant Grounds
`
`Patent Owner argues we should denyinstitution as to “redundant
`grounds” in this proceeding andin related case IPR2016-01835. Prelim.
`Resp. 26-28. Weare not persuaded that we should exerciseourdiscretion to
`deny institution as to any allegedly