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 IPR2016-01834
`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 C.F.R. § 42.108
`
`

`

`IPR2016-01834
`Patent 8,727,569 B2
`
`Shenzhen Liown Electronics Co., Ltd. (“Petitioner’’) filed a Petition
`pursuarit to 35 U.S.C. §§ 311-19 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
`May20, 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 reasonablelikelihoodthat Petitioner
`would prevail with respect to at least one challenged claim, we grant
`Petitioner’s request and institute an inter partes review ofall challenged
`
`claims.
`
`1. 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:
`
`

`

`IPR2016-01834
`Patent 8,727,569 B2
`
`
` 2nd STAGE HOUSING
`
`FIG.1
`Figure 1 illustrates an embodimentofthe 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
`Dl kinetic. Jd. at 6:13-15, 6:22-27. First-stage pendulum 111 is “pivotally
`supported” by support 113, which maybearod,axle, wire,orthe like, and
`which passes through hole 112 to allow the kinetic motion aboutthe pivot
`point. Jd. at 7:14-22. The second stage 105 is similar in construction and
`operationto the first 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 andis formedinto a
`flame-shapedoutline. Jd. at 9:34-39. Flame silhouette 125 moves with
`
`3
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`IPR2016-01834
`Patent 8,727,569 B2
`
`kinetic movement D2kinetic of second-stage pendulum 121 and isilluminated
`
`by spotlight 107. Jd. at 10:39-48. Although Figure 1 represents a two-stage
`embodiment, single-stage only embodimentsare also described, such as
`
`depicted in Figure 7. Jd. at 15:26—35, Fig. 7.
`
`B. Illustrative Claim
`
`Ofthe challenged claims, claims 1, 20, and 24 are independentclaims.
`
`Claim 1 is illustrative of the claims at issue and is reproduced below:
`
`An apparatus for simulating a flickering flame effect,
`1.
`comprising:
`a housing including an interior space;
`a pendulum memberpivotally mounted within the interior
`space, wherein the pendulum memberincludes first and second
`ends with a flame element extending from the second end such
`that at least a portion of the flame element extends outwardly
`from the housing and wherein the pendulum memberispivotally
`mounted within the interior space using a pendulum support
`membercoupled to the housing;
`a first light source transmitting light onto the pendulum
`member; and
`least partially in the
`a drive mechanism positioned at
`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 thatat
`least in part defines the chaotic motion ofthe pendulum member.
`
`Id. at 23:42-61.
`
`C. Related Proceedings
`Petitioner and Patent Owneridentify a relatedlitigation in the District
`of Minnesota involving the ’569 patent and related patents titled, 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.
`Ltd., Case No. 14-cv-03103 (D. Minn.). Pet. 2; Paper 4, 1. Petitioner and
`
`4
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`IPR2016-01834
`Patent 8,727,569 B2
`
`Patent Owneralso identify a numberof inter partes reviewschallenging
`related patents, and IPR2016-01835, which also challenges claims ofthe
`
`’569 patent. Pet. 3; Paper 4, 1-2.
`
`D. Level ofSkill in the Art
`Petitioner contends that “[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 Owner doesnot appearto dispute this level of ordinary skill. See
`Prelim. Resp. 9. For purposes ofthis 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 reasonableinterpretation 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, 2144-46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood byoneof ordinary 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 should be affordedtheir plain and ordinary meaning.
`Id. at 14. Patent Owner arguesthat the challenged claims require “chaotic
`pivoting,” which Patent Owner contends should be construed as “aperiodic,
`unpredictable behavior arising in a system that is extremely sensitive to
`initial conditions.” Prelim. Resp. 2-3. Below we address whether the
`
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`IPR2016-01834
`Patent 8,727,569 B2
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`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) (holdingthat“only
`those terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”).
`
`1. chaotic pivoting
`Independent claim1recites, 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”; andadrive 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.” Jd. 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 Ownerargues that 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 (whichis substantially the same as the
`specification of the ’569 patentat issue here) “disclaims non-chaotic
`pivoting” and “devices driven by rhythmic or metronomicpatterns,” with
`
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`IPR2016-01834
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`“no further requirements on movement.” Jd. 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.
`/d. at
`1354. As aresult, the Court determined that Petitioner’s anticipation
`_ argument based on Schnuckle ’455 raised a substantial question ofvalidity
`and vacatedthe district court’s grant of a preliminary injunction against
`
`Petitioner. Id.
`
`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
`bodyis free to pivot when supported by the flame support element” but does
`not recite whether suchpivoting results in chaotic motion.
`/d. at 1352. Both
`the district court and the Federal Circuit determinedthe “pivot”limitation of
`
`/d. at 1352-54. In particular, the
`that claim required chaotic movement.
`Federal Circuit found that portions of the ’166 patent specification referring
`to “real but chaotic movements” disclaimed “devices driven by rhythmic or
`
`metronomic patterns.” Jd. at 1354.
`In contrast to claim 1 of the ’166 patent before the Federal Circuit,
`independent claim 1 expressly requires chaotic motion of the pendulum
`member, and independentclaim 24 expressly requires chaotic motionof the
`flame element. Thus, for those claims and challenged dependent claims 2,4,
`5, 17, and 25, no additional limitations are needed to account for the
`disclaimer found by the Federal Circuit; that disclaimeris already recited in
`the claims. In particular, we note that the Federal Circuit relied on the
`
`'US 7,261,455 B2 (“Schnuckle ’455”) is a referencein all three asserted
`grounds in the Petition here as discussed further below.
`7
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`IPR2016-01834
`Patent 8,727,569 B2
`
`specification’s statements about movementin finding a specification
`disclaimer and not on any particular structural characteristic of the pivotal
`
`mounting. See Luminara, 814 F.3d at 1353-54.
`Patent Owner arguesthat 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 orcontrol, 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 persuaded that the Federal
`Circuit’s decision or the 569 specification requires any limitationsto claims
`1 and 24 (and the challenged claims depending therefrom) beyond those
`
`already recited.
`Although the Federal Circuit cited a portion of the specification
`stating “the present invention stimulates and/or perturbs a complex
`interaction between gravity, mass, electromagnetic field strength, magnetic
`fields, air resistance, andlight, 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. Jd. at 1354. In addition, we note that chaotic motion
`of the pendulum memberis already accounted for bythe recited drive
`mechanism that is “configured to generate chaotic motion of the pendulum
`member in at least two dimensions.” Ex. 1001, 23:55-57 (claim 1); see also
`
`id. at 26:17—19 (claim 24).
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`IPR2016-01834
`Patent 8,727,569 B2
`
`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 donot 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. Accordingto 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 contends both a dictionary definition and Patent Owner’s argumentsin 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 Owner further argues,
`however, that the ordinary meaning of “chaos”requiresit to be sensitive to
`initial conditions. Jd. at 6-7. Patent Owner acknowledges that a person of
`
`2 We observethat claim 21, which depends from claim 20,recites “the
`chaotic motion,”further suggesting that “motion” in claim 20 is “chaotic
`motion.”
`
`9
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`IPR2016-01834
`Patent 8,727,569 B2
`
`ordinary skill “would not have understood ‘mathematical’ theories” (id. at 8
`n.3; id. at 9), but cites to, for example, a mathematical text 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 beingsensitive to initial conditionsis
`required for “chaotic motion”asrecited in the challenged claims. To begin
`with, the 569 specification does not suggest a requirementfor sensitivity 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 patent depends from claim 1
`and recites “the pendulum memberis displaced in a random pattern over
`time in response to the drive mechanism.” Jd. § 184; Ex. 1001, 24:56-58.
`
`3 Patent Owner arguesthatin a related case, Petitioner’s expert testified that
`a person ofordinary skill “would have understood the “broad descriptions
`that are includedin 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 unable to
`understand the basic concepts of chaos”discussed at his deposition.
`Ex. 2001, 106:22-25. In the cited portion of the deposition, Dr. Delson
`testified that his students “could learn some general things about chaos”at
`the undergraduate level. Id. at 107:2-22 (emphasis added). What
`undergraduate students could learn, however,sayslittle about how a person
`of ordinary skill would have understood “chaotic motion”as recited in the
`challenged claims.
`
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`IPR2016-01834
`Patent 8,727,569 B2
`
`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.
`
`Asdiscussed above, we determine that the Federal Circuit’s finding of
`specification disclaimer is 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. Wefurther determine that “chaotic motion”as recited
`does not require sensitivity to initial conditions. We determinethat 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:
`1. “Schnuckle ’455” (U.S. Patent No. 7,261,455 B2; issued Aug. 28,
`2007) (Ex. 1003);
`2. “Baba” (Japanese Unexamined Patent App. No. 2000-284730,
`published Oct. 13, 2000 (Ex. 1004) andcertified English
`translation of Ex. 1004 (Ex. 1005)); and
`3. “Yiu” (U.S. Patent No. 6,559,367 B1; issued May 6, 2003)
`(Ex. 1006).
`
`11
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`IPR2016-01834
`Patent 8,727,569 B2
`
`G. Grounds Asserted
`
`Petitioner challenges the patentability of the challenged ’569 patent
`
`claims on the following grounds:
`
`
`
`
`Schnuckle 455
`35 U.S.C. § 103(a)
`
`
`
`
`Schnuckle ’455 and Baba 35 U.S.C. § 103(a)|4, 5, 20, . 24, and
`
`
`Schnuckle °455 and Yiu 35 U.S.C. § 103(a)|1, 2, 4, 5, 17, 20, 21,
`24, and 25
`
`
`
`
`
`
`
`Petitioner also relies on expert testimony from Dr. Nathan J. Delson
`
`(Ex. 1002, “Delson Decl.”).
`
`If. ANALYSIS
`
`A. Asserted Obviousness Over Schnuckle ’455
`
`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.
`Figures 7 and 12 of Schnuckle ’455 are reproduced below:
`
`

`

`IPR2016-01834
`
`Patent 8,727,569 B2
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`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 resemblinga flame is
`
`13
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`

`IPR2016-01834
`Patent 8,727,569 B2
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`secured to the upper end of channel 500. Jd. at 6:47-49. Rod 18 passes
`through hole 503 in channel 500. Jd. at 6:49-S0. Rod 18 is disposed in
`grooves 24 and 24’ of ring shaped member 20 of the gimbal mechanism. Jd.
`at 3:55-65, 6:49-52, Figs. 2, 12. Ring shaped member 20 is connectedto
`housing 32 by pins 22 and 23, “each pin 22, 23 being fixedly securedto the
`outer periphery of member20 androtatably secured to the inner wall of
`housing 32.” Jd. 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 pins 22
`
`and 23.” Id. at 3:60-62.
`
`Air from a fanis blown orinjected against the components from the
`bottom of the candle housing to cause the components to move on the
`gimbal mechanism. Jd. at 3:41-45. The Figure 7 embodimentis similar but
`for the use of electromagnets 316 instead of air to drive the lower endofthe
`pendulum to simulate the movementof the flame blowing in the wind. Id. at
`5:13-32, 6:53-62.
`
`2. Claims 1 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 prior art are such
`that the subject matter as a whole would have been obviousat the time the
`invention was madeto a person havingordinary skill in the art to whichsaid
`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 contentofthepriorart;
`(2) any differences between the claimed subject matter and the priorart;
`(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 US. 1,
`
`14
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`17-18 (1966). In that regard, an obviousnessanalysis “need not seek out
`precise teachingsdirected to the specific subject matter of the challenged
`claim, for a court can take accountof the inferences and creative steps that a
`person ofordinary 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. Pet. 25-36. We have reviewed the
`
`information provided by Petitioner, including the relevantportionsof 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 element ofthe challenged claimsis
`disclosed in Schnuckle °455 or would have been obviousin light of those
`
`'
`
`disclosures. Pet. 25-36. Petitioner relies on several embodimentsin
`Schnuckle ’455 to support its obviousness contentions, including those in
`Figures 2, 7, 11, and 12. Jd. Petitioner contends a person ofordinary skill
`“would have understood that the features disclosed in Schnuckle 455 can be
`combinedin different ways to yield additional embodiments.” Jd. at 25. For
`example, Petitioner contends Schnuckle °455 discloses a multi-segmented
`housing in Figure 7 (items 318, 320, and 322). Jd. at 27. Petitioner further
`contendsthat 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 element to “move about the elongated axes of pins 400,
`401 and up and down within member 403.” Jd. at 28 (quoting Ex. 1003,
`5:32-48). Petitioner contends a light source 308 in Figure 7 transmitslight
`‘onto the flame-shaped element of the pendulum. Jd. at 30.
`
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`Petitioner argues Schnuckle °455’s electromagnets 316 are “a drive
`mechanism positionedatleast partially in the housing and configured to
`generate chaotic motion of the pendulum memberinat least two
`dimensions,” asrecited in claim 1. /d. at 31. Petitioner notes Schnuckle
`
`°455 teaches that “[m]otion is generated when the electromagnets are
`energized based on ‘encoded digital data’ corresponding to a desired
`movementpattern.” Jd. (citing Ex. 1003, 5:52-59, 6:7-11). According to
`Petitioner, Schnuckle ’455’s gimbal movesin at least two dimensions with
`motion that is unpredictable or chaotic. Jd. at 32 (citing Ex. 1003, 6:53-62
`(stating that the pendulumis “articulated by a natural and chaotic external or
`internal force (such as wind, magnetism),”such that the flame element
`“moves randomly simulating blowing in the wind”); Ex. 1002 {{] 76-77).
`Dr. Delson opines that it would have been obviousto a person of ordinary
`skill that “sucharealistic flickering effect would have been produced due to
`random or unpredictable movementof the pendulum rather than a rhythmic
`or periodic movement.” Ex. 1002 4 76.
`Petitioner also contends that Schnuckle ’455 discloses the recited
`
`drive circuit (e.g., “a control board 302 havingsuitable electronics (e.g.,
`current pulsing circuits, memory module, micro-controller, portable power
`source, power converter, etc.), represented by microcontroller 408”). Pet. 33
`(quoting Ex. 1003, 5:13-17).
`Petitioner further provides a claim chart detailing where it contends
`each limitation of claim 1 is taught or suggested by Schnuckle ’455 as well
`as detailed analysis of the additional limitations of dependentclaim 2. Jd. at
`34-36. Wehave reviewed Petitioner’s evidence and argument, and find that
`
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`Petitioner has sufficiently shown Schnuckle ’455 teaches or suggests each
`limitation of the challenged claimsat this stage of the proceeding.
`Patent Ownerargues “Schnuckle does not teach or suggest ‘chaotic
`pivoting,’ alone or in combination with any othercited reference.” Prelim.
`Resp. 17. Morespecifically, Patent Owner contends“‘itis the lack of
`modulation or control over the pivotally mounted structure that create[s]
`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 donot 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
`modulation or control” for chaotic motion. See id. Thus, we are not
`persuaded by Patent Owner’s argumentthat Schnuckle *455 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 {J 57-58). In particular, Patent Owner
`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. /d.; Ex. 2003 {J 57-58.
`At this stage of the proceeding, we are not persuaded. Petitioner’s
`expert opines that it would have been obviousto a person of ordinary skill
`that a realistic flickering effect as taught in Schnuckle ’455 “would have
`been produced due to random or unpredictable movement of the pendulum
`rather than a rhythmic or periodic movement.” Ex. 1002 {{] 76-77. Patent
`Ownerandits expert contend that only Schnuckle °455’s driving force is
`
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`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 whether to
`institute this inter partes review. See 37 C.F.R. § 42.108(c).° We also note
`that the Federal Circuit preliminarily determined that the requirementof
`chaotic movement seemed to be met by Schnuckle ’455’s “discussion of
`chaotic forces that can articulate the flame reflector ofthe candle device.”
`Luminara, 814 F.3d at 1354.
`For the reasons discussed above, based on the current record, we
`
`determine Petitioner has shown a reasonablelikelihood of prevailing with
`respect to its obviousnesschallenge to claims 1 and 2 based on Schnuckle
`
`°455.
`
`4 We note that Patent Owner’s expert’s testimony was prepared for other
`proceedings and does notdirectly address the challenged claimsat issue in
`this proceeding. See Ex. 2003.
`5 We also disagree with Patent Owner’s contention that Dr. Delson,
`Petitioner’s expert, admitted that Schnuckle ’455 includes insufficient
`information to determine whether it teaches chaotic motion. Prelim. Resp.
`21-24. When that testimony is viewed as a whole,it is clear that Dr. Delson
`was asked to assumecertain embodiments in Schnuckle ’455 lacked any
`driving force other than someone moving the pendulum memberto the side
`andletting it fall. See Ex. 2001, 57:16-73:21. Dr. Delson also qualified his
`answersduring his testimony as limited to mathematical chaos(see id.), and
`as discussed above, Patent Ownerdoes not appear to propose that we adopt a
`mathematical definition of chaosin this proceeding(see Prelim. Resp.8 n.3,
`9).
`
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`IPR2016-01834
`Patent 8,727,569 B2
`
`B. Asserted Obviousness Over Schnuckle ’455 and Baba
`
`1. Overview ofBaba
`Babadescribes a “pendulum driver which enables a pendulum to
`swing with an irregular period” for use in decorative pendulums or displays.
`Ex. 1005, Abstract, 94. Figures 1 and 2 are reproduced below:
`
`(Fig. 1]
`
`(Fig. 2]
`
`Figures 1 and 2 illustrate a pendulum driver as described in Baba. In Figures
`1 and 2, pendulum 2 includes “swing-beam” 4, with magnets 5 mountedat
`its lower end, and pendulum 2 is mounted on support shaft 3.
`/d. 98. An
`ornament “K”is attached to the upper end of swing-beam at 4a. Id.8, 12.
`Controlled electricity is supplied to coil 7, which, in conjunction with
`magnetic member10,causesirregular oscillations in pendulum 2. Jd. {{ 12,
`14. The pendulum driver can be used asa decorative pendulum for displays,
`clocks, and a “wide range of applications.” Jd. J 18.
`
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`IPR2016-01834
`Patent 8,727,569 B2
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`2. Claims 4, 5, 20, 21, 24, and 25
`
`Petitioner contends that claims 4, 5, 20, 21, 24, and 25 would have
`
`been obvious over Schnuckle ’455 and Baba. Pet. 36-50. We have
`
`reviewedthe 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 obviousnesschallenge.
`For example, dependentclaims 4, 5, 21, and 25all recite limitations
`related to the time-varyingsignal being a square wavethatis intermittently
`interrupted. Ex. 1001, 24:5—10, 25:11-16, 26:24-26. Petitioner contends
`that square waves were well knownto a personofordinary skill in theart.
`Pet. 39-40 (citing Ex. 1002 49 89-97; Ex. 1028, 583; Ex. 1027, 422-426).
`Petitioner further contends that Baba teaches a magnetically-driven
`pendulum that movesin response to a magneticfield thatis generated by a
`coil. Jd. at 40 (citing Ex. 1005 at Abstract, J] 6, 10, 12). According to
`Petitioner, Baba’s coil is driven by circuits on a printed circuit board, which
`intermittently interrupt the current supplied to drive the coil. Jd. (citing Ex.
`
`1005 JJ 11, 15, 18).
`Petitioner also provides a sufficiently persuasive rationale for
`combining the teachings of Schnuckle ’455 and Baba. Specifically,
`Petitioner contendsthat it would have been obvious to a person of ordinary
`skill “to combine the teachings of Schnuckle 455 and Babatodrivethe
`electromagnets in Schnuckle 455’s imitation candle on an intermittent basis,
`and to provide a pauseor interruption, as taught by Baba,after a numberof
`pulses have been applied.” Jd. at 41. Petitioner contends a person of
`ordinary skill “would have been motivated to provide such an intermittent
`
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`IPR2016-01834
`Patent 8,727,569 B2
`
`supply current or voltage to the electromagnetso as to further vary the
`motion of andthustheflickering effect produced by the flame element.” Jd.
`Petitioner provides further analysis of claims4, 5, 21, and 25, as well
`as independentclaims 20 and 24. Jd. at 36-50. Wehave reviewed
`Petitioner’s evidence and argument, and find that Petitioner has sufficiently
`shownthe cited references teach each limitation of the challenged claims,
`and that Petitioner has provided a sufficiently persuasive rationale for
`combining those teachingsat this stage of the proceeding. Id.
`Patent Ownerargues only that Baba doesnot teach “chaotic pivoting”
`or “chaotic motion” and, therefore, does not remedythe alleged deficiency
`in Schnuckle °455. Prelim. Resp. 25-26. As discussed above, wefind
`Schnuckle ’?455 teachesthe recited “chaotic motion,” and we do not read
`“chaotic pivoting” into the claimsas a separate requirement. See Sections
`
`LE.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 to its obviousness challengeto claims4, 5, 20, 21, 24, and 25 over
`Schnuckle *455 and Baba.
`
`C. Asserted Obviousness Over Schnuckle ’455 and Yiu
`
`1. Overview of Yiu
`Yiu describes a windless windchimeactivation device with an
`electromagnetthat interacts with a permanent magnet positioned on the
`sound-inducing memberof a windchime to activate the windchimesin the
`absence of wind. Ex. 1006, Abstract. In one embodiment, Yiu applies a
`series of square pulses to its electromagnet during time T! and then imposes
`a time delay T2 before resuming square pulses. Jd. at 3:52-4:8, Fig. 10.
`
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`IPR2016-01834
`Patent 8,727,569 B2
`
`2. All challenged claims
`Petitioner contendsthat claims 1, 2, 4, 5, 17, 20, 21, 24, and 25(all
`challenged claims) would have been obvious over Schnuckle *455 and Yiu.
`Pet. 50-70. We have reviewedthe information provided by Petitioner,
`including the relevant portions 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 obviousness
`
`challenge.
`In particular, Petitioner relies on Schnuckle ’455’s teachings as
`discussed above and furtherrelies on Yiu’s teachings ofa drive signal
`defined by a square wave with pausesorinterruptions. Pet. 50-70.
`Petitioner also contends Yiu teachesa “frequency modulated signal” as
`recited in dependent claim 17. Jd. at 61-63. Onthis record, Petitioner
`further providesa sufficiently persuasive rationale for combining the
`teachings of Schnuckle ’455 and Yiu becauseboth seek to simulate the
`movementof an object blowing in the wind, and because a person of
`ordinary skill would have understood that use of Yiu’s intermittent square
`wave signals would have enhancedtheirregular movements of Schnuckle
`°455’s candle pendulum. Jd. at 56.
`Wehave reviewedPetitioner’s evidence and argument, and findthat
`Petitioner ha