Docket No. 2018-1629, -1631, -1633
IPR2015-01352, -10656, -01657, -01658
LOURIE, DYK, TARANTO
August 16, 2018
Brief summary: Board finding that § 315(b) time-bar (IPR must be filed within one year of complaint servce) vacated as the bar applies to complaint filed outside of one-year timeframe but voluntarily dismissed without prejudice (Click-To-Call, FC 2018 (en banc)). Board’s obviousness decisions affirmed.
Summary: Luminara appealed the Board’s finding Luminara’s claims relating to flameless candles invalid for obviousness in three IPRs requested by Shenzhen Liown Electronics (“Liown”). Luminara appealed “the Board’s decision as to one claim from each patent and asserts that the Board’s” finding that the 35 U.S.C. § 315(b) time-bar does not apply as to one of the patents (US 8,070,319) (§ 315: IPR “may not be instituted if the petition…is filed more than 1 year after the date on which the petitioner…is served with a complaint alleging infringement”). An initial complaint was filed against Liown by Luminara more than one year before Liown filed an IPR against the ‘319 patent, but was voluntarily dismissed without prejudice before the one-year deadline which was later re-filed, and the Board concluded the § 315(b) did not apply to the first complaint. The FC panel first explained that the § 315(b) issue “is reviewable under our en banc decision in Wi-Fi One” (FC 2018). It also explained its en banc August 16, 2018 decision that the “section 315(b)’s time-bar applies to bar institution when an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the [DC] action in which the petitioner was so served was voluntarily dismissed without prejudice” (Click-To-Call, FC 2018). The FC panel concluded that the Click-To-Call “scenario” applied to this situation, and therefore vacated “the Board’s final written decision as to the ‘319 IPR and remanded it for dismissal of that IPR.” The FC panel then addressed “the obviousness rejections as to the ‘166 and ‘869 patents” (“claim constructions de novo and…underlying factual determinations involving extrinsic evidence for substantial evidence” (In re Man Mach., FC 2016). Luminara argued that the Board incorrectly found claim 14 of the ‘166 patent would have been obvious over the prior art because, e.g., it does not disclose “a claimed pivot hole that is ‘larger in diamter’ than the support element, ‘whereby the flame body swings or pivots freely about the support element’” (e.g., “the claim limitation necessitates movement in additional directions”). The FC panel agreed with the Board, however, that “the conventional usage of rotation about a structure suggests movement relative to the structure” and “that substantial evidence supports the Board’s conclusion that if relative movement is possible, a person of ordinary skill would know that the pivot hole is larger in diameter than the rod.” Regarding claim 34 of Luminara’s ‘869 patent, Luminara argued it was not afforded proper notice, because the differences between the Liown’s petition and Board’s decision “represents a change in the obviousness theory” but the FC panel concluded that “[t]he Board did not change the obviousness argument midstream”. Thus, the Board’s obviousness decisions were affirmed.
Federal Circuit summaries 