Levitation Arts v. Flyte - Decision Denying Institution of PGR
Levitation Arts v. Flyte - Decision Denying Institution of PGR
gov Paper: 14
571-272-7822 Entered: January 17, 2019
v.
FLYTE LLC,
Patent Owner.
____________
Case PGR2018-00073
Patent D799,100 S
____________
DECISION
Denying Institution of Post-Grant Review of the Challenged Claim
35 U.S.C. § 324(a)
PGR2018-00073
Patent D799,100 S
I. INTRODUCTION
A. Background
Levitation Arts, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting post-grant review of the sole design claim for a “levitating light
bulb and base” as disclosed in U.S. Patent D799,100 S (Ex. 1001,
“the ’100 Patent”). Flyte LLC (“Patent Owner”) filed a Preliminary
Response. Paper 13 (“Prelim. Resp.”).
We have authority to determine whether to institute a post-grant
review under 35 U.S.C. § 324. Based on the information presented in the
Petition and the Preliminary Response, we determine that Petitioner fails to
demonstrate that it is more likely than not that the claim of the ’100 Patent is
unpatentable. We, thus, deny the Petition and do not institute a post-grant
review of the challenged claim.
B. Related Matters
For purposes of this Decision, we accept Petitioner’s statement that
“[t]here are no pending legal matters involving the ’100 Patent.” Pet. 1.
Patent Owner did not file mandatory notices as required by our rules or
oppose Petitioner’s statement of related matters. See 37 C.F.R. § 42.8(a)(2)
(requiring patent owner to file mandatory notices that identify, among other
things, related matters, within 21 days of service of a petition); see generally
Prelim. Resp. (nowhere disputing Petitioner’s statement of related matters).
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Ex. 1001, Fig. 1. Figure 1 of the ’100 Patent is a line drawing of a front,
right perspective view of a levitating light bulb and base.
Ex. 1001, Fig. 2. Figure 2 of the ’100 Patent is a line drawing of a right
view of the levitating light bulb and base shown in Figure 1.
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Ex. 1001, Fig. 6. Figure 6 of the ’100 Patent is a line drawing of a top view
of the levitating light bulb and base shown in Figure 1.
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Ex. 1002, Fig. 1.2. Figure 1.2 is a photograph of a front perspective view of
a levitating light bulb and base reproduced from the European application.
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Ex. 1002, Fig. 1.6. Figure 1.6 is a photograph of a top view of a levitating
light bulb and base reproduced from the European application.
In Petitioner’s view, the ’100 Patent line drawings depict “seven
LEDs”— light emitting diodes—“arranged in a hexagonal horizontal pattern
with a horizontally oriented LED located at each point of the hexagon and a
seventh LED vertically oriented at the center of the design.” Pet. 5 (citing
Ex. 1003 ¶ 35). Petitioner asserts that “[t]he vertical alignment of the seven
LEDs gives the design, claimed in the ’100 Patent, the appearance of a
single horizontal lightbulb filament from an elevational view.” Id.
According to Petitioner, “there is nothing in the 2015 Model that would
suggest that the Patent Owner was in possession of a base and floating light
bulb with the horizontally aligned seven LED lighting element[s] claimed in
the ’100 Patent.” Id. at 7. By way of support, Petitioner advances an
illustration that depicts, in side-by-side comparison, examples of the patent
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line drawings (on the left) alongside examples of priority photographs (on
the right). We reproduce that illustration below.
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claimed” to derive the benefit of the filing date of a priority application, but
must provide a description that will “clearly allow persons of ordinary skill
in the art to recognize that [the applicant] invented what is claimed.” In re
Daniels, 144 F.3d at 1456 (quotation omitted).
The critical inquiry is whether the European application “reasonably
conveys to the artisan that the inventor had possession at that time of the
later claimed subject matter.” Pet. 6; Prelim. Resp. 9 (both parties,
enunciating the applicable standard by citation to In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983)). We reproduce below three illustrations
advanced by Patent Owner that compare complete line drawings from
the ’100 Patent (not isolated or enlarged portions of those drawings) to
complete priority photographs (not isolated or enlarged areas within the
photographs).
Prelim. Resp. 10. The above illustration compares a front perspective view
of the levitating light bulb and base design as claimed in the ’100 Patent (on
the left) with a priority photograph from the European application (on the
right).
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Id. at 12. The above illustration compares a top view of the levitating light
bulb and base design as claimed in the ’100 Patent (on the left) with a
priority photograph from the European application (on the right).
In our view, Petitioner’s micro-analysis of an enlarged and isolated
feature (namely, the light bulb filament) is misplaced. Pet. 9 (enlarged
filament comparison). The relevant inquiry is whether “the design depicted
in the original photographs” falls “within a range of reasonableness
required for providing sufficient written description.” Id. (quoting Skechers
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1
The cited paragraphs from Mr. Krumpe’s declaration include additional
information that is not discussed in the Petition; therefore, we accord it no
weight. 37 C.F.R. § 42.6(a)(3) (prohibiting a petitioner from incorporating
by reference information from a supporting document into a petition).
Alternatively, the additional information provides no stronger support for
Petitioner’s position than does the information actually discussed in the
Petition. See, e.g., Ex. 1003 ¶ 44 (red and green annotations to enlarged
filament comparison), ¶ 47 (enlarged filament comparison from top view
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perspective). Mr. Krumpe engages in “an excessively critical micro-analysis
that any observer” of the actual patent line drawings and priority
photographs “would be hard-pressed to discern.” IPR870, Paper 8, 14; see,
e.g., Ex. 1003 ¶¶ 44, 47 (reproducing actual patent figures and priority
photographs, but relying on enlarged, isolated views of the bulb filament).
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170989 *54 (N.D. Ill. 2015)). Those differences were insufficient to defeat
priority in the Weber-Stephen case. Id. Similarly, in the present case, the
relatively minor difference in a single aspect of the overall appearance,
amplified by Petitioner in the enlarged filament comparison, is insufficient
to defeat priority. See supra 8 (reproducing enlarged filament comparison).
Petitioner also directs us to a Federal Circuit decision, arguing that
“the introduction of a single boundary on a previously disclosed surface
constituted new matter resulting in [a] priority document failing to support
the claimed invention.” Pet. 7 (citing In re Owens, 710 F.3d 1362, 1366
(Fed. Cir. 2013)). The Owens case concerned a bottle design, and the
Federal Circuit determined that an original line drawing of an “undivided
center-front panel” on the bottle did not reasonably convey possession of a
“trapezoidal top portion of that center-front panel,” which the applicant
sought to claim separately in a continuation application. In re Owens, 710
F.3d at 1368. We reproduce below figures from the Owens decision that
illustrate the design differences that were before the Federal Circuit:
In re Owens, 710 F.3d at 1363–66. The above figures depict three line
drawings of a bottle as set forth in the Owens decision. The drawing on the
left includes a boundary line added by the applicant during prosecution of a
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II. ANALYSIS
Petitioner asserts five grounds of unpatentability against the
’100 Patent claim, all of which are based on obviousness under 35 U.S.C.
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2
We adopt Petitioner’s convention and refer to Exhibit 1007 as “the Event
Page.” Pet. 3. Petitioner describes the Event Page as “a public event page
on Facebook.com that included [an] image of a floating light bulb.” Id. at;
see id. at vii (identifying Ex. 1007).
3
We adopt Petitioner’s convention and refer to Exhibit 1009 as
“Lieberman.” Pet. 4. Petitioner describes the reference as “Content
retrieved from the Wayback Machine in association with the Wayback
URLs https://web.archive.org/web/20140513181836/http://bea.st:80/
sight/lightbulb and https://web.archive.org/web/20140513181836/
http://bea.st:80/sight/lightbulb/pics/full.01.jpg.” Pet. vii (identifying
Ex. 1009).
4
A recent amendment to the rule does not apply here, because the Petition
was filed before November 13, 2018. See “Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
be codified at 37 C.F.R. pt. 42).
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patented design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103
(Fed. Cir. 1996). We address those two steps in turn.
The line drawings set forth in the ’100 Patent reveal the correct visual
impression created by the patented design as a whole. Ex. 1001, Figs. 1–7.
Those figures reveal a design that creates an overall impression of a light
bulb levitating above a square base, in which the light bulb includes a
smooth region somewhat larger than the bottom portion of the bulb (aptly
described by Patent Owner as “a cylindrical cap tapering towards the top of
the bulb” (Prelim. Resp. 3)) and, further, in which the light bulb is
transparent, revealing two internal, parallel vertical wires and seven LEDs in
a hexagonal arrangement forming the light bulb filament. See, e.g., supra 3–
4 (reproducing Ex. 1001, Figs. 1, 2, 6).
We next determine whether Petitioner identifies a single reference
that creates basically the same visual impression as the patented design.
Durling, 101 F.3d at 103. Such a reference, commonly called a Rosen
reference, must have “design characteristics” that “are basically the same as
the claimed design.” Prelim. Resp. 2 (quoting In re Rosen, 673 F.2d 388,
391 (CCPA 1982)).
Petitioner asserts that “Lieberman discloses the same basic design as
Figures 1–7 of the ’100 Patent.” Pet. 38 (citing Ex. 1003 ¶ 84). For support,
Petitioner relies on the following design disclosed in Lieberman (re-oriented
for comparison to the claimed design):
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Ex. 1003 ¶ 112; see Pet. 42 (citing Ex. 1003 ¶ 112). The above illustration is
a side-by-side comparison of a photograph labeled “Lieberman Bulb” that
does not appear in the Lieberman reference (on the left) and a line drawing
of the bulb portion of the levitating bulb and base design claimed in the
’100 Patent (on the right). In this illustration, Lieberman’s “hidden
circuitry” is superimposed over Lieberman’s opaque light bulb. Ex. 1009, 2.
We refer to this illustration as “the overlaid image.” See Ex. 1003 ¶ 112 n.7
(explaining that the “Lieberman Bulb” depicted in the illustration represents
“[t]wo images from Lieberman reference overlaid”).
Petitioner does not explain how or why “hidden” structures (Ex. 1009,
2) that are not visible in Lieberman’s levitating light bulb and base design
contribute to the overall visual impression of Lieberman’s design. Pet. 39–
43. Further, the overlaid image includes disorganized wires and a disorderly
LED arrangement that does not remotely suggest a hexagon. Ex. 1003
¶ 112. The claimed design, by contrast, includes two parallel, vertical wires
and seven LEDs in a hexagonal arrangement in a bulb having a cylindrical
cap with no threading. The overlaid image, even if somehow representative
of the overall visual impression of the Lieberman design, does not create
basically the same visual impression as the patented design.
Petitioner fails to identify “a single reference that creates ‘basically
the same’ visual impression” as the patented design. Durling, 101 F.3d at
103. Given that failure, we do not reach the second step of the obviousness
inquiry, which involves assessing whether the additional references are so
related that the appearance of certain ornamental features in one would
suggest the application of those features to the other. In re Rosen, 673 F.2d
at 391; In re Glavas, 230 F.2d 447, 450 (CCPA 1956).
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instituted.
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FOR PETITIONER:
Brian Lynch
Matthew McAndrews
NIRO MCANDREWS, LLC
[email protected]
[email protected]
Nigamnarayan Acharya
LEWIS BRISBOIS BISGAARD & SMITH LLP
[email protected]
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