IN THE UNITED STATES PATENT AND TRADEMARK OFFICE …fishpostgrant.com/wp-content/uploads/IPR2015-01183.pdf · 2017. 4. 22. · (“IPR”) and that the Petitioner is not barred or

Petition for Inter Partes Review of U.S. Patent No. 8,926,137

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Luminara Worldwide, LLC

Petitioner

v.

Shenzhen Liown Electronics Company Ltd.

Patent Owner

U.S. Patent No. 8,926,137

Issued: January 6, 2015 Filed: January 22, 2014

First Named Inventor: Xiaofeng Li

Title: Electronic Lighting Device And Method For Manufacturing Same

Inter Partes Review Case No. ----

PETITION FOR INTER PARTES REVIEW Mail Stop Patent Board Patent Trial and Appeal Board P.O. Box 1450 Alexandria, VA 22313-1450


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TABLE OF CONTENTS

EXHIBIT LIST (37 C.F.R. § 42.63) ........................................................................ vi

PETITION FOR INTER PARTES REVIEW ............................................................. 1

I. Introduction ......................................................................................................... 1

II. Compliance With Requirements For A Petition For Inter Partes Review ......... 2

A. Certification that Patent May Be Contested by the Petitioner via Inter Partes Review (37 C.F.R. § 42.101, 102(a)(2) & 104(a)) ..................................... 2

B. Time for Filing (37 C.F.R. § 42.102(a)(2)) ................................................... 3

C. Fee for Inter Partes Review (37 C.F.R. § 42.15(a)) ..................................... 3

D. Mandatory Notices (37 C.F.R. § 42.8(b)) ..................................................... 3

1. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)): ........................................ 3

2. Related Matters (37 C.F.R. § 42.8(b)(2)): .................................................. 3

3. Lead And Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ............................... 4

E. Proof of Service (37 C.F.R. §§ 42.6(e) and 42.105(a)) ................................. 4 III. Identification of Claims Being Challenged (37 C.F.R. § 42.104(b)) ................. 4

IV. Threshold Requirement for Inter Partes Review................................................ 7

V. Relevant Information Concerning The Contested Patent ................................... 7

A. Prosecution History of the ‘137 Patent ......................................................... 7

B. Effective Filing Date ..................................................................................... 8

C. Brief Description of the ‘137 Patent ............................................................. 8

D. Construction of Terms Used in the Claims under 37 C.F.R. §42.104(b)(3) . 9

1. Positioned Near ........................................................................................ 10

2. Semi-Transparent Characteristic .............................................................. 11


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3. Oscillating Magnetic Field ....................................................................... 11

4. Causing Movement .................................................................................. 12

5. Interacting With ........................................................................................ 12 VI. Precise Reasons For Relief Requested .............................................................. 12

A. Claims 1-9, 14-17 and 19-20 Are Anticipated By Schnuckle ..................... 13

B. Schnuckle 2, Kitchen, and Lin Render Obvious Claims 9-13 and 17-18 ... 25

C. Schnuckle 2 and Schnuckle 1 Render Obvious Claims 1-20 ...................... 29

D. Lin and Schnuckle 2 Render Obvious Claims 1-11 and 14-20 ................... 45 VII. Conclusion ......................................................................................................... 60


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TABLE OF AUTHORITIES

Cases DyStar Textilfarben GmbH & Co. v. C. H. Patrick Co., 464 F. 3d 1356 (Fed. Cir. 2006) ............................................................................. 6 Graham v. John Deere Co., 383 U.S. 1 (1966) ...............................................................................................5, 6 In re Cuozzo Speed Technologies, LLC, __F. 3d___, 2015 WL 448667 (Fed Cir. 2015) .................................................... 10 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ...........................................................................................5, 6

Statutes 35 U.S.C. § 102 ......................................................................................................2, 4 35 U.S.C. § 102(a) ............................................................................................ 26, 30 35 U.S.C. § 102(e)(2) ........................................................................................ 26, 30 35 U.S.C. § 103 ......................................................................................................2, 4 35 U.S.C. § 311 .......................................................................................................... 1 35 U.S.C. § 314(a) ..................................................................................................... 7 35 U.S.C. § 315(e)(1) ................................................................................................. 3

Other Authorities MPEP § 2143 ............................................................................................................. 6

Regulations 37 C.F.R. § 42.6(c) ..................................................................................................... 4 37 C.F.R. § 42.6(e) .................................................................................................... 4 37 C.F.R. § 42.8(b) .................................................................................................... 3 37 C.F.R. § 42.8(b)(1) ................................................................................................ 3 37 C.F.R. § 42.8(b)(2) ................................................................................................ 3 37 C.F.R. § 42.8(b)(3) ................................................................................................ 4 37 C.F.R. § 42.10(b) .................................................................................................. 4


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37 C.F.R. § 42.15(a) ................................................................................................... 3 37 C.F.R. § 42.100 ..................................................................................................... 1 37 C.F.R. § 42.100(b) ................................................................................................ 9 37 C.F.R. § 42.101 ..................................................................................................... 2 37 C.F.R. § 42.102(a)(2) ............................................................................................ 3 37 C.F.R. § 42.104(b) ................................................................................................ 4 37 C.F.R. § 42.104(b)(3) ............................................................................................ 9 37 C.F.R. § 42.105(a) ................................................................................................. 4


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EXHIBIT LIST (37 C.F.R. § 42.63)

Exh. No. Concise Description of Exhibit

1001 Li: U.S. Patent No. 8,926,137, issued on January 6, 2015

1002 Schnuckle 2: U.S. Patent No. 7,837,355, issued on November 23, 2010

1003

Schnuckle 1: U.S. Patent No. 7,261,455, issued on August 28, 2007

1004

Lin: U.S. Patent No. 6,454,425, issued on September 24, 2002

1005 Kitchen: U.S. Patent No. 7,029,146, issued on April 18, 2006

1006 Declaration of Stuart Brown with Exhibit A attached

1007 Complaint - Luminara Worldwide, LLC v Liown Electronics Co. Ltd., et al., Case No. 0:14-cv-03103-SRN-FLN

1008 Prosecution History of U.S. Patent No. 8,926,137

1009 Complaint - Liown Electronics Co. Ltd. v. Luminara Worldwide, LLC, Case No. 0:14-cv-03112-JNE-JSM


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PETITION FOR INTER PARTES REVIEW

In accordance with 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioner

Luminara Worldwide, LLC (“Petitioner”) requests inter partes review of claims 1-

20 of U.S. Patent No. 8,926,137 (“the ‘137 Patent”), attached as Exhibit 1001.

I. Introduction

The ‘137 Patent claims an electronic lighting device having a movable flame

sheet. However, the inventions of the ‘137 Patent are nothing new. To the

contrary, Petitioner taught Shenzhen Liown Electronics Company Ltd. (“Patent

Owner”) precisely the same artificial flame technology reflected in the claims of

the ‘137 Patent during the parties’ former manufacturing relationship. In addition,

the various features recited in the claims were also described prior to the ‘137

Patent’s priority date in published patents and patent applications. The prior art

includes U.S. Patent No. 6,454,425, Exhibit 1004, (“Lin”), U.S. Patent No.

7,029,146, Exhibit 1005, (“Kitchen”), U.S. Patent No. 7,261,455, Exhibit 1003,

(“Schnuckle 1”), and U.S. Patent No. 7,837,355, Exhibit 1002, (“Schnuckle 2”), all

of which predate the effective filing date of the ‘137 Patent. In other words, the

‘137 Patent includes no patentable inventions.

During prosecution, the Patent Owner failed to disclose Lin and Kitchen.

The patent Owner also failed to disclose Schnuckle 1 and 2 despite knowledge of


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their materiality to the claimed subject matter. The Examiner became aware of

Schnuckle 1 and 2 only by Petitioner’s third party submission, yet failed to

properly consider the references.

As established below, Schnuckle 2 anticipates most of the claims of the ‘137

Patent under 35 U.S.C. § 102. In addition, Schnuckle 2 when combined with

Schnuckle 1, Lin and/or Kitchen render the claims of the ‘137 Patent obvious

under 35 U.S.C. § 103. Had the Office properly considered Schnuckle 2 and other

prior art references, the ‘137 Patent never would have issued. Thus, Petitioner

requests the Board to institute inter partes review of claims 1-20 of the ‘137 Patent

on the grounds set forth below.

II. Compliance With Requirements For A Petition For Inter Partes Review

A. Certification that Patent May Be Contested by the Petitioner via Inter Partes Review (37 C.F.R. § 42.101, 102(a)(2) & 104(a))

Petitioner certifies that the ‘137 Patent is available for inter partes review

(“IPR”) and that the Petitioner is not barred or estopped from requesting an IPR

challenging the claims of the ‘137 Patent on the grounds identified herein.

Specifically, Petitioner certifies that: (1) Petitioner is not the owner of the ‘137

Patent; (2) Petitioner has not filed a civil action challenging the validity of a claim

of the ‘137 Patent; (3) this Petition is filed less than one year after the date on

which the Petitioner, the Petitioner’s real party-in-interest, or a privy of the


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Petitioner was served with a complaint alleging infringement of the ‘137 Patent;

(4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR; and

(5) the ‘137 Patent is not a patent that is described in section 3(n)(1) of the Leahy-

Smith American Invents Act and therefore the petition may be filed after the issue

date of the ‘137 Patent pursuant to 37 C.F.R. § 42.102(a)(2).

B. Time for Filing (37 C.F.R. § 42.102(a)(2))

Petitioner is filing this Petition after the January 6, 2015 issue date of the

‘137 Patent.

C. Fee for Inter Partes Review (37 C.F.R. § 42.15(a))

Petitioner’s undersigned representatives authorize the PTO to charge

payment for fees due in connection with this Petition to Deposit Account 500341.

D. Mandatory Notices (37 C.F.R. § 42.8(b))

1. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)):

The real party in interest is Luminara Worldwide, LLC (“Petitioner”).

2. Related Matters (37 C.F.R. § 42.8(b)(2)):

The ‘137 Patent has been asserted in the following pending litigation: Case

No. 0:14-cv-03103-SRN-FLN before the U.S. District Court, District of

Minnesota, filed on August 5, 2014, and naming Petitioner as a cross-defendant.

See Exh. 1007. Petitioner was also named as a defendant in the now-dismissed


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litigation, Case No. 0:14-cv-03112-JNE-JSM before the U.S. District Court,

District of Minnesota, filed on August 6, 2014. See Exh. 1009.

3. Lead And Back-Up Counsel (37 C.F.R. § 42.8(b)(3))

Lead and back-up counsels are as follows:

Lead Counsel Backup Counsel John van Loben Sels Fish & Tsang LLP 333 Twin Dolphin Dr., Suite 220 Redwood City, CA 94065 Phone: 949-943-8300 Fax: 949-943-8358 [email protected]

Ryan S. Dean Fish & Tsang LLP 2603 Main St., Suite 1000 Irvine, CA 92614 Phone: 949-943-8300 Fax: 949-943-8358 [email protected]

Jennifer Shih Fish & Tsang LLP 333 Twin Dolphin Dr., Suite 220 Redwood City, CA 94065 Phone: 949-943-8300 Fax: 949-943-8358 [email protected]

Per 37 C.F.R. § 42.10(b), a power of attorney appointing these attorneys is

filed herewith. Service on Petitioner may be made by mail or hand delivery to Lead

Counsel or Backup Counsel at the addresses noted above.

E. Proof of Service (37 C.F.R. §§ 42.6(e) and 42.105(a))

Proof of service of this Petition is attached.

III. Identification of Claims Being Challenged (37 C.F.R. § 42.104(b))

Petitioner requests an Order canceling claims 1-20 of the ‘137 Patent as

unpatentable under 35 U.S.C. §§ 102 and/or 103. Petitioner’s detailed statement of

the reasons for the relief is set forth below in the section titled “Precise Reasons for

Relief Requested.” In accordance with 37 C.F.R. § 42.6(c), copies of the exhibits

are filed herewith. In addition, in support of the proposed grounds for


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unpatentability, this Petition is accompanied by the declaration of a technical

expert, Stuart Brown, Ph.D. Exh. 1006 (“Brown Decl.”).

The claims of the ‘137 Patent are all anticipated and/or obvious over the

prior art. The table below summarizes Petitioner’s grounds for unpatentability.

Sec. Reference

Anticipation (§ 102)

Obviousness (§ 103)

IV.A. Schnuckle 2 1-9, 14-17, and 19-20

IV.B. Schnuckle 2 and Schnuckle 1 10-13 and 18 IV.C. Schnuckle 2, Lin, and Kitchen 1-20 IV.D. Lin and Schnuckle 2 1-11 and 14-

20

Dr. Stuart Brown makes plain that all of the challenged claims lack

invention, not only because they had already existed in the prior art, but also

because they recite nothing more than the combination of prior art elements

according to known methods to yield predictable results. Brown Decl., Exh. 1006,

¶¶ 25-29.

Obviousness is a question of law resolved on the basis of underlying factual

determinations including: (1) the scope and content of the prior art, (2) any

differences between the claimed subject matter and the prior art, (3) the level of

skill in the art, and (4) where in evidence, so-called secondary considerations.

Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As the Supreme Court has

explained, “[t]he combination of familiar elements according to known methods is


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likely to be obvious when it does no more than yield predictable results.” KSR Int’l

Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); see also DyStar Textilfarben GmbH

& Co. v. C. H. Patrick Co., 464 F. 3d 1356, 1367 (Fed. Cir. 2006)(the obviousness

inquiry “not only permits, but requires, consideration of common knowledge and

common sense.”

The proposed combinations discussed below would have been obvious to a

person having ordinary skill in the art (“PHOSITA”). Brown Decl., Exh. 1006, ¶¶

25-29; see also Graham v. John Deere Co., 383 U.S. 1, 3 (1966)(“This is the test

of obviousness, i.e., whether ‘the subject matter sought to be patented and the prior

art are such that the subject matter as a whole would have been obvious at the time

the invention was made to a person having ordinary skill in the art to which said

subject matter pertains.”

For example, as discussed in detail below, a PHOSITA would have found

the ‘137 Patent’s claimed inventions obvious because (1) they merely combine

prior art elements according to known methods to yield predictable results (KSR,

550 U.S. at 416; MPEP § 2143); (2) they apply a known technique to a known

device (method, or product) ready for improvement to yield predictable results

(MPEP § 2143); and (3) the prior art has some teaching, suggestion, or motivation

that would have led a PHOSITA to modify the prior art or to combine teachings of

the prior art to arrive at the claimed invention (MPEP § 2143).


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IV. Threshold Requirement for Inter Partes Review

A petition for inter partes review must demonstrate “a reasonable likelihood

that the petitioner would prevail with respect to at least 1 of the claims challenged

in the petition.” 35 U.S.C. § 314(a). This Petition meets this threshold. As

explained below, for each ground of unpatentability presented, there is a

reasonable likelihood that Petitioner will prevail with respect to at least one of the

challenged claims. Brown Decl., Exh. 1006, ¶¶ 22-29.

V. Relevant Information Concerning The Contested Patent

A. Prosecution History of the ‘137 Patent

As mentioned above, the Patentee failed to disclose Lin and Kitchen during

prosecution of the ‘137 Patent. Exh. 1008. Schnuckle 1 and Schnuckle 2 were

submitted in a third party submission. Id. However, the Examiner failed to

distinguish or issue any rejection based on Schnuckle 1 or Schnuckle 2. Further,

the Notice of Allowance of November 13, 2014 failed to provide any reasons for

allowability of the claims. Id. In fact, only after Applicant’s representative

questioned why Schnuckle 1 and Schnuckle 2 had not been considered in October

23, 2014 Remarks, the Examiner indicated she reviewed the references. Id.


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B. Effective Filing Date

The ‘137 Patent is a continuation of application no. 13/325,754 (now U.S.

Pat. No. 8,789,986), which is a continuation-in-part of application no.

PCT/CN2011/076449, filed on June 27, 2011, which itself claims priority to China

Patent Appl. no. 2010 1 0211402, filed on June 28, 2010. See Exh. 1001. Since

the prior art references relied on for this Petition each has an effective prior art date

well before June 28, 2010, the ‘137 Patent is presumed to have an effective filing

date of June 28, 2010 for this Petition. Petitioner reserves the right to challenge the

presumed effective filing date of the ‘137 Patent in later proceedings.

C. Brief Description of the ‘137 Patent

The claims of the ‘137 Patent relate to an electric candle having a movable

sheet, which simulates a flame when lit. See Exh. 1001. Many of the claimed

features are shown below in annotated Figure 2 of the ‘137 Patent.

Top Surface Support Rod

LED

Through Hole

Outer Shell

Through Hole

Side Wall Magnets

Batteries

Coil

Flame Sheet


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However, the ‘137 Patent claims nothing more than what was known in the

prior art and to the Patent Owner long before the ‘137 Patent’s effective filing date,

namely a lighting device having an electromagnet that causes movement of a

flame-shaped piece, which is supported within the device’s housing and

illuminated by a light source as the piece moves. See Exh. 1002. This is evidenced

by comparing Figure 2 of the ‘137 Patent with Figure 1 of Schnuckle 2.

By filing for and obtaining a U.S. patent on prior art technology, the Patent

Owner unjustly received a patent for something it did not invent.

D. Construction of Terms Used in the Claims under 37 C.F.R. §42.104(b)(3)

In this proceeding, the claims must be given their broadest reasonable

construction in light of the specification. See 37 C.F.R. § 42.100(b); see also In re

Cuozzo Speed Technologies, LLC, __F. 3d___, 2015 WL 448667, *607 (Fed Cir.

2015). Petitioner submits that the level of ordinary skill in the art at the time of

LED

Support Rod

Magnet

Coil

Flame Sheet

Fig. 2 ‘137 Patent

Fig. 1 Schnuckle 2


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the alleged invention is a person with a bachelor’s degree or equivalent in

mechanical engineering such that a person would have substantial familiarity,

training, or experience with electric lighting devices because the design combines

both mechanical and electrical components to produce the product. Brown Decl.,

Exh. 1006, ¶15. The individual components are not sophisticated, consisting of

available components, so an entry level degree would be sufficient. Id.

Petitioner’s broadest reasonable interpretations presented below are amply

supported by the specification of the ‘137 Patent. Although Petitioner believes all

claim terms carry their plain and ordinary meaning, the following terms and

phrases might require construction and are therefore construed below for the

purpose of this proceeding:

Claim Term or Claim Limitation Proposed Construction

“positioned near” “located close to”

“semi-transparent characteristic” “translucent, capable of having light pass through”

“oscillating magnetic field” “magnetic field cycling between two states”

“causing movement” “act directly or indirectly with a force”

“interacting with” “directly or indirectly acting with”

1. Positioned Near

As used in the ‘137 Patent, the broadest reasonable interpretation of the term

“positioned near” is “located close to.” Brown Decl., Exh. 1006, ¶30. This


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interpretation is consistent with the specification of the ‘137 patent where the

swing mechanism is near the magnet. See Exh. 1001 at Fig. 2 (magnet [39] of

flame piece [31] is located close to coil [37]). This interpretation is also consistent

with the alternative use of the term “adjacent” in the specification to mean “next

to”, such as the embodiment shown in Figure 8. Id. at 7:42-44, “the coil [37] is

disposed adjacent to the lower end of the flame sheet [31]”.

2. Semi-Transparent Characteristic


“semi-transparent characteristic” is “translucent, capable of having light pass

through it.” Brown Decl., Exh. 1006, ¶30. The Specification discloses that the

“semitransparent material allows a portion of light to pass through”. See Ex. 1001

at 4:42-44.

3. Oscillating Magnetic Field


“oscillating magnetic field” is “varying magnetic field where the field strength

varies with time at a given location.” Brown Decl., Exh. 1006, ¶30. Applicant does

not attach a special meaning to the term “oscillating magnetic field,” which

appears in or is incorporated by reference in Claims 5 and 14. The Specification

discloses that a square wave pulse creates the oscillating magnetic field by cycling

on and off. See Ex. 1001 at 6:34-36, 59-61.


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4. Causing Movement


“causing movement” is “being the source that causes movement.” Brown Decl.,

Exh. 1006, ¶30. This interpretation is consistent with the specification of the ‘137

patent. See Ex. 1001 at 5:12-16 (“In order to assure the effect of swaying of the

flame sheet, the core is provided with a swing mechanism which maintains to act

on the flame sheet directly or indirectly with a force such that the flame sheet

maintains to sway or swing.”).

5. Interacting With


“interacting with” is “directly or indirectly acting with.” Brown Decl., Exh. 1006,

¶30. This interpretation is consistent with the specification of the ‘137 patent. See

Ex. 1001 at 5:13-16 (“Directly or indirectly acting with a force to move an object

from rest.).

VI. Precise Reasons For Relief Requested

The charts below detail where each claim limitation is taught in the prior art.

The left column recites the claim limitation, and the right column identifies where

that limitation is found in the prior art. Claim language is italicized, and language

from the prior art reference(s) is shown in brackets.


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Light Source

Flame Element

Top Portion Spot of Light

Support Wire

Magnet

Coil Magnetic Field

Magnetic Field

Housing

A. Claims 1-9, 14-17 and 19-20 Are Anticipated By Schnuckle 2

Schnuckle 2 published on April 1, 2010, which is prior to the effective filing

date of the ‘137 Patent, and thus qualifies as prior art under pre-AIA 35 U.S.C. §

102(a). Schnuckle 2 also qualifies as prior art under pre-AIA 35 U.S.C. §

102(e)(2) as the patent issued from “an application for patent by another filed in

the United States” on November 23, 2010, well before the effective filing date of

the ‘137 Patent. Schnuckle 2 describes apparatus for simulating a flickering flame

that has a housing 104. See Exh. 1002, Fig. 1. An annotated Figure 1 is shown

below.

Schnuckle 2 teaches each and every limitation in claims 1-9, 14-17 and 19-

20 of the ‘137 Patent. Brown Decl., Exh. 1006, ¶31. As shown above, Schnuckle 2

discloses the features of claim 1 of the ‘137 Patent including: (i) an outer shell 104


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with a through hole, (ii) a flame sheet 121 having a top portion 125 resembling a

flame-shape and a bottom portion with a magnet 124, (iii) a support rod 123

extending through a hole 122 in the flame sheet 121 and thereby supporting the

flame sheet 121 within the housing 104, (iv) a coil 101 that generates a varying

magnetic field that causes movement of the flame sheet 121, and (v) a light source

107 that illuminates a surface of the flame sheet 121. Id. Thus, Petitioner requests

the institution of an IPR to cancel claims 1-9, 14-17 and 19-20 as unpatentable.

The chart below identifies where each limitation of the claims is taught in

Schnuckle 2.

Claim 1 Schnuckle 2

An electronic candle comprising:

See Exh. 1002, abstract and Figures.

an outer shell shaped, in appearance, like a wax candle, and having a top surface intersecting with at least one side wall

Schnuckle 2 teaches an outer shell shaped, in appearance, like a wax candle, and having a top surface intersecting with at least one side wall. Id. at Fig. 1; see also 4:44-49, the candle can resemble “a conventional wax candle.”

the top surface comprising a through hole extending between an interior of the outer shell and exterior of the outer shell

Schnuckle 2 teaches an outer shell [104] having a top surface comprising a through hole extending between an interior of the outer shell [104] and exterior of the outer shell [104]. Id. at Fig. 1. See also Brown Decl., Exh. 1006, ¶31.

a flame sheet divided by a through hole, extending from one side of the flame sheet to the other, into a top portion and a bottom portion,

Schnuckle 2 teaches a flame sheet [121] divided by a through hole [122], extending from one side of the flame sheet to the other into a top portion [125] and a bottom portion. Id. at Fig. 1. See also Brown Decl., Exh. 1006, ¶31.


15

the top portion shaped, in appearance, to substantially resemble the shape of a flame when viewed from at least one perspective, and

Schnuckle 2 discloses the top portion [125] shaped, in appearance, to substantially resemble the shape of a flame when viewed from at least one perspective. Id. at Fig. 1; see also 8:58-60, “Flame silhouette element [125] comprises a flat or dimensional body of material preferably formed with a flame-shaped outline....” (emphasis added).

the bottom portion having a magnet positioned at or near a lower end thereof opposite the top portion

Schnuckle 2 discloses the bottom portion [portion of member 121 below hole 122] having a magnet [124] positioned at or near a lower end thereof opposite the top portion [125]. Id. at Fig. 1; see also 8:41-47.

a support rod within or adjacent the through hole of the top surface and extending through the through hole of the flame sheet, supporting the flame sheet thereon such that the top portion of the flame sheet extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet is exposed to the exterior of the outer shell, and such that the bottom portion of the flame sheet is beneath the support rod and within the outer shell, wherein the flame sheet is movable relative to the support rod;

Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet [portion of member 121 below hole 122] is beneath the support rod [123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶31. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod [123]. Id. at Fig. 1; 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”

a coil positioned near the magnet of the flame sheet and energized by an electronic control circuit to produce a changing

Schnuckle 2 discloses that the coil [101] is positioned near the magnet of the flame sheet “the invention can be implemented as a unitary, single stage body” Id. at 4:50-51.


16

magnetic field interacting with the magnet of the flame sheet, thereby causing movement of the flame sheet;

Schnuckle 2 teaches the coil [101] energizable to produce a changing magnetic field interacting with the magnet [124] of the flame sheet [121]. Id. at Fig. 1; 5:25-36, “In operation, coil 101 is energized by a time-varying electric current to produce a time-varying magnetic field, M1, in the vicinity of coil [101]…The additional static magnetic field may be used to alter power requirements as well as to selectively modify or define the shape of the magnetic field, in the vicinity of coil [101]” (emphasis added). Schnuckle 2 teaches the coil [101] is the source that causes movement of the flame sheet [121]. Id. at 8:54-57, “the coil in such a case may provide a donut shaped magnetic field such that attractive magnetic coupling provides an auto-start upon power up as it moves the nearby pendulum away from the neutral position.”

a battery compartment electrically connected with the control circuit and configured to receive one or more batteries for powering the control circuit; and

Schnuckle 2 teaches a battery compartment [201] electrically connected with the control circuit [203] and configured to receive one or more batteries for powering the control circuit [203]. Id. at 4:35-37 and 11:3-8, discussing the use of batteries for the power source. See also Fig. 2. The candle in Fig. 1 can include the battery compartment. Id. at 11:1-2.

a light-emitting element contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light from the light-emitting element is projected from within the interior of the outer shell, through the through hole of the top surface of the outer shell, and onto at least one

Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Id. at Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].”


17

surface of the top portion of the flame sheet that is exterior to the outer shell, thereby illuminating the flame sheet from a light source external to the flame sheet.

Schnuckle 2 contemplates that the light source “may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1. See also Brown Decl., Exh. 1006, ¶31.

Claim 2 Schnuckle 2

The electronic candle of claim 1, wherein the support rod comprises a bend to substantially maintain the flame sheet positioned at the location of the bend of the support rod.

Schnuckle 2 discloses a support rod [123] that comprises a bend to substantially maintain the flame sheet [121] positioned at the location of the bend of the support rod. See Id. at Fig. 1; 7:25-28, “support element 113 may include a rigid or semi-rigid wire such as a steel or steel alloy wire or rod and is preferably bent to form a low spot at a location where it is desired for pendulum to rest.”

Claim 3 Schnuckle 2

The electronic candle of claim 2, wherein the bottom portion of the flame sheet is weighted heavier than the top portion of the flame sheet so as to suspend the flame sheet with the top portion above the supporting rod.

Schnuckle 2 contemplates that the bottom portion may be heavier than the top portion so as to suspend the flame sheet with the top portion above the supporting rod. See Brown Decl., Exh. 1006, ¶31.

Claim 4 Schnuckle 2

The electronic candle of claim 3, wherein the flame sheet further comprises at least a portion having a semitransparent characteristic.

Schnuckle 2 discloses the flame sheet [121] has semitransparent characteristics. Id. at 10:56-63, “the element [125] (and its coloring/materials) may be chosen such that a portion of the received light [108] is reflected and a portion is allowed to pass through to an opposite or back side. For example, the texture, color, and/or material of the element [125] may be such that about 40 to 60 percent of the light (e.g., about half) is reflected while the


18

remaining light (e.g., about half) is passed through with the element [125] being at least partially translucent.”

Claim 5 Schnuckle 2

The electronic candle of claim 1, wherein the control circuit is configured to energize the coil so as to provide an oscillating magnetic field.

Schnuckle 2 teaches the production of an oscillatingmagnetic field by energized coils. Id. at Fig. 2; 5:7-13. “In some embodiments, permanent magnets (not shown) may be integrated in, placed on the surface of, or otherwise placed in proximity to coil 101 to provide static magnetic field that is cumulative with the time varying electromagnetic field produced when coil [101] is energized.”

Claim 6 Schnuckle 2

The electronic candle of claim 5, wherein the control circuit energizes the coil with a square wave.

Schnuckle 2 discloses a square wave. “The signal generator signal is a square wave signal or a sine wave signal”. Id. at 11:14-16.

Claim 7 Schnuckle 2

The electronic candle of claim 5, wherein the magnet of the flame sheet has a first polarity, and the coil produces a magnetic field oscillating between no polarity and a polarity opposite that of the first polarity.

Schnuckle 2 teaches oscillating between no polarity (i.e., off) and a polarity opposite that of the first polarity (i.e., on). “In one preferred embodiment, the generator [203] provides a square wave that is intermittently interrupted (e.g., every so many pulses it drops off and then restarts after a pause/interruption to enhance the chaotic effect). Id. at 11:19-23.

Claim 8 Schnuckle 2

The electronic candle of claim 1, wherein the light-emitting element is a light emitting diode (LED).

Schnuckle 2 discloses the light-emitting element [107] is a LED. “Light source 107 includes, for example, a light emitting diode(s) LEDs or other efficient low power light source.” Id. at 10:5-6.

Claim 9 Schnuckle 2

The electronic candle of claim 8, wherein the LED is

Schnuckle 2 teaches that the LED light source [107] may be projected at any angle. Id. Fig. 1; 10:17-20,


19

positioned at an upward angle so as to project light onto at least one surface of the top portion of the flame sheet at an angle to form generally an elliptical light spot on the at least one surface.

“Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].

“In the particular implementation [100] of FIG. 1, a spotlight [107] mounted above same silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Id. at 9:62-65.

Claim 14 Schnuckle 2



an outer shell having a top surface intersecting with at least one side wall,

Schnuckle 2 teaches that the electronic candle has an outer shell shaped, in appearance, like a wax candle and having a top surface intersecting with at least one side wall. Id. at Fig. 1; 4:44-49, the candle can resemble “a conventional wax candle.”

the top surface comprising a through hole extending between an interior of the outer shell and exterior of the outer shell,

Schnuckle 2 also teaches an outer shell [104] having a top surface comprising a through hole extending between an interior of the outer shell [104] and exterior of the outer shell [104]. Id. at Fig 1. See also Brown Decl., Exh. 1006, ¶31.


Schnuckle 2 teaches a flame sheet [121] divided by a through hole [122], extending from one side of the flame sheet to the other into a top portion [125] and a bottom portion. Id. at Fig 1. See also Brown Decl., Exh. 1006, ¶31.

the bottom portion having a magnet positioned at or near a lower end thereof opposite the top portion;

Schnuckle 2 discloses the bottom portion having a magnet [124] positioned at or near a lower end thereof opposite the top portion [125]. Id. at Fig. 1; 8:41-47. See also Brown Decl., Exh. 1006, ¶31.

a support rod within or adjacent the through hole

Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and


20

of the top surface and extending through the through hole of the flame sheet, supporting the flame sheet thereon such that the top portion of the flame sheet extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet is exposed to the exterior of the outer shell, and such that the bottom portion of the flame sheet is beneath the support rod and within the outer shell, wherein the flame sheet is movable relative to the support rod;

extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod [123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶31. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod. Id. at Fig. 1; 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”

a control circuit providing an oscillating magnetic field in which the magnet of the flame sheet is supported, the interaction between the oscillating magnetic field and the magnet causing movement of the flame sheet about the support rod;

Schnuckle 2 discloses a control circuit providing an oscillating magnetic field [coil 101] in which the magnet [124] of the flame sheet [121] is supported, the interaction between the oscillating magnetic field and the magnet [124] causing movement [i.e., is the source of movement] of the flame sheet [121] about the support rod [123]. “[T]he magnetic field M2, produced by magnet [115] causes magnet 124 to move either repulsively or attractively. That motion is translated through pendulum [121] to which same silhouette [125] is affixed as shown with second kinetic or random motion or displacement.” Id. at 9:6-10.

a battery compartment electrically connected with the control circuit and configured to receive one or more batteries for

Schnuckle 2 contemplates that the electronic candle consists of a battery compartment. Id. at Figs. 1-2; 11:1-2, the “kinetic flame device [100] (with components of flame device [100] having like numbers in drive [200]).”


21

powering the control circuit; and

a light-emitting element contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light from the light-emitting element is projected from within the interior of the outer shell, through the through hole of the top surface of the outer shell, and onto at least one surface of the top portion of the flame sheet that is exterior to the outer shell, thereby illuminating the flame sheet from a light source external to the flame sheet.

Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Id. at Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10: 17-20; Fig. 1. See also Brown Decl., Exh. 1006, ¶31.



Schnuckle 2 contemplates that the bottom portion may be heavier than the top portion so as to suspend the flame sheet with the top portion above the supporting rod. Brown Decl., Exh. 1006, ¶31.


The electronic candle of claim 14, wherein the magnet of the flame sheet has a first polarity, and the control circuit provides a

Schnuckle 2 teaches that the coil [101] produces a magnetic field at any polarity, which can oscillate. “While the present invention operates with any polar alignment of magnet 114, the polar alignment of magnet 114 and that of the electromagnetic field


22

magnetic field oscillating between no polarity and a polarity opposite that of the first polarity.

produced by coil [101] is coordinated or selected to produce desired results or kinetic movement/displacement.” Id. at 5:61-65.


The electronic candle of claim 14, wherein the light-emitting element is positioned at an upward angle so as to project light onto at least one surface of the top portion of the flame sheet at an angle.

Schnuckle 2 teaches that the LED [107] may be positioned to project light upwardly onto at least one surface of the top portion of the flame sheet at an angle. Id. at 10:17-20, “Light source [107] may project...upward, or at any angle to meet the needs of a particular application or implementation of device [100].”




an outer shell having a top surface intersecting at least one side wall,

Schnuckle 2 teaches that the electronic candle has an outer shell shaped, in appearance, having a top surface intersecting with at least one side wall. Id. at Fig. 1; 4:44-49, the candle can resemble “a conventional wax candle.”





the bottom portion being weighted heavier than the top portion;

Schnuckle 2 contemplates that the bottom portion may be heavier than the top portion so as to suspend the flame sheet with the top portion above


23

the supporting rod. Brown Decl., Exh. 1006, ¶31.

a support rod within or adjacent the through hole of the top surface and extending through the through hole of the flame sheet, supporting the flame sheet at a pivot point thereof between the top and bottom portions such that the top portion of the flame sheet extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet is exposed to the exterior of the outer shell, and such that the bottom portion of the flame sheet is beneath the support rod and within the outer shell, wherein the flame sheet is movable relative to the support rod;

Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod [123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶31. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod. Id. at 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”

a swing mechanism positioned near the bottom portion of the flame sheet and, when energized, causing movement of the bottom portion of the flame sheet, the movement of the bottom portion of the flame sheet when translated through the pivot point causing movement in the opposite direction of the top portion of the flame sheet;

Schnuckle 2 discloses a swing mechanism [coil 101] positioned near the bottom portion of the flame sheet and, when energized, causing movement of the bottom portion of the flame sheet, the movement of the bottom portion of the flame sheet when translated through the pivot point causing movement in the opposite direction of the top portion of the flame sheet. “Such pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced about the pivot point or mounting location.” Id. at 6:40-51.


24

Schnuckle 2 discloses the bottom portion of the flame sheet will translate into movement of the top portion of the flame sheet [125], “Second stage [105] generally serves to couple to the kinetic energy in the moving upper end of pendulum and translate that kinetic energy into motion of flame silhouette element or extension [125]”. Id. at 8:28-31. Schnuckle 2 thus contemplates that the swing mechanism positioned near the bottom portion of the flame sheet will cause movement in the top portion of the flame sheet. See also Brown Decl., Exh. 1006, ¶31.

a battery compartment electrically connected with the swing mechanism and configured to receive one or more batteries for energizing the swing mechanism; and

Schnuckle 2 teaches a battery compartment [201] electrically connected with the control circuit [203] and configured to receive one or more batteries for powering the control circuit [203]. Id. at 4:35-37 and 11:3-8, discussing the use of batteries for the power source. See also Fig. 2. Schnuckle 2 contemplates that the electronic candle consists of the battery compartment. Id. at 11:1-2, the “kinetic flame device [100] (with components of flame device [100] having like numbers in drive [200]).

a light-emitting element contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light from the light-emitting element is projected from within the interior of the outer shell, through the through hole of the top surface of the outer

Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Id. at Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element


25

shell, and onto at least one surface of the top portion of the flame sheet that is exterior to the outer shell, thereby illuminating the flame sheet from a light source external to the flame sheet.

[125].”

Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1. See also Brown Decl., Exh. 1006, ¶31.


The electronic candle of claim 19, wherein the bottom portion of the flame sheet comprises a magnet and the swing mechanism comprises a coil positioned near the magnet of the flame sheet, the coil energizable to produce a changing magnetic field interacting with the magnet of the flame sheet.

Schnuckle 2 teaches that the bottom portion of the flame sheet comprises of the coil [101] that is energizable to produce a changing magnetic field interacting with the magnet [124] of the flame sheet [121]. Id. at 5:25-36, “[i]n operation, coil [101] is energized by a time-varying electric current to produce a time-varying magnetic field, M1, in the vicinity of coil [101].” See also Fig. 1; 6:40-51.

B. Schnuckle 2, Kitchen and Lin Render Obvious Claims 9-13 and 17-18

As discussed above, Schnuckle 2 teaches each and every limitation of claims

1-8, 14-17 and 19-20.

Kitchen also teaches an electric candle having a hole in its top surface and

an outer shell formed with an irregular end surface. Kitchen published on October

23, 2003, prior to the effective filing date of the ‘137 Patent, and thus qualifies as

prior art under pre-AIA 35 U.S.C. § 102(a). Kitchen also qualifies as prior art

under pre-AIA 35 U.S.C. § 102(e)(2) as the patent issued from “an application for


26

Light Source

Flame Sheet

Plate

Light

Housing Opening

Opening

Fan

Base

patent by another filed in the United States” on April 18, 2006, well before the

effective filing date of the ‘137 Patent.

Lin also teaches an electric candle having a flame-shaped material that

moves as a result of swing mechanism. The material is illuminated via one or

more light sources disposed entirely within a housing. Lin issued from “an

application for patent by another filed in the United States” on September 24,

2002, which is prior to the effective filing date of the ‘137 Patent, and thus

qualifies as prior art under pre-AIA 35 U.S.C. § 102(e)(2). An annotated

embodiment of Lin is reproduced below.

One of ordinary skill in the art would have been motivated to combine the

teachings of the Schnuckle 2 Patent with that of Kitchen and Lin, as each reference

is directed to a similar purpose, namely the creation of a realistic flame effect for

an electric candle. Brown Decl., Exh. 1006, at ¶¶27-28. When combined, the


27

various components would operate in the same manner and achieve the same

result. Id. The chart below shows where each limitation of claims 9-13 and 17-18

is found in the prior art.

Claim 9 Schnuckle 2, Kitchen and Lin

The electronic candle of claim 8, wherein the LED is positioned at an upward angle so as to project light onto at least one surface of the top portion of the flame sheet at an angle to form generally an elliptical light spot on the at least one surface.

Schnuckle 2 teaches that the “[l]ight source [107] may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Exh. 1002, 10:5-6. In the particular implementation [100] of FIG. 1, a spotlight [107] mounted above same silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125]. See 9:62-65.

Lin teaches the light source [34] can be disposed to project light [7] upward onto at least one surface of a flame-like member [43]. See Lin, Exh. 1004, abstract; Fig. 5.


The electronic candle of claim 9, wherein the outer shell has a central axis and the LED is angled such that a central axis of the LED is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell.

Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Lin teaches the outer shell has a central axis and the LED [34] is angled such that a central axis of the LED [34] is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell. See Exh. 1004, Fig. 5.


The electronic candle of Schnuckle 2 teaches that the LED [107] may be


28

claim 9, wherein the outer shell has a central axis and the LED is angled such that a central axis of the LED is about 35 degrees from parallel to the central axis of the outer shell.

projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Lin teaches the outer shell has a central axis and the LED [34] is angled such that a central axis of the LED [34] is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell. See Exh. 1004, Fig. 5.


The electronic candle of claim 8, wherein at least a portion of the support rod is positioned between the LED and the top portion of the flame sheet, such that as light projects from the LED on the at least one surface of the top portion of the flame sheet, the support rod casts a shadow onto the at least one surface of the top portion of the flame sheet to simulate a candlewick.

Schnuckle 2 teaches at least a portion of the support rod is positioned between the LED and the top portion of the flame sheet, such that as light projects from the LED on the at least one surface of the top portion of the flame sheet, the support rod casts a shadow onto the at least one surface of the top portion of the flame sheet to simulate a candlewick. Exh. 1002, Fig. 1; 10:5-6. In embodiments where the light source is disposed within housing and light shines upwardly on the flame element 125, it is implicit that some of light would necessarily be blocked by the support rod, thus creating a shadow on a surface of flame element 125. See Brown Decl., Exh. 1006, ¶ 32. See also 11:38-39; 12:66-67.


The electronic candle of claim 1, wherein a sidewall portion of the outer shell is formed with an irregular end surface which is lower on one side and higher on another side, to simulate an irregular melting of

Kitchen discloses a sidewall portion of the outer shell is formed with an irregular end surface which is lower on one side and higher on another side, to simulate an irregular melting of sidewalls of the outer shell. Exh. 1005, Fig. 4, 3:16-19.


29

sidewalls of the outer shell.



Schnuckle 2 teaches that the “[l]ight source [107] may project… upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Exh. 1002, 10:5-6. “In the particular implementation [100] of FIG. 1, a spotlight [107] mounted above same silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” See 9:62-65. Lin teaches the light source [34] can be disposed to project light [7] upward onto at least one surface of a flame-like member [43]. See Lin, Exh. 1004, abstract; Fig. 5.


The electronic candle of claim 17, wherein the outer shell has a central axis and the light-emitting element is angled such that a central axis of the light-emitting element is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell.

Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Lin teaches the outer shell has a central axis and the LED [34] is angled such that a central axis of the LED [34] is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell. See Exh. 1004, Fig. 5.

C. Schnuckle 2 and Schnuckle 1 Render Obvious Claims 1-20

As discussed above, Schnuckle 2 anticipates claims 1-9, 14-17 and 19-20 of

the ‘137 Patent. Schnuckle 1 describes apparatus for simulating a flickering effect

having a candle housing, a simulated flame and a light source. Schnuckle 1


30

published on February 16, 2006, prior to the effective filing date of the ‘137 Patent,

and thus qualifies as prior art under pre-AIA 35 U.S.C. § 102(a). Schnuckle 1 also

qualifies as prior art under pre-AIA 35 U.S.C. § 102(e)(2) as the patent issued from

“an application for patent by another filed in the United States” on August 28,

2007, well before the effective filing date of the ‘137 Patent. Figure 16 illustrates

an exemplary embodiment of the device.

The inventors on the Schnuckle 1 and 2 overlap, which clearly evidences

that at the time of filing, one of ordinary skill in the art, here the inventor, had

knowledge of, and would be motivated to combine, the teachings of the Schnuckle

Patents. See Exh. 1006, Brown Decl. ¶26. Additionally, both patents set forth

similar purposes, and are directed to creating a flickering flame effect in an electric

light to simulate a real candle flame. See Fig. 3-6; see also 11:38-39; 12: 66-67,

Flame sheet

Top surface Light path

Housing

LED entirely within housing


31

Exh. 1002; and Fig. 2, Exh. 1003. Thus, as the combination of Schnuckle 2 and

Schnuckle 1 teaches each limitation in claims 1-20 of the ‘137 Patent, Petitioner

requests the institution of an IPR to cancel claims 1-20 as unpatentable. See Exh.

1006, Brown Decl. at ¶26. The chart below identifies where every limitation of the

claims is taught in Schnuckle 2 and Schnuckle 1.

Claim 1 Schnuckle 2 and Schnuckle 1


Schnuckle 2 teaches an electronic candle. See abstract and Figures.


Schnuckle 2 teaches an outer shell shaped, in appearance, like a wax candle, and having a top surface intersecting with at least one side wall. Id. at Fig. 1; see also 4:44-49, the candle can resemble “a conventional wax candle.” See also Schnuckle 1. Exh. 1003, Fig. 2.


Schnuckle 2 teaches an outer shell [104] having a top surface comprising a through hole extending between an interior of the outer shell [104] and exterior of the outer shell [104]. Exh. 1002, Fig. 1. See also Brown Decl., Exh. 1006, ¶32. Schnuckle 1 also teaches an outer shell [32] having a top surface comprising a through hole extending between an interior of the outer shell [32] and exterior of the outer shell [32]. See Exh. 1003, Fig. 2.


Schnuckle 2 teaches a flame sheet [121] divided by a through hole [122], extending from one side of the flame sheet to the other into a top portion [125] and a bottom portion. Exh. 1002, Fig 1. See also Brown Decl., Exh. 1006, ¶32.


32


Schnuckle 2 discloses the top portion [125] shaped, in appearance, to substantially resemble the shape of a flame when viewed from at least one perspective. Id. at Fig. 1; 8:58-60, “Flame silhouette element [125] comprises a flat or dimensional body of material preferably formed with a flame-shaped outline....” (emphasis added). Schnuckle 1 also discloses that the top portion resembles the shape of a flame, “element [12], which may be somewhat flame shaped.” See Exh. 1003, 3:38-39; see also 4:66-67.


Schnuckle 2 discloses the bottom portion having a magnet [124] positioned at or near a lower end thereof opposite the top portion [125]. See Exh. 1002, Fig. 1; 8:41-47. See also Brown Decl., Exh. 1006, ¶32. Schnuckle 1 also discloses a bottom portion having a magnet, “magnetic base” [330]. See Exh. 1003, 6:1; see also Fig. 7.

a support rod within or adjacent the through hole of the top surface and extending through the through hole of the flame sheet, supporting the flame sheet thereon such that the top portion of the flame sheet extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet is exposed to the exterior of the outer shell, and such that the bottom portion of the flame sheet is beneath the support

Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod[123] and within the outer shell [104]. See Exh. 1002, 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod [123]. Id. at Fig. 1; 6:40-44, “[s]uch pivotal support may be provided


33

rod and within the outer shell, wherein the flame sheet is movable relative to the support rod;

in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”

a coil positioned near the magnet of the flame sheet and energized by an electronic control circuit to produce a changing magnetic field interacting with the magnet of the flame sheet, thereby causing movement of the flame sheet;

Schnuckle 2 discloses that the coil [101] is positioned near the magnet of the flame sheet “the invention can be implemented as a unitary, single stage body” See 4:50-51. Schnuckle 2 teaches the coil [101] energizable to produce a changing magnetic field interacting with the magnet [124] of the flame sheet [121]. See Exh. 1002, Fig. 1; see also 5:25-36. (“In operation, coil 101 is energized by a time-varying electric current to produce a time-varying magnetic field, M1, in the vicinity of coil [101]…..The additional static magnetic field may be used to alter power requirements as well as to selectively modify or define the shape of the magnetic field, in the vicinity of coil [101]”) (emphasis added). Schnuckle 2 teaches the coil [101] is the source that causes movement of the flame sheet [121]. Id. at 8:54-57, “the coil in such a case may provide a donut shaped magnetic field such that attractive magnetic coupling provides an auto-start upon power up as it moves the nearby pendulum away from the neutral position.”


Schnuckle 2 teaches a battery compartment [201] electrically connected with the control circuit [203] and configured to receive one or more batteries for powering the control circuit [203]. Id. at 4:35-37 and 11:3-8, discussing the use of batteries for the power source. See also Fig. 2. Schnuckle 2 contemplates that the electronic candle consists of the battery compartment, the “kinetic flame device [100] (with components of flame


34

device [100] having like numbers in drive [200]). Id. at 11:1-2; Figs. 1-2.


Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Id. at Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1. Schnuckle 1 also discloses the light source is projected to at least one surface of the top portion of the flame sheet, “will cause light to reflect or diffuse, completely or partially, on at least one of the faces of the flame shaped surface.” Exh. 1003, 4:57-58; see also 7:19-29, LEDs [613] [614] are projected within the interior and from a light source external to the flame sheet (“these LEDs are angled upwardly to project cones of ultraviolet light when activated….Of course, an external source of power may be used, such as the light source [34]”). See also Brown Decl., Exh. 1006, ¶32.


The electronic candle of claim 1, wherein the support rod comprises a bend to substantially

Schnuckle 2 discloses a support rod [123] that comprises a bend to substantially maintain the flame sheet [121] positioned at the location of the bend of the support rod. See Exh. 1002, Fig. 1;


35

maintain the flame sheet positioned at the location of the bend of the support rod.

7:25-28, “support element 113 may include a rigid or semi-rigid wire such as a steel or steel alloy wire or rod and is preferably bent to form a low spot at a location where it is desired for pendulum to rest.”






Schnuckle 2 discloses the flame sheet [121] has semitransparent characteristics. Id. at 10:56-63, “the element [125] (and its coloring/materials) may be chosen such that a portion of the received light [108] is reflected and a portion is allowed to pass through to an opposite or back side. For example, the texture, color, and/or material of the element [125] may be such that about 40 to 60 percent of the light (e.g., about half) is reflected while the remaining light (e.g., about half) is passed through with the element [125] being at least partially translucent.”





36



Schnuckle 2 discloses a square wave. “The signal generator signal is a square wave signal or a sine wave signal”. Id. at 11:14-16; 17:11-12; 20:10-11.


The electronic candle of claim 5, wherein the magnet of the flame sheet has a first polarity, and the coil produces a magnetic field oscillating between no polarity and a polarity opposite that of the first polarity.

Schnuckle 2 teaches oscillating between no polarity (i.e., off) and a polarity opposite that of the first polarity (i.e., on). “In one preferred embodiment, the generator [203] provides a square wave that is intermittently interrupted (e.g., every so many pulses it drops off and then restarts after a pause/interruption to enhance the chaotic effect). Id. at 11:19-23.



Schnuckle 2 discloses the light-emitting element [107] is a LED. “Light source 107 includes, for example, a light emitting diode(s) LEDs or other efficient low power light source.” Id. at 10:5-6.



Schnuckle 2 teaches that the “[l]ight source [107] may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100]. Id. at 10:5-6. “In the particular implementation [100] of FIG. 1, a spotlight [107] mounted above same silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Id. at 9:62-65.

Schnuckle 1 also discloses the formation of an elliptical light spot on at least one surface, “The LEDs, when illuminated, will focus on flame portions [619], [625] as they oscillate creating an ultraviolet light effect suggesting a flame.” See Exh.


37

1003, 8: 4-6.


The electronic candle of claim 9, wherein the outer shell has a central axis and the LED is angled such that a central axis of the LED is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell.

Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Schnuckle 1 contemplates a specific angle, “ angling of the LEDs as disclosed catches more reflected light.” See Exh. 1003, 8:13-14.


The electronic candle of claim 9, wherein the outer shell has a central axis and the LED is angled such that a central axis of the LED is about 35 degrees from parallel to the central axis of the outer shell.

Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].”


The electronic candle of claim 8, wherein at least a portion of the support rod is positioned between the LED and the top portion of the flame sheet, such that as light projects from the LED on the at least one surface of the top portion of the flame sheet, the support rod casts a shadow onto the at least one surface of the top portion of the flame sheet to simulate a candlewick.

Schnuckle 2 teaches at least a portion of the support rod is positioned between the LED and the top portion of the flame sheet, such that as light projects from the LED on the at least one surface of the top portion of the flame sheet, the support rod casts a shadow onto the at least one surface of the top portion of the flame sheet to simulate a candlewick. Exh. 1002, Fig. 1; 10:5-6. In embodiments where the light source is disposed within housing and light shines upwardly on the flame element 125, it is implicit that some of light would necessarily be blocked by the support rod, thus creating a shadow on a surface of flame


38

element 125. See Brown Decl., Exh. 1006, ¶ 32. See also 11:38-39; 12:66-67.


The electronic candle of claim 1, wherein a sidewall portion of the outer shell is formed with an irregular end surface which is lower on one side and higher on another side, to simulate an irregular melting of sidewalls of the outer shell.

Schnuckle 1 also discloses the irregular melting of sidewalls of the outer shell, “protrusions [701] and [702] of varying lengths and configurations may be provided on the outer surface [703] to simulate dripping wax.”See Exh. 1003, 8:17-19.






the top surface comprising a through hole extending between an interior of the outer shell and exterior of the outer shell,





Schnuckle 2 discloses the bottom portion [portion of member 121 below hole 122] having a magnet [124] positioned at or near a lower end thereof opposite the top portion [125]. Id. at Fig. 1; 8:41-


39

47.


Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod[123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod. Id. at Fig. 1; 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”



a battery compartment electrically connected with

Schnuckle 2 contemplates that the electronic candle consists of a battery compartment. Id. at Figs. 1-2;


40

the control circuit and configured to receive one or more batteries for powering the control circuit; and

11:1-2, the “kinetic flame device [100] (with components of flame device [100] having like numbers in drive [200]).” Schnuckle 1 teaches a control circuit [302] configured to receive one or more batteries, “the control board [302] may be either battery operated (e.g. with a 5V battery).” Exh. 1003, 5:65-67.


Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Exh. 1002, Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1. Schnuckle 1 also discloses the light source is projected to at least one surface of the top portion of the flame sheet, “will cause light to reflect or diffuse, completely or partially, on at least one of the faces of the flame shaped surface.” Exh. 1003, 4:57-58; see also 7:19-29, LEDs [613] [614] are projected within the interior and from a light source external to the flame sheet (“these LEDs are angled upwardly to project cones of ultraviolet light when activated….Of course, an external source of power may be used, such as the light source [34]”).



41




The electronic candle of claim 14, wherein the magnet of the flame sheet has a first polarity, and the control circuit provides a magnetic field oscillating between no polarity and a polarity opposite that of the first polarity.

Schnuckle 2 teaches that the coil [101] produces a magnetic field at any polarity, which can oscillate. “While the present invention operates with any polar alignment of magnet 114, the polar alignment of magnet 114 and that of the electromagnetic field produced by coil [101] is coordinated or selected to produce desired results or kinetic movement/displacement.” Id. at 5:61-65.



Schnuckle 2 teaches that the LED [107] may be positioned to project light upwardly onto at least one surface of the top portion of the flame sheet at an angle. Id. at 10:17-20, “Light source [107] may project...upward, or at any angle to meet the needs of a particular application or implementation of device [100].” See also Brown Decl., Exh. 1006, ¶32.


The electronic candle of claim 17, wherein the outer shell has a central axis and the light-emitting element is angled such that a central axis of the light-emitting element is between about

Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].”


42

30 degrees and 40 degrees from parallel to the central axis of the outer shell.





Schnuckle 2 teaches that the electronic candle has an outer shell shaped, in appearance, having a top surface intersecting with at least one side wall. Id. at Fig. 1; 4:44-49, the candle can resemble “a conventional wax candle.”







a support rod within or adjacent the through hole of the top surface and extending through the through hole of the flame sheet, supporting the flame sheet at a pivot point thereof between the top and bottom portions such that

Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom


43

the top portion of the flame sheet extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet is exposed to the exterior of the outer shell, and such that the bottom portion of the flame sheet is beneath the support rod and within the outer shell, wherein the flame sheet is movable relative to the support rod;

portion of the flame sheet is beneath the support rod[123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod. Id. at 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.” See also Brown Decl., Exh. 1006, ¶32.


Schnuckle 2 discloses a swing mechanism [coil 101] positioned near the bottom portion of the flame sheet and, when energized, causing movement of the bottom portion of the flame sheet, the movement of the bottom portion of the flame sheet when translated through the pivot point causing movement in the opposite direction of the top portion of the flame sheet. Id. at Fig. 1. “Such pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced about the pivot point or mounting location.” Id. at 6:40-51. Schnuckle 2 discloses that the bottom portion of the flame sheet will translate into movement of the top portion of the flame sheet [125], “Second stage [105] generally serves to couple to the kinetic energy in the moving upper end of pendulum and translate that kinetic energy into motion of flame silhouette element or extension [125].” Id. at 8:28-31. Schnuckle 2 thus contemplates that the swing mechanism positioned near the bottom portion of


44

the flame sheet will cause movement in the top portion of the flame sheet.


Schnuckle 2 teaches a battery compartment [201] electrically connected with the control circuit [203] and configured to receive one or more batteries for powering the control circuit [203]. Id. at 4:35-37 and 11:1-8, discussing the use of batteries for the power source. See also Fig. 2.


Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Id. at Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].”

Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1. Schnuckle 1 also discloses the light source is projected to at least one surface of the top portion of the flame sheet, “will cause light to reflect or diffuse, completely or partially, on at least one of the faces of the flame shaped surface.” Exh. 1003, 4:57-58; see also 7:19-29, LEDs [613] [614] are projected within the interior and from a light source external to the flame sheet (“these LEDs are angled upwardly to project cones of ultraviolet light when activated….Of course, an external source of power may be used, such as the light source [34]”).


45



Schnuckle 2 teaches that the bottom portion of the flame sheet comprises of the coil [101] that is energizable to produce a changing magnetic field interacting with the magnet [124] of the flame sheet [121]. Exh. 1002, 5:25-36, “[i]n operation, coil [101] is energized by a time-varying electric current to produce a time-varying magnetic field, M1, in the vicinity of coil [101].” See also Fig. 1; 6:40-51. Schnuckle 1 also discloses a changing magnetic field interacting with the magnet of the flame sheet. Exh. 1003, 6:4-6, “The movement of the magnetic base [330] towards or away from the electromagnets [316] will induce a rotational motion… “

D. Lin and Schnuckle 2 Render Obvious Claims 1-11 and 14-20

Lin and Schnuckle 2 are introduced above. Both are directed to the same

field of technology and similar purposes, namely creating an electric lighting

device that simulates a flickering flame. In addition, Lin was described in the

background of Schnuckle 2, which clearly evidences the inventor of Schnuckle 2

had knowledge of the teachings in Lin. See Exh. 1002, 1:55-67; see also Brown

Decl., Exh. 1006, ¶28. Thus, one of ordinary skill in the art would have been

motivated to combine the teachings of Lin with those of Schnuckle 2 as proposed

in the below chart. Id.

Claim 1 Lin and Schnuckle 2


Schnuckle 2 teaches an electronic candle. Exh. 1002, abstract and Figures.


46


Lin teaches that the electronic candle has an outer shell shaped, in appearance, like a wax candle and having a top surface [4] intersecting with at least one side wall. See Exh. 1004, Fig. 1. Schnuckle 2 teaches an outer shell shaped, in appearance, like a wax candle, and having a top surface intersecting with at least one side wall. Exh. 1002, Fig. 1; see also 4:44-49, the candle can resemble “a conventional wax candle.”


Lin discloses a through hole. Exh. 1004, 3:7-10, “[t]he mouth [310] which includes an opening [37] formed therein and directed toward the opening [41] of the plate [4].” See also Fig. 2. Schnuckle 2 teaches an outer shell [104] having a top surface comprising a through hole extending between an interior of the outer shell [104] and exterior of the outer shell [104]. See Exh. 1002, Fig. 1. See also Brown Decl., Exh. 1006, ¶32.


Schnuckle 2 teaches a flame sheet [121] divided by a through hole [122], extending from one side of the flame sheet to the other into a top portion [125] and a bottom portion. Exh. 1002, Fig. 1. See also Brown Decl., Exh. 1006, ¶32.


Lin discloses the top portion to substantially resemble the shape of a flame, “and includes a flame-like member [43] attached thereto and having a flame-like shape.” Exh. 1004, 2:46-48; see also 1:33-35; 3:37-38. Schnuckle 2 discloses the top portion [125] shaped, in appearance, to substantially resemble the shape of a flame when viewed from at least one perspective. Exh. 1002, Fig. 1; see also 8:58-60, “Flame silhouette element [125] comprises a flat or dimensional body of material preferably formed


47

with a flame-shaped outline....” (emphasis added).


Schnuckle 2 discloses the bottom portion having a magnet [124] positioned at or near a lower end thereof opposite the top portion [125]. Exh. 1002, Fig. 1; see also 8:41-47. See also Brown Decl., Exh. 1006, ¶32.


Lin teaches the flame sheet [43] is movable relative to seat [40]. See Exh. 1004, Fig. 2. Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod[123] and within the outer shell [104]. See Exh. 1002, 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod [123]. Id. at Fig. 1; 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”

a coil positioned near the magnet of the flame sheet and energized by an electronic control circuit to produce a changing magnetic field interacting with the magnet of the flame sheet, thereby causing movement of the

Schnuckle 2 discloses that the coil [101] is positioned near the magnet of the flame sheet “the invention can be implemented as a unitary, single stage body” Id. at 4:50-51. Schnuckle 2 teaches the coil [101] energizable to produce a changing magnetic field interacting with the magnet [124] of the flame sheet [121]. Id. at Fig. 1; 5:25-36, “In operation, coil 101 is energized


48

flame sheet; by a time-varying electric current to produce a time-varying magnetic field, M1, in the vicinity of coil [101]…The additional static magnetic field may be used to alter power requirements as well as to selectively modify or define the shape of the magnetic field, in the vicinity of coil [101]” (emphasis added). Schnuckle 2 teaches the coil [101] is the source that causes movement of the flame sheet [121]. Id. at 8:54-57, “the coil in such a case may provide a donut shaped magnetic field such that attractive magnetic coupling provides an auto-start upon power up as it moves the nearby pendulum away from the neutral position.”


Lin teaches a battery compartment [20] configured to receive one or more batteries and power the control circuit. Exh. 1004, 2:59-64, “the base [2] includes a receptacle [20] formed or provided thereon and facing downward for receiving one or more batteries [21] therein….”; Fig. 2. See also 3:23-26, “the batteries [21] are electrically coupled to the fan-and-motor device [32] and/or to the light device [34] with electric wires [35] and a switch device [28].” Schnuckle 2 also teaches a battery compartment [201] electrically connected with the control circuit [203]. See Exh. 1002, 4:35-37 and 11:3-8; Fig. 2. Schnuckle 2 contemplates that the electronic candle consists of the battery compartment, the “kinetic flame device [100] (with components of flame device [100] having like numbers in drive [200]). Id. at 11:1-2; Figs. 1-2.

a light-emitting element contained entirely within the interior of the outer

Lin discloses a light-emitting element [34] contained entirely within the interior of the outer shell and positioned such that an outgoing direction


49

shell and positioned such that an outgoing direction of a light from the light-emitting element is projected from within the interior of the outer shell, through the through hole of the top surface of the outer shell, and onto at least one surface of the top portion of the flame sheet that is exterior to the outer shell, thereby illuminating the flame sheet from a light source external to the flame sheet.

of a light [7] from the light-emitting element [34] is projected from within the interior of the outer shell, through the through hole of the top surface [4] of the outer shell, and onto at least one surface of the top portion of the flame sheet [43] that is exterior to the outer shell, thereby illuminating the flame sheet [43] from a light source [34] external to the flame sheet [43]. See Exh. 1004, Fig. 5; 3:18-20; see also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. See Exh. 1002, Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1. See also Brown Decl., Exh. 1006, ¶32.


The electronic candle of claim 1, wherein the support rod comprises a bend to substantially maintain the flame sheet positioned at the location of the bend of the support rod.

Schnuckle 2 discloses a support rod [123] that comprises a bend to substantially maintain the flame sheet [125] positioned at the location of the bend of the support rod. See Id. at Fig. 1; 7:25-28, “support element 113 may include a rigid or semi-rigid wire such as a steel or steel alloy wire or rod and is preferably bent to form a low spot at a location where it is desired for pendulum to rest.”



50


Schnuckle 2 contemplates that the bottom portion may be heavier than the top portion so as to suspend the flame sheet with the top portion above the supporting rod. See also Brown Decl., Exh. 1006, ¶32.



Schnuckle 2 discloses the flame sheet [121] has semitransparent characteristics. Id. at 10:56-63, “the element [125] (and its coloring/materials) may be chosen such that a portion of the received light [108]…is allowed to pass through to an opposite or back side. For example, the...material of the element [125] may be such that…the element [125] being at least partially translucent.”






Schnuckle 2 discloses a square wave. “The signal generator signal is a square wave signal or a sine wave signal”. Id. at 11:14-16; 17:11-12; 20:10-11.


The electronic candle of claim 5, wherein the

Schnuckle 2 teaches oscillating between no polarity (i.e., off) and a polarity opposite that of the first


51

magnet of the flame sheet has a first polarity, and the coil produces a magnetic field oscillating between no polarity and a polarity opposite that of the first polarity.

polarity (i.e., on). “In one preferred embodiment, the generator [203] provides a square wave that is intermittently interrupted (e.g., every so many pulses it drops off and then restarts after a pause/interruption to enhance the chaotic effect). Id. at 11:19-23.



Lin discloses a light source external to the flame sheet. See Exh. 1004, Fig. 2; 3:18-20. Schnuckle 2 discloses the light-emitting element [107] is a LED. Exh. 1002, 10:5-6.



Lin discloses the light source [34] angled upwards to illuminate the flame sheet. See Exh. 1004, Figs. 5 and 16. Lin also discloses a light source external to the flame sheet “a light device [34] is directed toward the orifice [44] of the plate [4] for generating a light to light the flame-like flexible member [43].” Id. at Fig. 2; 3:18-20. Schnuckle 2 teaches that the LED [107] “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Exh. 1002, 10:5-6. “[A] spotlight [107] mounted above same silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Id. at 9:62-65.


The electronic candle of claim 9, wherein the outer shell has a central axis and the LED is angled such that a central axis of the LED is

Lin discloses the light source [34] is angled upwards to illuminate the flame sheet. See Exh. 1004, Figs. 5 & 16. Lin also discloses a light source external to the flame sheet “a light device [34] is directed toward the orifice [44] of the plate [4] for


52

between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell.

generating a light to light the flame-like flexible member [43].” Id. at Fig. 2; 3:18-20. Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].”


The electronic candle of claim 9, wherein the outer shell has a central axis and the LED is angled such that a central axis of the LED is about 3 5 degrees from parallel to the central axis of the outer shell.

Lin discloses the light source [34] angled upwards to illuminate the flame sheet. See Exh. 1004, Figs. 5 and 16. Lin also discloses a light source external to the flame sheet “a light device [34] is directed toward the orifice [44] of the plate [4] for generating a light to light the flame-like flexible member [43].” Id. at Fig. 2; 3:18-20. Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].”






the top surface comprising a through hole extending between an interior of the outer shell and exterior of

Lin discloses the top surface [4] comprising a through hole [37 or 44] extending between an interior of the outer shell and exterior of the outer shell. See Exh. 1004, Fig. 2; 3:7-10.


53

the outer shell, Schnuckle 2 also teaches an outer shell [104] having a top surface comprising a through hole extending between an interior of the outer shell [104] and exterior of the outer shell [104]. See Exh. 2, Fig 1. See also Brown Decl., Exh. 1006, ¶32.




Schnuckle 2 discloses the bottom portion having a magnet [124] positioned at or near a lower end thereof opposite the top portion [125]. Id. at Fig. 1; 8:41-47. See also Brown Decl., Exh. 1006, ¶32.


Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod[123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod. Id. at Fig. 1; 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.” See also Brown Decl., Exh. 1006, ¶32.


54




Lin teaches a battery compartment [20] configured to receive one or more batteries and power the control circuit. Exh. 1004, 2:59-64, “the base [2] includes a receptacle [20] formed or provided thereon and facing downward for receiving one or more batteries [21] therein….”; Fig. 2. See also 3:23-26, “the batteries [21] are electrically coupled to the fan-and-motor device [32] and/or to the light device [34] with electric wires [35] and a switch device [28].” Schnuckle 2 contemplates that the electronic candle consists of a battery compartment. Exh.1002, Figs. 1-2; 11:1-2, the “kinetic flame device [100] (with components of flame device [100] having like numbers in drive [200]).”

a light-emitting element contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light from the light-emitting element is projected from within the

Lin discloses a light-emitting element [34] contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light [7] from the light-emitting element [34] is projected from within the interior of the outer shell, through the through hole of the top surface [4] of the outer shell, and onto at least one surface of the top portion of the flame sheet [43] that is exterior to


55

interior of the outer shell, through the through hole of the top surface of the outer shell, and onto at least one surface of the top portion of the flame sheet that is exterior to the outer shell, thereby illuminating the flame sheet from a light source external to the flame sheet.

the outer shell, thereby illuminating the flame sheet [43] from a light source [34] external to the flame sheet [43]. See Exh. 1004, Fig. 5; see also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 discloses a light-emitting element [107] positioned such that an outgoing direction of a light from the light-emitting element is projected onto at least one surface of the top portion of the flame sheet [125] that is exterior to the outer shell, thereby illuminating the flame sheet [121] from a light source external to the flame sheet [121]. Exh. 1002, Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Schnuckle 2 contemplates that the light source “may project…upward, or at any angle to meet the needs of a particular application or implementation of device [100].” Id. at 10:17-20; Fig. 1.



Schnuckle 2 contemplates that the bottom portion may be heavier than the top portion so as to suspend the flame sheet with the top portion above the supporting rod. See also Brown Decl., Exh. 1006, ¶32.


The electronic candle of claim 14, wherein the magnet of the flame sheet has a first polarity, and the

Schnuckle 2 teaches that the coil [101] produces a magnetic field at any polarity, which can oscillate. “While the present invention operates with any polar alignment of magnet 114, the polar alignment


56

control circuit provides a magnetic field oscillating between no polarity and a polarity opposite that of the first polarity.

of magnet 114 and that of the electromagnetic field produced by coil [101] is coordinated or selected to produce desired results or kinetic movement/displacement.” Id. at 5:61-65.



Schnuckle 2 teaches that the LED [107] may be positioned to project light upwardly onto at least one surface of the top portion of the flame sheet at an angle. Id. at 10:17-20, “Light source [107] may project...upward, or at any angle to meet the needs of a particular application or implementation of device [100].” See also Brown Decl., Exh. 1006, ¶32. Lin discloses that the light-emitting element [34] is positioned at an upward angle so as to project light [7] onto at least one surface of the top portion of the flame sheet [43] at an angle. See Exh. 1004, Fig. 5.


The electronic candle of claim 17, wherein the outer shell has a central axis and the light-emitting element is angled such that a central axis of the light-emitting element is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell.

Lin teaches that the the outer shell has a central axis and the light-emitting element [34] is angled such that a central axis of the light-emitting element [34] is between about 30 degrees and 40 degrees from parallel to the central axis of the outer shell. See Exh. 1004, Fig. 5. Schnuckle 2 teaches that the LED [107] may be projected at any angle. Exh. 1002, 10:17-20, “Light source [107] may project downward as shown in Figure 1, or upward, or at any angle to meet the needs of a particular application or implementation of device [100].”





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Lin teaches that the electronic candle has an outer shell shaped, in appearance, like a wax candle and having a top surface intersecting with at least one side wall. See Exh. 1004, Fig. 1. Schnuckle 2 teaches that the electronic candle has an outer shell shaped, in appearance, having a top surface intersecting with at least one side wall. Id. at Fig. 1; 4:44-49, the candle can resemble “a conventional wax candle.”


Lin discloses a top surface [plate 4] comprising a through hole [37 or 44] extending between an interior of the outer shell and exterior of the outer shell. See Exh. 1004, 3:7-10; see also Fig. 2. Schnuckle 2 also teaches an outer shell [104] having a top surface comprising a through hole extending between an interior of the outer shell [104] and exterior of the outer shell [104]. See Exh. 1002, Fig 1. See also Brown Decl., Exh. 1006, ¶32.


Schnuckle 2 teaches a flame sheet [121] divided by a through hole [122], extending from one side of the flame sheet to the other into a top portion [125] and a bottom portion. Id. at Fig 1.



a support rod within or adjacent the through hole of the top surface and extending through the through hole of the flame sheet, supporting the flame

Schnuckle 2 teaches a support rod [123] within or adjacent the through hole of the top surface and extending through the through hole [122] of the flame sheet [121], supporting the flame sheet [121] thereon such that the top portion of the flame sheet [125] extends through the through hole of the top


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sheet at a pivot point thereof between the top and bottom portions such that the top portion of the flame sheet extends through the through hole of the top surface and at least a portion of the top portion of the flame sheet is exposed to the exterior of the outer shell, and such that the bottom portion of the flame sheet is beneath the support rod and within the outer shell, wherein the flame sheet is movable relative to the support rod;

surface and at least a portion of the top portion of the flame sheet [125] is exposed to the exterior of the outer shell [104], and such that the bottom portion of the flame sheet is beneath the support rod[123] and within the outer shell [104]. Id. at 8:32-41; Fig. 1. See also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 teaches the flame sheet [121] is movable relative to the support rod. Id. at 6:40-44, “[s]uch pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced, about the pivot point or mounting location.”


Schnuckle 2 discloses a swing mechanism [coil 101] positioned near the bottom portion of the flame sheet and, when energized, causing movement of the bottom portion of the flame sheet, the movement of the bottom portion of the flame sheet when translated through the pivot point causing movement in the opposite direction of the top portion of the flame sheet. “Such pivotal support may be provided in a variety of ways to allow the pendulum to be kinetically displaced about the pivot point or mounting location.” Id. at 6:40-51. Schnuckle 2 discloses that the bottom portion of the flame sheet will translate into movement of the top portion of the flame sheet [125], “Second stage [105] generally serves to couple to the kinetic energy in the moving upper end of pendulum and translate that kinetic energy into motion of flame silhouette element or extension [125]”. Id. at 8:28-31.


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Schnuckle 2 thus contemplates that the swing mechanism positioned near the bottom portion of the flame sheet will cause movement in the top portion of the flame sheet.


Lin teaches a battery compartment [20] configured to receive one or more batteries and power the control circuit. Exh. 1004, 2:59-64, “the base [2] includes a receptacle [20] formed or provided thereon and facing downward for receiving one or more batteries [21] therein….”; Fig. 2. See also 3:23-26, “the batteries [21] are electrically coupled to the fan-and-motor device [32] and/or to the light device [34] with electric wires [35] and a switch device [28].” Schnuckle 2 also teaches a battery compartment [201] electrically connected with the control circuit [203]. See Exh. 2, 4:35-37 and 11:3-8. See also Fig. 2; 11:1-2.

a light-emitting element contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light from the light-emitting element is projected from within the interior of the outer shell, through the through hole of the top surface of the outer shell, and onto at least one surface of the top portion of the flame sheet that is exterior to the outer shell, thereby illuminating the flame sheet from a light source external to the flame

Lin discloses a light-emitting element [34] contained entirely within the interior of the outer shell and positioned such that an outgoing direction of a light [7] from the light-emitting element [34] is projected from within the interior of the outer shell, through the through hole of the top surface [4] of the outer shell, and onto at least one surface of the top portion of the flame sheet [43] that is exterior to the outer shell, thereby illuminating the flame sheet [43] from a light source [34] external to the flame sheet [43]. See Exh. 1004, Fig. 5; 3:18-20; see also Brown Decl., Exh. 1006, ¶32. Schnuckle 2 also discloses a light-emitting element [107] positioned such that light from the light-emitting element is projected onto the top portion of the flame sheet [125]. Id. at Fig. 1; 9:62-67, “a spot light [107] mounted above flame silhouette [125] is


60

sheet. aimed to direct light [108] toward the element [125] to produce a spot of light [127] on the surface of flame silhouette element [125].” Schnuckle 2 contemplates that the light source “may project…upward, or at any angle....” Id. at 10:17-20; Fig. 1.



Schnuckle 2 teaches that the bottom portion of the flame sheet comprises of the coil [101] that is energizable to produce a changing magnetic field interacting with the magnet [124] of the flame sheet [121]. Exh. 1002, 5:25-36, “[i]n operation, coil [101] is energized by a time-varying electric current to produce a time-varying magnetic field, M1, in the vicinity of coil [101].” See also Fig. 1; 6:40-51.

VII. Conclusion

Because this Petition shows that there is a reasonable likelihood that the

Petitioner will prevail with respect to at least one of the challenged claims,

Petitioner requests inter partes review of claims 1-20.

Respectfully submitted, Date: May 8, 2015 /Ryan S. Dean/

Ryan S. Dean, Esq. Reg. No. 61,570 FISH & TSANG LLP 2603 Main Street, Suite 1000 Irvine, CA 92614 Phone: 949-943-8300 Fax: 949-943-8358


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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true copy of the foregoing

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,926,137 has

been served in its entirety this 8th day of May, 2015, by Federal Express on the

attorney of record for the ‘137 Patent Owner at the address listed below:

Winthrop & Weinstine, P.A. Capella Tower, Suite 3500 225 South Sixth Street Minneapolis MN 55402

Respectfully submitted, Date: May 8, 2015 /Ryan S. Dean/

Ryan S. Dean, Esq. Reg. No. 61,570 FISH & TSANG LLP 2603 Main Street, Suite 1000 Irvine, CA 92614 Phone: 949-943-8300 Fax: 949-943-8358

Documents

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE …fishpostgrant.com/wp-content/uploads/IPR2015-01183.pdf · 2017. 4. 22. · (“IPR”) and that the Petitioner is not barred or