Luminara Worldwide, LLC v. Iancu
899 F.3d 1303
Fed. Cir.2018Background
- Luminara owns three related patents (’166, ’319, ’869) for flameless candles using pendulums to simulate a flame.
- Liown petitioned for inter partes review (IPR) of 31 claims across the three patents; the PTAB instituted all three IPRs and found the claims unpatentable (anticipation/obviousness).
- For the ’319 patent, Liown was served in a 2012 district-court action that was voluntarily dismissed without prejudice in 2013; Liown filed its IPR petition in 2015 (more than one year after the 2012 service).
- The Board declined to apply the 35 U.S.C. § 315(b) one‑year time bar, relying on precedent treating voluntary dismissals without prejudice as rendering the prior action a nullity.
- On the merits the Board held claim 14 of the ’166 patent and claim 34 of the ’869 patent obvious over prior art combinations (Schnuckle ± Meeker; Baba ± Wiklund).
- Luminara appealed the § 315(b) timeliness ruling for the ’319 IPR and the obviousness findings for one claim in each of the other two patents.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 315(b) time-bar applies when an earlier infringement complaint was voluntarily dismissed without prejudice | Luminara: time bar applies because Liown was served >1 year before its IPR petition | Liown/PTAB: dismissal without prejudice leaves parties as if complaint never filed, so § 315(b) does not bar institution | Court: § 315(b) applies; vacated and remanded for dismissal of the ’319 IPR |
| Obviousness of claim 14 (’166 patent) — pivot hole larger than support element, allowing swinging/pivoting | Luminara: prior art (Schnuckle, Baba) do not disclose a pivot hole larger in diameter such that the flame body “swings or pivots freely” | PTAB: Schnuckle and Baba disclose relative rotation about a support; a POSA would understand that permits a hole larger than the rod, and motivations to combine exist | Court: substantial evidence supports PTAB obviousness finding; claim 14 unpatentable |
| Obviousness of claim 34 (’869 patent) — pendulum pivot support and drive mechanism; replacement of gimbal with Meeker wire | Luminara: petition didn’t adequately put it on notice that Schnuckle’s gimbal would be removed (change in theory) | PTAB: petition and institution materials clearly contemplated replacing the gimbal with Meeker’s support wire; no midstream change | Court: no improper change; substantial evidence supports PTAB obviousness finding; claim 34 unpatentable |
Key Cases Cited
- Graves v. Principi, 294 F.3d 1350 (Fed. Cir.) (voluntary dismissals without prejudice can render proceedings a nullity)
- Bonneville Assocs. Ltd. P’ship v. Barram, 165 F.3d 1360 (Fed. Cir.) (same)
- Wi‑Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir.) (institution-of-review issues under § 315(b) reviewable)
- In re Man Mach. Interface Techs. LLC, 822 F.3d 1282 (Fed. Cir.) (standard of review for Board’s claim construction and factual findings)