United States Court of Appeals 

for the Federal Circuit ______________________ 

LUMINARA WORLDWIDE, LLC,

Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2017-1629, 2017-1631, 2017-1633

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2015-01352, IPR2015-01656, IPR2015-01657, 

IPR2015-01658.

______________________ 

Decided: August 16, 2018

______________________ 

 PAULINE PELLETIER, Sterne Kessler Goldstein & Fox, 

PLLC, Washington, DC, argued for appellant. Also 

represented by KRISTINA CAGGIANO KELLY, RICHARD D.

COLLER, III, JON WRIGHT. 

 MOLLY R. SILFEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 
2 LUMINARA WORLDWIDE, LLC v. IANCU

intervenor. Also represented by THOMAS W. KRAUSE,

SARAH E. CRAVEN. 

______________________ 

Before LOURIE, DYK, and TARANTO, Circuit Judges.

DYK, Circuit Judge. 

Luminara Worldwide, LLC, (“Luminara”) appeals 

from three inter partes review (“IPR”) decisions, in which 

the Patent Trial and Appeal Board (“the Board”) held 

unpatentable a total of 31 claims across Luminara’s three 

patents. On appeal, Luminara challenges the Board’s 

decisions as to one claim from each patent and asserts 

that the Board’s application of the 35 U.S.C. § 315(b) 

time-bar was improper as to the ’319 patent. We vacate 

the decision as to the ’319 patent and remand for dismissal of that IPR, holding that the section 315(b) time-bar 

applies, and affirm the other IPRs. 

BACKGROUND

Luminara owns three patents for making flameless 

candles that look and behave like real candles. Shenzhen 

Liown Electronics Co., Ltd. (“Liown”) requested inter 

partes review of 31 claims of Luminara’s three patents, 

U.S. Patent Nos. 8,696,166 (“the ’166 patent”), 8,070,319 

(“the ’319 patent”), and 8,534,869 (“the ’869 patent”). The 

three patents, which employ moving pendulums to simulate the appearance of a natural flame, are related. 

The Board instituted inter partes review as to all 

three patents. In instituting review of the ’319 patent, 

the Board first addressed whether the IPR was timebarred under 35 U.S.C. § 315(b), since the petition was 

filed more than a year after Liown was served with a 

complaint alleging infringement. 35 U.S.C. § 315(b) 

provides that 
LUMINARA WORLDWIDE, LLC v. IANCU 3

inter partes review may not be instituted if the 

petition requesting the proceeding is filed more 

than 1 year after the date on which the petitioner 

. . . is served with a complaint alleging infringement of the patent. 

On November 2, 2012, Candella, LLC, a predecessor 

in interest of Luminara, filed a complaint in the District 

of Minnesota against Liown for infringement of the ’319 

patent. Service of the complaint was acknowledged by the

Minnesota Secretary of State on December 3, 2012. On 

December 16, 2013, the parties having agreed to a dismissal, the district court entered a voluntary dismissal without prejudice pursuant to Rules 41(a)(1)(A)(ii) and (B) of 

the Federal Rules of Civil Procedure. Stipulation for 

Dismissal Without Prejudice, Candella, LLC v. Liown 

Electronics Co. Ltd. et al., No. 12-cv-02803 (D. Minn. Dec. 

16, 2013). 

On August 5, 2014, Luminara commenced another 

lawsuit against Liown, again alleging infringement of the 

’319 patent as to the same products involved in the earlier 

case. See Compl., Luminara Worldwide, LLC v. Liown 

Elecs. Co., No. 14-cv-03103 (D. Minn. Aug. 5, 2014). On 

July 31, 2015, within one year of service of the second 

action, Liown filed for an IPR of the ’319 patent. Luminara argued that Liown was time-barred as to the ’319 

patent under 35 U.S.C. § 315(b) because the petition was 

filed more than one year after service of the first action. 

In instituting the IPR, the Board rejected the timeliness argument because the first action had been voluntarily dismissed without prejudice. The Board relied on 

cases in which this court considered dismissals without 

prejudice as “‘render[ing] the proceedings a nullity’ and 

‘leav[ing] the parties as though the action had never been 

brought.’” J.A. 1004 (citing Graves v. Principi, 294 F.3d 

1350, 1356 (Fed. Cir. 2002); Bonneville Assocs. Ltd. P’ship 
4 LUMINARA WORLDWIDE, LLC v. IANCU

v. Barram, 165 F.3d 1360, 1364 (Fed. Cir. 1999)). The 

Board wrote that Luminara did not allege any “circumstances that would tend to show the parties are not in the 

position they were in had the complaint never been 

served.” Id. at 1005–06. In the final written decision, the 

Board again addressed the time-bar issue. The Board 

stated that there was no “language in 35 U.S.C. § 315(b) 

or any such indication of legislative intent that the 

§ 315(b) bar was designed to apply to circumstances in 

which prior complaints were voluntarily dismissed without prejudice.” J.A. 82. The Board also relied on the 

precedential Board decision, Oracle Corp. v. Click-to-Call 

Technologies, No. IPR2013-00312, 2013 WL 11311788, 

*6–7 (P.T.A.B. Oct. 30, 2013), which held that the oneyear time-bar of section 315(b) did not apply if the district 

court complaint was voluntarily dismissed without prejudice.

On the merits, the Board issued final written decisions determining that all 31 claims were either anticipated or would have been obvious over the prior art. The 

Board found the claims unpatentable in view of U.S. 

Patent No. 7,261,455 (“Schnuckle”), both alone and in 

combination with U.S. Patent No. 782,156 (“Meeker”), and 

based on Japanese Patent Application No. 2000-284730 

(“Baba”) and WO 85/03561 (“Wiklund”). 

Luminara appealed the time-bar determination of the 

Board with respect to the ’319 patent and the obviousness 

determinations with respect to the three patents. Luminara challenges the Board’s obviousness determinations only with respect to three claims. These are claim 4 

of the ’319 patent, claim 14 of the ’166 patent, and claim 

34 of the ’869 patent. In each case the Board determined 

that the claims would have been obvious. After Liown 

declined to participate, the United States Patent and 

Trademark Office intervened to defend the Board’s deci-
LUMINARA WORLDWIDE, LLC v. IANCU 5

sion. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

I

On appeal, we first address whether the Board 

properly instituted review of the claims in the ’319 patent, 

an issue that is reviewable under our en banc decision in 

Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1367 

(Fed. Cir. 2018) (en banc). Luminara argues that the 

Board erred in instituting review because Liown was

time-barred by 35 U.S.C. § 315(b). 

Our court has now considered whether section 315(b)’s time-bar applies to bar institution when an 

IPR petitioner was served with a complaint for patent 

infringement more than one year before filing its petition, 

but the district court action in which the petitioner was so 

served was voluntarily dismissed without prejudice. In 

Click-To-Call Technologies, LP, v. Ingenio, Inc, No. 15-

1242 (Fed. Cir. Aug. 16, 2018) the en banc court held that 

section 315(b)’s time-bar applies in such a scenario. 

Thus, because the section 315(b) time-bar applies

when the underlying complaint alleging infringement has 

been voluntarily dismissed without prejudice, the Board 

erred in instituting the IPR challenging the ’319 patent. 

We vacate the Board’s final written decision as to the ’319 

IPR and remand for dismissal of that IPR. 

II

We next address the obviousness rejections as to the 

’166 and ’869 patents. For obviousness, we “review the 

Board’s ultimate claim constructions de novo and its 

underlying factual determinations involving extrinsic 

evidence for substantial evidence.” In re Man Mach.
6 LUMINARA WORLDWIDE, LLC v. IANCU

Interface Techs. LLC, 822 F.3d 1282, 1285–86 (Fed. Cir. 

2016). 

The Board determined that claim 14 of the ’166 patent 

would have been obvious over Schnuckle, or a combination of Baba and Wiklund. Claim 14 reads: “[t]he apparatus of claim 13, wherein the pivot hole is larger in 

diameter than an exterior dimension of the support 

element, whereby the flame body swings or pivots freely 

about the support element.” ’166 patent, col. 24 ll. 29–32. 

The Board concluded that the claim would have been

obvious since both Schnuckle and Baba disclose a pivot 

hole that “is larger in diameter” than the support element, “whereby the flame body swings or pivots freely 

about the support element.” J.A. 61–62. Since both 

references contain a hole that is larger in diameter than 

the rod, the Board determined that claim 14 would have 

been obvious and, with respect to Baba and Wiklund, that 

there would have been motivation to combine the references. On appeal, Luminara argues that Schnuckle and 

Baba do not disclose a claimed pivot hole that is “larger in 

diameter” than the support element, “whereby the flame 

body swings or pivots freely about the support element.” 

The ability to rotate “about” or “around” a supporting 

rod means that there is relative motion between the two 

parts. J.A. 2595 (“The use of the terminology of rotational 

movement about a body, indicates relative motion between two parts.”); J.A. 2606 (“The terms rotate about an 

object and rotate around an object both describe relative 

motion between the two objects.”). Dr. Delson explained 

that such relative motion necessarily implies that the hole 

is bigger than the rod, and that parts of Baba’s drawings

indeed show a hole bigger than the rod. While Luminara

argues that the claim limitation necessitates movement in 

additional directions, the claim only requires the ability to 

“swing or pivot,” not necessarily movement in other 

directions. We agree with the Board that “the conven-
LUMINARA WORLDWIDE, LLC v. IANCU 7

tional usage of rotation about a structure suggests movement relative to the structure,” J.A. 28–29, and find that 

substantial evidence supports the Board’s conclusion that 

if relative movement is possible, a person of ordinary skill 

would know that the pivot hole is larger in diameter than 

the rod. 

Finally, the Board found that claim 34 of the ’869 patent would have been obvious. That claim provides: 

An apparatus for simulating a flickering flame effect, comprising: 

a housing including an interior space; 

a pendulum member pivotally mounted within the 

interior space, the pendulum member including 

first and second ends, wherein the pendulum 

member further includes a flame element extending from a second end opposite the first end, such 

that at least a portion of the flame element extends outwardly from the housing; 

a first light source selectively transmitting light 

onto the flame element; and a drive mechanism 

positioned in the housing and operating to provide 

kinetic motion to the first end of the pendulum 

member 

wherein the pendulum member is pivotally 

mounted using a pendulum support member that 

extends through a hole in the pendulum member 

and 

wherein the pendulum support member is coupled 

to the housing to remain stationary during pivotal 

movement of the pendulum member by the drive 

mechanism.

’869 patent, col. 26 l. 59–col. 27 l.11. The Board concluded 

that claim 34 would have been obvious based on the 

combination of Schnuckle and Meeker. The Board ex-
8 LUMINARA WORLDWIDE, LLC v. IANCU

plained that Schnuckle’s gimbal mechanism could be 

replaced by Meeker’s wire to render the invention obvious

and that there was motivation to combine the prior art 

references. 

On appeal, Luminara argues that it was not afforded 

proper notice, because while Liown’s petition specified the 

replacement of Schnuckle’s rod 18, it did not specify that 

the gimbal mechanism would be replaced. Luminara 

contends that this represents a change in the obviousness 

theory. 

The Board did not change the obviousness argument 

midstream. Liown’s petition explained that the proposed 

combination of Schnuckle and Meeker would remove 

Schnuckle’s entire gimbal structure: “Meeker’s support 

structure would be simpler and less costly to manufacture 

than the gimbal structure.” J.A. 1429. The petition 

specifically pointed out that “the support wire, with its

both ends connected to the housing, would provide a 

support.” J.A. 1433. In the Board’s institution decision, 

the Board similarly recited the petition’s explanation that 

“both ends” of Meeker’s support wire would be “connected 

to the housing” of Schnuckle in the proposed combination. 

J.A. 1580. These descriptions made it clear from the 

outset that the modification involved eliminating the 

entire gimbal. Indeed, it is difficult to imagine how 

Schnuckle’s rod could be replaced, and the structure could 

be connected to the housing, if the gimbal structure was 

not removed. In its preliminary response, Luminara 

responded to the argument that the entire gimbal would 

be replaced. Liown’s reply further explained that the 

entire gimbal would be replaced. Thus the obviousness 

theory did not change, and we affirm the Board’s decision. 

CONCLUSION

We vacate the Board’s final written decision in 

IPR2015-01656, which addressed the ’319 patent, because 

the petition in that IPR was time-barred, and we remand 
LUMINARA WORLDWIDE, LLC v. IANCU 9

for dismissal of that IPR. Because substantial evidence 

supports the Board’s obviousness determinations for

claim 14 of the ’166 patent and claim 34 of the ’869 patent, we affirm the Board’s decision that these claims 

would have been obvious. 

AFFIRMED-IN-PART, VACATED AND REMANDEDIN-PART

COSTS

No costs.