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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
TRE MILANO, LLC Petitioner
v.
TF3 LIMITED Patent Owner
Patent No. 8,651,118
Issue Date: February 18, 2014 Title: HAIR STYLING DEVICE Attorney Docket No.: 51606IPR
IPR Case No: IPR2015-00649
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,651,118
Patent No. 8,651,118 Petition for Inter Partes Review
TABLE OF CONTENTS I. INTRODUCTION ......................................................................................... 1 II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................. 1 A. Real Party-in-Interest ......................................................................... 1 B. Related Matters ................................................................................... 1 C. Designation of Lead and Backup Counsel ........................................ 1 D. Notice of Service Information ............................................................ 2 II. GROUNDS FOR STANDING ...................................................................... 2 A. Certification of the '118 Patent May Be Contested by Petitioner .............................................................................................. 2 B. Fee for Inter Partes Review (§42.15(a)) ............................................ 3 IV. THRESHOLD REQUIREMENTS FOR INTER PARTES REVIEW .... 3 V. STATEMENT OF PRECISE RELIEF REQUESTED ............................. 3 VI. STATEMENT OF REASONS FOR REQUESTED RELIEF .................. 4 A. Introduction ......................................................................................... 4 B. Exhibits ................................................................................................. 4 C. Expert Declaration .............................................................................. 4 D. Construction of Terms Used in Claims ............................................. 4 1. Adjacent ..................................................................................... 5 2. Chamber .................................................................................... 5 3. Annular ...................................................................................... 5 4. Surrounds .................................................................................. 5 E. Level of Ordinary Skill in the Art ..................................................... 6 F. Figures .................................................................................................. 6 G. Explanation of Grounds for Unpatentability ................................... 6 Ground 1: Claims 1-5 and 11 of the '118 patent are invalid under 35 U.S.C. §102(b) over U.S. Patent No. 4,148,330 to Gnaga ("Gnaga") ............................................................................ 7
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Patent No. 8,651,118 Petition for Inter Partes Review
Ground 2: Claims 1-5 and 11 are invalid under 35 U.S.C. §102(b) over Japanese Publication No. JU-A S61-10102 to Hoshino ("Hoshino") ........................................................................ 16 Ground 3: Claims 1 and 3-5 are invalid under 35 U.S.C. §102(b) over U.S. Patent Publication US2010/0083978 to Hottenrott ("Hottenrott") ................................................................ 27 Ground 4: Claims 1-5 and 11 are invalid under 35 U.S.C. §102(b) over United Kingdom Patent Specification No. 1,036,583 to Gillette ("Gillette") ............................................... 36 Ground 5: Claims 1, 3-5 and 11 are invalid under 35 U.S.C. §102(b) over International Patent Publication WO2009/077747 to De Benedictis ("De Benedictis 2009") ......................................... 48 Ground 6: Claim 2 is unpatentable under 35 U.S.C. §103 over De Benedictis 2009 in view of United Kingdom Patent No. GB302952 to Dinger ("Dinger"), Gnaga, Hoshino, or Gillette ............................................................................................ 58 VII. CONCLUSION ............................................................................................ 60
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Patent No. 8,651,118 Petition for Inter Partes Review
TABLE OF EXHIBITS Exhibit No. Title 1001 U.S. Patent No. 8,651,118 to De Benedictis
1002 Declaration of Barry Prehodka
1003 Curriculum Vitae of Barry Prehodka
1004 U.S. Patent No. 4,148,330 to Gnaga
1005 Japanese Publication No. JU-A S61-10102 to Hoshino
1006 English Translation of JU-A S61-10102 to Hoshino
1007 Certification of Kazuko Ishiwatari
1008 Certification of Steven H. Zaveloff
1009 U.S. Patent Publication US2010/0083978 to Hottenrott
1010 United Kingdom Patent Specification No. 1,036,583 to Gillette
1011 International Patent Publication WO2009/077747 to De Benedictis
1012 United Kingdom Patent Specification No. 302,952 to Dinger
1013 Declaration of Katherine B. Sales
1014 Dictionary Definition of “adjacent”
1015 Dictionary Definition of “chamber”
1016 Dictionary Definition of “enclosed”
1017 Dictionary Definition of “annular”
1018 Dictionary Definition of “surrounds”
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Patent No. 8,651,118 Petition for Inter Partes Review
I. INTRODUCTION
Pursuant to 35 U.S.C. § 311-319 and 37 C.F.R. § 42.100, Tre Milano, LLC
(“Petitioner”) petitions the Patent Trial and Appeal Board (PTAB) to institute an
inter partes review of claims 1-5 and 11 of United States Patent No. 8,651,118
(“the ‘118 Patent,” Exhibit #1001), issued on February 18, 2014.
According to the records of the United States Patent and Trademark Office
(USPTO), TF3 Limited owns the ‘118 Patent. Conair Corporation (“Conair”)
claims to be a licensee of the ‘118 Patent.
II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
A. Real Party-in-Interest
The real party-in-interest of this petition is Tre Milano, LLC (“Petitioner”),
5826 Uplander Way, Culver City, CA 90230.
B. Related Matters
The ‘118 Patent is asserted in the litigation matter Conair Corporation v.
Tre Millano, LLC, Case No. Civil Action No. 3:14-cv-01554-AWT (D. Conn.)
Petitioner has not yet filed its answer and counterclaims in the action.
C. Designation of Lead and Backup Counsel
Lead Counsel
Laura M. Lloyd, Ph.D. LEECH TISHMAN FUSCALDO & LAMPL
Phone: (626) 796-4000 Fax: (626) 795-6321
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Patent No. 8,651,118 Petition for Inter Partes Review
100 Corson Street, Third Floor Pasadena, CA 91103-3842
[email protected] USPTO Reg. No. 54,461
Backup Lead Counsel
Jeffrey G. Sheldon, Esq. LEECH TISHMAN FUSCALDO & LAMPL 100 Corson Street, Third Floor Pasadena, CA 91103-3842
Phone: (626) 796-4000 Fax: (626) 795-6321 [email protected] USPTO Reg. No. 27,953
D. Notice of Service Information
Please direct all correspondence regarding this proceeding to lead
counsel at the address shown above. Petitioner consents to service by email at
[email protected] and [email protected] with a courtesy
copy sent to [email protected].
III. GROUNDS FOR STANDING
A. Certification the ‘118 Patent May Be Contested by Petitioner
Pursuant to 37 C.F.R. § 104(a), Petitioner certifies that the patent for which
review is sought is available for inter partes review and Petitioner is not barred or
estopped from requesting this inter partes review. Neither Petitioner, nor any party
in privity with Petitioner, has filed a civil action challenging the validity of any
claim of the ‘118 Patent. The ‘118 Patent has not been the subject of a prior inter
partes review by Petitioner or a privy of Petitioner.
Petitioner certifies this petition is filed within one year of the date of service
of a complaint alleging infringement of the ‘118 Patent. Petitioner was served with
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a complaint alleging infringement of the ‘118 Patent on December 12, 2014.
Because the date of this petition is less than one year from December 12, 2014, this
petition complies with 35 U.S.C. §315(b).
B. Fee for Inter Partes Review (§42.15(a))
Pursuant to 37 C.F.R. §42.103, $23,000.00 is being paid at the time of filing
this Petition, charged to Deposit Account No. 50-6516. Should any further fees be
required by the present Petition, the PTAB is hereby authorized to charge the
above referenced Deposit Account.
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 one of the claims
challenged in the petition.” 35 U.S.C. § 314(a). This Petition easily meets this
threshold. Claims 1-5 and 11 of the ‘118 Patent are taught in the prior art.
Additionally, for the Grounds for Unpatentability under 35 U.S.C. §103, the
motivation to combine is provided.
V. STATEMENT OF PRECISE RELIEF REQUESTED
Petitioner respectfully requests that claims 1-5 and 11 of the ‘118 Patent be
canceled based on the following six Grounds for Unpatentability.
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Patent No. 8,651,118 Petition for Inter Partes Review
VI. STATEMENT OF REASONS FOR REQUESTED RELIEF
A. Introduction
The basis for requesting relief is articulated in the Declaration of Barry
Prehodka (“Prehodka ”; Ex. 1002). As clearly stated by Mr. Prehodka and detailed
below, the claims 1-5 and 11 of the ‘118 Patent are neither new nor unobvious in
view of the prior art.
B. Exhibits
The Exhibits 1004, 1009-1012, and 1014-1018 are authenticated by the
Declaration of Katherine Sales (Ex. 1013). Exhibit 1005 is authenticated by the
Certification of Kazuko Ishiwatari (Ex. 1007). Exhibit 1006 is an English
translation of Exhibit 1005, and has been certified by Steven H. Zaveloff (Ex.
1008).
C. Expert Declaration
Barry Prehodka’s declaration is attached as Exhibit 1002. Mr. Prehodka is an
expert in the design of hair styling tools. Prehodka Ex. 1002 ¶¶4-10.
D. Construction of Terms Used in the Claims
Solely for purposes of this proceeding, the following discussion proposes
construction of several terms in claims 1 and 2. Claim terms not included in the
following discussion are to be given their broadest reasonable interpretation in
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light of the specification as commonly understood by those of ordinary skill in the
art. These prepared definitions are in accordance with dictionary definitions and
are as one of ordinary skill in the art would understand the terms. (Prehodka Ex.
1002 ¶¶14-18).
1. Adjacent “Adjacent” means “close to.” American Heritage
Dictionary, 4th Edition, p. 21, 2000. (Ex. 1014)
2. Chamber “Chamber” means “an enclosed space or
compartment.” American Heritage Dictionary, 4th Edition, p. 308, 2000. (Ex.
1015) The term “enclosed” means “to surround on all sides; close in.” American
Heritage Dictionary, 4th Edition, p. 588, 2000. (Ex. 1016) The “chamber” (16)
disclosed in the ‘118 patent is surrounded and closed off on all sides except for a
primary opening that can be utilized for insertion of hair and a secondary opening
that can be utilized for removal of hair. Thus a “chamber” is “a space or cavity
surrounded or closed off on all sides except for a primary opening that can be
utilized for insertion of hair, and a secondary opening that can be utilized for
removal of hair.”
3. Annular “Annular” means “in the form of a ring.” American
Heritage Dictionary, 4th Edition, p. 73, 2000. (Ex. 1017)
4. Surrounds “Surrounds” means “to enclose or confine on all
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sides.” American Heritage Dictionary, 4th Edition, p. 1743, 2000. (Ex. 1018)
Therefore, “surrounds” as used in the ‘118 patent means “encloses on all sides.”
E. Level of Ordinary Skill in the Art
At the time the ‘118 patent was filed, as detailed in Prehodka Ex. 1002, ¶11,
a person of ordinary skill in the art of designing hair styling tools would have had
the following experience:
1. Training in mechanical engineering courses including in design
and production processes; and
2. At least five (5) years practical experience in the design,
development and production of hair styling devices.
F. Figures
The annotated figures below are provided to explain the grounds for
unpatentability and demonstrate the features and operation of the devices shown in
the six prior art references discussed below. The figures truly and correctly
represent those six devices and how they operate. Prehodka Ex. 1002 ¶¶20-21
G. Explanation of Grounds For Unpatentability
Claims 1-5 and 11 of the ‘118 Patent are unpatentable on the following
grounds below.
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Patent No. 8,651,118 Petition for Inter Partes Review
Ground 1: Claims 1-5 and 11 of the ‘118 Patent are invalid under
35 U.S.C. § 102(b) over U.S. Patent No. 4,148,330 to Gnaga (“Gnaga”).
Claims 1-5 and 11 of the ‘118 Patent are unpatentable under 35 U.S.C. §
102(b) over U.S. Patent No. 4,148,330 to Gnaga (“Gnaga”) (Ex. 1004), (Prehodka
Ex. 1002, ¶30a-30t). In the alternative, claims 1-5 and 11 are unpatentable under
35 U.S.C. § 103 over Gnaga. The Gnaga patent issued on April 10, 1979, and is
therefore prior art under 35 U.S.C. § 102(b). Gnaga was not considered by the
USPTO during prosecution of the ‘118 Patent.
Gnaga describes a device for automatically winding hair on a removable hair
curler for hair styling, exactly as specified in claims 1-5 and 11 of the ‘118 Patent.
Gnaga is described below with regard to the Gnaga Figures 1-6.
As shown in Gnaga Figure 1, the Gnaga device has a housing D containing a
rotating shaft 28 driven by a motor. The housing D has a slot 54 for insertion of a
user’s hair and a hook 58 for retaining a hair curler A inside the housing D.
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Patent No. 8,651,118 Petition for Inter Partes Review
The hair curler A (colored in blue) is formed from two elements, an internal
element B and an external rotating element C (Gnaga Figure 2). The coupling of
the internal element B and the external rotating element C creates a hollow space
17 between the internal element B and the external rotating element C. The internal
element B contains a rod 22 (colored in red) to retain the assembled curler A inside
the device during operation. (Gnaga Figures 2 and 3)
As shown in Gnaga Figure 2, in use, the hair curler A is formed by coupling
the internal element B to the external rotating element C. The assembled hair curler
A is then inserted into the housing D and onto the rotating shaft 28. Next, the hair
curler A is locked in position in notch 70 the housing D by rotating the hook 58
counter-clockwise and the rod 22 clockwise, as shown by the arrow in Gnaga
Figure 3. The notch 70 locks the rod 22 in its position within the housing D.
(Gnaga Figure 3)
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Patent No. 8,651,118 Petition for Inter Partes Review
Next, a lock of the user’s hair is inserted into the slot 54. (Gnaga Figure 4)
Next, the device’s motor is activated, causing the external rotating element C
to rotate, and the user’s hair is inserted into the hollow space 17 between the non-
rotating internal element B and the external rotating element C. As shown in
Gnaga Figure 5, this results in the user’s hair being wound around the non-rotating
internal element B. Once the user’s hair is wound around the internal element B of
the hair curler A, the hook 58 is rotated clockwise to unlock the hair curler A, and
then the hair curler A is removed from the housing D. (Gnaga Figure 5) The hair
curler A is left on the user’s hair after it is removed from the device.
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Patent No. 8,651,118 Petition for Inter Partes Review
The grounds for unpatentability are explained narratively below using the
language of the ‘118 Patent claims, annotated drawings, based on the Gnaga
drawings, and the claim chart in Table 1. Claim 1 of the ‘118 Patent recites:
A hair styling device
The device in Gnaga is used to style hair.
having: a body defining a chamber adapted to
accommodate a length of hair, the chamber having a
primary opening through which the length of hair may
pass into the chamber;
As shown in Gnaga Figure 6, Gnaga’s external rotating element C and the housing
D form a body defining a chamber that is adapted to accommodate a length of hair.
The chamber’s slot 54 is a primary opening through which the length of hair may,
and does, pass into the chamber.
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Patent No. 8,651,118 Petition for Inter Partes Review
a rotatable element adapted to engage the length of hair
adjacent to the primary opening;
The external rotating element C is a rotatable element. The rotatable element C is
adapted to, and does, engage the length of hair adjacent to the primary opening 54.
See Gnaga Figure 6.
an elongate member around which, in use, the length of
hair is wound by the rotatable element, the elongate
member having a free end;
The internal element B of the hair curler A is an elongate member. Hair is wound
around the elongate member B by the rotatable element C, as shown by Gnaga
Figure 5. The elongate member B has a free end. See Gnaga Figure 6.
the chamber having a secondary opening through which
the length of hair may pass out of the chamber, the
secondary opening being located adjacent to the free end
[of the elongate member]; and
Gnaga contains a chamber with a secondary opening through which the length of
hair may pass out of the chamber. The secondary opening is adjacent to the free
end of the elongate member B. See Gnaga Figure 6.
a movable abutment which can engage the length of hair
in use, the movable abutment having an open position in
which the length of hair can pass through the secondary
opening, and a closed position in which the length of hair
is retained within the chamber, wherein the movable
abutment is located within one of (i) the secondary
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Patent No. 8,651,118 Petition for Inter Partes Review
opening, (ii) the primary opening, and (iii) a passageway
connecting the secondary opening to the primary
opening.
Gnaga’s rod 22 is a movable abutment. The movable abutment/rod 22 is located in
the secondary opening and engages the length of hair in use. The movable
abutment/rod 22 has an open position in which the length of hair can pass through
the secondary opening, and a closed position in which the hair is retained within
the chamber. See Gnaga Figures 3 and 6.
Not only does the device described in Gnaga meet all limitations of
independent claim 1, it also meets the limitations of dependent claims 2-5 and 11.
Claim 2 calls for “A hair styling device according to claim 1, wherein
the secondary opening is annular and surrounds the free end of the elongate
member.” The secondary opening in Gnaga is annular and surrounds the free
end of the elongate member B. See Gnaga Figure 6.
Claim 3 calls for “A hair styling device according to claim 1, wherein
the movable abutment is located within the secondary opening.” Gnaga
describes the movable abutment/rod 22 located within the secondary opening.
See Gnaga Figures 3 and 6.
Claim 4 calls for “A hair styling device according to claim 1, wherein the
secondary opening is permanently connected to the primary opening.” Gnaga’s
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Patent No. 8,651,118 Petition for Inter Partes Review
device depicts the secondary opening as permanently connected to the primary
opening 54. See Gnaga Figure 6.
Claim 5 calls for “A hair styling device according to claim 1, wherein the
movable abutment is located within one of (i) the secondary opening and (ii) the
primary opening, and wherein the secondary opening is connected to the primary
opening by way of a passageway.” The movable abutment/rod 22 is located within
the secondary opening, and the secondary opening is connected to the primary
opening 54 by way of a passageway. See Gnaga Figure 6.
Claim 11 calls for “A hair styling device according to claim 1, wherein the
movable abutment is maintained in its closed position while the rotatable element
is rotating.” The movable abutment/rod 22 is maintained in its closed position
while the rotatable element C is rotating. See Gnaga Figure 6.
As described above, claims 1-5 and 11 of the ‘118 Patent are expressly
disclosed by the Gnaga patent, since a person of ordinary skill in the art would
conclude that each and every limitation of the invention as claimed in these patent
claims is found in this prior art reference. For these reasons, claims 1-5 of the ‘118
Patent are invalid as anticipated under 35 U.S.C. § 102(b).
To the extent that there may be any differences between the subject matter of
claims 1-5 and 11, any such differences are trivial and it would have been obvious
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Patent No. 8,651,118 Petition for Inter Partes Review
under 35 U.S.C. § 103 for one of ordinary skill in the art to modify Gnaga to arrive
at the subject matter of claims 1-5 and 11 of the ‘118 Patent.
The following claim chart shows the invalidity of claims 1-5 and 11.
TABLE 1
Claims of the ‘118 Patent
The Limitations of the ‘118 Patent are Disclosed in the Prior Art Patent to
Gnaga (US4148330) 1. A hair styling device having:
a body defining a chamber adapted to accommodate a length of hair,
the chamber having a primary
opening through which the length of hair may pass into the chamber;
a rotatable element adapted to
engage the length of hair adjacent to the primary opening;
an elongate member around
which, in use, the length of hair is wound by the rotatable element,
the elongate member having a
free end; the chamber having a
secondary opening through
The external rotating element C and the housing D form a body defining a chamber that is adapted to accommodate a length of hair. (Column 4, lines 9-22, Figure 6) Slot 54 is the primary opening of the chamber through which the length of hair may pass into the chamber. (Column 4, lines 9-22, Figure 6) The external rotating element C is the rotatable element that is adapted to engage the length of hair adjacent to the primary opening 54 (Column 4, lines 9-22, Figure 6) Internal element B of the hair curler A is an elongate member that the hair is wound around by the rotatable element C (Column 4, lines 9-22, Figures 1, 2 and 6) The elongate member B has a free end (Figures 1-5) The chamber has a secondary opening through which the length of hair may pass
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Patent No. 8,651,118 Petition for Inter Partes Review
which the length of hair may pass out of the chamber,
the secondary opening being
located adjacent to the free end; and
a movable abutment which
can engage the length of hair in use,
the movable abutment having
an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber,
wherein the movable abutment
is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening.
out of the chamber. (Column 4, lines 23-35; Figures 6 and 7) The secondary opening is adjacent to the free end of the elongate member B (Figures 6 and 7) The rod 22 is a movable abutment which can engage the length of hair in use. (Column 4, lines 9-35, Figure 7) The rod/movable abutment 22 has an open position in which the length of hair can pass through the secondary opening, and a closed position (within notch 70) in which the length of hair is retained within the chamber. (Column 4, lines 9-35, Figures 6 and 7) The rod/moveable abutment 22 is located within the secondary opening. (Figures 6 and 7)
2. A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member.
The secondary opening is annular and surrounds the free end of the elongate member B. (Figure 7)
3. A hair styling device according to claim 1, wherein the movable abutment is located within the
The rod/moveable abutment 22 is located within the secondary opening. (Figure 7)
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Patent No. 8,651,118 Petition for Inter Partes Review
Ground 2: Claims 1-5 and 11 are invalid under 35 U.S.C. § 102(b) over Japanese Publication No. JU-A S61-10102 to Hoshino (“Hoshino”).
Claims 1-5 and 11 are unpatentable under 35 U.S.C. § 102(b) over Japanese
Publication No. JU-A S61-10102 to Hoshino (“Hoshino”) (Ex. 1005) (Prehodka
Ex. 1002, ¶31a-31t). In the alternative, claims 1-5 and 11 are unpatentable under
35 U.S.C. § 103 over Hoshino. Hoshino was published on January 21, 1986 and is
therefore prior art under 35 U.S.C. § 102(b). Hoshino was not considered by the
USPTO during prosecution of the ‘118 Patent.
secondary opening. 4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening.
The secondary opening is permanently connected to the primary opening 54. (Figure 6)
5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway.
The rod/moveable abutment 22 is located within the secondary opening, and the secondary opening is connected to the primary opening 54 by way of a passageway. (Figures 6 and 7)
11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating.
The rod/moveable abutment 22 is in the closed position (secured with notch 70) while the rotatable element C is rotated. (Col. 3, lines 62 – Col. 4, line 23, Figures 6 and 7)
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Patent No. 8,651,118 Petition for Inter Partes Review
Citations to Hoshino herein refer to the certified English translation (Ex.
1006). Hoshino was cited in a Notice of Reasons for Rejection from the Japanese
Patent Office on November 4, 2014 during prosecution of Japanese Patent
Application No. JP2013-182129, which claims priority to International Application
No. PCT/GB2008/004146, which was published as WO2009/077747.
(Certification of Kazuko Ishiwatari, Ex. 1007)
Hoshino describes a hair styling device used for automatically winding hair
on a removable curling member 9 exactly as specified in claims 1-5 and 11 of the
‘118 Patent. Hoshino is described with regard to the following annotated figures,
which truly and correctly show the Hoshino device and how it operates.
As shown in Hoshino Figure 1, the device has a protective tube body 6 and a
rotating shaft 3 driven by a motor. The protective tube body 6 includes a hair
introduction groove 22, a latching groove 23, and a lock lever 25, where the lock
lever 25 also contains a lock groove 24. (Hoshino Figure 1)
As shown in Hoshino Figure 2, the curling member 9 is formed by coupling
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Patent No. 8,651,118 Petition for Inter Partes Review
two elements, a fixed roller 7 (colorized in blue) and a rotating pressing piece 8
(colorized in yellow). The fixed roller 7 contains a hair guide arm 16 and a shaft
hole 13.
In use, the curling member 9 is inserted onto the rotating shaft 3 in the
protective tube body 6. (Hoshino Figure 3)
After the curling member 9 is in the protective tube body 6, the hair guide
arm 16 is moved clockwise and placed in the latching groove 23 of the protective
tube body 6 and the lock groove 24 of the lock lever 25. In this position, the hair
guide arm 16 restrains the assembled curling member 9 inside the device during
operation. (Hoshino Figure 4)
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Patent No. 8,651,118 Petition for Inter Partes Review
Next, a lock of hair is inserted through the hair introduction groove 22. The
device’s motor is activated, and the rotating pressing piece 8 rotates, causing
insertion of the user’s hair into a space that is created between the fixed roller 7
and the rotating pressing piece 8, thus winding the hair around the stationary fixed
roller 7 as shown in Hoshino Figure 5.
After the hair is wound around the fixed roller 7 of the curling member 9,
the hair guide arm 16 is released from the latching groove 23, and the curling
member 9, with the hair wrapped around fixed roller 7, is removed from the
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Patent No. 8,651,118 Petition for Inter Partes Review
protective tube body 6. (Hoshino Figure 5) The curling member 9 remains on the
user’s hair after exiting the protective tube body.
The grounds for unpatentability are explained narratively below using the
language of the ‘118 claims, annotated drawings from Hoshino, and the claim chart
in Table 2. Claim 1 of the ‘118 Patent recites:
A hair styling device
Hoshino’s device is a hair styling device.
having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber;
Hoshino has a body defining a chamber between the rotating pressing piece 8 and
the protective tube body 6. The chamber is adapted to accommodate the length of
hair. The hair introduction groove 22 is the primary opening of the chamber
through which the length of hair may pass into the chamber. (Hoshino Figures 6
and 7).
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Patent No. 8,651,118 Petition for Inter Partes Review
A rotatable element adapted to engage the length of hair
adjacent to the primary opening;
Rotating pressing piece 8 is a rotatable element that is adapted to engage the length
of hair adjacent to the primary opening 22. See Hoshino Figures 6 and 7.
An elongate member around which, in use, the length of
hair is wound by the rotatable element, the elongate
member having a free end;
Hoshino describes a fixed roller 7, which is an elongate member. Hair is wound
around the elongate member 7 by the rotatable element 8. The elongate member 7
has a free end. See Hoshino Figures 5-7.
the chamber having a secondary opening through which
the length of hair may pass out of the chamber, the
secondary opening being located adjacent to the free end
[of the elongate member]; and
As stated above, Hoshino has a chamber between the rotating pressing piece 8 and
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Patent No. 8,651,118 Petition for Inter Partes Review
the protective tube body 6. This chamber has a secondary opening through which
the length of hair may pass out of the chamber. The secondary opening is adjacent
to the free end of the elongate member 7. See Hoshino Figures 5-7.
a movable abutment which can engage the length of hair
in use, the movable abutment having an open position in
which the length of hair can pass through the secondary
opening, and a closed position in which the length of hair
is retained within the chamber, wherein the movable
abutment is located within one of (i) the secondary
opening, (ii) the primary opening, and (iii) a passageway
connecting the secondary opening to the primary
opening.
The hair guide arm 16 is a movable abutment that engages the length of hair being
treated. The hair guide arm/moveable abutment 16 has an open position in which
the hair can pass through the secondary opening as shown in Hoshino Figure 6. It
also has a closed position in which the hair is retained within the chamber as
shown in Hoshino Figure 7. The hair guide arm/moveable abutment 16 is located
within the secondary opening.
Not only does the device described in Hoshino meet all limitations of
independent claim 1, it also meets the limitations of dependent claims 2-5 and 11.
Claim 2 calls for “A hair styling device according to claim 1, wherein the
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Patent No. 8,651,118 Petition for Inter Partes Review
secondary opening is annular and surrounds the free end of the elongate member.”
The secondary opening in Hoshino is annular and surrounds the free end of the
elongate member 7. See Hoshino Figures 6 and 7.
Claim 3 calls for “A hair styling device according to claim 1, wherein the
movable abutment is located within the secondary opening.” Hoshino describes the
hair guide arm/movable abutment 16 located within the secondary opening. See
Hoshino Figures 6 and 7.
Claim 4 calls for “A hair styling device according to claim 1, wherein the
secondary opening is permanently connected to the primary opening.” The
secondary opening is permanently connected to the primary opening 22. See
Hoshino Figures 6 and 7.
Claim 5 calls for “A hair styling device according to claim 1, wherein the
movable abutment is located within one of (i) the secondary opening and (ii) the
primary opening, and wherein the secondary opening is connected to the primary
opening by way of a passageway.” The movable abutment 16 is located within the
secondary opening, and the secondary opening is connected to the primary opening
22 by way of a passageway. See Hoshino Figures 6 and 7.
Claim 11 of the ‘118 Patent recites “A hair styling device according to claim
1, wherein the movable abutment is maintained in its closed position while the
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Patent No. 8,651,118 Petition for Inter Partes Review
rotatable element is rotating.” The hair guide arm/movable abutment 16 is
maintained in its closed position while the rotatable element 8 is rotating. See
Hoshino Figure 7.
As set forth above, the ‘118 Patent claims 1-5 and 11 are expressly disclosed
by the Hoshino publication, since a person of ordinary skill in the art would
conclude that each and every limitation of the invention as claimed in these claims
is found in this prior art reference. For these reasons, claims 1-5 and 11 of the ‘118
Patent are invalid as anticipated under 35 U.S.C. Section 102(b).
To the extent that there may be any differences between the subject matter of
claims 1-5 and 11, any such differences are trivial and it would have been obvious
under 35 U.S.C. § 103 for one of ordinary skill in the art to modify Hoshino to
arrive at claims 1-5 and 11 of the ‘118 Patent.
The following claim chart shows the invalidity of claims 1-5 and 11.
TABLE 2
Claims of the ‘118 Patent
The Limitations of the ‘118 Patent are Disclosed in the Prior Art Japanese Publication to Hoshino
(JPS61-010102)(References are to the English translation Ex. 1006)
1. A hair styling device having: a body defining a chamber adapted
to accommodate a length of hair, the chamber having a primary
opening through which the length of hair may pass into the
Protective tube body 6 and rotating pressing piece 8 form a chamber that is adapted to accommodate a length of hair (Page 4, ¶ [2, 6]; Figures 1 and 2). Hair introduction groove 22 is the primary opening of the chamber through
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Patent No. 8,651,118 Petition for Inter Partes Review
chamber; a rotatable element adapted to
engage the length of hair adjacent to the primary opening;
an elongate member around which,
in use, the length of hair is wound by the rotatable element,
the elongate member having a free
end; the chamber having a secondary
opening through which the length of hair may pass out of the chamber,
the secondary opening being
located adjacent to the free end; and
a movable abutment which can
engage the length of hair in use, the movable abutment having an
open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber,
which the length of hair may pass into the chamber (Page 4, ¶ [2, 6]; Figures 1 and 2). Rotating pressing piece 8 is a rotatable element that is adapted to engage the length of hair adjacent to the primary opening 22 (Page 4, ¶ [6]; Figures 1-3). Fixed roller 7 is an elongate member that hair is wound around by the rotatable element 8 (Page 4, ¶ [6]; Figures 1-3). The elongate member 7 has a free end (Figures 1-3). The chamber has a secondary opening through which the length of hair may pass out of the chamber (Figures 1 and 2). The secondary opening is adjacent to the free end of the elongate member 7 (Figures 1 and 2). The hair guide arm 16 is a movable abutment which can engage the length of hair in use (Page 4, ¶ [5], Page 5, ¶ [1]; Figures 1-3). The movable abutment 16 has an open position in which the length of hair can pass through the secondary opening, and a closed position (within notches 23 and 24) in which the length of hair is retained within the chamber (Page 4, ¶ [5], Page 5, ¶ [1]; Figures 1 and 2).
25
Patent No. 8,651,118 Petition for Inter Partes Review
wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening.
The moveable abutment 16 is located within the secondary opening (Figures 1 and 2).
2. A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member.
The secondary opening is annular and surrounds the free end of the elongate member 7 (Figures 1 and 2).
3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening.
The moveable abutment 16 is located within the secondary opening (Figures 1 and 2).
4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening.
The secondary opening is permanently connected to the primary opening 22 (Figures 1 and 2).
5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway.
The moveable abutment 16 is located within the secondary opening, and the secondary opening is connected to the primary opening 22 by way of a passageway (Figures 1 and 2).
11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating.
The moveable abutment 16 is in the closed position (secured within notches 23 and 24) while the rotatable element 8 is rotated (Page 4, ¶ [5]; Figure 1).
26
Patent No. 8,651,118 Petition for Inter Partes Review
Ground 3: Claims 1 and 3-5 are invalid under 35 U.S.C. § 102(b) over U.S. Patent Publication US2010/0083978 to Hottenrott (“Hottenrott”).
Claims 1 and 3-5 are unpatentable under 35 U.S.C. § 102(b) over U.S.
Patent Publication US2010/0083978 to Hottenrott (“Hottenrott”) (Ex. 1009)
(Prehodka Ex. 1002, ¶32a-32p). In the alternative, claims 1 and 3-5 are
unpatentable under 35 U.S.C. § 103 over Hottenrott. Hottenrott was published on
April 8, 2010, and is therefore prior art under 35 U.S.C. § 102(b). Hottenrott was
not considered by the USPTO.
The following annotated figures truly and correctly show the Hottenrott
product and how it is used. Hottenrott Figures 1 and 2 are perspective views and
Figures 3-5 are transverse sectional views of the Hottenrott device.
Hottenrott describes a device used for hair styling exactly as specified in
claims 1 and 3-5 of the ‘118 Patent. Hottenrott’s device contains two styling parts
10, 20 that are pivotable towards each other from an open position to a closed
position. (Hottenrott Figures 1-2).
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Patent No. 8,651,118 Petition for Inter Partes Review
The outside surfaces of styling parts 10, 20 are surrounded in some areas by
two guide shells 12, 22. The guide shells 12, 22 are rotatable along the outside
curvature of the styling parts 10, 20.
Hottenrott Figures 1-5(a), (b), (c), and (d) sequentially show the use of the
Hottenrott device. In use, the device is placed close to a user’s head and a strand of
user’s hair 3 is placed between the two styling parts 10, 20 in the open position.
(Hottenrott Figure 1). The styling parts 10, 20 are then pivoted towards each other
into the closed position, creating a chamber therebetween. (Hottenrott Figures 2
and 3). Once the styling parts 10, 20 are in the closed position, the guide shells 12,
22 are rotated along the outside of the styling parts 10, 20, with the hair 3 in
between the styling parts 10, 20 and the guide shells 12, 22. (Hottenrott Figures 3
and 4).
The Hottenrott device is then moved away from the user’s head, as shown in
Hottenrott Figure 5A. This movement causes the strand of hair 3 to be first pulled
28
Patent No. 8,651,118 Petition for Inter Partes Review
between the styling part 20 and the guide shell 12, then pulled between the styling
parts 10, 20, and finally pulled between the styling part 10 and the guide shell 22
where it is cooled on a cooling surface 18 before exiting the device as shown in
Hottenrott Figures 5B and 5C. Hottenrott Figure 5D shows the hair after styling.
29
Patent No. 8,651,118 Petition for Inter Partes Review
The grounds for invalidity are explained narratively below using the
language of the ‘118 claims, annotated drawings based on the Hottenrott drawings,
and the claim chart in Table 3. Claim 1 of the ‘118 Patent recites:
A hair styling device
Hottenrott describes a hair styling device.
having: a body defining a chamber adapted to
accommodate a length of hair, the chamber having a
primary opening through which the length of hair may
pass into the chamber;
As shown in Hottenrott Figure 6, the inside surfaces of the two styling parts 10, 20
form a body defining a chamber between the two styling parts 10, 20. The chamber
is adapted to accommodate a length of hair 3. The chamber has a primary opening
through which the length of hair passes into the chamber. See Hottenrott Figure 6.
a rotatable element adapted to engage the length of hair
adjacent to the primary opening;
30
Patent No. 8,651,118 Petition for Inter Partes Review
As shown in Hottenrott Figure 7, Hottenrott’s guide shells 12, 22 rotate and thus
are a rotatable element. In the closed position, the guide shells/rotatable element
12, 22 are adapted to engage the length of hair 3 adjacent to the primary opening.
an elongate member around which, in use, the length of
hair is wound by the rotatable element, the elongate
member having a free end [of the elongate member];
The two styling parts 10, 20 form an elongate member. As shown by Hottenrott
Figures 4 and 7, when the device is in the closed position, the hair 3 is wound
around the elongate member 10, 20 by the rotatable element 12, 22. As shown in
Hottenrott Figure 8, Hottenrott’s elongate member 10, 20 has a free end.
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Patent No. 8,651,118 Petition for Inter Partes Review
the chamber having a secondary opening through which
the length of hair may pass out of the chamber, the
secondary opening being located adjacent to the free
end; and
The two guide shells 12, 22 form a movable abutment. The guide shells/movable
abutment 12, 22 engage the length of hair in use as shown in Hottenrott Figures 4
and 7. The guide shells/moveable abutment 12, 22 have an open position in which
the hair can pass through the secondary opening, and a closed position in which the
length of hair is retained within the chamber, as shown in Hottenrott Figures 6 and
7. The guide shells/moveable abutment 12, 22 is located within the primary
opening and the secondary opening as shown in Hottenrott Figures 6 and 7.
a movable abutment which can engage the length of hair
in use, the movable abutment having an open position in
which the length of hair can pass through the secondary
opening, and a closed position in which the length of hair
is retained within the chamber, wherein the movable
abutment is located within one of (i) the secondary
opening, (ii) the primary opening, and (iii) a passageway
connecting the secondary opening to the primary
opening.
The two guide shells 12, 22 form a movable abutment. The guide shells/movable
abutment 12, 22 engage the length of hair in use as shown in Hottenrott Figures 4
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Patent No. 8,651,118 Petition for Inter Partes Review
and 7. The guide shells/moveable abutment 12, 22 have an open position in which
the length of hair can pass through the secondary opening, and a closed position in
which the length of hair is retained within the chamber, as shown in Hottenrott
Figures 6 and 7. The guide shells/moveable abutment 12, 22 is located within the
primary opening and the secondary opening as shown in Hottenrott Figures 6 and
7.
Not only does the device described in Hottenrott meet all the limitations of
independent claim 1, it also meets the limitations of dependent claims 3-5.
Claim 3 calls for “A hair styling device according to claim 1, wherein the
movable abutment is located within the secondary opening.” The guide
shells/movable abutment 12, 22 of Hottenrott are located within the secondary
opening. See Hottenrott Figure 7.
Claim 4 calls for “A hair styling device according to claim 1, wherein the
secondary opening is permanently connected to the primary opening.” Hottenrott’s
secondary opening is permanently connected to the primary opening. See
Hottenrott Figure 7.
Claim 5 calls for “A hair styling device according to claim 1, wherein the
movable abutment is located within one of (i) the secondary opening and (ii) the
primary opening, and wherein the secondary opening is connected to the primary
33
Patent No. 8,651,118 Petition for Inter Partes Review
opening by way of a passageway.” The guide shells/movable abutment 12, 22 are
located within the secondary opening, and the secondary opening is connected to
the primary opening by way of a passageway. See Hottenrott Figure 7.
As set forth above, the Hottenrott application discloses claims 1 and 3-5 of
the ‘118 Patent since a person of ordinary skill in the art would conclude that each
and every limitation of the invention as claimed in these patent claims is found in
this prior art reference. For these reasons, claims 1 and 3-5 of the ‘118 Patent are
invalid as anticipated under 35 U.S.C. Section 102(b).
To the extent that there may be any differences between the subject matter of
claims 1 and 3-5, any such differences are trivial and it would have been obvious
under 35 U.S.C. § 103 for one of ordinary skill in the art to modify Hottenrott to
arrive at claims 1 and 3-5 of the ‘118 Patent.
The following claim chart shows the invalidity of claims 1 and 3-5.
TABLE 3
Claims of the ‘118 Patent
The Limitations of the ‘118 Patent are Disclosed in the Prior Art Application
Hottenrott (Pat. Publication No. US2010083978)
1. A hair styling device having: a body defining a chamber adapted
to accommodate a length of hair,
The inside surfaces of the two styling parts 10, 20 described in Hottenrott form a body defining a chamber that is adapted to accommodate a length of hair 3. [0070], (Figures 1- 3)
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Patent No. 8,651,118 Petition for Inter Partes Review
the chamber having a primary opening through which the length of hair may pass into the chamber;
a rotatable element adapted to
engage the length of hair adjacent to the primary opening;
an elongate member around which,
in use, the length of hair is wound by the rotatable element,
the elongate member having a free
end; the chamber having a secondary
opening through which the length of hair may pass out of the chamber,
the secondary opening being
located adjacent to the free end; and
a movable abutment which can
engage the length of hair in use, the movable abutment having an
open position in which the length of hair can pass through the secondary opening, and a closed
The chamber has a primary opening through which the length of hair may pass into the chamber [0070], (Figures 1b and 2b) The two guide means 12, 22 are a rotatable element that is adapted to engage the length of hair adjacent to the primary opening [0073], (Figures 2b and 3b) The two styling parts 10, 20 form an elongate member when in the closed position. Hair is wound around the elongate member 10, 20 by the rotatable element 12, 22 [0073], (Figures 2b, 3b) Elongate member 10, 20 has a free end (Figure 2). The chamber formed by the inside surfaces of the two styling parts 10, 20 has a secondary opening through which the length of hair may pass out of the chamber. [0073] (Figures 1b and 2b). The secondary opening is adjacent to the free end of the elongate member 10, 20 (Figures 2a). The guide parts 12, 22 are a movable abutment and engage the length of hair in use [0073], (Figures 2b, 3b) The movable abutment 12, 22 has an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length
35
Patent No. 8,651,118 Petition for Inter Partes Review
Ground 4: Claims 1-5 and 11 are invalid under 35 U.S.C. § 102(b) over United Kingdom Patent Specification No. 1,036,583 to Gillette (“Gillette”)
Claims 1-5 and 11 are unpatentable under 35 U.S.C. § 102(b) over United
Kingdom Patent Specification No. 1,036,583 to Gillette (“Gillette”) (Ex. 1010)
position in which the length of hair is retained within the chamber,
wherein the movable abutment is
located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening.
of hair is retained within the chamber (Figures 2-3). The moveable abutment 12, 22 is located in the primary opening, the secondary opening, and the passageway connecting the secondary opening to the primary opening (Figures 2-3).
3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening.
The movable abutment 12, 22 is located within the secondary opening (Figures 2-3).
4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening.
The secondary opening is permanently connected to the primary opening (Figures 1b and 2b).
5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway.
The movable abutment 12, 22 is located within the primary opening, the secondary opening, and the secondary opening is connected to the primary opening by a passageway (Figures 2-3).
36
Patent No. 8,651,118 Petition for Inter Partes Review
(Prehodka Ex. 1002, ¶33a-33t). In the alternative, claims 1-5 and 11 are
unpatentable under 35 U.S.C. § 103 over the same reference. Gillette was
published on April 8, 2010, before the priority date of the ‘118 Patent, and is
therefore prior art under 35 U.S.C. § 102(b). Gillette was not considered by the
PTO during prosecution of the ‘118 Patent1.
With reference to the embodiment of Figure 6 of the Gillette document,
Gillette discloses a device used for hair styling exactly as specified in claims 1-5
and 11 of the ‘118 Patent. Gillette is described below with regard to the following
annotated figures, which truly and correctly show the Gillette device embodiment
of Figure 6 and how it operates. Gillette Figures 1 is an expanded perspective
view, Figures 3-6 and 8 are perspective views, Figures 2 and 9 are sectional views,
and Figure 7 is a partially broken away side perspective view.
Gillette describes a hair curling device for coiling a hair tress. Gillette’s
assembled device includes a turbine stator 36 (colorized as orange), a surrounding
guide member including a housing 32 with a rotatable shaft 50 (colorized as
green), and an air receiver 34 (colorized as yellow). (Gillette Figures 1 and 2). A
slot 38 in the air receiver 34 provides access for hair into the chamber. The shaft 50
1 A related reference, Mizelle (U.S. Patent number 3,213,860) was considered during prosecution of the ‘118 Patent. It is listed on the face of the ‘118 Patent as “Tewksbury et. al.” The Examiner failed to appreciate how Mizell functions.
37
Patent No. 8,651,118 Petition for Inter Partes Review
has an end closure 55. A tress winding member 40 (colorized in blue) includes a
slot 43 for passage of hair into the tress winding member 40. The air receiver 34
has an open end providing an annular opening adjacent to the end closure 55.
The tress winding member 40, which serves as a hair curler, can be inserted
into the air receiver 34 adjacent to the slot 38. (Gillette Figures 1 and 2) The
winding member 40 has a closure 46 with an outwardly extending rim 47. During a
hair winding operation the closure 46 closes the open end of the air receiver 34.
In use, the tress winding member 40 is inserted through the annular opening
at the free end of the air receiver 34. Before the tress winding member 40 is
inserted into the air receiver 34, the closure 46 is in an open position. When 38
Patent No. 8,651,118 Petition for Inter Partes Review
inserted into the air receiver 34, the closure 46 on the tress winding member 40
closes the annular opening. (Gillette Figures 2 and 3)
Once the tress winding member 40 is in place, a user places a strand of hair
in aligned slots 38 and 43 for coiling the hair. Slot 38 is the slot in the air receiver
and slot 43 is the slot in the tress winding member 40. (Gillette Figures 3 and 4)
Next, the shaft 50 rotates to wind the length of hair through aligned slots 38
and 43 into coils into the inside of the tress winding member 40. (Gillette Figure
5) After the length of hair is wound inside tress winding member 40, the tress
winding member 40 with hair coiled therein is removed through the annular
opening. (Gillette Figure 6)
39
Patent No. 8,651,118 Petition for Inter Partes Review
The grounds for unpatentability are explained narratively below using the language
of the ‘118 Patent claims and annotated drawings, based on the Gillette drawings,
as well as the claim chart in Table 4.
Claim 1 of the ‘118 Patent recites:
A hair styling device
The Gillette device is for coiling a hair tress and thus is a hair styling device.
having: a body defining a chamber adapted to
accommodate a length of hair, the chamber having a
40
Patent No. 8,651,118 Petition for Inter Partes Review
primary opening through which the length of hair may
pass into the chamber;
The air receiver 34 defines a chamber adapted to accommodate a length of hair.
The slot 38 in the air receiver 34 is the primary opening through which a length of
hair can pass into the chamber. (Gillette Figure 7)
a rotatable element adapted to engage the length of hair
adjacent to the primary opening;
The shaft 50 is a rotatable element adapted to engage the length of hair adjacent to
the primary opening 38. (Gillette Figures 7 and 8)
41
Patent No. 8,651,118 Petition for Inter Partes Review
an elongate member around which, in use, the length of
hair is wound by the rotatable element, the elongate
member having a free end;
The shaft 50 is also an elongate member around which, in use, the length of hair is
wound. (Gillette Figure 7) The shaft/elongate member 50 has a free end. (Gillette
Figure 8)
the chamber having a secondary opening through which
the length of hair may pass out of the chamber, the
secondary opening being located adjacent to the free end
[of the elongate member]; and
The opening at the end of the air receiver 34 is a secondary opening through which
the length of hair may pass out of the chamber provided by the air receiver 34. The
secondary opening is located adjacent to the free end of the shaft/elongate member
50. (Gillette Figure 8)
a movable abutment which can engage the length of hair
in use, the movable abutment having an open position in
which the length of hair can pass through the secondary
opening, and a closed position in which the length of hair
is retained within the chamber, wherein the movable
abutment is located within one of (i) the secondary
opening, (ii) the primary opening, and (iii) a passageway
42
Patent No. 8,651,118 Petition for Inter Partes Review
connecting the secondary opening to the primary
opening.
The closure 46 of the tress winding member 40 is a movable abutment. As shown
by Gillette Figure 8, when the tress winding member 40 is not within the air
receiver 34, the closure/movable abutment 46 has an open position in which a
length of hair can pass through the secondary opening. As shown by Gillette
Figures 7 and 9, when the tress winding member 40 is within the air receiver 34,
the closure/movable abutment 46 is in a closed position in which it engages the
hair in use. Furthermore, the length of hair is retained within the chamber in the
closed position. The closure/movable abutment 46 is located within the annular
secondary opening at the end of the air receiver 34.
Not only does the device described in Gillette meet all limitations of
independent claim 1, it also meets the limitations of dependent claims 2-5 and 11.
Claim 2 states “A hair styling device according to claim 1, wherein the
secondary opening is annular and surrounds the free end of the elongate member.”
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Patent No. 8,651,118 Petition for Inter Partes Review
As shown by Gillette Figure 8, the opening at the end of the air receiver 34 in
Gillette is adjacent to the shaft/elongate member 50 and is annular.
Claim 3 states “A hair styling device according to claim 1, wherein the
movable abutment is located within the secondary opening.” As shown in Gillette
Figure 5, Gillette’s closure/movable abutment 46 is located within the annular
secondary opening at the end of the air receiver 34.
Claim 4 states “A hair styling device according to claim 1, wherein the
secondary opening is permanently connected to the primary opening.” As shown
by Gillette Figure 8, the secondary opening at the end of the air receiver 34 in
Gillette is permanently connected to the primary opening 38.
Claim 5 states “A hair styling device according to claim 1, wherein the
movable abutment is located within one of (i) the secondary opening and (ii) the
primary opening, and wherein the secondary opening is connected to the primary
opening by way of a passageway.” As shown by Gillette Figures 7 and 8, Gillette’s
closure/movable abutment 46 is located within the annular opening, the secondary
opening at the end of the air receiver 34. There is a passageway between the
primary opening 38 and the secondary opening.
Claim 11 calls for “A hair styling device according to claim 1, wherein the
movable abutment is maintained in its closed position while the rotatable element
44
Patent No. 8,651,118 Petition for Inter Partes Review
is rotating.” As shown in Gillette Figure 7, the closure/moveable abutment 46 is
maintained in its closed position while the shaft/rotatable element 50 is rotating.
As set forth above, every limitation of claims 1-5 and 11 of the ‘118 Patent
are set forth in the Gillette application since a person of ordinary skill in the art
would conclude that each and every limitation of the invention as claimed in these
patent claims is found in this prior art reference. For these reasons, claims 1-5 and
11 of the ‘118 Patent are invalid as anticipated under 35 U.S.C. § 102(b).
To the extent that there may be any differences between the subject matter of
claims 1-5 and 11, any such differences are trivial and it would have been obvious
under 35 U.S.C. § 103 for one of ordinary skill in the art to modify Gillette to
arrive at claims 1-5 and 11 of the ‘118 Patent.
The following claim chart shows the invalidity of claims 1-5 and 11.
TABLE 4
Claims of the ‘118 Patent The Limitations of the ‘118 Patent
are Disclosed in the Prior Art Patent to Gillette (GB 1036583)
1. A hair styling device having: a body defining a chamber adapted to
accommodate a length of hair, the chamber having a primary opening
through which the length of hair may pass into the chamber;
The air receiver 34 is a body defining a chamber adapted to accommodate a length of hair (Figure 6). The slot 38 in the air receiver 34 is the primary opening of the chamber through which the length of hair may pass into the chamber. (Page 5,
45
Patent No. 8,651,118 Petition for Inter Partes Review
a rotatable element adapted to engage
the length of hair adjacent to the primary opening;
an elongate member around which, in
use, the length of hair is wound by the rotatable element,
the elongate member having a free end; the chamber having a secondary
opening through which the length of hair may pass out of the chamber,
the secondary opening being located
adjacent to the free end; and a movable abutment which can engage
the length of hair in use, the movable abutment having an open
position in which the length of hair can pass through the secondary opening, and a closed position in
lines 54-61, Figure 6). The shaft 50 is a rotatable element that is adapted to engage the length of hair adjacent to the primary opening 38 (Page 5, lines 75-95, Figure 9). The shaft 50 is an elongate member, that hair is wound around by the rotatable element 50 (Page 5, lines 80-90, Figure 9). The elongate member 50 has a free end (Page 5, lines 75-95, Figure 9). The opening at the end of air receiver 34 is the secondary opening of the chamber through which the length of hair may pass out of the chamber (Page 5, lines 106-110, Figures 6 and 9). The secondary opening is adjacent to the free end of the elongate member 50 (Page 5, lines 106-110, Figures 6 and 9). The closure 46 of the tress winding member 40 is a movable abutment that can engage the length of hair in use (Page 5, lines 5-23, Figures 6 and 9). When the tress winding member 40 is not within the air receiver 34, the movable abutment 46 has an open position in which a length of hair
46
Patent No. 8,651,118 Petition for Inter Partes Review
which the length of hair is retained within the chamber,
wherein the movable abutment is
located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening.
can pass through the secondary opening. Also, when the tress winding member 40 is removed from the air receiver 34, the movable abutment 46 has an open position in which a length of hair can pass through the secondary opening. When the tress winding member 40 is within the air receiver 34, the movable abutment 46 has a closed position in which the length of hair is retained within the chamber (Page 5, lines 5-23, Figures 6 and 9). The moveable abutment 46 is located within the secondary opening at the end of air receiver 34 (Page 5, lines 5-23, Figures 6 and 9).
2. A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member.
The secondary opening at the end of air receiver 34 is annular and surrounds the free end of the elongate member 50 (Figures 6, 9 and 11b).
3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening.
The moveable abutment 46 is located within the secondary opening at the end of air receiver 34 (Figures 6 and 9).
4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening.
The secondary opening at the end of air receiver 34 is permanently connected to the primary opening 38 (Figures 6 and 9).
5. A hair styling device according to claim 1, wherein the movable abutment is
The moveable abutment 46 is located within the secondary
47
Patent No. 8,651,118 Petition for Inter Partes Review
Ground 5: Claims 1, 3-5 and 11 are invalid under 35 U.S.C. § 102(b) over International Patent Publication WO2009/077747 to De Benedictis (“De Benedictis 2009”).
As explained by Prehodka (Prehodka Ex. 1002 ¶ 35a-35o), claims 1, 3-5 and
11 are unpatentable under 35 U.S.C. § 102(b) over published Patent Cooperation
Treaty (PCT) Publication WO2009/077747 to De Benedictis (“De Benedictis
2009”) (Ex. 1011) or in the alternative, claims 1, 3-5 and 11 are unpatentable under
35 U.S.C. § 103 over the same reference. De Benedictis 2009 was published on
June 25, 2009 and is therefore prior art under 35 U.S.C. § 102(b). Figures in De
Benedictis 2009 herein refer to the annotated figures. De Benedictis 2009 was
referenced in the specification of the ‘118 Patent.
De Benedictis 2009 was mischaracterized in the specification of the
application for the ‘118 Patent, incorrectly stating that the invention that is the
subject of the ‘118 Patent differed from De Benedictis 2009 “in having a secondary
located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway.
opening at the end of air receiver 34, and the secondary opening is connected to the primary opening 38 by way of a passageway (Figures 6 and 9).
11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating.
The moveable abutment 46 is maintained in its closed position while the rotatable element 50 is rotating (Page 5, lines 5-23, Figure 6).
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Patent No. 8,651,118 Petition for Inter Partes Review
opening adjacent to a free end of the elongate member” which “permits the length
of hair to be removed from the chamber without passing back through the primary
opening.” ‘118 Patent, Ex. 1001, Col. 2, lines 4-7. Prehodka Ex. 1002 ¶¶22-23. De
Benedictis 2009 was not applied by the USPTO during prosecution of the ‘118
Patent, probably because of the mischaracterization in the specification of the ‘118
Patent. Claim 2 is discussed below regarding obviousness.
De Benedictis 2009’s device 401 has a handle 402, a substantially tubular
housing 406 that contains an annular chamber 408, and an elongate member 436.
There is a primary opening in the housing 406 that runs parallel to the elongate
member 436, which can be closed by a door 490. The housing 406 contains a
helical member 420. The housing 406 also has an aperture 480 in an end wall 412,
which is distal to the handle 402. (De Benedictis Figure 1)
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Patent No. 8,651,118 Petition for Inter Partes Review
In use of the De Benedictis 2009 device 401, as shown in De Benedictis
Figures 2A-2D, a length of a user’s hair is placed into the opening of the housing
406 created when the door 490 is in the open position. When the length of the
user’s hair is placed in the opening, the door 490 is then shut, closing off the
opening in the housing 406 and ensuring that the hair is retained in the chamber
408 during operation of the device. (De Benedictis Figure 2B) The length of hair is
wrapped around the elongate member 436 by rotation of the helical member 420.
(De Benedictis Figure 2C) After the length of hair is curled, the styled hair passes
out of the aperture 480 of the end wall 412, resulting in a curl (Figure 5D).
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Patent No. 8,651,118 Petition for Inter Partes Review
The grounds for unpatentability are explained narratively below using the
language of the ‘118 claims, the annotated drawings, and the claim chart in Table
5. Claim 1 of the patent recites:
A hair styling device
The De Benedictis device is for curling a length of hair and thus is a hair
styling device.
having: a body defining a chamber adapted to
accommodate a length of hair, the chamber having a
primary opening through which the length of hair may
pass into the chamber;
The housing 406 is a body defining an annular chamber 408 adapted to
accommodate a length of hair. (De Benedictis Figure 3) The chamber 408 has a
primary opening, namely a slot that is created when the door 490 is opened,
through which the length of hair may pass into the chamber 408.
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Patent No. 8,651,118 Petition for Inter Partes Review
a rotatable element adapted to engage the length of hair
adjacent to the primary opening;
De Benedictis 2009 discloses a helical rotating element 420 that is a rotatable
element adapted to engage the length of hair adjacent to the primary opening. (De
Benedictis Figure 3)
an elongate member around which, in use, the length of
hair is wound by the rotatable element, the elongate
member having a free end;
As shown by De Benedictis Figures 3 and 4, the elongate member 436 of De
Benedictis 2009 has a free end. In use, the length of hair is wound by the rotatable
element 420.
the chamber having a secondary opening through which
the length of hair may pass out of the chamber, the
secondary opening being located adjacent to the free end
[of the elongate member]; and
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Patent No. 8,651,118 Petition for Inter Partes Review
The aperture 480 in the end wall of the De Benedictis 2009 chamber 408 is the
secondary opening through which the length of hair may pass out of the chamber
408. The aperture/secondary opening 480 is located adjacent to the free end of the
elongate member 436. (De Benedictis Figures 3 and 4)
a movable abutment which can engage the length of hair
in use, the movable abutment having an open position in
which the length of hair can pass through the secondary
opening, and a closed position in which the length of hair
is retained within the chamber, wherein the movable
abutment is located within one of (i) the secondary
opening, (ii) the primary opening, and (iii) a passageway
connecting the secondary opening to the primary
opening.
The door 490 is a movable abutment that can, and does, engage the length of
hair in use, as shown by De Benedictis Figures 3 and 4. The door/moveable
abutment 490 has an open position, in which the length of hair can pass through
the aperture/secondary opening 480, and a closed position in which the length of
hair is retained within the chamber 408. (De Benedictis Figures 3 and 4) The
door/movable abutment 490 is located along the entire length of the chamber 408
and thus, it is located within the primary opening, within the aperture/secondary
opening 480, and also within the passageway connecting the aperture/secondary
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Patent No. 8,651,118 Petition for Inter Partes Review
opening 480 to the primary opening. (De Benedictis Figures 3 and 4)
De Benedictis also meets all of the limitations of dependent claims 3-5 and
11.
Claim 3 states “A hair styling device according to claim 1, wherein the
movable abutment is located within the secondary opening.” As shown in De
Benedictis Figures 3 and 4, De Benedictis 2009 shows the door/abutment 490 as
being located within the aperture/secondary opening 480.
Claim 4 states “A hair styling device according to claim 1, wherein the
secondary opening is permanently connected to the primary opening.” The device
described in De Benedictis 2009 has the secondary opening 480 permanently
connected to the primary opening. (De Benedictis Figures 3 and 4)
Claim 5 states “A hair styling device according to claim 1, wherein the
movable abutment is located within one of (i) the secondary opening and (ii) the
primary opening, and wherein the secondary opening is connected to the primary
opening by way of a passageway.” De Benedictis 2009 shows the abutment/door
490 within the primary opening and the aperture/secondary opening 480, the
aperture/secondary opening 480 being connected to the primary opening by way of
a passageway. (De Benedictis Figures 3 and 4)
Claim 11 calls for “A hair styling device according to claim 1, wherein the
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Patent No. 8,651,118 Petition for Inter Partes Review
movable abutment is maintained in its closed position while the rotatable element
is rotating.” The door 490 in De Benedictis 2009 is maintained in its closed
position while the rotatable element 420 is rotating. (De Benedictis Figure 4)
As detailed above, the ‘118 patent claims 1, 3-5 and 11 are invalid as
anticipated under 35 U.S.C. Section 102(b).
To the extent there may be any differences between the subject matter of
claims 1, 3-5 and 11, any such differences are trivial and it would have been
obvious under 35 U.S.C. § 103 for one of ordinary skill in the art to modify De
Benedictis 2009 to arrive at claims 1, 3-5 and 11 of the ‘118 Patent.
The following claim chart in Table 5 shows the invalidity of claims 1, 3-5
and 11.
TABLE 5
Claims of the ‘118 Patent The Limitations of the ‘118 Patent are Disclosed in the De Benedictis
2009 Application 1. A hair styling device having:
a body defining a chamber adapted to accommodate a length of hair,
the chamber having a primary opening
through which the length of hair may pass into the chamber;
The housing 406 is a body defining an annular chamber 408 that is adapted to accommodate a length of hair (Page 17, lines 13-16; Figures 13 and 14). The chamber 408 has a primary opening, namely a slot that is created when a door 490 is opened, through which the length of hair may pass into the chamber 408 (Page 18, lines
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Patent No. 8,651,118 Petition for Inter Partes Review
a rotatable element adapted to engage
the length of hair adjacent to the primary opening;
an elongate member around which, in use, the length of hair is wound by the rotatable element,
the elongate member having a free
end; the chamber having a secondary
opening through which the length of hair may pass out of the chamber,
the secondary opening being located
adjacent to the free end; and a movable abutment which can engage
the length of hair in use, the movable abutment having an open
position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained
15-17, Figures 13 and 14). The rotatable element 420 is adapted to engage the length of hair adjacent to the primary opening (Page 18, lines 21-24; Figures 13 and 14). The device has an elongate member 436 around which, in use, the length of hair is wound by the rotatable element 420 (Page 18, lines 20-24; Figures 13 and 14). The elongate member 436 has a free end (Figures 13 and 14). The chamber 408 has an aperture 480 in an end wall 412, which is the secondary opening through which the length of hair may pass out of the chamber 408 (Page 18, lines 28-31; Figures 13 and 14). The secondary opening 480 in is located adjacent to the free end of the elongate member 436 (Figures 13 and 14). The device has a movable abutment, or door 490, which can engage the length of hair in use (Page 18, lines 15-31; Figures 13 and 14). The movable abutment 490 has an open position, as shown in Figure 13, in which the length of hair can pass through the secondary opening 480 and a closed position in which the
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Patent No. 8,651,118 Petition for Inter Partes Review
within the chamber, wherein the movable abutment is
located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening.
length of hair is retained within the chamber 408 (Page 18, lines 15-31; Figures 13 and 14). The movable abutment 490 is located within the passageway between the primary opening and the secondary opening 480 (Page 18, lines 15-31; Figures 13 and 14).
3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening.
The moveable abutment 490 is located within the secondary opening 480 (Page 17, lines 28-31, Figures 13 and 14).
4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening.
The secondary opening 480 is permanently connected to the primary opening (Page 17, lines 13-31, Figures 13 and 14).
5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway.
The movable abutment 490 is located within the primary opening and the secondary opening 480 is connected to the primary opening by way of a passageway (Page 17, lines 13-31, Figures 13 and 14).
11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating.
The movable abutment 490 is maintained in its closed position while the rotatable element 420 is rotating (Page 18, lines 19-31).
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Patent No. 8,651,118 Petition for Inter Partes Review
Ground 6: Claim 2 is unpatentable under 35 U.S.C. § 103 over De Benedictis 2009 in view of United Kingdom Patent No. GB302952 to Dinger (“Dinger”), Gnaga, Hoshino, or Gillette.
Claim 2 is unpatentable under 35 U.S.C. § 103 over published Patent
Cooperation Treaty (PCT) Publication WO2009/077747 to De Benedictis (“De
Benedictis”) (Ex. 1011) in view of United Kingdom Patent No. GB302952 to
Dinger (“Dinger”) (Ex. 1012), Gnaga (Ex. 1004), Hoshino (Ex. 1005), or Gillette
(Ex. 1010), as set forth in the Prehodka Ex. 1002, ¶¶36a-36f.
The only difference between claim 2 and claim 1 is that claim 2 requires the
secondary opening to be annular and surrounds the free the end of the elongate
member. Gnaga, Hoshino, and Gillette all disclose an annular secondary opening
surrounding the free end of an elongate member. Also, Dinger describes a device
used for hair styling. Dinger is described with regard to the following annotated
figures. Dinger Figures 1 and 3 are sectional views, and Figures 2 and 4 are
transverse sectional views of the Dinger device.
The Dinger device has a substantially tubular sleeve 1 that creates a hollow
12 around a core 11. The sleeve 1 has a distal end that is annular and open, and a
proximal end that is closed. The core 11 has a distal end that is a free end, and a
proximal end that is enclosed within the sleeve 1.
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Patent No. 8,651,118 Petition for Inter Partes Review
Fig. 2
Dinger Figure 2
Fig. 3
Dinger Figure 1
In use, as shown in Dinger Figure 1, a length of hair is wrapped around the
core 11 and the sleeve 1 is placed over the core 11. The length of hair is then
heated for a period of time until the hair forms the desired curled shape.
Afterwards, the hair is slid off the free end of the core 11, out the distal annular
open end of the sleeve 1.
Each of Gnaga, Hoshino, Gillette, and Dinger devices have an annular
opening around an end of an elongated member. It was well known in the art, at
least as early as 1927 as demonstrated by Dinger, that a known and conventional
way to remove curled hair from an elongate member is to slide it off the free end of
the elongate member through an annular opening. This has the obvious advantage
that a formed curl does not need to be unwound to remove it from the elongate
member, which allows the curl to retain its shape.
Therefore, it would have been obvious to a person of ordinary skill in the art
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Patent No. 8,651,118 Petition for Inter Partes Review
to modify the secondary opening of De Benedictis 2009 to be annular and surround
the free end of the elongate member, in order to maintain the curvature of the
formed curls.
VII. CONCLUSION
For the reasons set forth above, Petitioner requests that a trial be instituted
and that claims 1-5 and 11 of the ‘118 Patent be cancelled.
Date: February 1, 2015 Respectfully submitted, By: /Laura M. Lloyd/ Laura M. Lloyd, Ph.D., J.D. Registration No. 54,461
Counsel for Petitioner
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Patent No. 8,651,118 Petition for Inter Partes Review
CERTIFICATE OF SERVICE
The undersigned certifies service was made pursuant to 37 C.F.R. §§ 42.6(e)
and 42.105(b) on the Patent Owner on February 1, 2015 by Federal Express with a
copy of the Petition for Inter Partes Review and supporting materials at the
correspondence address of record for the ‘118 Patent:
STEVEN J. HULTQUIST 1414 RALEIGH ROAD, SUITE 201 CHAPEL HILL, NORTH CAROLINA 27517
The Patent Owner was also sent a courtesy copy by Federal Express on
February 1, 2015 of the Petition for Inter Partes Review and supporting materials
to the patent owner’s address:
TF3 LIMITED STUDIO 11, MAGREAL INDUSTRIAL ESTATE, FREETH ST. BIRMINGHAM, UNITED KINGDOM B16 0DZ
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Patent No. 8,651,118 Petition for Inter Partes Review
The party who is allegedly the exclusive licensee of the ‘118 Patent was also
sent a courtesy copy by Federal Express on February 1, 2015 of the Petition for
Inter Partes Review and supporting materials at the following address:
LAWRENCE CRUZ CHIEF PATENT COUNSEL CONAIR CORPORATION 1 CUMMINGS PT. RD STAMFORD, CT 06902
By: /Laura M. Lloyd/ Laura M. Lloyd, Ph.D., J.D. Registration No. 54,461
Counsel for Petitioner
2