from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2015-00649.
Bradford J. Badke, Sidley Austin LLP, New York, NY, argued
for appellant. Also represented by Ching-Lee Fukuda; Thomas
Anthony Broughan, III, Anna Mayergoyz Weinberg, Washington,
Jeffrey Glenn Sheldon, Cislo & Thomas LLP, Los Angeles,
CA, argued for appellee. Also represented by Laura Lloyd;
Douglas Hunt Morseburg, Leech Tish-man Fuscaldo & Lampl,
LLC, Pasadena, CA; Thomas J. Peistrup, Tre Milano, LLC,
Culver City, CA.
Newman, Lourie, and Hughes, Circuit Judges.
Newman, Circuit Judge.
Limited ("TF3") appeals the decision of the Patent
Trial and Appeal Board ("PTAB" or
"Board") in an inter partes review of U.S.
Patent No. 8, 651, 118 ("the '118 Patent"),
requested by Tre Milano, LLC. Tre Milano challenged the
validity of claims 1-5 and 11, and did not challenge the
validity of claims 6-10 and 12-15 of the '118 Patent. The
PTAB instituted review of all of the claims that were
conclude that the Board erred in its finding of anticipation,
for the Board erroneously construed two claim terms:
"the length of hair can pass through the secondary
opening" and "free end," broadening the claims
beyond the description in the '118 Patent specification.
On the correct claim construction, the claims are not
The '118 Patent
'118 Patent is for a "hair styling device" that
automates the curling of hair. In operation, a strand of hair
is fed into a chamber of the device, the hair is wound around
a rotating curling member in the chamber, the wound hair is
heated to preserve the curl, and the curled hair slides off
the curling member and exits the chamber. TF3 explains that
"because the secondary opening 50 is annular and
surrounds elongate member 20 the length of hair is not
required to pass any obstruction or otherwise be forced to
uncurl during its removal from the hair styling device 10, so
that the curvature of the curls created by the device can be
substantially maintained." '118 Patent, col. 6, 11.
1 and 2 show the claim elements related to this appeal: the
elongate member 20, primary opening 24, secondary opening 50,
and movable abutment 52:
operation the device receives a section of hair 26 through
primary opening 24 into chamber 16. A motor-driven rotatable
element 34 rotates and its leading edge 38 engages and
captures the hair 26. The rotating element winds the hair
around elongate member 20 until it reaches abutment 52. The
abutment prevents twisting of the hair by stopping the hair
from rotating around the free end of the elongate member 20.
The wound hair is then heated. The user then releases the
grip on handle parts 60 and 62, see Fig. 2,
automatically moving abutment 52 from its closed position to
its open position, and releasing the curled hair through the
second opening 50.
is deemed representative:
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 ...