Tre MiLANo LLC v. TF3 Ltd

1. Case Identification

• Case #: IPR2015-00649
• Patent #: 8,651,118
• Filed: February 1, 2015
• Petitioner(s): Tre Milano, LLC
• Patent Owner(s): TF3 Ltd
• Challenged Claims: 1-5 and 11

2. Patent Overview

• Title: HAIR STYLING DEVICE
• Brief Description: The ’118 patent discloses an automated hair styling device for winding hair into a curl. The device includes a body defining a chamber, a rotatable element that winds a length of hair around an internal elongate member, and a movable abutment that retains the hair within the chamber during styling.

3. Grounds for Unpatentability

Ground 1: Anticipation over Gnaga - Claims 1-5 and 11 are invalid under 35 U.S.C. §102(b) over Gnaga.

• Prior Art Relied Upon: Gnaga (Patent 4,148,330).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gnaga, which was not considered during prosecution, discloses every limitation of the challenged claims. Gnaga describes a device for automatically winding hair onto a removable curler. Petitioner mapped the housing (D) and external rotating element (C) of Gnaga to the claimed "body defining a chamber." The internal element (B) of Gnaga's curler corresponds to the "elongate member," and the rotatable element (C) winds hair around it. Gnaga’s slot (54) for hair insertion is the "primary opening," while the opening through which the curler is removed is the "secondary opening." Critically, Gnaga’s rod (22) functions as the claimed "movable abutment," which can be moved to an open position to allow hair passage or a closed position to retain the curler and hair within the chamber.

Ground 2: Anticipation over Hoshino - Claims 1-5 and 11 are invalid under 35 U.S.C. §102(b) over Hoshino.

• Prior Art Relied Upon: Hoshino (Japanese Publication No. JU-A S61-10102).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Hoshino, also not considered during prosecution, discloses an automatic hair styling device that meets all claim limitations. Hoshino's protective tube body (6) and rotating pressing piece (8) form the claimed "chamber." A fixed roller (7) serves as the "elongate member" around which hair is wound by the rotating piece (8). The hair introduction groove (22) is the "primary opening." Petitioner identified Hoshino's hair guide arm (16) as the "movable abutment," which locks the removable curling member inside the device during operation (closed position) and releases it for removal (open position). The secondary opening for removing the curling member is alleged to be annular and surround the elongate member, meeting the limitations of dependent claim 2.

Ground 3: Obviousness of Claim 2 over De Benedictis 2009 in view of Dinger et al.

• Prior Art Relied Upon: De Benedictis 2009 (WO 2009/077747), Dinger (UK Patent No. GB302952), Gnaga, Hoshino, or Gillette.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that while De Benedictis 2009 discloses all limitations of independent claim 1, claim 2 adds the requirement that the "secondary opening is annular and surrounds the free end of the elongate member." De Benedictis 2009 discloses a device with a tubular housing (406), a helical rotating element (420), an elongate member (436), and a movable abutment (door 490). Styled hair exits through an aperture (480) at the end, which serves as the secondary opening.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to modify the secondary opening of De Benedictis 2009 to be annular, as taught by references like Dinger, Gnaga, Hoshino, and Gillette. These references all disclose annular openings for removing a finished curl by sliding it off the end of an elongate member. This technique was conventional and known to provide the obvious advantage of removing the curl without unwinding it, thus better preserving its shape.
  • Expectation of Success: A POSITA would combine these features with a high expectation of success. Modifying an exit aperture to be annular to facilitate the removal of a curled object is a simple mechanical design choice that would have yielded the predictable result of better-maintained curls.

• Additional Grounds: Petitioner asserted additional anticipation challenges under §102(b) for various claims based on Hottenrott (Application # US2010/0083978), Gillette (UK Patent No. 1,036,583), and De Benedictis 2009. These arguments relied on similar mappings of device components to the claim elements.

4. Key Claim Construction Positions

• Chamber: Petitioner proposed this term means "an enclosed space or compartment," based on its dictionary definition. This construction supports mapping the prior art, where hair is wound within housings or between styling parts that form an enclosed area (e.g., Gnaga's housing D, Hoshino's protective tube body 6).
• Annular: Proposed to mean "in the form of a ring." This construction is central to the argument that references like Gnaga, Hoshino, and Dinger teach the specific limitation of dependent claim 2, as they all feature ring-shaped openings for removing the hair curler.
• Surrounds: Proposed to mean "to enclose or confine on all sides." This construction, paired with "annular," is used to argue that the secondary openings in the prior art fully encircle the free end of the elongate member as required by claim 2.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 11 of the ’118 patent as unpatentable.