  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 Trade-
mark 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 dismis-
sal 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 simu-
late 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 time-
barred 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 infringe-
   ment 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 dismis-
sal, the district court entered a voluntary dismissal with-
out 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. Lumina-
ra 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 timeli-
ness argument because the first action had been voluntar-
ily 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 “circum-
stances 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 with-
out 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 one-
year time-bar of section 315(b) did not apply if the district
court complaint was voluntarily dismissed without preju-
dice.
    On the merits, the Board issued final written deci-
sions determining that all 31 claims were either antici-
pated 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. Lu-
minara challenges the Board’s obviousness determina-
tions 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 sec-
tion 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 combina-
tion of Baba and Wiklund. Claim 14 reads: “[t]he appa-
ratus 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 ele-
ment, “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 refer-
ences. 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 be-
tween 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 move-
ment 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 pa-
tent would have been obvious. That claim provides:
   An apparatus for simulating a flickering flame ef-
   fect, 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 extend-
   ing from a second end opposite the first end, such
   that at least a portion of the flame element ex-
   tends 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 pa-
tent, we affirm the Board’s decision that these claims
would have been obvious.
AFFIRMED-IN-PART, VACATED AND REMANDED-
                IN-PART
                          COSTS
   No costs.
