DCT

0:15-cv-03443

Willis Electric Co Ltd v. Polygroup Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:15-cv-03443, D. Minn., 03/06/2020
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Minnesota because Defendants do business in the state, including offering to sell, selling, importing, and distributing lighted artificial trees through retail channels with store locations in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s lighted artificial trees with easy-to-assemble trunk sections infringe six patents related to modular mechanical and electrical connectors that power the tree’s lights.
  • Technical Context: The technology addresses the consumer market for pre-lit artificial trees, aiming to simplify assembly by integrating electrical connections within the modular trunk sections, thereby eliminating the need to manually connect separate light string plugs between sections.
  • Key Procedural History: The complaint notes that Defendants previously filed petitions for inter partes review (IPR) against the ’186 and ’187 patents, which the Patent Office dismissed and denied for institution. The complaint also states that after anonymous ex parte reexamination challenges, the Patent Office confirmed the validity of all claims of the ’186 and ’187 patents. No post-issue proceedings are alleged to be pending against any of the patents-in-suit.

Case Timeline

Date Event
2010-09-23 Priority Date for ’186, ’187, ’379, ’056, ’617, ’072 Patents
2012-09-01 Plaintiff Willis Electric begins selling modular lighted trees (Fall 2012)
2013-06-04 U.S. Patent No. 8,454,186 Issues
2013-06-04 U.S. Patent No. 8,454,187 Issues
2014-07-25 Plaintiff sends notice letter to Defendants regarding ’186, ’187 Patents
2014-08-08 Defendants file IPR petition against ’186, ’187 Patents
2015-01-20 U.S. Patent No. 8,936,379 Issues
2015-03-10 U.S. Patent No. 8,974,072 Issues
2015-06-02 U.S. Patent No. 9,044,056 Issues
2015-06-30 U.S. Patent No. 9,066,617 Issues
2015-08-25 Plaintiff sends notice letter to Defendants regarding ’379, ’056 Patents
2020-03-06 Complaint Filing Date (Third Amended Complaint)

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,454,186 - "MODULAR LIGHTED TREE WITH TRUNK ELECTRICAL CONNECTORS"

  • Patent Identification: U.S. Patent No. 8,454,186, "MODULAR LIGHTED TREE WITH TRUNK ELECTRICAL CONNECTORS," issued June 4, 2013 (’186 Patent).
  • The Invention Explained:
    • Problem Addressed: The patent addresses the difficulty and complexity for consumers assembling conventional pre-lit artificial trees, which require finding and connecting numerous light string plugs, often resulting in a "complex web of lighting" (’186 Patent, col. 1:21-68). Prior art also required significant manipulation to securely align and couple the tree’s trunk sections (’186 Patent, col. 2:29-35).
    • The Patented Solution: The invention is a modular artificial tree with electrical wiring and connectors housed inside the hollow trunk portions (’186 Patent, Abstract). When a user stacks one trunk section on another, an electrical connection between the sections’ light strings is made automatically and "independent of any rotational orientation of the first trunk portion relative the second trunk portion" (’186 Patent, col. 2:58-63). This design simplifies assembly by eliminating the need for the user to manually connect plugs between sections.
    • Technical Importance: The technology aimed to significantly reduce the time and frustration associated with assembling a popular and increasingly complex consumer holiday product (Compl. ¶¶13-14).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶101).
    • Essential elements of Claim 1 include:
      • A first tree portion including a first trunk portion, branches, and a light string.
      • The first trunk portion defines a first trunk interior and contains a first trunk electrical connector and a first trunk wiring assembly located at least partially within the interior.
      • A second tree portion including a second trunk portion, branches, and a second light string, with a similar internal electrical connector and wiring assembly.
      • The second tree portion is mechanically and electrically connectable to the first, such that the respective electrical connectors contact each other.
      • An end of the second trunk portion is configured to couple with an end of the first trunk portion in "at least four different rotational alignments."
      • The electrical connection is "made independent of the rotational alignments" of the trunk portions.
    • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,454,187 - "MODULAR LIGHTED TREE"

  • Patent Identification: U.S. Patent No. 8,454,187, "MODULAR LIGHTED TREE," issued June 4, 2013 (’187 Patent).
  • The Invention Explained:
    • Problem Addressed: The patent identifies the same problems as the ’186 Patent: the inconvenience and complexity of assembling pre-lit trees and connecting their power systems (’187 Patent, col. 1:11-68).
    • The Patented Solution: The invention provides a modular tree with integrated electrical connectors that engage when trunk sections are coupled. This patent specifies a connector design with a "first electrical contact and a second electrical contact." The claim requires that when sections are joined, the second electrical contacts connect "at a point along the central vertical axis," while the first electrical contacts also connect, creating a complete circuit independent of the trunk sections' rotational orientation (’187 Patent, Claim 1).
    • Technical Importance: This technology offers a specific electrical and mechanical design to achieve the goal of simplifying the assembly of pre-lit artificial trees (Compl. ¶¶16, 40-41).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶115).
    • Essential elements of Claim 1 include:
      • A first tree portion with a trunk, branches, and light string.
      • The first trunk portion has a first trunk electrical connector that includes a "first electrical contact and a second electrical contact."
      • A second tree portion with similar components, including a second trunk electrical connector with its own first and second electrical contacts.
      • When mechanically coupled, the "second electrical contact of the first trunk connector makes an electrical connection with the second electrical contact of the second trunk connector at a point along the central vertical axis."
      • Simultaneously, the first electrical contacts of the respective connectors make an electrical connection.
      • This connection is made independent of "at least four different rotational orientations" of the trunk portions.
    • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsule: U.S. Patent No. 8,936,379 - "MODULAR LIGHTED TREE"

  • Patent Identification: U.S. Patent No. 8,936,379, "MODULAR LIGHTED TREE," issued January 20, 2015 (’379 Patent).
  • Technology Synopsis: The patent describes a modular artificial tree with trunk portions containing cavities for internal wiring harnesses (’379 Patent, Abstract). The invention focuses on a trunk connector that is insertable into the trunk body along a central vertical axis and securable in at least four different rotational alignment positions, with the connector being entirely located within the trunk cavity at its final position (’379 Patent, Claim 1).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶129).
  • Accused Features: The accused trees are alleged to be modular and to include insertable trunk connectors that are secured within the trunk body cavity in multiple rotational positions to electrically connect the internal wiring harnesses (Compl. ¶¶130-137).

Multi-Patent Capsule: U.S. Patent No. 9,044,056 - "MODULAR TREE WITH ELECTRICAL CONNECTOR"

  • Patent Identification: U.S. Patent No. 9,044,056, "MODULAR TREE WITH ELECTRICAL CONNECTOR," issued June 2, 2015 (’056 Patent).
  • Technology Synopsis: This patent claims a lighted artificial tree portion with an electrical wiring harness assembly positioned substantially within the trunk body (’056 Patent, Claim 11). The invention specifies the structure of the light string connected to this harness, which includes a first wire, a plurality of intermediate wires, light elements, and a last wire, all arranged in a specific electrical configuration relative to the harness (’056 Patent, Abstract).
  • Asserted Claims: Independent claim 11 is asserted (Compl. ¶144).
  • Accused Features: The accused trees are alleged to have trunk portions with internal wiring harnesses and light strings with the specific multi-part wire structure claimed in the patent (Compl. ¶¶146-147).

Multi-Patent Capsule: U.S. Patent No. 9,066,617 - "MULTI-POSITIONAL, LOCKING ARTIFICIAL TREE TRUNK"

  • Patent Identification: U.S. Patent No. 9,066,617, "MULTI-POSITIONAL, LOCKING ARTIFICIAL TREE TRUNK," issued June 30, 2015 (’617 Patent).
  • Technology Synopsis: This patent addresses the mechanical connection between trunk sections, aiming to prevent unwanted rotation or wobbling. It claims a "multi-positional interlocking" assembly comprising a hollow trunk portion and a coupling mechanism. The coupling mechanism has a "male body portion" that inserts into the trunk and a "terminal lip or flange," with the inner cavity of the mechanism defined by an inner wall comprising a "plurality of ribs" to engage another trunk section (’617 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶154).
  • Accused Features: The accused trees are alleged to incorporate a multi-positional mechanical locking system using a coupling mechanism with a male portion, terminal lip, and an inner cavity featuring a plurality of ribs (Compl. ¶¶157-159).

Multi-Patent Capsule: U.S. Patent No. 8,974,072 - "MODULAR LIGHTED TREE WITH TRUNK ELECTRICAL CONNECTORS"

  • Patent Identification: U.S. Patent No. 8,974,072, "MODULAR LIGHTED TREE WITH TRUNK ELECTRICAL CONNECTORS," issued March 10, 2015 (’072 Patent).
  • Technology Synopsis: This patent describes a rotation-independent electrical connector system for a modular tree. It specifies a trunk connector with a "non-conductive portion" that engages the trunk wall and has different outside diameters at its first and second ends (’072 Patent, Claim 1). A key negative limitation is that the circular edges of the trunk walls "do not include rotational alignment structure," reinforcing the concept that no specific alignment is needed for connection (’072 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶166).
  • Accused Features: The accused trees are alleged to use connectors with non-conductive portions of varying diameters and to achieve mechanical and electrical connection without relying on rotational alignment structures on the trunk walls (Compl. ¶¶169-174).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies a line of lighted artificial trees sold by Defendants under various brand names, including "Quick-Set®" and "EZ Connect" (Compl. ¶28). The "7.5 ft. Pre-Lit Kennedy Fir Quick-Set® Tree" (the "Kennedy Tree") is used as a specific, representative example throughout the infringement allegations (Compl. ¶102).
  • Functionality and Market Context: The accused products are described as modular, pre-lit artificial trees designed for simplified consumer assembly (Compl. ¶¶102, 116). The branding itself suggests that a key feature is the quick and easy electrical connection established when stacking the tree's trunk portions (Compl. ¶28). The complaint alleges that the Defendants hold a "dominant position in the United States market for lighted artificial trees" (Compl. ¶10).

IV. Analysis of Infringement Allegations

’186 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A lighted artificial tree, comprising: a first tree portion including a first trunk portion, a first plurality of branches joined to the first trunk portion, and a first light string... The Kennedy Tree is a lighted artificial tree that includes a first tree portion with a trunk, branches, and a light string. ¶102-103 col. 5:20-56
the first trunk portion defining a first trunk interior and having a first trunk electrical connector and a first trunk wiring assembly...wherein at least a portion of the first trunk wiring assembly is located within the first trunk interior; The first trunk portion of the Kennedy Tree is hollow, containing a wiring assembly and an electrical connector, with the wiring connecting the light string to the connector inside the trunk. ¶104 col. 3:1-13
a second tree portion including a second trunk portion, a second plurality of branches joined to the second trunk portion, and a second light string... The Kennedy Tree includes a second tree portion with a trunk, branches, and a light string. ¶105 col. 5:57-65
the second trunk portion defining a second trunk interior and having a second trunk electrical connector and a second trunk wiring assembly...wherein at least a portion of the second wiring assembly is located within the second trunk interior... The second trunk portion of the Kennedy Tree is also hollow and contains an internal wiring assembly and electrical connector. ¶106 col. 3:6-13
wherein the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis, and the second tree portion is electrically connectable to the first tree portion such that a portion of the first trunk electrical connector...contacts a portion of the second trunk electrical connector... When the sections of the Kennedy Tree are joined along a central vertical axis, their respective trunk electrical connectors make physical and electrical contact with one another. A photograph in the complaint depicts this connection. ¶107 col. 16:21-44
wherein an end of the second trunk portion is configured to couple with an end of the first trunk portion in at least four different rotational alignments...and the electrical connection...are made independent of the rotational alignments... The electrical connection between the trunk portions is made regardless of their rotational alignment. The complaint provides a composite photograph showing the connectors making contact in four different rotational positions. ¶108 col. 2:58-63
  • Identified Points of Contention:
    • Scope Questions: The primary question for claim construction may center on the phrase "at least four different rotational alignments." A potential issue is whether this language requires discrete, indexed locking positions or if it can be read on a system, such as a coaxial plug, that allows for continuous, 360-degree rotational freedom, which would inherently include an infinite number of alignments. The complaint’s visual evidence, showing a connector marked in four positions, suggests Plaintiff will argue the accused device meets this limitation (Compl. p. 35).
    • Technical Questions: A factual question for the court will be whether the accused connectors, as manufactured, consistently and reliably create the "electrical connection" claimed across all possible rotational alignments, or if there are dead spots or functional failures at certain angles that might take the device outside the scope of the claim.

’187 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A lighted artificial tree...a first tree portion including a first trunk portion, a first plurality of branches...and a first light string affixed to a portion of the first plurality of branches. The Kennedy Tree is a lighted artificial tree with a first tree portion that includes a trunk, branches, and an affixed light string. ¶116-117 col. 21:10-21
the first trunk portion having a...first trunk electrical connector...the first trunk electrical connector including a first electrical contact and a second electrical contact... The Kennedy Tree's first trunk portion contains an electrical connector with two distinct electrical contacts. The complaint includes a photograph purporting to show these two contacts. ¶118 col. 21:22-31
a second tree portion including a second trunk portion, a second plurality of branches...and a second light string affixed to a portion of the second plurality of branches. The Kennedy Tree includes a second tree portion with a trunk, branches, and an affixed light string. ¶119 col. 21:32-35
the second trunk portion having a...second trunk electrical connector...the second trunk electrical connector including a first electrical contact and a second electrical contact... The second trunk portion of the Kennedy Tree also has an electrical connector with two distinct contacts. ¶120 col. 21:36-44
wherein the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis...and the second electrical contact of the first trunk connector makes an electrical connection with the second electrical contact of the second trunk connector at a point along the central vertical axis... When the tree sections are coupled, the second contacts of each connector (allegedly the central pin and receptacle) make an electrical connection along the central axis of the tree trunk. The complaint provides a photograph showing the coupled connectors. ¶121 col. 22:1-18
wherein the lower end of the second trunk portion is configured to couple the upper end of the first trunk portion in at least four different rotational orientations...and the electrical connection between the first electrical contacts...are made independent of the rotational orientations... The electrical connection between the first contacts (allegedly the outer rings) is made independent of the rotational orientation of the trunk sections. The complaint provides a composite image to illustrate four distinct rotational alignments. ¶122 col. 22:19-35
  • Identified Points of Contention:
    • Scope Questions: The infringement analysis will likely focus on the term "at a point along the central vertical axis." A central question for claim construction is whether this requires geometric perfection—that the contact is located precisely on the mathematical centerline of the trunk—or if it can be construed more functionally to mean "substantially centered" to achieve the rotation-independent connection described in the specification.
    • Technical Questions: A factual question for the court will be to determine the exact location and function of the two separate contacts in the accused device. Evidence will be required to demonstrate that one contact is indeed located "at a point along the central vertical axis" while the other is located elsewhere, and that they function as claimed to complete the circuit. The complaint’s close-up photograph of the connector shows a central pin and an outer ring, which may support the allegation of two distinct contacts (Compl. p. 39).

V. Key Claim Terms for Construction

’186 Patent

  • The Term: "independent of the rotational alignments"
  • Context and Importance: This term is central to the patent's asserted value of simplified assembly. The outcome of the infringement analysis may depend on whether the accused product's 360-degree connector is considered "independent of" alignments, or if the claim is construed to require a different structure. Practitioners may focus on this term because it captures the core functional improvement over prior art that required specific alignment.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification repeatedly emphasizes the benefit of avoiding rotational alignment, stating the "electrical connection is made independent of any rotational orientation of the first trunk portion relative the second trunk portion about the common vertical axis" (’186 Patent, col. 2:58-63). This language suggests the invention's scope covers any connection method that does not require the user to rotationally align the parts.
    • Evidence for a Narrower Interpretation: The specific embodiment shown in the figures depicts a coaxial plug-and-socket type connector (e.g., ’186 Patent, Fig. 6). A party might argue that the term should be interpreted in light of this disclosed embodiment, potentially limiting its scope to similar coaxial structures rather than all possible rotation-independent connection types.

’187 Patent

  • The Term: "at a point along the central vertical axis"
  • Context and Importance: This phrase defines the specific location of one of the two claimed electrical contacts. Infringement requires a finding that the accused device has a contact precisely at this location. Practitioners may focus on this term because its geometric precision provides a potential non-infringement argument if the accused device's central contact is even slightly off-center.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's objective is to enable a rotation-independent connection. A party could argue that "at a point along the central vertical axis" should be interpreted functionally to mean sufficiently centered to achieve this objective, rather than requiring strict geometric perfection. The specification describes the contact as being "located generally at a center portion" (’187 Patent, col. 11:14-15), which could support a less rigid interpretation.
    • Evidence for a Narrower Interpretation: The claim language "at a point" is more precise than the specification's "generally at a center portion." A party could argue that the patentee deliberately chose the more restrictive term "point" in the claim, and should be held to that standard, which implies a precise, singular location on the geometric axis.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce and contribute to infringement by providing "distributors, wholesalers, resellers, importers and end-user customers, with written and printed or online materials including specifications, instructions and user guides for its infringing products" (Compl. ¶110, ¶124). It is alleged that when customers follow these instructions, they directly infringe the patents (Compl. ¶110).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit notice. For the ’186 and ’187 patents, it alleges Defendants had actual notice from a letter dated July 25, 2014, and also from their own act of filing IPR petitions on August 8, 2014 (Compl. ¶112, ¶126). For other patents, it alleges notice based on subsequent letters, such as an August 25, 2015 letter for the ’379 and ’056 patents (Compl. ¶141, ¶151).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim construction and scope: can the claim term "at least four different rotational alignments" be construed to read on a connector that allows for continuous 360-degree rotation, and how strictly will the court interpret the geometric limitation "at a point along the central vertical axis"? The answers to these questions will likely determine the infringement outcome for the lead patents.
  • A key evidentiary question will be one of technical implementation: does the accused connector’s design, featuring what appears to be a central pin and an outer conductive ring, meet the "first electrical contact and a second electrical contact" limitation of the ’187 patent, and does it function reliably across all rotational orientations as required by the ’186 patent?
  • A significant legal question will be the impact of the prior post-grant proceedings: how will the Defendants’ unsuccessful IPR challenges and the successful ex parte reexaminations of the ’186 and ’187 patents influence the court’s view on patent validity and the potential for finding willful infringement if the patents are found to be infringed?