PTAB

IPR2014-01263

Polygroup Ltd v. Willis Electric Co Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Modular Lighted Tree with Trunk Electrical Connectors
  • Brief Description: The ’186 patent describes a lighted artificial tree constructed from multiple trunk sections. The sections contain embedded mechanical and electrical connectors that automatically establish an electrical circuit to power light strings on the branches when the trunk sections are assembled.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Otto - Claims 1-28 are unpatentable under 35 U.S.C. §§ 102/103 over Otto

  • Prior Art Relied Upon: Otto (German Pat. No. DE843632).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Otto, which predates the ’186 patent by over 25 years, is a "blueprint" for the claimed invention. Otto allegedly discloses a free-standing artificial tree with mechanically and electrically coupleable trunk sections. Critically, Petitioner asserted that Otto teaches the use of a coaxial, push-fit electrical plug-in connection between trunk elements. This coaxial design inherently provides an electrical connection that is independent of the rotational orientation of the trunk sections—the very feature that the Examiner relied upon to allow the ’186 patent claims during prosecution. Petitioner contended that Otto discloses every element of the independent claims (1, 10, 20, and 28) and further teaches features recited in many dependent claims, such as an interference fit, a base portion, a power cord, and a power converter.
    • Motivation to Combine (for §103 grounds): While primarily asserted as an anticipatory reference, Petitioner argued that to the extent any minor element like a "wiring harness" was not explicitly shown, a person of ordinary skill in the art (POSITA) would have found it obvious to incorporate such a conventional component into Otto's design.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as incorporating standard wiring components into the disclosed lighted tree structure was a routine and predictable design choice.

Ground 2: Obviousness over Smith and Sonnleitner - Claims 1, 2, 5, 6, 9-11, 15, 16, 20, and 21 are obvious over Smith in view of Sonnleitner

  • Prior Art Relied Upon: Smith (Patent 3,970,834) and Sonnleitner (Patent 5,695,279).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Smith, a reference considered during the original prosecution, discloses a lighted artificial tree with nearly all claimed features, including multiple trunk sections with internal wiring and threaded connectors. The Examiner previously found that Smith taught all features of the claims except for an electrical connection independent of rotational orientation. Petitioner contended that Sonnleitner remedies this deficiency by disclosing a modular pole lighting system with push-together tubular pieces that form a coaxial electro-mechanical connection, explicitly allowing rotation of the parts while maintaining electrical contact.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Smith and Sonnleitner to improve the design of Smith's tree. Smith's screw-thread connection requires specific alignment, whereas a rotationally independent connection, as taught by Sonnleitner, offers greater convenience and ease of assembly. A POSITA seeking to create a more user-friendly product would have been motivated to replace Smith's threaded connector with the well-known coaxial connection from Sonnleitner to achieve the predictable benefit of rotationally independent assembly. Both references are in the analogous art of modular lighting systems.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in making this modification, as combining known connector types to achieve their inherent functions was a straightforward and well-established engineering practice.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on various combinations. The primary grounds relied on Otto or Smith as a base reference, combined with secondary references to teach specific dependent claim limitations. These included combining Otto or Smith/Sonnleitner with references like Primeau (Patent 7,052,156) or Yeh (Patent 5,639,157) for detachable wiring harnesses; Engel (Patent 4,775,922) for specific interference fits; and Zins (Patent 5,517,390) or Frederick (Patent 7,029,145) for particular power converter designs and placements.

4. Key Claim Construction Positions

  • "clip" (in "light string clip" and "end clip" of claim 28): Petitioner proposed that this term should be construed to mean "a detachable electrical connector." This construction was argued as consistent with the specification and necessary to find the limitation disclosed in prior art references like Donato and Primeau, which show detachable connectors for light strings.
  • "wiring harness" / "wiring assembly" (claims 1, 5-6, 8, 20, 22, 28): Petitioner proposed that these terms should be construed to mean "wiring and associated hardware, e.g., electrical connector, power converter, power cord, and additional wiring." This broad construction was argued to encompass the conventional wiring systems disclosed in the prior art.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-28 of the ’186 patent as unpatentable.