PTAB

IPR2014-01264

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
  • Brief Description: The ’187 patent discloses a lighted artificial tree constructed from multiple, connectable trunk sections. The invention’s central feature is an integrated electrical and mechanical connection system that allows power to be transmitted between trunk sections automatically upon assembly, with the electrical connection being independent of the rotational orientation of one trunk section relative to another.

3. Grounds for Unpatentability

Ground 1: Anticipation over Otto - Claims 1-15 are unpatentable under 35 U.S.C. §102.

  • Prior Art Relied Upon: Otto (German Patent No. DE843632).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Otto, a reference published more than 25 years before the ’187 patent, discloses every element of the challenged claims. Petitioner argued Otto teaches an "assembled Christmas tree" with multiple mechanically and electrically connectable trunk elements, branches, and lights, matching the basic structure of independent claims 1 and 7. Critically, Petitioner contended that Otto’s electrical plug-in connections for its trunk elements are designed as coaxial connections that permit the trunk sections to be rotated relative to one another, allowing "an electrical connection to be formed at any desired rotational orientation." This, Petitioner argued, directly teaches the sole feature that overcame prior art during prosecution: an electrical connection independent of rotational alignment. Petitioner further mapped elements of Otto to the limitations of the dependent claims, including connectors housed within the trunk interior (claim 2) and coaxial trunk connectors (claims 4, 10, and 13).

Ground 2: Obviousness over Smith and Sonnleitner - Claims 1, 4, 5, 7, 10, 13, and 14 are obvious over Smith in view of Sonnleitner under 35 U.S.C. §103.

  • 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, the primary reference cited by the Examiner during prosecution, discloses a lighted artificial tree with nearly all claimed features. Smith teaches multiple trunk sections that are secured together, branches with light strings, and integrated electrical connectors. However, Smith’s sections connect via a screw-thread mechanism, which does not allow for the claimed rotationally-independent electrical connection. Petitioner contended that Sonnleitner discloses a modular pole lighting system that uses push-together, coaxial connections to provide both mechanical stability and electrical power, and that these connections are inherently independent of rotational orientation.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine the teachings of Smith with Sonnleitner to achieve the claimed invention. A POSITA, seeking to improve the ease of assembly and overcome the rotational limitations of Smith's screw-thread design, would have been motivated to replace it with the well-known and simpler coaxial connection taught by Sonnleitner. Because both references are in the analogous art of lighting systems, Petitioner argued the combination was logical and straightforward to solve a known design problem.
    • Expectation of Success: A POSITA would have had a high expectation of success in making this combination. Applying a standard coaxial electrical connector from one lighting system (Sonnleitner) to another (Smith's artificial tree) was a predictable design choice that would yield the expected result of a more user-friendly, easy-to-assemble product without requiring undue experimentation.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Otto with Engel, Woolford, and Primeau to teach specific dependent claim features like male/female plug arrangements and detachable wiring. Further grounds combined the base references of Smith and Sonnleitner with Otto, Engel, Woolford, Primeau, and Corina to address limitations in other dependent claims, relying on similar motivations to incorporate well-known, conventional features into the primary artificial tree designs.

4. Key Claim Construction Positions

  • Petitioner contended that the term "wiring assembly," as used in claims 1, 4-7, and 10, should be construed to mean "wiring and associated hardware, e.g., electrical connector, power converter, power cord, and additional wiring." It argued this term is used interchangeably with "wiring harness" in the specification and in related patents, and that this interpretation is consistent with the understanding of a POSITA.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-15 of the ’187 patent as unpatentable.