Polygroup Ltd MCO v. Willis Electric Co Ltd

1. Case Identification

• Case #: IPR2016-00800
• Patent #: 8,454,186
• Filed: April 18, 2016
• Petitioner(s): Polygroup Limited (MCO)
• Patent Owner(s): Willis Electric Company, Limited
• Challenged Claims: 1, 10, 20, and 28

2. Patent Overview

• Title: Lighted Artificial Tree with Rotationally Independent Connectors
• Brief Description: The ’186 patent relates to a lighted artificial tree constructed from multiple trunk sections. The invention’s core feature is a connector system housed within the trunk that allows the sections to be mechanically and electrically connected simultaneously, independent of their rotational orientation relative to one another.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miller, Otto, and Jumo - Claims 1, 10, and 20 are obvious over Miller in view of Otto and Jumo.

• Prior Art Relied Upon: Miller (Patent 4,020,201), Otto (German Patent No. DE 84 36328.2), and Jumo (French Patent No. 1,215,214).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miller disclosed the foundational elements of a modular, pre-lit artificial tree, including hollow, sleeved trunk sections with internal wiring, branches, and light strings. Miller’s internal plug-and-socket connectors for linking trunk sections were unconstrained within the hollow trunk and thus free to rotate, arguably teaching the claimed rotational independence. To the extent Miller was not explicit, Otto taught the desirability of using coaxial connectors in artificial trees to achieve simultaneous mechanical and electrical connection independent of rotation for ease of assembly. Jumo, an analogous art reference for electrical connectors, disclosed a robust, multi-position connector using interlocking slotted parts that enabled connection in at least six discrete rotational positions for "a user device that can be of absolutely any type."
  • Motivation to Combine: A POSITA would combine these references to improve upon Miller’s basic design. Petitioner asserted that Otto provided the direct motivation to incorporate rotationally independent connectors into an artificial tree to simplify user assembly. Jumo provided a known, off-the-shelf solution for a multi-positional connector that was superior to simple plugs or rubbing contacts, remedying known drawbacks like wear from flexible wiring. The combination was presented as a predictable substitution of one known element (Miller's plug) for another (Jumo's connector) to achieve a known benefit (Otto's ease of assembly).
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying a known connector technology from Jumo to the well-known structure of Miller's artificial tree to achieve the predictable advantages described in Otto.

Ground 2: Obviousness over Miller, Otto, Jumo, and Pan - Claim 28 is obvious over Miller in view of Otto, Jumo, and Pan.

• Prior Art Relied Upon: Miller (Patent 4,020,201), Otto (German Patent No. DE 84 36328.2), Jumo (French Patent No. 1,215,214), and Pan (Patent 6,752,512).
• Core Argument for this Ground: This ground incorporated all arguments from Ground 1 and added Pan to address the limitation in claim 28 requiring light strings to be "affixed" to branches.
  • Prior Art Mapping: Petitioner argued that while Miller taught draping or securing light strings to branches, Pan explicitly disclosed a separate connector for "affixing" a light string to a branch. This was presented to meet a potentially narrow construction of "affixed" that requires a distinct fastener.
  • Motivation to Combine: Pan addressed the common problem of lights becoming disordered on a tree when merely wrapped, which "ruins the decorative effect." A POSITA designing the tree from the primary combination would be motivated by Pan’s teachings to add its simple light-string connectors for the predictable benefits of convenience, security, and improved aesthetics.
  • Expectation of Success: Adding a known clip to secure a wire to a branch was argued to be a routine, common-sense modification with a virtually certain expectation of success.

4. Key Claim Construction Positions

• "Independent of the rotational alignments/orientation": Petitioner argued this central phrase requires that an electrical connection is successfully made at each of the possible mechanical coupling positions. For claim 1, which recites "at least four different rotational alignments," this means the connection must work in all four specified alignments. For claims 10 and 28, which recite coupling at "a rotational orientation" but require the electrical connection to be "independent of the rotational orientation," Petitioner contended this requires functionality in at least two different positions to give the term "independent" its proper meaning consistent with the specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate despite a prior IPR on the ’186 patent (IPR2014-01263). The core argument was that this petition presented substantially new art and arguments. Specifically, the primary reference, Miller, was not cited in the prior proceeding and was uncovered by Petitioner after the prior petition was filed. Furthermore, Petitioner asserted the prior IPR was denied institution based on a narrow claim construction of "light string" and did not substantively evaluate the patentability of the core inventive concept—the rotationally independent connectors—which is the central focus of the current petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 10, 20, and 28 of Patent 8,454,186 as unpatentable.