Polygroup Ltd MCO v. Willis Electric Co Ltd

1. Case Identification

• Case #: IPR2016-00801
• Patent #: 8,454,187
• Filed: April 18, 2016
• Petitioner(s): Polygroup Limited (MCO)
• Patent Owner(s): Willis Electric Company, Limited
• Challenged Claims: 1 and 7

2. Patent Overview

• Title: Artificial Tree with Rotational Electrical Connectors
• Brief Description: The ’187 patent discloses a lighted artificial tree constructed from multiple trunk portions. The core technology is a trunk connector assembly housed within the hollow trunk portions that allows the sections to be mechanically and electrically connected simultaneously, with the electrical connection being independent of the rotational orientation of the sections.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 7 are obvious over Miller in view of Pan, Otto, and Jumo.

• Prior Art Relied Upon: Miller (Patent 4,020,201), Pan (Patent 6,752,512), Otto (German Patent No. DE 84 36 328.2), and Jumo (French Patent No. 1,215,214).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Miller, the primary reference, disclosed the foundational elements of the challenged claims: a lighted artificial tree with multiple, connectable hollow trunk sections, branches, light strings, and internal wiring connected by conventional plug-and-socket connectors. Petitioner argued that Miller’s simple connectors were unconstrained and thus free to rotate, inherently teaching an electrical connection independent of rotational orientation. To the extent any claim limitations were not explicitly met by Miller, Petitioner mapped them to the secondary references. Pan was cited for its teaching of using simple connectors to "affix" light strings to branches, a more explicit fastening means than Miller’s method of draping them. The combination of Otto and Jumo was used to address the specific multi-position rotational connector. Otto disclosed coaxial connectors for artificial trees that allow for simultaneous mechanical and electrical connection independent of rotation, demonstrating that this concept was known in the specific field. Jumo, an analogous art reference for electrical connectors, taught a robust multi-position connector for use in any device, disclosing male and female connectors with interlocking slotted parts that enable connection in at least six discrete rotational orientations.
  • Motivation to Combine: A POSITA would combine these references to arrive at the claimed invention for predictable reasons. A POSITA would start with Miller’s basic lighted artificial tree and seek to improve the ease of assembly and durability of its electrical connections. Otto provided the motivation to use a rotation-independent connector specifically for an artificial tree. Jumo offered a well-understood, superior connector design that could be readily substituted for Miller’s basic plug and socket. Jumo’s design solved known problems with flexible wiring, such as wear from repeated bending, providing a clear reason for its adoption. Further, a POSITA would be motivated to incorporate Pan’s simple light string connectors to improve the convenience of decorating the tree, a known problem with a known solution.
  • Expectation of Success: Petitioner argued that a POSITA would have a high expectation of success. The proposed combination involved the substitution of known components (Miller's plug for Jumo's multi-position connector; Miller's draping for Pan's clips) into a known system (Miller's tree) to achieve their expected functions and yield predictable results.

4. Key Claim Construction Positions

• "the electrical connection being made 'independent of the rotational orientation'": Petitioner argued this term should be construed to mean that an electrical connection is successfully made for each of the possible mechanical alignments between trunk portions. This construction was central to its argument, as it required the prior art combination to demonstrate a connector that works in multiple, discrete positions, a feature Petitioner asserted was explicitly taught by Jumo.
• "in at least four different rotational orientations" (Claim 1): Petitioner contended this term should be given its plain and ordinary meaning. The petition argued that Jumo’s connector, with its system of interlocking slotted parts, disclosed at least six discrete rotational connection points, thereby satisfying this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The petition asserted it presented substantially new art and arguments compared to a prior IPR on the same patent. The primary reference, Miller, was not cited in the prior proceeding. While Otto was previously cited, it was used here only in a minimal, supporting role. Furthermore, Petitioner argued the prior IPR was denied on a narrow claim construction issue ("light string") without the Board reaching a substantive patentability determination on the core inventive feature—the rotational connector. Finally, the petition’s focused approach on a single ground against only the independent claims was presented as minimizing the burden on the Board and Patent Owner.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1 and 7 of the ’187 patent as unpatentable.