Polygroup Ltd MCO v. Willis Electric Co Ltd

1. Case Identification

• Case #: IPR2016-01609
• Patent #: 8,454,186
• Filed: September 2, 2016
• Petitioner(s): Polygroup Limited (MCO)
• Patent Owner(s): Willis Electric Company, Limited
• Challenged Claims: 3-4, 6-9, 21-22, and 25-26

2. Patent Overview

• Title: Lighted Artificial Tree
• Brief Description: The ’186 patent discloses an artificial tree constructed from multiple trunk sections. The sections contain internal wiring and connectors that allow the sections to be mechanically coupled and electrically connected simultaneously, with the electrical connection being independent of the rotational alignment between the sections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miller, Otto, and Jumo - Claims 3-4, 6, 8-9, 21, and 25 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 teaches the foundational elements of a lighted artificial tree with multiple, connectable hollow trunk sections containing internal wiring and light strings. However, Miller uses a simple, unconstrained plug-and-socket connector. To add the claimed feature of a rotationally independent connection, Petitioner contended that Otto teaches the desirability of using coaxial connectors in artificial trees for easy assembly in multiple rotational alignments, and Jumo teaches a specific, robust multi-position connector for general use that allows simultaneous mechanical and electrical connection in at least six discrete rotational positions.
  • Motivation to Combine: A POSITA would combine these references to improve the ease of assembly and durability of Miller’s tree. Petitioner asserted that Otto’s teachings would lead a POSITA to seek a more robust, rotationally independent connector than Miller’s simple plug. Jumo provides an exemplary solution, teaching a connector designed for “absolutely any type” of device that remedies known drawbacks of flexible wiring, like that used in Miller. The combination represents a simple substitution of a known, superior component (Jumo’s connector) for an inferior one (Miller’s plug) to achieve the predictable result of easier assembly.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in replacing Miller’s plug-and-socket connectors with Jumo’s connector assembly inside the hollow trunk sections, as it would involve routine electrical and mechanical integration.

Ground 2: Obviousness over Miller, Otto, Jumo, and Lessner - Claims 7 and 22 are obvious over Miller in view of Otto, Jumo, and Lessner.

• 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 Lessner (Patent 3,409,867).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Miller, Otto, and Jumo to address the additional limitations of claims 7 and 22, which require a “modular” or “separably connected” wiring assembly. Petitioner argued that while the primary combination teaches the core tree structure, Lessner teaches a general-purpose “quick-disconnect electrical connector” (a spade connector) specifically designed to create detachable connections between wires and terminals.
  • Motivation to Combine: A POSITA would be motivated to incorporate Lessner’s quick-disconnect connectors into the base design to improve the ease of assembly, repair, and replacement of parts. This modification would allow wiring harnesses to be easily separated from trunk connectors or light strings, a known advantage for serviceability that would have been an obvious improvement to the design.

Ground 3: Obviousness over Miller, Otto, Jumo, and Janning - Claim 26 is obvious over Miller in view of Otto, Jumo, and Janning.

• 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 Janning (Application # 2007/0273296).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also builds upon the primary combination of Miller, Otto, and Jumo to address the limitation of claim 26, which specifies that the light strings include "incandescent bulbs." Miller discloses "conventional double string[s] of miniature lights" without specifying the bulb type. Petitioner pointed to Janning, which explicitly discloses holiday light strings using incandescent bulbs.
  • Motivation to Combine: A POSITA would have found it obvious to use incandescent bulbs, as taught by Janning, in the tree of the primary combination. Petitioner argued this amounts to a simple and predictable substitution of one known type of light string for another to achieve a desired aesthetic or cost. This modification would have been a matter of routine design choice, not invention.

4. Key Claim Construction Positions

• "the electrical connection being made independent of the rotational alignments": Petitioner proposed that this phrase means the electrical connection is successfully made for each of the possible mechanical rotational alignments. This construction is central to the argument that Jumo’s connector, which enables connection in a plurality of discrete rotational positions, meets the claim limitation.
• "in at least four different rotational alignments": Petitioner argued this term requires that the mechanical coupling can occur in at least four distinct rotational positions around a central axis. This is read on Jumo’s disclosure of a connector with six corresponding slots, allowing for six discrete coupling positions.
• "light string": Petitioner applied the construction adopted by the Board in a prior proceeding: "a string of lights that can be positioned over a plurality of branches."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition was asserted to present substantially new art and arguments compared to a prior, non-instituted 2014 IPR against the ’186 patent. Notably, the primary reference, Miller, was not used in the 2014 petition. Petitioner also argued that the instant petition is one of three concurrently filed petitions challenging different claims of the ’186 patent, a permissible strategy to manage word count limits, and does not constitute improper serial petitioning.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 3-4, 6-9, 21-22, and 25-26 of the ’186 patent as unpatentable.