Polygroup Ltd MCO v. Willis Electric Co Ltd

1. Case Identification

• Case #: IPR2016-01611
• Patent #: 8,454,187
• Filed: August 26, 2016
• Petitioner(s): Polygroup Limited (MCO)
• Patent Owner(s): Willis Electric Company, Limited
• Challenged Claims: 2-6

2. Patent Overview

• Title: Lighted Artificial Tree
• Brief Description: The ’187 patent describes a lighted artificial tree constructed from multiple trunk portions. The core inventive concept relates to a trunk connector assembly that allows the trunk portions to be mechanically coupled and simultaneously electrically connected, with the electrical connection being made automatically regardless of the rotational orientation of the trunk portions.

3. Grounds for Unpatentability

Ground 1: Claims 2-6 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, a previously uncited reference, serves as the primary basis for the combination. Miller was argued to teach a lighted artificial tree with the claimed fundamental structure: multiple tree portions with hollow, sleeved-together trunk sections, branches, light strings, and internal wiring concealed within the trunk. To address limitations allegedly not met by Miller, Petitioner mapped secondary references. Pan was cited for teaching connectors used to "affix" light strings to branches, satisfying that specific claim element. Otto was introduced to demonstrate that a POSITA would have been aware of and desired trunk connectors that provide simultaneous mechanical and electrical connection independent of rotational alignment for ease of assembly. Finally, Jumo was presented as teaching the specific implementation of such a connector, disclosing a multi-positional, coaxial design with interlocking slotted parts that allows for electrical connection in at least six discrete rotational orientations. Petitioner argued Jumo’s connector, when integrated into Miller’s tree, would meet the limitations requiring connection in "at least four different rotational orientations" and where the electrical connection is "independent of the rotational orientation."
  • Motivation to Combine: Petitioner argued a POSITA would combine these references for predictable and advantageous results. A POSITA would incorporate Pan's light-string connectors into Miller’s tree to provide a more convenient and secure method of decorating than simply draping wires. The primary motivation was to enhance Miller's basic plug-and-socket connection with a more advanced connector. Otto established the known benefits in the artificial tree art of a rotationally independent connection. A POSITA, seeking to achieve these benefits in Miller's tree, would have looked to known solutions like the multi-positional connector in Jumo. Petitioner framed this as a simple substitution of one known element (Miller's plug) for another known element (Jumo's connector) to obtain the predictable result of easier assembly.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success in making this combination. Applying Pan's clips to Miller's branches was described as a simple mechanical task. Furthermore, integrating Jumo's connector system, designed for tubular components with internal wiring, into Miller’s similarly structured hollow trunk sections would be a routine electrical and mechanical design modification.

4. Key Claim Construction Positions

• "light string": Petitioner proposed adopting the construction from a prior Board decision on the ’187 patent: "a string of lights that can be positioned over a plurality of branches."
• "the electrical connection" being made "independent of the rotational orientation": Petitioner argued this phrase should be construed to mean that an electrical connection is successfully established for each of the claimed mechanical coupling orientations. This construction is central to mapping Jumo, which provides discrete connection points.
• "in at least four different rotational orientations": Petitioner argued for the plain and ordinary meaning, requiring that the mechanical coupling between trunk portions can occur in at least four distinct rotational positions about a central vertical axis.
• "wiring assembly": Petitioner proposed construing this term by its plain meaning as "an assembly of wires," consistent with its use in the specification and the Patent Owner's position in a prior IPR.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because this petition presents substantially new arguments and prior art compared to a previous, uninstituted IPR from 2014 (IPR2014-01264) and a 2014 reexamination.
• Key distinctions cited included the reliance on Miller as a new primary reference and a minimal, targeted use of Otto, which was a primary reference in the 2014 petition.
• Petitioner emphasized that the 2014 IPR was denied institution based on a claim construction issue ("light string"), meaning the Board never reached a substantive patentability determination on the core inventive concept of the rotationally independent connector.
• The petition also noted that it was one of three concurrently filed petitions against different claim sets of the ’187 patent, a permissible strategy to manage word count limits that does not constitute improper serial petitioning.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 2-6 of the ’187 patent as unpatentable under 35 U.S.C. §103.