PTAB

IPR2017-00110

UCP Intl Co Ltd v. Balsam Intl Unlimited Co

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Collapsible Artificial Tree
  • Brief Description: The ’718 patent discloses an artificial Christmas tree that is invertible for storage and deployment. The invention features limbs pivotably attached to a central trunk, allowing for automatic deployment when the tree is inverted from its storage position to its upright display position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Byrd and Collet - Claims 1-4 are obvious over Byrd in view of Collet.

  • Prior Art Relied Upon: Byrd (Patent 3,900,637) and Collet (Patent 4,606,366).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Byrd taught a collapsible artificial tree with a trunk, pivotally attached limbs, and support legs, meeting many limitations of claim 1. Crucially, Byrd explicitly suggested that inverting the tree might be a desirable way to erect or collapse it and compared the ease of setup to opening an umbrella. Collet, directed to umbrellas, taught a support structure with a central mast (a "first trunk portion") and a pivoting hinge mechanism used to support and rotate a radial arm. Petitioner contended that Byrd's tree trunk with limbs constituted the claimed "second trunk portion." The combination of Collet’s pivoting mast with Byrd’s tree would result in the claimed invertible structure.
    • Motivation to Combine: Petitioner asserted that Byrd’s explicit reference to achieving the "ease with which one opens an umbrella" would directly motivate a person of ordinary skill in the art (POSITA) to look to umbrella art, such as Collet. A POSITA would combine Collet's known pivoting support mechanism with Byrd's collapsible tree to achieve Byrd's stated objective of easier, invertible deployment. The combination was presented as a predictable application of a known technique to improve a similar device.
    • Expectation of Success: The proposed combination involved standard mechanical components and principles, leading to a high expectation of success.
    • Key Aspects: For claim 4, which required at least 180° of rotation, Petitioner argued that Collet’s pivot joint inherently allowed for such rotation. Any rotational limits shown in Collet were due to an optional cable that a POSITA would have recognized as a design choice and would have omitted to achieve the full 180° rotation needed to turn Byrd's tree "upside down."

Ground 2: Obviousness over Byrd, Collet, and Boisvert - Claim 10 is obvious over Byrd, Collet, and Boisvert.

  • Prior Art Relied Upon: Byrd (Patent 3,900,637), Collet (Patent 4,606,366), and Boisvert (Patent 4,451,510).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Byrd and Collet asserted in Ground 1 to meet the limitations of independent claim 1. Dependent claim 10 added the limitation of a "cap portion," including a top trunk and limbs, that is attachable to the main tree trunk. Petitioner argued that Boisvert, which disclosed a collapsible artificial tree with a main section and a separate, attachable top section, supplied this missing element.
    • Motivation to Combine: Petitioner contended that adding a decorative top piece to an artificial tree was a well-known practice and an obvious design choice. Byrd itself taught that additional structural elements could be added to the top of its tree. A POSITA seeking to add such an element to the invertible tree of Byrd-in-view-of-Collet would have found it obvious to incorporate a known, attachable top section like that taught by Boisvert.

Ground 3: Anticipation by Tohidi - Claims 1, 2, and 4 are anticipated by Tohidi.

  • Prior Art Relied Upon: Tohidi (Patent 5,490,599).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner first argued that the preamble of claim 1 ("collapsible Christmas artificial tree") was not a limitation on the claim scope, as the body of the claim recited a structurally complete invention. Under this interpretation, Petitioner asserted that Tohidi, which disclosed a multi-position microphone stand, taught every structural element of the claims. The mapping was as follows:
      • The microphone support stand (100) in Tohidi was the claimed "first trunk portion."
      • The microphone support column (110) was the "second trunk portion."
      • The plurality of microphone housing slots (132) extending from the column were the "plurality of limbs."
      • The locking fastener (120) connecting the column to the stand, allowing for rotational adjustment, was the "pivot joint."
    • Key Aspects: Petitioner argued that Tohidi’s pivot joint allowed for rotation to various angles, including a range of at least 180°, thus anticipating the limitation of claim 4. Further, Tohidi disclosed that the microphone housing slots could be rotatably positioned on the support column, anticipating the limitation of claim 2 where the limbs pivot relative to the trunk.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-4 and 10 of the ’718 patent as unpatentable.