PTAB

IPR2017-00309

WILLIS ELECTRIC CO., LTD v. Polygroup Macau Ltd. (BVI)

Title: Power Distribution for Artificial Tree
Brief Description: The ’416 patent discloses a power transfer system for an artificial tree that allows modular trunk sections to be connected electrically without requiring precise rotational alignment. The system uses mating male and female connectors with coaxial contacts housed within the trunk sections to solve the problem of aligning conventional plugs during tree assembly.

Prior Art Relied Upon: Chen (Patent 8,454,186) and its incorporated provisional application (Application # 61/385,751).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Chen disclosed all elements of the claimed artificial tree except for an explicit "spring activated contact section." Chen teaches an artificial tree with stackable trunk sections, each containing a power distribution subsystem with coaxial male (central and channel prongs) and female (central and channel voids) connectors that permit connection at multiple rotational orientations.
- Motivation to Combine: Petitioner contended that Chen explicitly suggested its contacts could be interchanged with other known electrical terminals, such as blade connectors. As blade connectors inherently use spring action, a Person of Ordinary Skill in the Art (POSA) would be motivated to incorporate a spring-activated contact into Chen’s design to ensure a more reliable and secure electrical connection and prevent arcing, a known problem in detachable connectors.
- Expectation of Success: A POSA would have a high expectation of success, as incorporating a well-known spring-contact mechanism into a standard electrical connector is a predictable and routine design modification.

Prior Art Relied Upon: Chen (Patent 8,454,186), McLeish (Patent 7,066,739).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Chen provided the primary framework of an artificial tree with coaxial connectors, while McLeish explicitly disclosed the key missing elements. McLeish, which teaches coaxial electrical connectors for general use, discloses a "spring contact finger" (551) in the central void and spring-loaded annular terminals (552, 553) in the channel void. McLeish also teaches a safety shutter (556), which Petitioner mapped to the limitation in challenged claim 5.
- Motivation to Combine: A POSA seeking to improve the reliability of the connector system in Chen would combine it with the teachings of McLeish. Since Chen suggests using other known contact types, McLeish provides a clear example of a suitable, more robust spring-activated design for a similar coaxial connector, which would be an obvious improvement.
- Expectation of Success: Combining the specific spring-contact mechanism of McLeish into the artificial tree connector of Chen would be a predictable integration of known technologies to achieve the known benefit of a more stable electrical connection.

Prior Art Relied Upon: Otto (German Utility Model No. DE 8436328.2).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Otto, as a single reference, taught a lighted artificial tree with integrated conductors and coaxial connectors for mating trunk portions. Otto disclosed a male end with a central plug and a coaxial sleeve plug, and a female end with corresponding voids. Crucially, Otto’s female connector included "inwardly facing elastic elements" to secure the connection, which Petitioner contended taught the claimed spring-activated function.
- Motivation to Combine: Although Otto showed the elastic elements on the channel contact, Petitioner argued a POSA would find it an obvious design choice to apply the same well-known principle to the central contact to prevent unreliability and flickering lights. The use of elastic or spring-loaded contacts was a common and obvious solution to ensure a stable connection in repeatedly-mated connectors.
- Expectation of Success: Applying a known elastic contact principle from one part of a coaxial connector (the channel) to another part (the central void) would be an obvious design choice yielding predictable results.

"channel prong": Petitioner argued for a construction of "an electrically conductive protrusion radially offset from the central prong." Critically, Petitioner contended the Patent Owner acted as its own lexicographer during prosecution to broaden this term to include a circular, non-prong-like structure. This construction was central to the invalidity case because the provisional application allegedly only supported a slender, prong-like structure, not the broader circular embodiment.
"contact device comprising one or more spring activated contact sections": Petitioner proposed a construction as a "conductive component with one or more areas utilizing elastic contact sections for maintaining radial pressure to create and maintain an electrical connection." This feature was also argued to lack support in the provisional application.

Priority Date Challenge: Petitioner's primary technical contention, underpinning all grounds, was that the ’416 patent is not entitled to the filing date of its provisional application. This argument was based on the claim construction of "channel prong" and "spring activated contact sections." Petitioner asserted that the provisional application fails to provide written description support under 35 U.S.C. §112 for the broadened, circular "channel prong" structure or for the "spring activated contact sections" that were added to the claims during prosecution. Consequently, Petitioner argued the effective priority date of the challenged claims is the filing date of the non-provisional application, which makes the Chen patent (published before this later date) available as prior art under 35 U.S.C. §102(e).

Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-10 of the ’416 patent as unpatentable under 35 U.S.C. §103.