Willis Electric Co Ltd v. Polygroup Macau Ltd BVI

1. Case Identification

• Case #: IPR2017-00309
• Patent #: 8,863,416
• Filed: November 21, 2016
• Petitioner(s): Willis Electric Co., Ltd
• Patent Owner(s): Polygroup Macau Ltd (BVI)
• Challenged Claims: 1-10

2. Patent Overview

• Title: Artificial Tree
• Brief Description: The ’416 patent discloses a power transfer system for a pre-lit artificial tree that allows trunk sections to be connected mechanically and electrically without requiring specific rotational alignment. The system uses coaxial connectors with a central prong/void and a channel prong/void to transmit power between sections.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6-10 are obvious over Chen in view of POSA knowledge.

• Prior Art Relied Upon: Chen (Patent 8,454,186) and its incorporated provisional application, in view of the general knowledge of a Person of Ordinary Skill in the Art (POSA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen, which is also directed to modular, pre-lit artificial trees, disclosed every element of the challenged claims except for the express use of a "spring activated contact section" in the female connector's central void. Chen disclosed a coaxial connector system with a male end having a central prong (contact 262) and a channel prong (contact 260), and a female end with a corresponding central void (receptacle 310) and channel void.
  • Motivation to Combine (for §103 grounds): Petitioner contended that Chen itself motivated the inclusion of spring-activated contacts. Chen stated that its disclosed connectors could be replaced with "other such electrical terminals or contacts as known to those skilled in the art," such as blade connectors. Since blade connectors were well-known to have spring-activated properties to ensure a reliable connection, a POSA would have been motivated to incorporate this known feature into Chen’s central connector to improve connection stability and prevent arcing, which were known problems.
  • Expectation of Success (for §103 grounds): A POSA would have a high expectation of success, as incorporating spring-loaded contacts into electrical connectors was a common, well-established practice for creating reliable and durable connections.

Ground 2: Claims 1-10 are obvious over Chen in view of McLeish.

• Prior Art Relied Upon: Chen (Patent 8,454,186) and McLeish (Patent 7,066,739).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Chen taught the overall artificial tree structure with coaxial connectors, while McLeish explicitly taught the missing element: a coaxial electrical connector with spring-activated contacts. McLeish disclosed a female connector with a "spring contact finger" (551) in the central void and annular terminals (552, 553) that are spring-loaded to maintain a secure connection with corresponding male prongs.
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSA would combine these references to improve the reliability of Chen’s connector system. Chen’s suggestion to use other known contact types would lead a POSA to references like McLeish, which taught a robust spring-activated coaxial connector suitable for "out-of-reach locations," analogous to assembling a large artificial tree. The combination would yield the predictable result of a more secure electrical connection.
  • Expectation of Success (for §103 grounds): Success was predictable because it involved applying a known type of contact (from McLeish) to a known connector system (from Chen) to achieve the expected benefit of improved electrical integrity.

Ground 3: Claims 1-4 and 8-10 are obvious over Otto in view of POSA knowledge.

• Prior Art Relied Upon: Otto (German Utility Model G8436328.2) in view of POSA knowledge.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Otto taught a lighted artificial tree with multiple trunk sections and integrated coaxial connectors for power transfer. Otto’s male connector had a "central plug 36" and a "coaxial sleeve-shaped plug 38," corresponding to the claimed central and channel prongs. The female socket had corresponding voids, including a "central bushing 32" and a "ring-shaped bushing 34."
  • Motivation to Combine (for §103 grounds): While Otto did not explicitly place a spring-activated contact in the central void, it disclosed "inwardly facing elastic elements" on the channel bushing (34) to secure the connection. Petitioner argued it would be an obvious design choice for a POSA to apply this same principle to the central bushing (32) to improve the connection with the central plug (36). A POSA would be motivated to do so to prevent flickering lights and ensure a stable, reliable connection, a known objective in the art.
  • Expectation of Success (for §103 grounds): Moving a known elastic element from one part of a coaxial connector to another to improve contact pressure was a simple mechanical step with a highly predictable outcome.

4. Key Claim Construction Positions

• "channel prong": Petitioner argued the broadest reasonable construction is 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 the term beyond a traditional "prong" to include a non-prong-like, tabular, circular structure. This construction was allegedly not supported by the ’416 patent’s provisional application.
• "contact device comprising one or more spring activated contact sections": Petitioner proposed this term means a "conductive component with one or more areas utilizing elastic contact sections for maintaining radial pressure to create and maintain an electrical connection." This construction was also argued to lack support in the provisional application.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition was that the ’416 patent was not entitled to its claimed priority date from its provisional application. Petitioner argued that the key claim limitations of a "channel prong" (construed to include a circular structure) and "spring activated contact sections" were not disclosed or enabled in the provisional application. Therefore, the effective filing date for these elements was the later, non-provisional filing date. This later priority date would make Chen (Patent 8,454,186) prior art under §102(a) and §102(e), strengthening the invalidity case.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-10 of the ’416 patent as unpatentable.