PTAB

IPR2017-00332

Willis Electric Co Ltd v. Polygroup Macau Ltd BVI

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Artificial Tree Construction
  • Brief Description: The ’495 patent discloses a power transfer system for an artificial tree that allows neighboring tree trunk sections to be connected electrically without requiring specific rotational alignment. The system uses male and female connectors with corresponding prongs and voids to establish an electrical connection regardless of the angular orientation between the sections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chen - Claims 21-30 are obvious over Chen.

  • Prior Art Relied Upon: Chen (Patent 8,454,186) and its related Chen Provisional (Application # 61/385,751), considered as a single reference or in view of the knowledge of a Person of Ordinary Skill in the Art (POSA).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chen discloses all elements of the challenged claims. Chen teaches a pre-lit artificial tree with modular trunk sections that connect via coaxial electrical connectors. The male connector includes a central prong and a surrounding barrel connector (claimed as a "channel prong"). The female connector includes a corresponding central void with a contact and a surrounding channel void with an outer contact. This structure permits electrical connection at any rotational orientation, satisfying the "plurality of locations" limitation under Petitioner's proposed construction.
    • Motivation to Combine (for §103 grounds): If the claims are construed to require a discrete number of alignments, Petitioner contended that Chen's disclosure of an alternative embodiment with a square-shaped post end, allowing four distinct rotational alignments, renders this limitation obvious. A POSA would be motivated to implement this variation to prevent assembled tree sections from spinning relative to one another, which would improve convenience and prevent disruption of decorations.
    • Expectation of Success: A POSA would have a high expectation of success in using a known square post for alignment, as it is a simple and well-understood mechanical principle.

Ground 2: Obviousness over Chen in view of Geisthoff - Claims 21-30 are obvious over Chen in view of Geisthoff.

  • Prior Art Relied Upon: Chen (Patent 8,454,186) and Geisthoff (Patent 4,437,782).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative if the claim term "plurality of locations" is narrowly construed to require a specific anti-rotation mechanism. Petitioner asserted that Chen teaches the core coaxial electrical connector system. Geisthoff teaches alignment mechanisms, specifically splines on a shaft that engage with splines on a hub, to connect segments while preventing relative rotation.
    • Motivation to Combine: Petitioner argued a POSA seeking to prevent the trunk sections of Chen's tree from rotating after assembly would be motivated to incorporate a known anti-rotation feature. Geisthoff provides an exemplary solution by teaching the use of splines for this exact purpose in a similar context of connecting shaft-like members. Chen itself suggests that trunk ends "may comprise other shapes," directing a POSA toward such known modifications.
    • Expectation of Success: Combining a known mechanical alignment feature like splines with an electrical connector was argued to be a straightforward and predictable design choice for a POSA.

Ground 3: Obviousness over Otto in view of McLeish - Claims 21-30 are obvious over Otto in view of McLeish.

  • Prior Art Relied Upon: Otto (German Utility Model DE8436328U1) and McLeish (Patent 7,066,739).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Otto discloses a lighted artificial tree with trunk sections connected by coaxial connectors, including a central plug and a coaxial sleeve-shaped plug, which map to the claimed "central prong" and "channel prong." However, Otto allegedly lacks the claimed "vertically extending section" that shrouds the prongs. McLeish was argued to supply this missing element, as it discloses a coaxial connector where the male end has electrical prongs (521, 523) disposed within a vertically extending section (532), and the female end has corresponding contacts (551, 553) around a post-like vertically extending section (555).
    • Motivation to Combine: A POSA would combine the teachings of McLeish with the connector design of Otto for several predictable reasons: to improve the mechanical strength and stability of the connection joint, to protect the electrical prongs from being bent or damaged during assembly, and to introduce an insulating barrier between contacts to reduce the possibility of accidental electrical arcing.
    • Expectation of Success: Adding a protective, strengthening shroud around electrical prongs was presented as a well-known design principle with predictable results, ensuring a high expectation of success.

4. Key Claim Construction Positions

  • "channel prong": Petitioner proposed the construction "electrically conductive protrusion radially offset from the central prong." A key contention was that the ’495 patent’s specification was amended to include non-prong-like, circular, or tabular structures within the definition of "channel prong," for which the patent cannot properly claim priority to its provisional application. Petitioner argued the provisional only disclosed a traditional, slender projecting prong, and therefore the effective filing date for this limitation is the later, nonprovisional filing date.
  • "plurality of locations ... providing a different rotational alignment": Petitioner argued for the plain and ordinary meaning, which would allow for an infinite number of rotational alignments (e.g., as provided by any standard coaxial connector). This construction contrasts with a potentially narrower interpretation requiring a discrete, limited number of specific alignment positions.
  • "vertically extending section": Petitioner argued this term should be given its plain meaning as "any vertically extending portion of the [male or female] end of the trunk section," as the specification provides no specific definition or structural limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 21-30 of the ’495 patent as unpatentable.