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

1. Case Identification

• Patent #: 9,119,495
• Filed: November 25, 2016
• Petitioner(s): Willis Electric Co., Ltd
• Patent Owner(s): Polygroup Macau Ltd (BVI)
• Challenged Claims: 21-30

2. Patent Overview

• Title: Power Transfer System for Artificial Tree
• Brief Description: The ’495 patent relates to a power transfer system for an artificial tree with connectable trunk sections. The invention addresses the difficulty of aligning electrical connectors between sections by providing a system that allows connection without a need for precise rotational alignment.

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 provisional application (Application # 61/385,751).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen anticipates or renders obvious all limitations of independent claims 21 and 28. Chen taught an artificial tree with modular trunk sections and coaxial electrical connectors. The male connector included a central prong (contact 262) and a surrounding, circular "channel prong" (contact 260). The female connector included a central void (receptacle 310) to receive the central prong and a surrounding channel void to receive the channel prong. Petitioner asserted that the coaxial nature of Chen’s connectors permitted electrical connection at any rotational orientation, thus disclosing the claimed engagement at a "plurality of locations on the channel contact device."
  • Motivation to Combine (for §103 grounds): This ground was primarily argued as obvious in light of a POSA's knowledge. Petitioner contended that even if the claims were construed to require a limited number of discrete alignments, Chen taught this feature in an alternative embodiment using a square-shaped post end, allowing for four distinct alignments. A POSA would have been motivated to implement this known variation to prevent assembled tree portions from spinning, a convenient and predictable improvement.
  • Expectation of Success: A POSA would have a high expectation of success as Chen taught both rotationally independent and discrete alignment configurations for its connectors.

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), Geisthoff (Patent 4,437,782).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative in the event the claims were construed to require a specific mechanical alignment mechanism not explicitly shown in Chen's primary embodiment. Chen provided the base electrical connector system that allows for rotational freedom. Geisthoff, cited as exemplary spline art, disclosed alignment mechanisms for connecting shafts using splines that engage with a hub to prevent free rotation.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings of Chen and Geisthoff to add a well-known mechanical anti-rotation feature (splines) to Chen's electrical connector system. This combination would solve the problem of tree sections spinning after assembly, which could disrupt decorations, and was presented as an obvious modification to improve convenience.
  • Expectation of Success: The combination involved applying a known mechanical solution (splines) to a known system (modular tree trunks) to achieve a predictable result (rotational stability), leading to a high expectation of success.

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 (DE 8436328U1), McLeish (Patent 7,066,739).
• Core Argument for this Ground:
  • Prior Art Mapping: Otto taught a lighted artificial tree with integrated conductors and coaxial connectors between trunk sections, including a "central plug 36" and a "coaxial sleeve-shaped plug 38." Petitioner argued Otto disclosed most claim elements but lacked specific limitations related to a "vertically extending section" in the male and female connectors. McLeish was introduced to supply these missing elements, as it taught coaxial connectors having electrical prongs (521, 523) disposed within a vertically extending section (532) on the male end and a corresponding female end with a post-like vertically extending section (555).
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to modify Otto's connector design with the teachings of McLeish to improve the mechanical strength and safety of the trunk-to-trunk connection. Adding the vertically extending sections taught by McLeish would provide a protective barrier around the electrical prongs, preventing damage during assembly and reducing the possibility of accidental arcing by creating an insulating barrier.
  • Expectation of Success: Modifying a connector for improved strength and safety was a common design goal, and incorporating the known structures from McLeish into Otto's system would have been a straightforward and predictable modification for a POSITA.

4. Key Claim Construction Positions

• "channel prong": Petitioner argued that the broadest reasonable construction is an "electrically conductive protrusion radially offset from the central prong." A key point of contention was that the ’495 patent’s specification was amended to include non-“prong-like” structures (e.g., a continuous circular wall) under this term. Petitioner asserted the patent owner acted as its own lexicographer, adopting a definition that was not supported by the provisional application, thereby invalidating the patent's claim to the provisional's priority date for this element.
• "plurality of locations ... providing a different rotational alignment": Petitioner argued this phrase should be given its plain and ordinary meaning, allowing for an infinite number of rotational alignments, as is inherent in a coaxial connector. This construction was argued to be supported by the specification and the doctrine of claim differentiation, contrasting it with dependent claims that added specific anti-rotation mechanisms.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: A central technical contention was that the ’495 patent was not entitled to its claimed priority date from the provisional application for limitations related to the "channel prong." Petitioner argued that the provisional only disclosed a slender, projectile-like prong, while the non-provisional application and issued patent were broadened to cover a continuous, circular structure. Because this new matter was not enabled by the provisional, Petitioner contended the priority date for this element was the later, non-provisional filing date, making Chen (Patent 8,454,186) prior art under §102(a).

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 21-30 of Patent 9,119,495 as unpatentable.