PTAB

IPR2017-00334

Willis Electric Co Ltd v. Polygroup Macau Ltd BVI

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1. Case Identification

2. Patent Overview

  • Title: Power Transfer System for an Artificial Tree
  • Brief Description: The ’810 patent discloses a power transfer system for artificial trees designed to simplify assembly. The invention allows modular trunk sections to be connected and electrically powered without requiring specific rotational alignment, utilizing a coaxial connector with central and channel prongs that engage corresponding voids.

3. Grounds for Unpatentability

Ground 1: Claims 11-28 are obvious over Chen in view of McLeish and the knowledge of a POSA.

  • Prior Art Relied Upon: Chen (Patent 8,454,186) and McLeish (Patent 7,066,739).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chen taught all key elements of the challenged claims, including an artificial tree with modular trunk sections and a coaxial electrical connector system. This system, comprising a central prong, a surrounding channel prong, and corresponding female voids, was designed to permit electrical connection at any rotational angle. Petitioner asserted that the only claimed feature not explicitly disclosed in Chen was the use of "spring activated" contact sections to ensure a firm connection. McLeish was presented as a secondary reference that expressly taught the use of spring-loaded terminals and spring contact fingers within similar coaxial electrical connectors to maintain a secure and reliable electrical connection.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSA) would combine the teachings of Chen and McLeish to improve the reliability and durability of Chen's connector system. The motivation was allegedly provided by Chen itself, which suggested that its disclosed connectors could include other known types of electrical terminals. McLeish provided a known, suitable example of such a terminal (spring-activated contacts) that would achieve the predictable improvement of a more stable connection, reducing the likelihood of arcing or intermittent failure.
    • Expectation of Success: The proposed combination was characterized as a simple substitution of a known element (McLeish's spring contacts) into a known device (Chen's connector) to yield predictable and desirable results. Petitioner argued there was no technical barrier to incorporating spring-activated contacts into Chen's design.

Ground 2: Claims 11-17, 19-23, and 25-28 are obvious over Otto in view of the Ordinary Knowledge of a POSA.

  • Prior Art Relied Upon: Otto (German Utility Model DE 8436328.2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner alleged that Otto disclosed a lighted artificial tree with connectable trunk sections mated by a coaxial connector. Otto's "central plug 36" and surrounding "coaxial sleeve-shaped plug 38" were mapped to the claimed central and channel prongs, respectively. The female socket in Otto was described as having a central bushing and a ring-shaped bushing, corresponding to the central and channel voids. Crucially, Petitioner argued that Otto’s disclosure of a female bushing with "inwardly facing elastic elements" to secure the connection met the "spring activated" limitation of the claims.
    • Motivation to Combine (with POSA knowledge): The argument centered on the general knowledge of a POSA regarding spring-activated contacts. Petitioner asserted that even if Otto's elastic elements were located on the female contact device rather than the male prong, a POSA would recognize this as a simple design choice. Moving the spring-activation feature from the female contact to the male prong (or vice versa) to improve connection reliability would have been an obvious modification based on well-understood electrical engineering principles.
    • Expectation of Success: Applying the well-known concept of spring contacts, as taught by Otto, to either the prong or the void of a coaxial connector was argued to be a straightforward design modification. A POSA would have expected this modification to function predictably to create a more secure connection.

4. Key Claim Construction Positions

  • "channel prong": Petitioner proposed the construction "an electrically conductive protrusion radially offset from the central prong." Petitioner argued this was a critical issue because the Patent Owner, during prosecution, acted as its own lexicographer to broaden the term to encompass non-prong-like, circular, tabular structures. Petitioner contended this broader definition was not disclosed or enabled by the patent’s provisional application, and therefore the patent should not be entitled to its priority date for this element.
  • "spring activated contact sections": Petitioner proposed the construction "conductive elastic contact sections for maintaining radial pressure between contacts." Similar to the "channel prong" argument, Petitioner contended that this specific feature was not enabled by the provisional application. Therefore, the priority date for this element should be the filing date of the later non-provisional application, rendering certain prior art references applicable.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and the cancellation of claims 11-28 of Patent 8,959,810 as unpatentable under 35 U.S.C. §103.