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

1. Case Identification

• Case #: Unassigned
• Patent #: 8,959,810
• Filed: November 25, 2016
• Petitioner(s): WILLIS ELECTRIC CO., LTD
• Patent Owner(s): POLYGROUP MACAU Ltd (BVI)
• Challenged Claims: 1-10

2. Patent Overview

• Title: Power Transfer System for an Artificial Tree
• Brief Description: The ’810 patent relates to a power transfer system for an artificial tree designed to allow electrical connection between adjacent trunk sections without requiring precise rotational alignment. The invention addresses the difficulty of aligning electrical connectors during assembly by using a coaxial connector system.

3. Grounds for Unpatentability

Ground 1: 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: Petitioner argued that Chen teaches nearly all limitations of the challenged claims, including an artificial tree with modular trunk sections and coaxial electrical connectors. Chen’s connector features a central prong and a surrounding channel prong, allowing for electrical connection at any rotational orientation. Petitioner asserted, however, that Chen fails to expressly disclose the key limitation of claim 1: a female connector with a "contact device comprising one or more spring-activated-contact sections." McLeish was introduced to supply this missing element, as it explicitly teaches electrical connectors with various spring-loaded terminals, including a "spring contact finger" in a central void, designed to maintain a secure and reliable connection.
  • Motivation to Combine: A POSITA would combine Chen and McLeish to improve the durability and reliability of the electrical connection in an artificial tree. Spring contacts are a well-known solution for preventing electrical arcing and ensuring stable contact, especially in products that are repeatedly assembled and disassembled. Petitioner noted that Chen itself suggests its contact sets can be substituted with other types of electrical terminals known in the art, expressly inviting such a combination.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Incorporating a known spring-contact mechanism from one electrical connector (McLeish) into another functionally similar coaxial connector (Chen) was presented as a predictable design modification that would yield the expected benefit of a more robust connection.

Ground 2: Claims 1-10 are obvious over Chen, McLeish, and Geisthoff

• Prior Art Relied Upon: Chen (Patent 8,454,186), McLeish (Patent 7,066,739), and Geisthoff (Patent 4,437,782).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the arguments from Ground 1 and introduces Geisthoff to address limitations in dependent claims (e.g., claim 8) that require "clutch elements" to prevent rotation. While Chen’s primary embodiment is designed to allow free rotation, Geisthoff was cited for its teaching of using splines on a shaft and hub to create a torque-transmitting engagement that prevents relative rotation. Petitioner argued this is analogous to the claimed anti-rotation clutch elements.
  • Motivation to Combine: A POSITA seeking to improve upon Chen’s design would be motivated to add an anti-rotation feature. Preventing assembled tree sections from spinning relative to one another is a desirable functional improvement, as it would keep decorations properly aligned and make the assembled tree more stable. Petitioner highlighted that Chen discloses alternative, non-circular trunk ends, indicating that limiting rotation was a known design consideration.
  • Expectation of Success: Integrating a known mechanical anti-rotation feature, such as the splines taught by Geisthoff, into an electrical connector assembly like Chen's would be a straightforward and predictable task for a POSITA.

Ground 3: Claims 1-4, 8-10 are obvious over Otto in view of Ordinary Knowledge

• Prior Art Relied Upon: Otto (DE 8436328) and the general knowledge of a person of ordinary skill in the art (POSA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Otto, a German utility model, teaches a lighted artificial tree with modular trunk sections connected by coaxial plugs. Otto discloses a male end with a central plug and a coaxial sleeve plug, and a female end with corresponding bushings. The petition argued that while Otto expressly teaches "inwardly facing elastic elements" (a form of spring contact) for the outer channel connection, it does not explicitly teach them for the central connection. The ground contended it would have been obvious for a POSA to also place spring-activated contacts in the central bushing, as this was a well-known technique for improving detachable connectors.
  • Motivation to Combine: A POSA would be motivated to employ spring-activated contacts in the central connection of Otto’s device to create a more stable and reliable electrical connection. This modification would prevent the connection from becoming faulty after repeated use, a common problem with detachable electrical connectors and an obvious area for improvement.
  • Expectation of Success: Applying a well-known technique (spring contacts) to the central void of a connector, especially when the same reference already uses a similar feature in its channel void, would be an obvious design choice with predictable results.

4. Key Claim Construction Positions

• "channel prong": Petitioner proposed construing this term as an "electrically conductive protrusion radially offset from the central prong." A key contention was that the Patent Owner, during prosecution of a parent application, improperly broadened this term to cover non-prong-like, tabular, and circular structures that were not supported by the ’810 patent’s provisional application.
• "contact device comprising one or more spring-activated-contact sections": Petitioner proposed this means a "conductive component with one or more areas utilizing elastic contact sections for maintaining radial pressure between contacts."
• Relevance to Priority Claim: Petitioner’s constructions were central to a major argument that the ’810 patent is not entitled to the priority date of its provisional application. Petitioner contended that key claim elements, including "channel prong" and "spring-activated-contact sections," lacked adequate written description support in the provisional. This would push the patent’s effective filing date later, making Chen a valid prior art reference under §102(a) and §102(e).

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-10 of Patent 8,959,810 as unpatentable under 35 U.S.C. §103.