Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.

1. Case Identification

• Case #: IPR2019-01484
• Patent #: 9,671,097
• Filed: August 12, 2019
• Petitioner(s): Everstar Merchandise Co., Ltd.
• Patent Owner(s): Willis Electric Co., Ltd.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Decorative Lighting with Reinforced Wiring
• Brief Description: The ’097 patent describes a reinforced electric wire for decorative lighting. The wire includes at least one axially-extending reinforcing strand made of a polymer material, a conductor layer with multiple copper conductors adjacent to the reinforcing strand, and an outer insulating layer that envelops both the conductors and the reinforcing strand.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 3-6 - Claims 1 and 3-6 are anticipated by Fujii under 35 U.S.C. §102.

• Prior Art Relied Upon: Fujii (Patent 5,216,205).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fujii discloses every element of independent claim 1. Fujii describes a wire with a central reinforcing core made of an aramid fiber bundle (disclosing a "plurality of reinforcing strands" made of a "fibrous material"), a plurality of copper conductor strands arranged around the core, and an outer insulating coat made of a polymer like polyethylene. Petitioner contended that the arrangement shown in Fujii, where conductors are at the center and in contact with the outer insulating layer, directly maps to the limitations of claim 1. For dependent claims, Petitioner asserted that Fujii’s disclosure of a 0.15 mm strand diameter anticipates claim 3, and its use of aramid (a polymer) for reinforcement and polyethylene for insulation (a different polymer) anticipates claims 4-6.

Ground 2: Anticipation of Claims 9, 12-14, and 23 - Claims 9, 12-14, and 23 are anticipated by Huang.

• Prior Art Relied Upon: Huang (Application # 2013/0062095).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Huang anticipates independent claims 9 and 23. Huang was argued to disclose a wire with a central reinforcing filament (the "one or more reinforcing strands") and twelve spirally wound copper conductors (meeting the "eight to sixteen" limitation of claim 9) covered by a polymer insulating layer. For dependent claims 12-14, Petitioner argued that although Huang does not explicitly state the tensile strength and elongation values, its disclosed structure and materials (e.g., PET for reinforcement, copper conductors, ETFE insulation) are identical or substantially similar to those of the ’097 patent. Therefore, Petitioner asserted that the claimed physical properties are inherent to the structure disclosed by Huang.

Ground 3: Obviousness of Claims 16-22 - Claims 16-22 are obvious over Debladis '614 in view of Huang, Wlos, and Debladis ’120, and optionally in view of Lin.

• Prior Art Relied Upon: Debladis ’614 (Application # 2010/0089614), Huang (Application # 2013/0062095), Wlos (Application # 2004/0222012), Debladis ’120 (Patent 8,692,120), and Lin (Application # 2007/015822).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Debladis ’614 provides the basic structure of a reinforced wire with a polymer core and surrounding copper conductors. However, Debladis ’614 discloses only six conductors. Huang was cited for its teaching of using twelve conductors, which falls within the claimed range of eight to sixteen. Petitioner asserted it would have been obvious to modify Debladis ’614 with Huang’s teaching to increase current-carrying capacity or durability. For dependent claims, Wlos was cited for disclosing a specific conductor diameter (0.16 mm), and Debladis ’120 was cited for teaching a structure with three reinforcing strands, making it obvious to modify the base reference to arrive at the specific counts in claim 17.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to improve the performance of the base wire from Debladis ’614. Specifically, a POSITA would increase the number of conductor strands as taught by Huang for predictable results like improved durability and current capacity, and would substitute known materials and configurations from Wlos and Debladis '120 to meet specific design parameters. Using the wire for decorative lighting as taught by Lin was presented as an obvious application.
  • Expectation of Success: The combination involved applying known techniques (e.g., adding more conductor strands) to a known device (reinforced wire) to achieve predictable improvements. Therefore, a POSITA would have had a reasonable expectation of success.

• Additional Grounds: Petitioner asserted additional challenges, including that claims 1, 4, and 5 are anticipated by Debladis '120. A comprehensive obviousness challenge against claims 1-15 and 23-30 was also asserted over Huang in view of Debladis '120, Wlos, and optionally Lin or Fujii, relying on similar arguments of combining known elements for predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that each of the primary prior art references relied upon—including Fujii, Debladis '120, Huang, and Debladis '614—were not cited or considered during the original prosecution of the ’097 patent. Petitioner contended that these references are materially different from the art previously evaluated by the Examiner, presenting substantial new and noncumulative technical teachings.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the '097 patent as unpatentable.