Polygroup Services Na Inc v. Willis Electric Co Ltd

1. Case Identification

• Case #: IPR2021-00489
• Patent #: 9,671,097
• Filed: February 4, 2021
• Petitioner(s): Polygroup Services N.A., Inc.
• Patent Owner(s): Willis Electric Co., Ltd.
• Challenged Claims: 1-6, 9-11, 15-20

2. Patent Overview

• Title: Reinforced Wire
• Brief Description: The ’097 patent relates to an internally reinforced, electrically-conducting wire for use in decorative lighting applications. The wire comprises three main components: a plurality of reinforcing strands, a plurality of conducting strands, and an outer insulating layer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Altermatt, Tsai, and Fan - Claims 1-5, 9-11, and 15 are obvious over Altermatt in view of Tsai and Fan.

• Prior Art Relied Upon: Altermatt (Patent 4,861,947), Tsai (Application # 2007/0076404), and Fan (China Patent No. 2010069067Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Altermatt taught the core structure of the claimed wire, including a central conductor cable surrounded by separate reinforcing strands and conductor strands, all embedded within an outer plastic (PVC) sheath. Altermatt disclosed the reinforcing strands could be made of fibrous material (aromatic polyamides). Fan was cited to teach that the conductor strands in a decorative lighting wire would be made of copper and could have a specific diameter (0.16mm).
  • Motivation to Combine: A POSITA would combine Altermatt’s general-purpose reinforced wire with Tsai’s teachings because Tsai explicitly disclosed using reinforced wire for decorative lighting (e.g., Christmas lights) to improve durability. To implement Altermatt’s wire for this purpose, a POSITA would look to art like Fan for conventional materials and configurations used in decorative lighting, such as using stranded copper for conductors.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination merely applied a known wire structure (Altermatt) to a known application (decorative lighting, per Tsai) using a well-known, cost-effective, and highly conductive material (copper, per Fan).

Ground 2: Obviousness over Lu, Tsai, and Altermatt - Claims 1, 4-6, and 9-10 are obvious over Lu in view of Tsai and Altermatt.

• Prior Art Relied Upon: Lu (China Patent No. 202855357U), Tsai (Application # 2007/0076404), and Altermatt (Patent 4,861,947).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Lu disclosed a “bend resistant wire” with all key structural elements: conductive core bundles made of copper, separate reinforcing strands made of fibrous polymer material (aromatic polyamide or FRP fibers), and an outer insulating layer. For claim limitations not expressly disclosed in Lu (e.g., a specific polymer for the insulating layer or a specific number of conductor strands), Altermatt was cited as teaching a PVC insulating layer and an embodiment with sixteen conductor strands.
  • Motivation to Combine: Tsai again provided the motivation to use a reinforced wire like Lu’s for decorative lighting. A POSITA implementing Lu’s design would be motivated to consult other reinforced wire art, such as Altermatt, to select a suitable, common, and inexpensive material for the insulating layer (e.g., PVC) and to determine an appropriate number of conductor strands for a given application.
  • Expectation of Success: The combination involved predictable design choices. A POSITA would expect success in using a common polymer like PVC from Altermatt as the insulating layer for Lu’s wire, as polymers were widely known and used for electrical insulation.

Ground 4: Obviousness over Voser, Tsai, and Altermatt - Claim 16 is obvious over Voser in view of Tsai and Altermatt.

• Prior Art Relied Upon: Voser (Patent 4,449,012), Tsai (Application # 2007/0076404), and Altermatt (Patent 4,861,947).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Voser disclosed a reinforced cable with the claimed elements, including a plurality of copper conductor strands, separate reinforcing strands made of synthetic fibers arranged in bundles, and an outer insulating casing made of a polymer (polyamide). Altermatt was cited to supply the teaching of using sixteen conductor strands, a number within the range required by claim 16.
  • Motivation to Combine: A POSITA would be motivated to adapt Voser’s wire for decorative lighting per Tsai’s teachings. Because the number of conductor strands is a routine design parameter, a POSITA would consider various known configurations, such as the sixteen-strand arrangement in Altermatt, to optimize Voser’s wire for a specific use.
  • Expectation of Success: A POSITA would expect success in modifying the number of conductor strands in Voser’s design, as this was a predictable and routine modification in the art that required only well-known manufacturing techniques.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (Lu in view of Tsai, Altermatt, and Fan for claims 2 and 11) and Ground 5 (Voser in view of Tsai, Altermatt, and Fan for claims 17-20), which relied on similar combinations to teach specific strand counts and material properties required by dependent claims.

4. Key Claim Construction Positions

• Petitioner contended that no terms required express construction. However, it addressed constructions from a prior IPR involving the ’097 patent.
• "decorative-lighting reinforced wire": Petitioner argued this preamble term is not limiting as it merely states an intended use and provides no antecedent basis for terms in the body of the claims. Alternatively, Petitioner argued that even if the term were limiting, the combination of a primary reference like Altermatt, Lu, or Voser with Tsai would render the limitation obvious.

5. Arguments Regarding Discretionary Denial

• §314(a) (General Plastic/Fintiv): Petitioner argued against discretionary denial because the ’097 patent was not subject to any parallel district court litigation, making the Fintiv factors inapplicable. While a prior IPR on the same patent was filed (Everstar IPR), Petitioner argued the General Plastic factors favored institution because Petitioner here is not the same as, nor does it have a "significant relationship" with, the petitioner in the Everstar IPR.
• §325(d) (Becton, Dickinson): Petitioner argued denial under §325(d) was inappropriate because the petition presented new art and arguments not previously considered by the USPTO. None of the asserted prior art references (Altermatt, Tsai, Fan, Lu, Voser) were considered during the original prosecution or in the denied Everstar IPR. Petitioner contended this new art is materially different and overcomes the deficiencies that led to the denial of the prior IPR, specifically by teaching a conductor strand disposed at a central portion of the wire.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 9-11, and 15-20 of the ’097 patent as unpatentable.