Everstar Merchandise Co Ltd v. Willis Electric Co Ltd

1. Case Identification

• Case #: PGR2019-00056
• Patent #: 10,222,037
• Filed: August 13, 2019
• Petitioner(s): Everstar Merchandise Co. Ltd.
• Patent Owner(s): Willis Electric Co., Ltd.
• Challenged Claims: 1-33

2. Patent Overview

• Title: Decorative Lighting With Reinforced Wiring
• Brief Description: The ’037 patent discloses a strength-enhanced, net-like decorative lighting structure. The invention focuses on the use of internally-reinforced intermediate and power wires, which include one or more polymer reinforcing strands alongside electrical conductors, all enclosed within an outer insulating layer to improve durability.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kumada, Debladis ’120, and Liu or Lawrence - Claims 1-16 and 33 are obvious over Kumada in view of Debladis ’120, further in view of Liu or Lawrence.

• Prior Art Relied Upon: Kumada (Patent 6,367,951), Debladis ’120 (Patent 8,692,120), Liu (Chinese Patent No. CN2644876), and Lawrence (Patent 5,601,361).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kumada disclosed the foundational elements of independent claim 1, including a net-like decorative lighting structure with multiple light sets, power wires, intermediate wires connecting lamp assemblies, and non-electrical support ropes that define the rectangular shape. However, Kumada did not explicitly teach internally-reinforced wires. Petitioner asserted that Debladis ’120 remedied this deficiency by disclosing the exact wire structure claimed: a central core of multifilament polymer (reinforcing strands), a plurality of conductive strands, and an outer insulating sheath. For dependent claims, Petitioner contended that Liu taught the use of current-limiting resistors and LED light sources (for claim 33), while Lawrence taught the use of specific polymer materials like nylon or polyethylene for non-wire support cords.
  • Motivation to Combine: A POSITA would combine Kumada and Debladis ’120 as a simple substitution of a known, more durable wire (Debladis ’120) for a conventional wire in a known product (Kumada) to achieve the predictable result of increased strength. The motivation to add Liu’s teachings was to control current flow for use with modern, efficient LEDs. The motivation to add Lawrence was to use common, well-understood polymer materials for the non-conductive components.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success in incorporating the reinforced wires of Debladis ’120 into Kumada’s light set, as it involved applying known wire technology to a known application to achieve a predictable improvement in durability.

Ground 2: Obviousness over Kumada, Debladis ’120, Lin, and Liu or Lawrence - Claims 21-29 are obvious over Kumada in view of Debladis ’120 and Lin, further in view of Liu or Lawrence.

• Prior Art Relied Upon: Kumada (Patent 6,367,951), Debladis ’120 (Patent 8,692,120), Lin (Canadian Application # CA2238113), Liu (Chinese Patent No. CN2644876), and Lawrence (Patent 5,601,361).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed independent claim 21, which recites specific arrangements of lamp assembly rows and non-wire support cords. Petitioner relied on the Kumada/Debladis ’120 combination for the basic reinforced net-light structure, as in Ground 1. To meet the limitations regarding the interconnection of lamp rows, Petitioner introduced Lin. It was argued that Lin disclosed a lamp netting assembly with a support cord ("string 60") that connects sockets between a first and second row, teaching the specific parallel and zig-zag wiring configurations recited in the dependent claims. The combination of Kumada (general structure), Lin (specific cord configuration), and Debladis ’120 (reinforced wire) allegedly rendered claim 21 and its dependents obvious.
  • Motivation to Combine: A POSITA would have been motivated to modify Kumada’s structure with the wire configuration taught in Lin to improve the usability and structural reliability of the net light. This was presented as a combination of known design choices from analogous prior art to create an improved, but obvious, final product.
  • Expectation of Success: Petitioner asserted success would be expected, as combining the wiring patterns of Lin with the general net structure of Kumada involved applying known decorative lighting assembly principles.

Ground 3: Obviousness over Sylvania and Debladis ’120 - Claims 1, 4-5, 10-14, 16, 21, 22, 25, 27, and 33 are obvious over Sylvania in view of Debladis ’120.

• Prior Art Relied Upon: Sylvania (a 2008 commercial net light set) and Debladis ’120 (Patent 8,692,120).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the Sylvania commercial product, an on-sale bar under 35 U.S.C. §102(b), disclosed nearly all limitations of the challenged claims. Petitioner provided photographic evidence showing the Sylvania product had a rectangular net-like structure, a power plug, multiple light sets, intermediate electrical wires, and non-wire mechanical support cords arranged in a zig-zag pattern. The only element allegedly missing was the specific internal reinforcement of the wires. As in other grounds, Petitioner argued that Debladis ’120 explicitly taught this missing element—an internally-reinforced wire with a polymer core and surrounding conductors.
  • Motivation to Combine: A POSITA would have been motivated to modify the existing Sylvania product to incorporate the reinforced wires taught by Debladis ’120. The motivation was to solve a known problem of insufficient wire strength in decorative lighting by substituting a known, stronger wire design to obtain the predictable result of a more durable product.
  • Expectation of Success: Success was expected because the modification involved the simple substitution of one known type of electrical wire for another in an existing commercial product.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on Kumada in view of Debladis ’614 or Huang for specific wire construction claims (17-20) and grounds establishing Lin as the primary reference combined with Debladis ’120, Liu, and Kumada.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It was contended that none of the cited prior art references were considered during the original prosecution of the ’037 patent and that the asserted grounds were therefore not substantially the same as arguments previously presented to the Office.

5. Relief Requested

• Petitioner requested institution of a post-grant review and cancellation of claims 1-33 of Patent 10,222,037 as unpatentable.