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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC COMPANY, LIMITED,
`Patent Owner.
`____________
`
`Cases:
` IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`IPR2016-01615 (Patent 8,936,379 B2)
`IPR2016-01616 (Patent 8,936,379 B2)
`IPR2016-01617 (Patent 8,936,379 B2)
`____________
`
`Record of Oral Hearing
`Held: December 15, 2017
`____________
`
`
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`
`
`

`

`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ROBERT A. ANGLE, ESQUIRE
`CHRISTOPHER J. FORSTNER, ESQUIRE
`ALEXIS SIMPSON, ESQUIRE
`Troutman Sanders
`1001 Haxall Point
`Richmond, Virginia 23219
`
`and
`
`JASON D. EISENBERG, ESQUIRE
`Sterne, Kessler, Goldstein & Fox
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`LARINA ALTON, ESQUIRE
`Fox Rothschild, LLP
`Campbell Mithum Tower
`222 South Ninth Street
`Suite 2000
`Minneapolis, Minnesota 55402-3338
`
`
`
`
`The above-entitled matter came on for hearing on Friday, December
`
`15, 2017, commencing at 10:07 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
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` 2
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`

`

`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE SAINDON: I am Judge Saindon. With me here is Judge
`Parvis. And Judge Plenzler is there. He is remoting in from the Detroit
`office, so he can see you through the monitor behind me looking at the
`podium. He can't see what's on the screen.
`This hearing is for a host of cases, IPR2016-1610, involving the
`'186 patent to which 1609 and 800 are joined; IPR2016-1612 involving the
`'187 patent and the 1611 and 801 IPRs; 1613 involving the '056 patent and
`the 802 IPR; and then 1615, 1616 and 1617 all involving the '379 patent.
`So we put all of the hearings together today. We have for the case
`in chief, I believe, 90 minutes per side to which, petitioner, you will go first
`and last. Your rebuttal time is limited to responding to what patent owner
`says today. Then we'll have a break for lunch and then come back for the
`motion to amend. We'll have 45 minutes a side again, again, beginning and
`ending with petitioner. We may take a break sometime this morning
`depending on how things go.
`This is a public forum, so anything that is said is spoken in a public
`forum and disclosed. So we generally don't allow objections, but if
`somebody is starting to say something that is protected material, whether it's
`the judges or any other party, feel free to raise a hand. We'll try to note that.
`Let me see if there's any other administrative stuff to take care of.
`I think that's it. Let's do introductions. We'll start with patent owner.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`
`MS. ALTON: Your Honor, thank you. I'm Larina Alton here on
`behalf of patent owner. This is Luke Toth. Johnny Chen, the inventor, is
`also here today.
`JUDGE SAINDON: And petitioner?
`MR. ANGLE: Good morning, Your Honor. Robert Angle on
`behalf of the petitioner. With me are Jason Eisenberg, Chris Forstner,
`Alexis Simpson, as well as Lauren Ulrich in the back. We all will be having
`a little part, as I'll explain in a moment, if that's all right with the Board.
`And Alex Rinnik is going to help, hopefully, keep us on track from a
`technological perspective.
`JUDGE SAINDON: And petitioner, since you are going first, you
`can stay up there or introduce whoever is going to be presenting today.
`MR. ANGLE: Thank you, Your Honor.
`JUDGE SAINDON: If you like, I can put your time on the clock,
`so if you want to reserve some time for rebuttal now.
`MR. ANGLE: That would be great. We would like to reserve
`about an hour.
`JUDGE SAINDON: Okay. You may begin when ready.
`MR. ANGLE: Thank you, Your Honor. May it please the Board,
`let me start first by thanking you for the significant amount of time that you
`have invested in this case and will be in the future. It may not surprise you
`to learn that when we were preparing for today's proceedings and speaking
`with our trial tech person, he told us there were about 75,000 pages of
`documents between all the exhibits and the pleadings that have been filed in
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`this matter. It's truly a voluminous record. And to say that it's voluminous
`would really be an understatement.
`As your order directed on argument, we are going to try and focus
`on a couple issues that we think are really significant to the Board and the
`issues that need to be decided here today. No single person can know every
`argument, paper, pleading or anything that's been filed in this matter. So
`with the Board's indulgence, we are going to divide up the arguments a little
`bit so that we have different people addressing some of the different issues.
`Specifically how we would like to proceed, if we can go to slide 2,
`this is just an overview to show you what's coming. I'll use about the first 20
`to 30 minutes providing an overview of the case, a little bit of background
`and like I said, what we think are the critical arguments from the patent
`owner's perspective. We would like to reserve an hour. Alexis Simpson or
`I, in rebuttal, will address the '186 issues. Chris Forstner will address the
`'379 issues and Jason Eisenberg will address the '056. And if any issues
`relating to motions to exclude come up, we'll address those.
`When we get to the motions to amend in the afternoon, Alexis
`Simpson will provide an overview and will address some of the '186 and
`'187 issues. Jason Eisenberg again will address '056 and Chris Forstner,
`'379.
`
`Before I jump into the argument, I wanted to give just one or two
`more opening comments. One is I'll be referring to slide decks, both ours
`and patent owner's. And for the record, I'll try and keep that clear and
`identify which slide I'm turning to. We don't have any intention of using all
`of the slides, trust me on that. In addition, I'll try and make sure that Judge
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`Plenzler can follow along because he won't be able to see the slides that we
`are talking about.
`In addition, any references to the record, the specification, unless I
`say otherwise, I mean to refer to the 1610 matter and the '186 patent. So
`with that, I'll go ahead and jump right in.
`Turning to slide 3, this helps illustrate briefly the background of
`the artificial Christmas tree industry. As early as 1903 with the Zahl patent,
`patents have been issued on artificial Christmas trees with internal wiring,
`trunk sections and light strings. One thing common to all artificial
`Christmas trees back then and even today is that they are decorative lighting
`that is used during a certain part of the year and they have to be put up, taken
`down and stored. And so since the beginning, inventors, when they have put
`together patents, they have tried to offer inventions that helped to address the
`need to assemble, disassemble and store.
`Turning to slide 4, this shows almost from the outset inventors
`look for ways to have electrical wires travel through the trunks rather than
`on the outside. This was both for reasons of safety, appearance and ease of
`assembly. As early as 1928 with the Harris patent we had internal wires
`going through the trunk sections and we had electrical connectors between
`those trunk sections. Inventors used various different types of connectors.
`As we can see here from the screw-in type of Corina all the way to the
`coaxial connector of Otto.
`Turning to slide 5, the evolution of connectors in artificial
`Christmas trees was just like the evolution of connectors in other electrical
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`products from the screw-in of Edison to the socket and coaxial connectors of
`McLeish. After all, artificial Christmas trees are just decorative lighting.
`So let me turn and talk about the patents that bring us here today.
`Turning to slide 6, the Willis patents are what bring us here today. They
`were filed by Mr. Chen, who is Willis' present CEO. He is here today.
`Willis and Mr. Chen are relatively new to the artificial Christmas tree
`market. They first started making artificial Christmas trees in about 2008.
`Soon thereafter, Mr. Chen started filing patent applications.
`The '186, '187 and '379 patents are all of the same family from the
`'751 provisional application. The '056 is in a different family that is very
`closely related and shares much of the same specification. And in fact,
`Figure 2 shown on the slide is in all four patents. Boiled down, the
`purported invention involves a combination of four basic elements, trunk
`portions with internal wiring, joint branches, attached light strings and
`multi-positional connectors.
`Turning to slide 7, patent owner really does not dispute that each
`of these four elements existed in the prior art. Indeed, the '186 specification
`specifically discusses the Harris patent's trunk portions with internal wiring,
`the Smith patent's joined branches and attached light strings that were
`common to many artificial Christmas trees.
`Turning to slide 8, multi-positional connectors were also
`something that was available in the prior art at the time of the invention. As
`Mr. Chen testified during his deposition, the connector he chose to use
`between the trunk sections is one of 10 different connectors available from
`vendors in a vendor database that he had available to him. The patent
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`figures, as shown on the right side of slide 8, are just detailed drawings of
`the connectors that he found in the market. So there's no dispute that
`connectors were available in the prior art, and patent owner does not contend
`that the connectors themselves are particularly novel or the inventive feature.
`JUDGE SAINDON: So counsel, let me ask you about that. You
`mentioned that the coaxial-type connections were known. I'm going back to
`your slide 4 where you have the Christmas trees there. Now, am I correct in
`saying that only Otto had a coaxial-type connector?
`MR. ANGLE: Well, Otto is the reference we rely on primarily for
`the coaxial-type connector, at least for the inspiration of it. It's not the only
`one. There were others. I believe that Pritza, as you can see there, is
`coaxial. That's the one I see at least here that's a coaxial-type connector.
`But in addition, the coaxial-type connectors obviously existed outside of just
`Christmas tree art. And as we'll talk about in a little bit, we believe the field
`of endeavor is broader than just the narrow field of artificial Christmas trees.
`JUDGE SAINDON: But as far as these connectors that you say on
`slide 8 that he went out to different vendors, I mean, those were just coaxial
`connectors. Were there any application?
`MR. ANGLE: Right. They were just regular coaxial cables you
`can get on the market. Exactly right, Your Honor.
`JUDGE PARVIS: Did you submit any of those as prior art?
`MR. ANGLE: I'm sorry, did we submit any of those as prior art?
`JUDGE PARVIS: The ones you say he went out to buy those, but
`those are different connectors than what you have as prior art.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`
`MR. ANGLE: The connectors he had in prior art are commercial
`embodiments of various connectors. I don't think they are proper for
`institution proceedings before the IPR. In other words, they are products.
`They are not patents on those connectors. So we couldn't rely on them for
`the purposes of the proceeding today, if that makes sense.
`JUDGE SAINDON: But I guess, is there any evidence that those
`types of connectors were marketed to Christmas tree manufactures or
`decorative lighting or they just went to Home Depot and there are all the
`different connectors?
`MR. ANGLE: I don't know. I didn't ask that specific question and
`he didn't respond. He indicated that he had a list of vendors that were
`available to him and he chose amongst ten different options for those
`connectors. My understanding is that they were just readily available
`connectors in the field. Like I said, patent owner doesn't contend that the
`connectors themselves are the inventive feature. It's really the combination
`of these four elements that they contend are patentable.
`JUDGE SAINDON: I guess what I'm looking for is somebody
`who is going the make a Christmas tree, an ordinary artisan, what is the
`universe that he or she is looking at? And if they know to go to these
`vendors for the components, that's one thing. If they go somewhere else,
`that's another thing. So I'm just trying to figure out the scope of the art.
`MR. ANGLE: Certainly I understand, Your Honor. We didn't ask
`that specific question. I can say that, as I mentioned before, Willis came into
`the industry a little late, the artificial Christmas tree industry. They were in
`the lighting industry before. So there is, like I said, there is a field of
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`endeavor kind of crosses over lighting and Christmas trees. So I don't think
`it would be -- in other words, I don't think there are any vendors out there
`just specific for connectors for artificial Christmas trees.
`Your Honor, turning to slide 9, I'll just identify the main arguments
`the patent owner makes here in response to our petition. Really, there are
`three primary arguments they assert. First, patent owner tries to use claim
`constructions to disqualify the prior art. Second, patent owner attempts to
`narrowly construe the field of endeavor to characterize the prior art as not
`analogous. And third, they attack the motivations to combine.
`So I was first going to address the claim construction issues that
`the patent owner raises. If we could, I would like to move to patent owner
`slide 17 which is up on the screen here, Judge Plenzler. I'll give you a
`second to get to the other -- okay. Slide 17 is patent owner's opposition in a
`nutshell. What slide 17 shows is a picture of patent owner's assembly of a
`prototype tree intended to be the Miller reference which is one of the
`primary references that we rely on. The point of this picture is to show that
`Miller lacks permanently attached branches and integral light strings.
`Even the Miller tree when fully assembled, which is shown in the
`picture on the far right of the slide, does have attached branches and light
`strings, patent owner argues that Miller does not teach the claimed invention
`because Miller's branches and light strings are not permanently or
`semipermanently attached. Of course, nowhere do the patents say anything
`about permanently or semipermanently attached branches or light strings.
`So to read those requirements into the claims, the patent owner tries to
`redefine the invention in several ways.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`
`
`Turning to patent owner's slide 5, first is tree portion which is a
`claim that appears in many -- claim element that appears in many of the
`claims. Patent owner tries to construe tree portion to mean a mechanically
`electrically connectible modular and unitary portion of an artificial tree.
`Now, what patent owner means by that is the tree portion must mean and can
`only mean a tree section such as that as shown on the right-hand side of this
`slide where each unit includes joined branches, attached light strings, an
`electrical connector in the trunk and a hollow trunk section -- portion. But
`patent owner cannot identify anything in the record that actually supports
`this definition. Indeed, unitary is a word that never shows up in any of the
`patents anywhere.
`So how does the patent owner read all of these requirements into
`its definition of tree portion? It's through the word "modular." If we can
`turn to patent owner slide 6, so patent owner slide 6 is where patent owner
`offers a construction of modular as it relates to tree portions. As you can see
`from the third bullet point, patent owner asserts that in discussing modular
`tree portions, the patent, quote, and I emphasize consistently refers to tree
`portions as having joined branches, affixed light strings, electrical connector
`in the trunk and a hollow trunk portion. But that really is not the case.
`Indeed, patent owner's articulation of how it characterizes modular tree
`sections is not itself consistent.
`If we could pull up paper 58 at page 47 which is what's cited in
`patent owner's slide 6 which is the top of this page, Judge Plenzler, are you
`able to get to that?
`JUDGE PLENZLER: I am. You just have to give me a minute.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`
`MR. ANGLE: Absolutely. So this is the patent owner response
`paper 58. And I said page 47 -- are you there, Judge Plenzler?
`JUDGE PLENZLER: I am. If you could, just going forward, I
`know you said you are going to reference the --
`MR. ANGLE: Slides and I forgot.
`JUDGE PLENZLER: No, no, if you're going to reference the 1610
`file, if you could instead of or in addition to paper number, reference patent
`owner response, for example. I have a lot of the documents here.
`MR. ANGLE: Understood. Absolutely. That will be easier for
`me, actually.
`As you see at the top of the page, this is a definition of tree portion
`and this is actually the one referred to in the slide. And it's different from
`what is on the slide. It says that tree portions consistently refer to modular
`unitary portions of the tree that include trunk portions, branches, electrical
`wiring, electrical/mechanical connections and lights. So no reference to
`fixed light strings or joined branches.
`If you could turn to page 18 of the patent owner response, at the
`bottom of that page you'll see another definition of tree portions. Here
`patent owner says the tree portion is each portion having a trunk portion with
`external light string, wiring or joined or attached branches, internal wiring of
`the trunk and electrical trunk connection that can be made at any orientation,
`a connector fixedly secured in the trunk portion and a circular trunk wall that
`does not include a rotational alignment structure. Again, no affixed light
`strings and something about a rotational alignment.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`
`If we go to page 11 of this same document, the bottom last
`paragraph of that page 11, you'll see another definition which is that tree
`portions having joined branches, external branch wiring and a trunk portion
`with internal trunk wiring and nonconductive mechanical and electrical
`connectors fixedly secured within the trunk portions, again, no fixed light
`strings mentioned and something about a non-conductive connector.
`JUDGE SAINDON: Counsel, I get your point that they are a little
`different, but I'm wondering if maybe there's kind of an underlying theme.
`I'm looking at the '186 patent, claim 1, and we have a lighted artificial tree
`comprising a first tree portion including the trunk and the branches and
`electrical something, however they have claimed that. And I'm wondering,
`effectively, as I see your position is you say, well, the prior art has the trunk
`portion, the branches and the connector, therefore, it has the tree portion.
`And I think what patent owner is saying, a tree portion is something that has
`these three things, so that's why they are together. That's kind of that the
`claim itself requires a tree portion and that's something than just having the
`list of the things that composes that tree portion. So that's why they
`specifically said a first tree portion as opposed to just cutting to the chase.
`So I wonder if you could respond to that.
`MR. ANGLE: Your Honor, actually, if we could turn to, going
`back to our slides, slide 12, so petitioner slide 12, your point is a good one,
`Your Honor. And what really is there's a lot of inconsistent language within
`the patents and the '186 in particular. And what the slide 12 actually shows
`is the inconsistency in the way they use these very terms. So looking at the
`'186 and the '187 patent, for example, claims 1, 10, 20 of the '186 and claims
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`1 and 7 of the '187 patent each recite tree portion, which we were just talking
`about, as well as the elements that patent owner says comprise tree portion,
`which of course, if tree portion meant what patent owner says it means
`would be redundant and there would be nobody to do that. It also in the
`claims recites little variation on each way it says those things.
`But then when you look at the '056 patent, it also uses tree portion
`but does not require internal wiring or attached branches in any of them.
`Then if you look at claim 5 of the '379 patent, it uses tree section, which
`patent owner has represented is the same as tree portion, but it likewise does
`not require attached branches. So it's little word choices that are different
`that a POSA would be unable to determine there's this one definition of tree
`portion that's supported by the spec because it just isn't supported by the
`spec.
`
`JUDGE SAINDON: I'm wondering with this slide 12 here for
`those -- for example, you have '186 which has a tree portion, the wiring, the
`connector, the branches, the strings, whereas, let's say, the '056 has the tree
`portion but only the connector and the strings. When you have a group of
`patents, you claim different breadths. So I'm wondering if this is just
`breadth and you have specificity for, for example, the internal wiring if that
`patent then goes into the details of that wiring, and that's why they
`sometimes mention it and sometimes don't, because it's more relevant to
`that.
`
`MR. ANGLE: I completely agree with Your Honor, that is a way
`of doing patents like this. What's going on here is a little different, though.
`What patent owner is trying to do is specifically define tree portion in a way
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`that avoids the Miller reference. That's the whole point here. It's not about
`how these claims are different. They have different language and are subject
`to different interpretation.
`And like you said, that's fine. In '056 you may not need branches
`or light strings. Okay, that's fine, but you can't then say the tree portion
`always means that it has to have all four elements, which is what they are
`asserting. And part of the way they do that is through their use of the word
`"modular." So modular, again, is a term that gets thrown around a little bit.
`And what they say modular should mean is -- modular is how they -- as I
`talked about earlier, modular is how they wrap in tree portion, attached
`branches, light strings, et cetera. But modular doesn't have that meaning in
`the patent. There's nowhere in the patent that supports that.
`JUDGE SAINDON: I believe I have seen modular lighting and
`modular tree portion. I'm wondering what if the lighting was left out? Is
`patent owner's argument better if it's modular or tree portion means just
`branches and trunk and the electrical connectors?
`MR. ANGLE: So they define tree portion to include modular.
`And then modular is how they bring in these other things. The word
`"modular" appears very few times in the patents themselves. It appears in
`the title and a couple references to it. It's actually an artifact of the
`provisional application. I don't know if you have had a chance to look at the
`provisional application from the 751 provisional, but there the invention is
`really directed at what is a modular lighting assembly, an assembly so that
`you could connect multiple light strings together and vary the tree in that
`way. In fact, it shows up in the specification in column 18 and Figures 14
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`through 17 -- I'm sorry, 17 through 20 all relate to that modular light
`assembly. But modular is not used consistently in the patents or anywhere
`else to mean necessarily in the Christmas tree industry that modular tree
`portion must always include attached light, attached branches, a light string,
`internal wire connectors and internal wiring.
`And in fact, in talking about modular, Mr. Chen, the inventor,
`agrees that modular doesn't have a specific meaning. When he was asked, if
`we can pull up paper -- I guess this is the petitioner's reply, so paper 99 at
`page 12, there we go, you can see there's a quote there from Johnny Chen. I
`asked him about what modular means, and he gave you the plain and
`ordinary meaning which most people understand. It means that pieces come
`apart kind of like Legos. That's right. That's what modular means. It
`doesn't have the specific meaning. In fact, he acknowledged that his
`understanding of modular that's been put forward by patent owner is not one
`necessarily adopted by the industry, because it is not a term of the industry
`that modular always means artificial trees with the four elements. Does that
`make sense, Your Honor?
`But it gets more complicated, this reconstruction of the patent. If
`we could turn to patent owner's slide 15 --
`JUDGE PARVIS: I have a quick question. Is your position that
`modular artificial tree is -- perhaps just requires a trunk?
`MR. ANGLE: Well, we don't think that modular artificial tree has
`a specific meaning by itself. Modular means, like Mr. Chen said, like
`Legos. It's component parts that can be put together. So a modular tree
`portion could -- I mean, a trunk is part of a modular tree section, yes.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`JUDGE PARVIS: So would the trunk alone, then, be the artificial
`tree? If modular is separate discrete parts, is a trunk an artificial tree?
`MR. ANGLE: I don't think so. I don't think in the -- that the
`patents certainly don't provide any intrinsic evidence that would support that
`as being a definition. This is a definition that is being offered by the patent
`owner after the fact, as I said, to avoid Miller as a reference. It's not a
`construction that's supported anywhere in the intrinsic record.
`JUDGE PARVIS: So a modular artificial tree would we need,
`then, discrete parts of at least the trunk and the branches?
`MR. ANGLE: I'm sorry, I missed part of your question.
`JUDGE PARVIS: Some of the claims in the '379 patent recite
`trunk section and then there's the recitation of modular artificial tree. I'm
`trying to understand if artificial tree is different than trunk.
`MR. ANGLE: The patent owner certainly has taken a position, I
`believe, that it is different.
`JUDGE PARVIS: It would be helpful to understand petitioner's
`position on that.
`MR. ANGLE: Whether the trunk is separate from the --
`JUDGE PARVIS: Is it different than the tree? Are trunk portions
`or trunk sections different than tree portions and tree sections or a modular
`artificial tree?
`MR. ANGLE: Certainly the way it's used in the patent is different.
`I mean, it does try and -- they talk about tree portion and trunk portion as
`different. So, yes, I guess we would agree it's used differently in the '379
`patent that way.
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`JUDGE PARVIS: Thank you.
`MR. ANGLE: Turning to patent owner's slide 15, this is where
`patent owner tries to redefine its terms to construe its patents to require that
`branches be permanently or semipermanently attached to the trunk sections.
`This is part of that broader overall definition.
`JUDGE SAINDON: Counsel, before we go into this, I would like
`to ask a question on the lighted tree claim construction. I don't know if you
`have something prepared for that. My question basically is what is a lighted
`tree? Is it a tree that has lights on it or a tree that's designed in a certain way
`that has lights on it, for example, a tree that provides the electricity at the
`tree as opposed to you could take a live tree and string lights on it and plug
`the lights into the wall separately? I'm trying to see if that's the distinction
`of the claim.
`MR. ANGLE: If we could go to petitioner's slide 13, which does
`relate to lighted artificial trees, going to your question, patent owner has
`taken a position, they have got a three-step argument where they are trying
`to read integral light strings into their tree portions. And they try and do this
`through the lighted artificial tree because lighted appears in some of the
`preambles of the claims. Pre-lit does not. But they try and use pre-lit which
`originally appeared in the provisional application, and they ultimately took
`that out. What they try and say is first pre-lit means integral to the
`construction, that it must be, it has this special meaning; and then second,
`that pre-lit and lighted are synonymous and equivalent to each other; and
`then third, they have to then say that the preambles are limiting to the
`claims. Of course, they have taken the position in the District Court action
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`Cases: IPR2016-01610, IPR2016-01612, IPR2016-01613
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
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`that they are not limiting to the claims. And they don't identify any way in
`which the claims are necessary to understand or provide any antecedent
`basis for anything or necessary to bring life to the claims. So that part of it
`is wrong.
`But in addition, as I think we addressed in our papers, pre-lit and
`lighted really have two different means. Pre-lit does imply what you are
`suggesting or at least I think what you were asking about, which is a tree that
`may have lights alrea