Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 225
`Entered: November 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`____________
`
`IPR2016-016101
`Patent 8,454,186 B2
`____________
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Sole Remaining Claim Not Unpatentable
`35 U.S.C. §§ 144, 318(a)
`
`
`1 The grounds raised in IPR2016-00800 and IPR2016-01609 are
`consolidated with IPR2016-01610.
`
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`
`I. INTRODUCTION
`
`A. Background
`
`The scope of this remand is limited to whether claim 7 is unpatentable
`in view of Miller.2 This case began as a consolidation of Petitioner’s
`challenges in three petitions, cumulatively directed to claims 1, 3, 4, 6–11,
`15–22, 25, 26, and 28 of U.S. Patent No. 8,454,186 B2 (Ex. 1001, “the ’186
`patent”).3
`We issued a consolidated Final Written Decision on February 26,
`2018 determining that Petitioner had not established unpatentability of any
`of the challenged claims of the ’186 patent. Paper 187. In relevant part, a
`majority opinion held that Petitioner had not shown that independent claim 1
`was obvious in view of a combination of Miller, Otto,4 and Jumo.5 Id. at
`60–61; see also id. (finding the remaining challenged claims not
`unpatentable for similar reasons). The majority reasoned that Petitioner had
`not established, inter alia, sufficient rationale for the combination and, under
`the majority’s claim construction, had not shown how each limitation was
`taught. Id. The dissent reasoned that the majority’s claim construction of
`
`
`2 U.S. Patent No. 4,020,201, issued Apr. 26, 1977 (Ex. 1007).
`3 As used in this and in prior decisions, “Petition I” or “Pet. I” refers to the
`petition originally filed in IPR2016-00800, now Paper 28. “Petition II” or
`“Pet. II” refers to the petition originally filed in IPR2016-01609, now Paper
`34. “Petition III” or “Pet. III” refers to the petition originally filed in
`IPR2016-01610, Paper 2.
`4 German Utility Model Patent G 84 36 328.2, published Apr. 4, 1985
`(English translated copy) (Ex. 1008).
`5 French Patent No. 1,215,214, issued Nov. 16, 1959 (English translated
`copy) (Ex. 1009). The inventor is not listed on the face of the patent and
`instead lists Société Nouvelle des Établissements Jumo.
`
`2
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`claim 1 was too narrow, such that Petitioner had shown that Miller, without
`the other references, rendered the claim unpatentable. Id. at 65, 81.
`On appeal, the U.S. Court of Appeals for the Federal Circuit agreed
`with the majority on the issue of insufficient rationale and agreed with the
`dissent on the issue of claim construction. Polygroup Ltd. MCO v. Willis
`Elec. Co., Ltd, 759 F. App’x 934, 936 (Fed. Cir. 2019) (“Polygroup I”). The
`Federal Circuit accordingly vacated our decision in part, remanding the case
`with the proper claim construction and an instruction that “the Board should
`consider whether Miller alone renders [the remanded] claims obvious.” Id.
`at 943.
`We issued a second Final Written Decision on Remand on October 8,
`2020, determining that “Petitioner ha[d] established by a preponderance of
`the evidence that claims 1, 3, 4, 6, 8, and 9 of the ’186 patent are
`unpatentable, but ha[d] failed to establish that claims 7, 10, 11, 16–22, 25,
`26, and 28 of the ’186 patent are unpatentable.” Paper 211, 37–38. We held
`that Petitioner had shown claims 1, 3, 4, 6, 8, and 9 unpatentable under the
`remanded claim construction. Id. at 10–19. As to claims 10, 11, 16–22, 25,
`26, and 28, after construing those claims, which we found to have different
`scope, we held that Petitioner had failed to show how Miller taught each
`limitation. Id. at 21–24. With respect to claim 7, which ultimately depends
`from claim 1 and is the subject of this decision, we noted that Petitioner’s
`ground was obviousness in view of Miller and Lessner. Id. at 8. In
`particular, the original ground was Miller, Otto, Jumo, and Lessner (Pet. II
`64–71), and as such, we interpreted the Federal Circuit’s instructions
`regarding “Miller alone” to mean “Miller without the additional teachings
`from Otto and Jumo.” Paper 211, 9 n.15; see also id. at 9 n.12. On that
`understanding, we determined that Petitioner had not established a reason to
`
`3
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`

`IPR2016-01610
`Patent 8,454,186 B2
`combine Miller and Lessner’s teachings and subsequently had not
`established the unpatentability of claim 7. Id. at 19–20.
`On appeal, the Federal Circuit held we misunderstood the scope of the
`“Miller alone” aspect of the remand when we analyzed Miller in
`combination with Lessner for claim 7. Polygroup Limited MCO v. Willis
`Electric Company, Ltd, 2022 WL 1183332, *3–4 (Fed. Cir. Apr. 20, 2022)
`(“Polygroup II”). A majority of the Federal Circuit panel also held that our
`claim construction as to claims 10, 11, 16, 18–22, 25, 26, and 28 was too
`narrow. Id. at *4–5. As a result, claim 7 was remanded to us and claims 10,
`11, 16, 18–22, 25, 26, and 28 were held unpatentable. Id. at *1, 4–5.
`We then held a post-remand conference call pursuant to the Board’s
`Standard Operating Procedure 9.6 Paper 222. The parties agreed the sole
`issue for us to decide is whether claim 7 is obvious in view of Miller. Id. at
`3. Neither party argued for further substantive briefing regarding claim 7,
`although Petitioner requested briefing on statements it alleges Patent Owner
`made in a parallel district court proceeding regarding the claim construction
`of the term “detachabl[e].” See id. We found that we had “a complete
`record from which to decide th[e] issue” of claim 7. Id. We allowed
`Petitioner to file the statements made by Patent Owner but did not allow
`briefing on the matter. Id. at 3–5. Reviewing the record as it stands, for the
`reasons set forth in our discussion below, we determine that Petitioner has
`not shown by a preponderance of the evidence that claim 7 is unpatentable
`over Miller.
`
`
`6 Available at
`https://www.uspto.gov/sites/default/files/documents/sop_9_%20procedure_f
`or_decisions_remanded_from_the_federal_circuit.pdf.
`
`4
`
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`

`IPR2016-01610
`Patent 8,454,186 B2
`
`B. Related Matters
`
`The parties have engaged in myriad actions against each other. There
`are a number of district court lawsuits, PTAB proceedings, reexamination
`proceedings, and copending applications related to this proceeding. The
`most recent listing provided to us can be found in Paper 214 (Patent Owner’s
`Mandatory Notices, filed June 13, 2022).
`
`C. The ’186 Patent
`
`The ’186 patent is directed to a modular artificial tree (e.g., a
`Christmas tree) with electrical connectors in the trunk. Ex. 1001, codes (54),
`(57). An electrical connection runs up the trunk of the tree to provide a
`source of electricity for light strings draped over the branches. See id. at
`Figs. 2–4. Figure 4 of the ’186 patent is reproduced below.
`
`5
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`Figure 4 shows first trunk portion 120, which can be connected to
`second trunk portion 160 (unlabeled) to assemble a tree. First trunk portion
`120 includes, in relevant part, branch support rings 127, wiring harness 214,
`electrical connector 210, and light strings 124. Id. at 9:31–10:32.
`
`D. Illustrative Claims
`
`Claim 7, the sole remaining claim in this proceeding, depends from
`claim 6, which in turn depends from claim 1. Each are reproduced below:
`1. A lighted artificial tree, comprising:
`a first tree portion including a first trunk portion, a first
`plurality of branches joined to the first trunk portion, and a first
`light string, the first trunk portion defining a first trunk interior
`and having a first trunk electrical connector and a first trunk
`wiring assembly, the first trunk wiring assembly electrically
`connectable to the first light string and the first trunk electrical
`connector, and wherein at least a portion of the first trunk wiring
`assembly is located within the first trunk interior;
`a second tree portion including a second trunk portion, a
`second plurality of branches joined to the second trunk portion,
`and a second light string, the second trunk portion defining a
`second trunk interior and having a second trunk electrical
`connector and a second trunk wiring assembly, the second trunk
`wiring assembly electrically connectable to the second lighting
`string and the second trunk electrical connector, and wherein at
`least a portion of the second wiring assembly is located within
`the second trunk interior; and
`is mechanically
`tree portion
`wherein
`the second
`coupleable to the first tree portion about a central vertical axis,
`and the second tree portion is electrically connectable to the first
`tree portion such that a portion of the first trunk electrical
`connector of the first trunk portion contacts a portion of the
`second trunk electrical connector of the second trunk portion,
`thereby creating an electrical connection between the first wiring
`assembly and the second wiring assembly;
`
`6
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`wherein an end of the second trunk portion is configured
`to couple with an end of the first trunk portion in at least four
`different rotational alignments of the first trunk portion relative
`the second trunk portion about the central vertical axis, and the
`electrical connection between the first and second tree portions
`are made independent of the rotational alignments of the first
`trunk portion relative the second trunk portion about the central
`vertical axis when the lower end of the second trunk portion is
`coupled to the upper end of the first trunk portion.
`Ex. 1001, 21:15–53.
`6. The lighted artificial tree of claim 1, wherein the first trunk
`wiring assembly includes a first wire and a second wire, each of
`the first wire and the second wire in electrical communication
`with the first trunk electrical connector of the first trunk portion
`and extending between a first end of the first trunk portion and a
`second end of the first trunk portion, and providing power to the
`first light string.
`7. The lighted artificial tree of claim 6, wherein the first wire and
`the second wire are detachably connected to the first trunk
`electrical connector of the first trunk portion.
`Id. at 22:13–22.
`
`E. Asserted Ground
`
`The sole remaining challenge in this proceeding is whether claim 7 is
`unpatentable in view of Miller:
`Claim(s) Challenged
`7
`
`
`
`35 U.S.C §
`103
`
`Reference(s)/Basis
`Miller
`
`II. DISCUSSION
`
`Claim 7 ultimately depends from claim 1, which at a high level recites
`a lighted artificial tree made up of various tree portions, each of which are in
`turn made of a trunk, branches, lights, and various wires and connectors
`ancillary to these components. See, e.g., Ex. 1001, Figs. 2–4. When
`
`7
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`assembling the tree, the tree portions are connected together mechanically
`(to hold the tree up) and electrically (to pass electricity from an electrical
`outlet to the lights on the branches). See generally id. Claim 7 specifies
`how the electrical wires inside each individual tree portion’s trunk are
`fastened to that tree portion’s electrical connectors (which are the electrical
`interfaces that pass electricity between the separate tree portions). In
`particular, claim 7 requires the wires and connector within a given tree
`portion to be “detachably connected” to each other.
`Petitioner bears the burden of proof to show, by a preponderance of
`the evidence, that claim 7 is unpatentable in view of Miller. 35 U.S.C.
`§ 316(e). Petitioner set forth its position on claim 7 in Petition II (Pet. II 64–
`717), with the following passages being the most relevant:
`Miller does not expressly teach that the wiring assembly is
`“modular” or “separably connected.” But assemblies for
`providing a detachable connection between electrical contact sets
`and wiring harnesses were well-known in the art. Ex. 1006,
`¶¶ 261–67. For example, Lessner teaches a “quick-disconnect
`electrical connector for receiving and releasably retaining a male
`tab connector” and a POSA would recognize that it may be used
`to create detachable connections between the electrical contacts
`of a connector or plug, and the wires of a wiring assembly. Ex.
`1008, 1:10–11; Ex. 1006, ¶¶ 261–67.
`Pet. II 65 (emphasis added); see also id. at 65–68 (discussing the “rationale
`for combining” references, with emphasis on combining Lessner).
`Miller does not explicitly teach that the first wiring assembly is
`detachably connected to the first trunk connector. However,
`Lessner discloses a detachable electrical connector suitable for
`
`7 On some of these pages, Petitioner addressed claim 7 both on its own and
`together with a similar claim, claim 22. Claim 7 requires wires to be
`“detachably connected,” whereas claim 22 requires a “modular wiring
`assembly separably connected.”
`
`8
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`detachably connecting the first wiring assembly to the first trunk
`connector. Lessner teaches a quick disconnect connector used to
`join wires and terminal contacts[.] Ex. 1008, Figs. 1–6, 1:23–26.
`Pet. II 69 (emphasis added).
`A POSA would be motivated to use the detachable electrical
`connectors of Lessner to connect the first and second wire
`detachably to the first trunk electrical connector of the first trunk
`portion of Miller-Otto-Jumo for the reasons discussed [at Pet. II
`65].
`Id. at 70–71.
`Reviewing Petition II, we find no persuasive explanation of how
`Miller teaches each element of claim 7. Instead, we find that Petitioner
`admits that Miller does not teach the “detachably connected” limitation
`when it says, in two places, that “Miller does not explicitly teach . . .
`detachably connected,” and then continues to explain how Lessner teaches
`this limitation. Pet. II 65, 69.8 Petitioner’s only mapping of the limitation in
`the section where it sets out its full 37 C.F.R. § 42.104(b)(4) analysis of
`claim 7 relies on Lessner. Pet. II 68–71. In this way, Petitioner’s theory of
`unpatentability for claim 7 is different from the theory set out in Petition I
`for claim 1 where the Federal Circuit held Petitioner had shown that Miller
`alone taught all limitations. Compare Pet. I 19 (arguing, within a three-
`reference obviousness ground, that the first reference “arguably teaches
`every element of Claim[] 1”), 48 (“[t]o the extent Patent Owner may allege
`Miller does not expressly teach this element, [the other references do]”), 49
`
`
`8 Petitioner has also admitted before the Federal Circuit that Miller does not
`teach the “detachably connected” limitation at oral argument. Polygroup II
`at *4 (citing the oral argument recording and noting that “Polygroup
`admitted that Miller does not teach every limitation in the claim.”).
`
`9
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`(similar), with Pet. II 64–71 (reproduced in part above, repeatedly stating
`that Miller “does not explicitly teach [the element]”). Thus, we find that
`Petitioner has not sufficiently explained how Miller teaches the “detachably
`connected” limitation.
`In an obviousness analysis, we recognize that we must consider the
`combination of teachings, as a whole, in light of the general knowledge of an
`ordinarily skilled artisan. In re Merck & Co., Inc., 800 F.2d 1091, 1097
`(Fed. Cir. 1986); Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330,
`1337–1338 (Fed. Cir. 2020) (finding it permissible for the Board to consider
`a ground “relying on ‘general knowledge’ to supply a missing claim
`limitation”). As explained below, however, Petition II does not sufficiently
`show how Miller implicitly teaches or otherwise renders obvious the
`“detachably connected” limitation.
`At first glance, Petitioner states that the “detachably connected”
`limitation was “well-known in the art.” Pet. II 65 (“assemblies for providing
`a detachable connection between electrical contact sets and wiring harnesses
`were well-known in the art”). However, read in context, Petitioner here is
`merely setting up the next part of its obviousness argument, where it turns to
`the teachings of Lessner to supply the missing limitation. See id.
`Petitioner’s citation here to paragraphs 261–267 of its expert report confirms
`this, because the discussion in those paragraphs is about why it would have
`been obvious to add the teachings of Lessner. Ex. 1062 ¶¶ 261–267.9,10
`
`9 Exhibit 1062 is the “Exhibit 1006” cited in Petition II.
`10 Moreover, in this situation, even if the expert report set out a detailed
`analysis of how the limitation was obvious to incorporate into Miller based
`on the general knowledge of a person of ordinary skill in the art, that would
`be an improper incorporation by reference and we would not consider it.
`
`
`10
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`Further, as we found above, Petitioner’s 37 C.F.R. § 42.104(b)(4) analysis
`makes no mention of the “detachably connected” limitation being taught by
`anything other than Lessner. Pet. II 68–71. Thus, we do not find Petitioner
`to have sufficiently shown how the “detachably connected” limitation is
`implicitly taught by Miller or otherwise met by general knowledge in the art.
`For completeness, however, to the extent Petitioner’s language on
`page 65 of Petition II is interpreted to set out a separate ground based on
`Miller in view of the level of general knowledge in the art, we note that the
`only such evidence supporting “general knowledge” discussed in this portion
`of Petition II is Lessner. Pet. II 65; see Koninklijke Philips, 948 F.3d 1330,
`1338 (finding it permissible to “rel[y] on expert evidence, which was
`corroborated by [a prior art reference], in concluding that [the limitation is] .
`. . within the general knowledge of a skilled artisan”). In our Final Written
`Decision on Remand, we already made findings regarding the modification
`to Miller resulting from that general knowledge in the art (Lessner) and,
`based on those findings, explained why one skilled in the art would not have
`made such a modification. Specifically, we explained:
`Petitioner’s proposed modification in the Miller alone challenge
`adds an additional connection point in Miller’s plug and socket
`connectors, further complicating assembly, rather than providing
`greater “ease and speed of assembly and disassembly” as alleged.
`Petitioner’s additional reasoning that the proposed modification
`
`Although expert reports, for example, may contain additional exposition on
`an argument, the argument must be sufficiently set out in an appropriate
`brief. 37 C.F.R. § 42.6(a)(3) (prohibiting the incorporation by reference of
`arguments); see also Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12 at 9 (PTAB August 29, 2014) (Decision Denying
`Institution) (designated as informative) (“Th[e] practice of citing the
`Declaration to support conclusory statements that are not otherwise
`supported in the Petition also amounts to incorporation by reference.”).
`
`11
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`“also allows for easy separation of the wires from the trunk
`connectors, as needed for repair or replacement of parts” is
`equally unpersuasive. The only difference resulting from the
`modification is that the plug and socket connectors could be
`removed from their respective wiring assemblies. That is, it
`provides for removal of one connector by providing yet another
`connector, which fails to provide a benefit because Miller’s plug
`and socket connectors are loose, rather than fixed within the
`trunk portions like Patent Owner’s connectors.
`Paper 211, 20. We re-adopt the findings and explanation above because
`they are equally applicable here, regardless of whether the detachable
`connector comes from the teachings of Lessner or the general knowledge in
`the art evidenced by some other reference not raised in Petition II.
`For example, although Petitioner did not make the argument in
`Petition II, we note page 65 of Petition II cites paragraphs 261–267 of its
`expert report, which in turn contains this statement:
`Thus, using the detachable connectors of Lessner to
`connect the wiring assemblies and contact sets of Miller-Otto-
`Jumo would have been an obvious way to improve the ease of
`assembly and disassembly of the Miller-Otto-Jumo artificial
`tree. Further, enhancing Miller-Otto-Jumo’s connection with the
`detachable connection taught by Lessner is a substitution of one
`known element for another to obtain predictable results and a
`combination of prior art elements according to known methods
`to yield predictable results. Indeed, the use of detachable
`electrical connections in modular artificial Christmas trees was
`well known since at least 1928, as demonstrated by Harris,
`which
`teaches a modular artificial
`tree having “readily
`detachable and attachable electrical connections at the ends of
`the trunk portions . . . .” Ex. [1016], 2:109–115.
`
`12
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`Ex. 1062 ¶ 264. We do not read this paragraph as setting out a theory of
`obviousness of Miller in view of the general knowledge in the art as
`evidenced by Harris.11
`First, read in context, this paragraph is providing further evidentiary
`support for its rationale for combining Lessner. This portion of the
`declaration is offered as evidence that the Lessner modification would be
`seen as a “substitution of one known element for another” by citing to Harris
`as evidence of a (different) detachable connector known to be used in a
`Christmas tree. Id. But this portion of the declaration is not itself setting out
`a separate theory of obviousness based on modifying Miller to include the
`connector of Harris.
`Second, the cite to Harris is buried in a declaration and no Harris-
`based argument is made in the petition. Thus, even if Harris were being
`offered as evidence of general knowledge in support of modifying Miller, it
`is an improper incorporation by reference that we do not consider. 37 C.F.R.
`§ 42.6(a)(3); supra § II (pp. 10–11 n.10); 37 C.F.R. § 42.104(b)(2)
`(requiring the petition to contain “the patents or printed publications relied
`upon for each ground”).
`Third, even if we did consider this a properly presented theory of
`obviousness, it is not persuasive for the same or similar reasons the Lessner
`ground was not persuasive. Paper 211, 20. As we found in our Final
`Written Decision on Remand, and reassert now, Petitioner has not shown
`why it would have been obvious to add detachable wires to a plug as
`described in Miller. See id. The plugs detachably connect to each other to
`provide for detachable electrical connections between tree portions; it is not
`
`
`11 U.S. Patent No. 1,656,148, issued Jan. 10, 1928 (Ex. 1016).
`
`13
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`

`IPR2016-01610
`Patent 8,454,186 B2
`clear why it would be desirable also to have the wires detachable from their
`plug. Further, beyond that issue, this combination with Harris would require
`further explanation to the extent the combination was to modify Miller’s
`loose-plug style of electrical connection (allowing rotation of the trunk) to
`incorporate teachings from the fixed-plug style of Harris (interlocking the
`trunk). Compare Ex. 1007, Fig. 2 (noting the loose electrical plug on loose
`electrical wires—unlabeled but near item 4), with Ex. 1016, Fig. 4 (noting
`the electrical wires are fixed on terminals 33, 34 that are aligned within the
`interlocked trunk sections), 2:15–57 (further explanation); contra Ex. 1001,
`21:44–53 (claim 1 of the ’186 patent, requiring “at least four different
`rotational alignments”). That is, Miller’s type of plug provides features
`(e.g., rotational freedom) that Harris’s type of plug precludes.
`In summary, to the extent Petitioner has raised an obviousness ground
`based on Miller alone, but considering the general knowledge in the art, we
`do not find Petitioner to have demonstrated unpatentability by a
`preponderance of the evidence.
`Lastly, we turn to Petitioner’s discussion during our post-remand
`conference call regarding statements about the “detachably connected”
`limitation allegedly made by Patent Owner in a district court proceeding.
`See Paper 222, 3–5 (setting out Petitioner’s discussion and our instructions
`for how the case would proceed); see generally Paper 223; Exs. 1617–1619
`(Petitioner’s submissions on the issue of Patent Owner’s alleged statement
`on claim construction). For the sake of argument, let us assume Patent
`Owner’s statements were germane to, and conclusive on, the issue of
`construing the “detachably connected” limitation in a manner such that
`Miller would teach it. Even if that were the case, Petitioner has not put
`before us a theory of unpatentability based on Miller that is reliant on Miller
`
`14
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`IPR2016-01610
`Patent 8,454,186 B2
`teaching the “detachably connected” limitation. Instead, as we noted above,
`Petitioner admits that Miller does not teach each limitation. This admission
`is not premised on any condition or particular claim construction. Pet. II 19–
`22 (setting out Petitioner’s claim constructions, which do not extend to
`“detachably connected”), 68–71 (setting out Petitioner’s analysis of the
`“detachably connected” limitation with respect to Lessner).
`If Petitioner had argued that Miller taught each limitation of claim 7,
`for example under some claim construction of “detachably connected,” then
`we would evaluate that theory of unpatentability.12 Because Petitioner did
`not raise that theory, we cannot now evaluate it. SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348, 1356 (2018) (instructing that “the petitioner’s petition . . . is
`supposed to guide the life of the litigation.”), 1357 (stating “petitioner’s
`contentions . . . define the scope of the litigation all the way from institution
`through to conclusion”); see also Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330, 1336 (Fed. Cir. 2020) (holding that the Board is not limited
`by the “exact language of the petition,” but it does not “enjoy[] a license to
`depart from the petition and institute a different inter partes review of his
`own design”) (quoting SAS, 138 S. Ct. at 1356) (alteration in original)
`(emphasis omitted); Sirona Dental Sys. GmbH v. Institut Straumann AG,
`892 F.3d 1349, 1358 (Fed. Cir. 2018) (finding “no error” in Board’s decision
`“not to decide grounds of unpatentability not raised in the petition”);
`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1336 (Fed.
`
`
`12 We do not mean to imply that an explicit claim construction always must
`be made—a petitioner’s application of the claims to the prior art may
`sufficiently serve as an implicit claim construction. What is required is a
`clear indication of the specific theory of unpatentability that satisfies 37
`C.F.R. § 42.104(b).
`
`15
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`IPR2016-01610
`Patent 8,454,186 B2
`Cir. 2020) (characterizing an instituted IPR as “confined to the claims and
`grounds challenged in that petition”).
`In review, we find that Petitioner has not shown in its petitions how
`Miller teaches each limitation of claim 7 or otherwise renders the claim
`obvious. To the extent Petitioner invites us to reexamine claim 7 over
`Miller, under a new theory of unpatentability requiring a new construction of
`the “detachably connected” limitation of claim 7 and finding Miller to teach
`that limitation, we decline.
`
`III. CONCLUSION13
`
`Petitioner has not shown by a preponderance of the evidence in its
`petitions that Miller renders obvious the subject matter of claim 7. The
`following table summarizes our decision in this remand:
`Claims
`Shown
`Unpatentable
`
`
`Claims Not
`Shown
`Unpatentable
`7
`
`Claim(s) 35 U.S.C. § Reference(s)/
`Basis
`Miller
`
`103
`
`7
`
`
`
`The following tables summarize the net state of each challenged claim
`and each proposed substitute claim as of the entry of this decision, with a
`
`
`13 Should Patent Owner wish to pursue amendment of the challenged claims
`in a reissue or reexamination proceeding subsequent to the issuance of this
`decision, we draw Patent Owner’s attention to the April 2019 Notice
`Regarding Options for Amendments by Patent Owner Through Reissue or
`Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
`16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
`or a request for reexamination of the challenged patent, we remind Patent
`Owner of its continuing obligation to notify the Board of any such related
`matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
`
`
`16
`
`

`

`Claims
`Shown
`Unpatentable
`
`10, 11, 16, 18–
`22, 25, 26, 28
`
`Claims Not
`Shown
`Unpatentable
`15
`
`
`103
`
`Claim(s)
`
`1514
`10, 11, 16,
`18–22, 25,
`26, 2815
`1, 3, 4, 6,
`8, 916
`7
`1717
`Overall
`Outcome
`
`IPR2016-01610
`Patent 8,454,186 B2
`footnote explaining where the relevant decision(s) can be found. We list the
`same Miller-alone ground in three rows, grouped by the decision(s) in which
`the final outcome of those claims is found.
`35
`Reference(s)/
`U.S.C.
`Basis
`§
`103 Miller, Otto, Jumo
`Miller
`
`103
`
`103
`103
`
`
`
`Miller
`
`1, 3, 4, 6, 8, 9
`
`
`
`Miller
`Miller, Yang
`
`
`
`
`1, 3, 4, 6, 8–
`11, 16, 18–22,
`
`7
`17
`7, 15, 17
`
`
`14 We held that Petitioner had not shown claim 15 to be unpatentable in our
`original Final Written Decision. Paper 187, 61. That holding was affirmed
`in Polygroup I at 943 n.4.
`15 In Polygroup II, the Federal Circuit majority reversed our holding that
`these claims were not shown patentable. Polygroup II at *1; cf. Paper 211,
`21–24.
`16 In Polygroup II, the Federal Circuit noted our decision holding that these
`claims were unpatentable was not appealed and thus final. Polygroup II at
`*2 n.1; Paper 211, 10–19, 21.
`17 We held claim 17 not to be shown unpatentable in our Final Written
`Decision on Remand. Paper 211, 24, 38. This claim was not appealed in
`Polygroup II. Polygroup II at *1 (“[Petitioner] appeals from the final
`written decision . . . upholding the patentability of claims 7, 10, 11, 16, 18–
`22, 25, 26, and 28 of U.S. Patent No. 8,454,186.”); id. at *5 (holding that
`“claims 11, 16, 18, 19, 21, 22, 25, and 26 of the ’186 patent . . . are
`unpatentable”); but see id. at *3 (“[PTAB] also concluded that [Petitioner]
`had failed to establish the unpatentability of claims 11, 16–19, 21, 22, 25,
`and 26 of the ’186 patent.”).
`
`
`17
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`
`25, 26, 28
`
`Motion to Amend Outcome18
`Substitute Claims Proposed in the Amendment
`Substitute Claims: Motion to Amend Granted
`Substitute Claims: Not Reached
`
`Claim(s)
`29–36
`29, 30
`31–36
`
`
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, on remand, Petitioner has not established by a
`preponderance of the evidence that claim 7 of the ’186 patent is
`unpatentable; and
`FURTHER ORDERED that, because this is a Final Written Decision
`on Remand, parties to this proceeding seeking judicial review of the decision
`must comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`
`
`
`
`
`
`
`18 The Motion to Amend is addressed in our Final Written Decision on
`Remand. Paper 211, 26–37. It was not discussed in Polygroup II and the
`parties did not raise the issue of revisiting it on remand. Paper 222, 2–3
`(conduct of proceeding order on remand).
`
`18
`
`

`

`IPR2016-01610
`Patent 8,454,186 B2
`
`
`FOR PETITIONER:
`
`Christopher J. Forstner
`Ryan Schneider
`Alexis Simpson
`Robert Angle
`Dabney J.Carr, IV
`Haden Marrs
`TROUTMAN PEPPER HAMILTON SANDERS LLP
`chris.forstner@troutmansanders.com
`ryan.schneider@troutmansanders.com
`alexis.simpson@troutmansanders.com
`Robert.angle@troutmansanders.com
`Dabney.carr@troutmansanders.com
`haden.marrs@troutman.com
`
`
`FOR PATENT OWNER:
`
`Emily E. Niles
`Cyrus A. Mort