Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 118
`Entered: February 26, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED,
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`_______________
`
`Case IPR2016-01613
`Patent 9,044,056 B21
`_______________
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge, for the Board,
`PLENZLER, Administrative Patent Judge, dissenting.
`
`
`
`FINAL WRITTEN DECISION
`Finding No Claims Unpatentable
`Granting Motion to Amend In Part, Dismissing as Moot In Part
`Denying Patent Owner’s Motion to Exclude
`
`
`
`
`1 The grounds raised in IPR2016-00803 are consolidated with IPR2016-
`01613.
`
`
`Tel: 571-272-7822
`
`Paper 118
`Entered: February 26, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED,
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`_______________
`
`Case IPR2016-01613
`Patent 9,044,056 B21
`_______________
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge, for the Board,
`PLENZLER, Administrative Patent Judge, dissenting.
`
`
`
`FINAL WRITTEN DECISION
`Finding No Claims Unpatentable
`Granting Motion to Amend In Part, Dismissing as Moot In Part
`Denying Patent Owner’s Motion to Exclude
`
`
`
`
`1 The grounds raised in IPR2016-00803 are consolidated with IPR2016-
`01613.
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`SAINDON, Administrative Patent Judge, for the Board:
`
`INTRODUCTION
`I.
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73.
`As was explained in further detail in Paper 13, this proceeding is a
`consolidation of Petitioner’s challenges in two petitions of claims 1, 2, 4, 5,
`11, 13, and 16–19 of U.S. Patent No. 9,011,056 B2 (Ex. 1001, “the ’056
`patent”).2 We instituted an inter partes review on all challenged claims on
`all challenged grounds (Paper 33, “Dec. on Inst.”). During trial, Patent
`Owner filed a Response (Paper 52, “PO Resp.”) and Petitioner filed a Reply
`(Paper 70, “Pet. Reply”). An oral hearing was held (Paper 113, “Tr.”).
`Patent Owner canceled claim 1 by non-conditionally moving to
`amend that claim with proposed substitute claim 21. Paper 117; Paper 88
`(Patent Owner’s Motion to Amend, “Mot.”). Reviewing the arguments and
`evidence before us, we determine that Petitioner has not established by a
`preponderance of the evidence that claims 2, 4, 5, 11, 13, and 16–19 of the
`’056 patent are unpatentable. We grant Patent Owner’s Motion to Amend,
`with proposed substitute claim 21 being entered in favor of original claim 1.
`The remainder of Patent Owner’s motion to amend, which is contingent, is
`dismissed as moot.
`
`
`2 As used herein, “Petition I” or “Pet. I” refers to the petition originally filed
`in IPR2016-00802, now Paper 25. “Petition II” or “Pet. II” refers to the
`petition originally filed in IPR2016-01613, Paper 2.
`
` 2
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`
`A. Related Matters
`Both parties have asserted patents and have filed petitions against the
`other party. The ’056 patent has been asserted against Petitioner in Willis
`Elec. Co. v. Polygroup Ltd., No. 0:15-cv-03443-WMW-KMM (D. Minn.,
`filed Aug. 28, 2015). Paper 2, 71; Paper 4. Petitioner previously filed a
`petition (Pet. II) challenging certain independent claims of the ’056 patent in
`IPR2016-00802 (Pet. II 71–72), which was granted (Pet. II 71–72; Paper 4);
`the challenges raised in that proceeding are a part of this proceeding, per
`agreement of the parties. See Paper 12 (requesting merger of challenges to
`’056 patent); Paper 13 (granting request).
`Petitioner has filed other petitions challenging Patent Owner’s patents
`containing similar subject matter and which were also asserted against
`Petitioner. U.S. Patent No. 8,454,186 (“the ’186 patent”) is challenged in
`IPR2016-00800, IPR2016-01609, and IPR2016-01610. Paper 4. U.S.
`Patent No. 8,454,187 is challenged in IPR2016-00801, IPR2016-01611, and
`IPR2016-01612. Id. U.S. Patent No. 8,936,379 is challenged in IPR2016-
`01615, IPR2016-01616, and IPR2016-01617. Id. U.S. Patent No. 9,066,617
`is challenged in IPR2016-01783. Id. U.S. Patent No. 8,974,072 is
`challenged in IPR2016-01781 and IPR2016-01782. Id.
`Petitioner has asserted patents against Patent Owner in Polygroup
`Macau Ltd (BVI) v. Willis Electric Co., Ltd., No. 3:15-cv-00552 (W.D.N.C.).
`Id.
`
`Patent Owner has filed petitions challenging U.S. Patent Nos.
`8,863,416, 6,794,825, 9,119,495, and 8,959,810, owned by Petitioner, in
`IPR2017-00309, IPR2017-00330, IPR2017-00331, IPR2017-00334, and
`IPR2017-00335.
`
` 3
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`
`B. The ’056 Patent
`The ’056 patent is directed to a modular artificial tree (e.g., a
`
`Christmas tree) with electrical connectors. Ex. 1001, (54). 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, 3. Physically
`connecting the trunk sections during assembly of the tree also electrically
`connects the trunk sections. Id. at (57), Fig. 3.
`
`C. Challenged Claims
`Petitioner challenges claims 1, 2, 4, 5, 11, 13, and 16–19 of the ’056
`patent. Claim 1 is reproduced below.
`A lighted artificial tree, comprising:
`
`a first tree portion aligned along a central vertical axis, the
`first tree portion including:
`
`
`
`a first trunk body having a first end, a second end,
`
`a first electrical connector positioned in the second end
`
`of the first trunk body and including a first electrical
`
`terminal positioned in line with the central vertical axis,
`
`and a second electrical terminal; and
`
`a second tree portion aligned with the central vertical axis, the
`second tree portion including;
`
`
`
`
`
`a second trunk body including a first end and a second
`end, the first end configured to couple with the second
`end of the first trunk body of the first tree portion;
`
`a second electrical connector positioned in the first end of
`
`the second trunk body and including a first electrical terminal
`and a second electrical terminal, the second electrical terminal
`defining a ring shape that encircles the first electrical
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`terminal, the second electrical connector configured to couple
`with the first electrical connector of the first trunk body;
`
`
`
`
`a light string electrically connected to the first and the second
`electrical terminals of the second electrical connector,
`
`
` wherein upon the first tree portion being coupled to the
`second tree portion along the central vertical axis, the first
`electrical connector is coupled to the second electrical
`connector, such that the first electrical terminal of the first
`electrical connector is electrically connected to the first
`electrical terminal of the second electrical connector, and the
`second electrical terminal of the first electrical connector is
`electrically connected to the second electrical terminal of the
`second electrical connector.
`
`
`
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 2, 4, 5, 11, 13, and 16–19 of the ’056
`patent are unpatentable under 35 U.S.C. § 103 on the following grounds:
`References
`Claim(s) Challenged Petition3
`Miller,4 Otto,5 and Jumo6
`1
`I
`Hicks,7 Otto, and McLeish8 1 and 5
`I
`
`
`3 See supra n.2 for cross references to petition number and paper number.
`4 U.S. Patent No. 4,020,201, issued Apr. 26, 1977 (Ex. 1006).
`5 German Utility Model Patent G 84 36 328.2, published Apr. 4, 1985
`(translated copy) (Ex. 1008).
`6 French Patent No. 1,215,214, issued Nov. 16, 1959 (translated copy) (Ex.
`1009). The inventor is not listed on the face of the patent and instead lists
`Société Nouvelle des Établissements Jumo.
`7 U.S. Pat. App. Pub. No. US 2007/0230174 A1, published Oct. 4, 2007,
`(Ex. 1007).
`8 U.S. Patent No. 7,066,739 B2, issued June 27, 2006 (Ex. 1010).
`
` 5
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`Claim(s) Challenged Petition3
`References
`11
`I
`Miller and Seghers9
`2 and 4
`II
`Miller, Otto, and Jumo
`13, 16, and 17
`II
`Miller and Seghers
`18 and 19
`II
`Miller and Loomis10
`Petitioner also relies on the declaration of Mike Wood (Ex. 1005),
`who testifies he is an expert in electrical engineering as it relates to lighting
`manufacturing and design (id. ¶ 12). See also Ex. 1049 (Wood declaration
`in Petition I).
`
`II. PENDING INTERLOCUTORY MOTIONS
`A. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude Exhibits 1100 (Declaration of Wood),
`1101,11 1212 (Declaration of Chen), and portions of 1106 (Deposition of
`Chen). We have reviewed Patent Owner’s motion (Paper 80), Petitioner’s
`opposition (Paper 82), and Patent Owner’s reply (Paper 85). As to the
`testimony of Petitioner’s expert, Mr. Wood, we decline to exclude that
`evidence and instead give the evidence more or less persuasive value
`depending on the context of the testimony, the degree to which the testimony
`is supported by reasoning, fact, and the declarant’s expertise. As to the
`testimony of the inventor, Mr. Chen, we likewise afford the evidence the
`weight it is due given the context of its use. We acknowledge Patent
`Owner’s point about Mr. Chen not being a patent expert or a native English
`
`
`9 U.S. Patent No. 1,974,472, issued Sept. 25, 1934 (Ex. 1011).
`10 U.S. Patent No. 8,053,042 B1, issued Nov. 8, 2011 (Ex. 1027).
`11 This document was expunged per request of the parties. See Paper 91
`(joint motion to expunge certain papers), Paper 95 (granting the motion).
`
` 6
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`speaker. Paper 80, 8. We may account for this by giving appropriate weight
`to the evidence. There is no jury, and we see little reason to exclude
`evidence on the basis of potential prejudice. In sum, Patent Owner’s motion
`to exclude is denied.
`
`B. Motion for Observation
`Patent Owner submitted a Motion for Observations on Cross-
`Examination of Petitioner’s Reply Declarants. Paper 78. Petitioner offers
`its response. Paper 83. We have reviewed these papers.
`
`III. PATENTABILITY ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b). Under that standard, a claim term generally is given its
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although our claim
`interpretation cannot be divorced from the specification, see Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), we must be careful not to
`import limitations from the specification that are not part of the claim
`language, see SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004). Any special definition for a claim term must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
` 7
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`
` “Tree Portion”
`(Independent Claims 1, 5, 11, 18)
`Patent Owner raised the issue of the construction of “tree portion” in
`its Response. PO Resp. 29–31. Patent Owner proposes a “tree portion”
`means “a mechanically and electrically connectable modular and unitary
`portion of an artificial tree.” Id. at 29–30 (citing Ex. 2048 ¶¶ 13–15, 21–26;
`Ex. 2049 ¶¶ 62–66) (emphasis removed). Petitioner replies that it should
`mean “a part of a tree.” Pet. Reply 19–20 (citing Ex. 1100 ¶ 30; Ex. 1137,
`3). We have considered these positions and the evidence cited in support of
`them.
`
`Claims 1, 5, 11, and 18 are directed to a “lighted artificial tree” having
`one or more tree portions. Each claim includes a tree portion that is recited
`as having a trunk, electrical connector, and light string. Patent Owner’s
`claim construction would cause “tree portion” to serve as defining a
`structural relationship between those things described in the claim as
`constituting the tree portion; effectively that the subcomponents must be
`structurally located and connected in a way so as to make the “tree portion,”
`i.e., their sum, an identifiable assembly that functions as a module, or unitary
`portion, of the tree. Petitioner’s construction would give no patentable
`weight to the term, other than perhaps its use as a label to refer to the
`subcomponents as a group. Our position and reasoning for supporting
`Patent Owner’s proposed construction of “tree portion” is set forth in greater
`detail in our Final Written Decision in IPR2016-01610 addressing the ’186
`patent, which involves effectively the same specification and evidence, and
`which we incorporate herein. See also Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise
`
` 8
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`compelled, that the same claim term in the same patent or related patents
`carries the same construed meaning.”). There is a slight difference in the
`claims in this proceeding, however, that requires additional discussion but
`otherwise does not change the net result.
`The distinction between the claims in this proceeding and those in
`IPR2016-01610 is that the claims in IPR2016-01610 explicitly require the
`tree portion to include a trunk, lights, and branches. Of those structures, the
`claims in this proceeding omit an explicit recitation of branches (choosing
`instead to focus on the electrical connections inside the trunk). We review
`the specification of the ’056 patent to determine how a person of ordinary
`skill in the art would construe “tree portion” in these claims.
`The ’056 patent makes clear that it is directed to a modular tree
`having tree portions. Ex. 1001, (54), 1:13–15. Those tree portions are
`modules that each comprise a trunk, multiple branches, and one or more
`light strings. Id. at 5:40–42; 6:39–42.12 Similarly, the ’056 patent defines
`the tree portion module in terms of a set of trunk, branches, and lights that
`are connected to one or more sets of trunk, branches, and lights. Id. at 8:22–
`28; 12:48–51, 15:4–7; 16:61–64. Although the claims omit an explicit
`recitation of the branches, ultimately a tree portion having lights must have
`branches for those lights to reside. We find no disclosure in the
`specification where lights are not on branches in a tree portion of a lighted
`
`
`12 The specification provides an alternative embodiment for unlit trees,
`where no lights are provided in the modules. Ex. 1001, 5:17–20. However,
`the claims in the ’056 patent are all directed to “lighted” trees, and claim
`lights, excluding that alternative embodiment. Id. at 19:2, 19:49, 20:41,
`21:26.
`
` 9
`
`
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`tree, nor does it make sense to have a lighted artificial tree without branches.
`Thus, we determine that a person of ordinary skill in the art would consider
`“tree portion” in this proceeding to mean “a mechanically and electrically
`connectable modular and unitary portion of an artificial tree” and to require
`that tree portion to include a trunk, lights, and branches. Ex. 2049 ¶ 65.
`
` Other Claim Terms
`No remaining terms require construction for purposes of this decision.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only those terms that are in controversy need to be construed, and
`only to the extent necessary to resolve the controversy).
`
`B. Person of ordinary skill in the art
`Petitioner proposes that a person of ordinary skill in the art had:
`(1) a degree in electrical engineering or an equivalent degree; (2)
`a minimum of one or two years of experience in electrical
`engineering or electronics, specifically lighting manufacturing
`and/or design; and (3) general knowledge of engineering that
`would include understanding of lighting design, construction,
`functions, attributes and processes used to implement such
`products.
`Pet. II 14–15 (citing Ex. 1005 ¶¶ 15–20) accord Pet. I 12 (citing Ex. 1049
`¶¶ 15–20). Patent Owner offers the following description:
`A person having ordinary skill in the art during the relevant time
`period would have been either (1) a person with at least a
`bachelor’s degree in mechanical engineering or electrical
`engineering and at least one to two years of experience in the
`development of mechanical and electrical products, or (2) a
`person with at least one to two years of experience in product
`development, design, or manufacturing of lighted artificial trees.
`PO Resp. 25 (citing Ex. 2048 ¶ 7; Ex. 2049 ¶ 14).
`
`
`10
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`We also consider the level of skill implied by the disclosures of the
`prior art references. Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir.
`2001) (the prior art itself can reflect the appropriate level of skill in the art).
`After reviewing the parties’ proposed definitions, we find Petitioner’s
`to be the more appropriate, with one caveat discussed later. Petitioner’s
`proposed level of skill would allow that person to understand the prior art in
`this proceeding and make and/or use it. On the other hand, Patent Owner’s
`proposed level of skill is too low, and includes persons not involved in the
`design or creation of the product, such as a person tangentially involved with
`the product in the manufacturing phase—people who would not know how
`to make and/or use the relevant art. We agree with Petitioner, arguing in its
`Reply, that a person of ordinary skill in the art requires the technical skills
`and knowledge to be able to understand, e.g., the electrical connections
`involved in the artificial trees. Pet. Reply 4–8. As to Patent Owner’s
`argument that Petitioner’s person of ordinary skill has an engineering degree
`and two year’s practical experience is unduly high (PO Resp. 26–27), we
`note that the person of ordinary skill is a hypothetical person, and that less
`education can be offset by more experience—in other words, we do not
`interpret Petitioner’s list as having a strict requirement for an engineering
`degree, but rather set forth the idea that a person of ordinary skill in the art is
`typified by someone with the knowledge relevant to this field had by a
`person with an engineering degree.
`We do not outright adopt Petitioner’s proposed definition, however,
`because it is broadly directed to “lighting design.” Although we are
`persuaded that a person of ordinary skill in the art would have broader
`knowledge outside of lighted artificial trees, we are not persuaded that a
`
`
`11
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`person who spends her time on any given form of “lighting design,” e.g.
`stadium lighting, has ordinary skill in the claimed subject matter dealing
`with artificial trees. Granted, with her knowledge and skills, she would
`likely readily become such a person with exposure, but she would need some
`time to become familiar with the particularities of the design of lighted
`artificial trees. See, e.g., Pet. Reply 4–5 (highlighting a need for
`consideration of safety standards for consumer products); Ex. 1100 ¶ 9
`(same). Accordingly, we adopt Petitioner’s level of skill with the
`modification that the person of ordinary skill in the art have: “(2) a
`minimum of one or two years of experience in electrical engineering or
`electronics, specifically lighting lighted artificial tree manufacturing and/or
`design.” This reflects the reality that a person of ordinary skill in the art
`would at least have exposure to working with lighted artificial trees at a
`technical level.
`
`C. Miller, Otto, and Jumo Ground
`(Claims 2 and 4)
` Petitioner’s Ground
`This ground is similar to the ground we discussed in the related
`proceeding decided concurrently herewith, IPR2016-01610. Claim 1, from
`which claims 2 and 4 depend, requires the traditional components of an
`artificial tree (trunk sections, branches) with an electrical power source
`running inside the trunk of the tree and with the connections of the trunk
`sections providing both a mechanical and an electrical connection.
`Petitioner asserts that the subject matter of claim 1 would have been obvious
`to a person of ordinary skill in the art. Pet. I 17–31. At a high level,
`Petitioner asserts that Miller describes most of the elements of claim 1 with
`
`12
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`the exception of the recited mechanical/electrical connection between the
`tree trunk elements required by the claim. See, e.g., id. at 18. Petitioner
`provides the following annotated version of Figure 2 of Miller showing each
`claim element it asserts is described in Miller:
`
`Petitioner’s annotated version of Miller’s Figure 2 depicts an artificial
`tree with first and second light strings, trunk bodies, and tree portions. The
`electrical connector between tree portions is a loose, plug-and-socket
`connection housed within the hollow trunk bodies. See Ex. 1006, 2:19–68
`(describing a “main double conductor wire 22 extending lengthwise of
`trunk”).
`Petitioner asserts that Otto, also describing an artificial tree, explains
`the benefit of having trunk sections connect both electrically and
`mechanically at the same time (rather than in sequence as apparently would
`
`
`13
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`be done in Miller). Pet. I 22 (citing Ex. 1008, 18:6–2913, Ex. 1005 ¶¶ 119–
`123, 141–42). Otto’s Figure 2 is reproduced below:
`
`
`
`Figure 2 of Otto is a perspective view of a branch having a plug being
`connected into a socket on a trunk portion. Otto describes how trunk and
`branch components electrically and mechanically connect using coaxial
`connections, which makes it “easy to put the connecting areas together, and
`the branches and trunk elements may be rotated relative to one another even
`in the assembled state, so that any desired configuration of the Christmas
`tree is achieved.” Ex. 1008, 18:23–27.
`Petitioner also asserts that a person of ordinary skill in the art would
`have been aware of a connector as shown in Jumo, which is directed to
`configurable coaxial power connections between tube-like arm segments,
`e.g., as in a desk lamp. See Pet. I 20–21; Ex. 1009, Fig. 4.
`
`
`13 Petitioner’s citations to Otto are to the page numbers stamped on the
`Exhibit and to the line numbers shown thereon. We follow this convention.
`We note that the line numbers do not line up very well and that our citations
`are to the approximately closest line number drawn on the left and not based
`on counting actual line numbers.
`
`
`14
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`
`Figure 4 of Jumo depicts an example use of the connectors in a desk
`
`lamp.
`
`An excerpt of Figure 1 of Jumo is reproduced below, showing
`additional details of the connectors inside the tubes:
`
`
`
`Figure 1 of Jumo depicts a cross section view of a coaxial tube
`connector.
`
`
`15
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`Jumo explains that connections made between flexible or metal wiring
`components in jointed support arms can become strain-hardened or
`damaged, and proposes a particular set of tubes with coaxial power
`connections that also have slots to fix rotational movement between the
`connected portions. Ex. 1009, 4:18–25. Jumo discloses that these tubes can
`be straight or curved, “and [are connected] up to a user device that can be of
`absolutely any type whatsoever.” Id. at 5:20.
`Petitioner asserts that it would have been obvious to a person of
`ordinary skill in the art to replace the conventional plug-and-socket electrical
`connectors with the coaxial connectors of Jumo, for the reasons suggested in
`Otto and Jumo. Pet. I 22–23. According to Petitioner, Otto describes why it
`would have been obvious to have an electrical/mechanical connection in
`artificial Christmas trees, to allow multiple rotational connections and for the
`ease of making the electrical/mechanical connection at the same time. Id.
`(citing Ex. 1008, 18:6–29; Ex. 1005 ¶¶ 119–123, 141–142). Petitioner also
`asserts that Jumo describes why a person of ordinary skill in the art would
`choose the particular coaxial power connections in Jumo, to avoid the
`drawbacks of flexible wiring and rubbing contacts. Id. at 22–23 (citing Ex.
`1009 4:8–9; Ex. 1005 ¶¶ 124–127). Petitioner characterizes the combination
`as “a substitution of one known element for another to obtain predictable
`results and a combination of elements according to known methods to yield
`predictable results.” Id. at 23 (citing KSR Intern. Co. v. Teleflex Inc., 550
`U.S. 398, 415–416, 421 (2007); Ex. 1005, ¶¶ 137–180).
`
`
`16
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`
` Patent Owner’s Arguments
`As to the Miller-Otto-Jumo ground, Patent Owner states the
`following:
`PO disagrees with the stated Grounds with respect to Claim 1 and
`dependents, which also fail to meet Petitioner’s burden.
`However, PO makes no argument with respect to Claim 1 and
`dependents and refers the Panel and Petitioner to its Motion to
`Amend that claim.
`PO Resp. 2, n.1.
`Patent Owner has requested we cancel claim 1 and consider its motion
`to amend that claim non-contingent. Paper 117. Accordingly, that leaves
`claims 2 and 4. Despite Patent Owner’s silence on these claims, absent a
`request for adverse judgment, Petitioner bears the burden of establishing by
`a preponderance of the evidence its ground of unpatentability. 35 U.S.C.
`§§ 318(a), 316(e).
`
` Analysis of the Miller-Otto-Jumo Ground
`a. Tree Portion
`Although canceled, we focus our attention on independent claim 1,
`from which remaining claims 2 and 4 depend. Petitioner relies on Miller to
`teach the claimed tree portions. Pet. I 32, 35. We do not find Miller to
`describe a tree portion as claimed. Our analysis here is similar to that of
`claim 1 of the ’186 patent, addressed in IPR2016-01610.
`In particular, Petitioner has not provided sufficient evidence that the
`proposed combination of Miller, Otto, and Jumo satisfy this claim limitation,
`because Petitioner has not addressed how the trunk and branches have a
`modular or unitary relationship within a given purported tree section.
`Instead, we credit the testimony of Patent Owner’s expert, Dr. Brown, that
`
`17
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`the branches in Miller are separate from the trunk and not a part of a module
`or unit consisting of trunk, branches, and lights are required by these claims.
`Ex. 1006, Fig. 2 (noting the branches fit in the apertures 7), 2:3–8; Ex. 2049
`¶¶ 85–86. The claims require the “standard pattern,” or module, is the trunk-
`branch-light unit, whereas in Miller, the branches are not part of the same
`“standard pattern” with the trunk but rather independent. Ex. 1006, Fig. 2;
`Ex. 1134, 3. The same goes for the lights, which we find likewise are not as
`a unit with the trunk, because they hang on branches that are separately
`assembled and, thus, they are independent of the trunk sections of Miller-
`Otto-Jumo. Ex. 1007, Fig. 2; Ex. 2049 ¶¶ 91–92. Because claim 1, requires
`the level of modularity to be the combination of trunk (with electrical
`connectors), branches, and lights, the Miller-Otto-Jumo combination does
`not recite a “tree portion” as claimed.
`Petitioner does not point to a teaching in another reference to cure this
`deficiency. Accordingly, we find that Petitioner has not established, by a
`preponderance of the evidence that claims 2 and 4 are unpatentable over the
`proposed combination of Miller, Otto, and Jumo.
`b. Rationale
`The rationale and evidence here are similar to that in Petitioner’s
`ground addressing claim 1 of the ’186 patent in IPR2016-01610 as
`unpatentable over Miller, Otto, and Jumo. We incorporate our analysis in
`that Final Written Decision here as our explanation of why Petitioner has not
`shown, by a preponderance of the evidence, that the subject matter of claims
`2 and 4 are unpatentable. Namely, Petitioner has not provided sufficient
`evidence or explanation in support of its positions that Jumo is analogous art
`
`
`18
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`or that there would have been a reason with rational underpinning to modify
`Miller’s electrical connectors with Jumo’s.
`
`D. Hicks, Otto, and McLeish Ground
`(Claim 5)
` Petitioner’s Ground
`Petitioner asserts that the subject matter of claim 5 would have been
`obvious to a person of ordinary skill in the art. Pet. I 31–48. As with Miller
`in the Miller-Otto-Jumo ground, Petitioner asserts that Hicks describes each
`element of the claim except for the details of the electrical connector
`between trunk sections. Id. at 31–32. Unlike Miller, however, Hicks shows
`that the trunk connections are both mechanical and electrical, as Petitioner
`indicates in the annotated figures below:
`
`Petitioner’s annotated Figures 2 and 4 of Hicks identify where the first
`and second tree portions and trunk bodies can be found on Hicks’s artificial
`
`
`19
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`tree. Pet. I 32. Notably, and as shown in greater detail in Figure 4, the trunk
`connectors include an electrical connector that is of a typical 3-prong type.
`Petitioner asserts that Otto describes an electrical/mechanical trunk
`connection using a coaxial plug-and-ring arrangement. See id. at 35–36.
`Similar to Jumo, Petitioner asserts that McLeish describes in detail an
`electrical connector that allows for connections with arbitrary rotational
`alignment. See id. at 36. McLeish is an electrical connector “particularly
`suited for use in out of reach locations, for example to easily and safely
`replace light bulbs into sockets suspended from a ceiling.” Ex. 1010,
`Abstract; see also id. Fig. 8. Petitioner’s annotated version of Figures 4a–4d
`of McLeish is reproduced below:
`
`
`
`20
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
`
`Figures 4a–4d of McLeish depict multiple views of the McLeish
`coaxial connector, including views of the male and female connector ends, a
`cross section view, and a perspective view with the internal electrical
`components depicted in ghost form. Petitioner characterizes the
`combination as “combining prior art elements with each performing the
`same function it had been known to perform to yield what one would expect
`from such an arrangement.” Pet. I 37.
`
` Patent Owner’s Arguments
`Patent Owner argues, inter alia, that Hicks does not disclose a tree
`portion (PO Resp. 41–43), and that Petitioner has not provided sufficient
`rationale to combine (id. at 36–41).
`
`
`21
`
`
`
`
`
`Case IPR2016-01613
`Patent 9,044,056 B2
` Analysis of the Hicks-Otto-McLeish Ground
`a. Tree Portion
`Petitioner relies on Hicks (Ex. 1007) to teach the claimed second tree
`portion (Pet. I 40 (citing Ex. 1007, Fig. 2, item 40)), but we do not find
`Hicks to disclose the claimed second tree portion. In Hicks, the branches
`and lights are one module, whereas the trunk sections are another module.
`Ex. 1007 ¶¶ 21 (“string of lights 34 about each branch 18 is therefore
`independent of other branches 18 and lights on the tree 10”), 22 (“The center
`pole 12 may comprise one continuous section or multiple sections in the
`construction thereof”). The branch/light module in Hicks is not a sub-
`module of the trunk module but rather wholly independent from the trunk
`module, as demonstrated by the fact that a user interfaces with the trunks
`and branches separately. Compare id., Fig. 1 (prior art light string
`attachment) with Fig. 3 (Hicks’s light string attachment when attaching a
`branch). Indeed, the fact that the branch/light module is independent from
`the trunk, and not part of a tree section comprising a trunk, branches, and
`lights, is the touted benefit of the Hicks invention. Ex. 1007 ¶¶ 11 (“The
`string of lights on each branch is independent from any string of lights on
`other branches; therefore, a failure of one string of lights on one branch does
`not affect any other string of lights on the tree.”), 20 (“The difficulties
`encountered in the prior art include isolating branches, individually
`wrapping isolated branches with strings of electrical lights, isolating a string
`of electrical lights that has failed once failure becomes apparent, and the
`effect of failed strings of lights on other strings.”). Accordingly, Hicks does
`not disclose a second tree portion as claimed, which requires the module to
`be a trunk/branch/light module, because Hicks specif
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
