Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No. 8
`Entered: February 13, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EVERSTAR MERCHANDISE CO. LTD.,
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC CO. LTD.,
`Patent Owner.
`
`____________
`
`Case PGR2019-00055
`Patent 10,119,664 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, STACEY G. WHITE, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper No. 8
`Entered: February 13, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EVERSTAR MERCHANDISE CO. LTD.,
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC CO. LTD.,
`Patent Owner.
`
`____________
`
`Case PGR2019-00055
`Patent 10,119,664 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, STACEY G. WHITE, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`
`
`PGR2019-00055
`Patent 10,119,664 B2
`
`
`I. INTRODUCTION
`
`A. Overview
`Everstar Merchandise Co. Ltd. (“Petitioner”) filed a Petition
`requesting post-grant review of claims 1–10 (the “challenged claims”) of
`U.S. Patent No. 10,119,664 B2 (Ex. 1101, “the ’664 patent”). Paper 1
`(“Pet.”). Willis Electric Co. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute a post-grant
`review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute
`a post-grant review unless “the information presented in the petition . . . , if
`such information is not rebutted, would demonstrate that it is more likely
`than not that at least 1 of the claims challenged in the petition is
`unpatentable.” 35 U.S.C. § 324(a).
`Petitioner, supported by the declaration of Stephen D. Fantone, Ph.D.,
`(Ex. 1009), contends that claims 1–10 of the ’664 patent are unpatentable on
`the following grounds. Pet. 6.
`Reference(s)/Basis
`Sylvania, 1 Gao, 2 optionally
`UL 2002 Standards3
`
`Claims Challenged
`1, 2, 5–10
`
`35 U.S.C. §
`103(a)
`
`
`1 Commercial sale of Sylvania Net Light Set (Ex. 1007, “Sylvania”),
`purchased on September 9, 2008.
`2 CN 203910314 (Ex. 1003, “Gao”). The exhibit includes both the Chinese
`patent and certified translation. Unless otherwise indicated all references to
`Gao will be to the certified translation.
`3 Underwriters Laboratories Standard for Safety for Seasonal and Holiday
`Decorative Products, UL 588, 18th Ed., Feb. 15, 2002 (Ex. 1008, “UL 2002
`Standards”).
`
`2
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`PGR2019-00055
`Patent 10,119,664 B2
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`
`Reference(s)/Basis
`Kumada4, Gao, Lin, 5
`optionally UL 2002 Standards
`Won6, Gao, Kumada,
`optionally UL 2002 Standards
`
`35 U.S.C. §
`103(a)
`
`Claims Challenged
`1–10
`
`103(a)
`
`1–10
`
`
`
`Upon considering the evidence and arguments presented, we
`determine, as discussed below, that Petitioner has not demonstrated that it is
`more likely than not that at least one of the claims challenged in the Petition
`is unpatentable. Therefore, we deny Petitioner’s request to institute post-
`grant review of claims 1–10.
` Related Proceedings
`B.
`Patent Owner advises us that Petitioner has filed a PGR petition (PGR
`2019-00056) against U.S. Patent No. 10,222,037, an IPR petition (IPR2019-
`01484) against U.S. Patent No. 9,671,097, and an IPR petition (IPR2019-
`01485) against U.S. Patent No. 9,157,588, all of which are owned by Patent
`Owner. Paper 4, 2.
` The ’664 Patent
`C.
`The ’664 Patent, titled “Tangle-Resistant Decorative Lighting
`Assembly,” issued November 6, 2018. Ex. 1001, codes (45), (54). The ’664
`Patent describes “decorative lighting assemblies, including net lights and
`icicle lights[] that are less prone to tangling than traditional decorative
`lighting assemblies.” Id. at 1:44–47. Figure 4 of the ’664 patent is
`reproduced below.
`
`
`4 U.S. Pat. No. 6,367,951 (Ex. 1006, “Kumada”).
`5 Canadian Pat. App. Pub. No. CA2238113 (Ex. 1004, “Lin”).
`6 U.S. Pat. No. 6,217,193 (Ex. 1005, “Won”).
`
`3
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`PGR2019-00055
`Patent 10,119,664 B2
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`Figure 4 depicts an embodiment of the ’664 patent’s decorative lighting
`assembly. Id. at 2:53–55. Lighting assembly 100 has power wires 104 and
`102 and a plurality of lamp assemblies 108 distributed across display area
`106. Id. at 7:28–35. The plurality of lamp assemblies are interconnected by
`intermediate wires 130 to form electrical circuits. Id. at 7:41–43. In
`addition, the lamp assemblies are mechanically coupled by cords 136, which
`provide mechanical support for the assembly. Id. at 7:43–45. “[T]he wires
`and the cords cooperate to form a net-like structure.” Id. at 7:47–48. In
`some embodiments, “the intermediate wires comprise 22 AWG reinforced
`wire.” Id. at 8:45–46. Further, “intermediate wires 130, first power wire
`102 and second power wire 104 may comprise a reinforced wire such as the
`reinforced wire described in published U.S. Patent Application
`US20150167944.” Id. at 6:16–20.
`
`4
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`PGR2019-00055
`Patent 10,119,664 B2
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`
`D. Challenged Claims
`Petitioner challenges independent claim 1 and dependent claims 2–10,
`which depend directly or indirectly from independent claim 1. Claim 1,
`reproduced below, is illustrative of the subject matter of the challenged
`claims of the ’664 patent.
`1. A tangle-resistant decorative lighting assembly having
`first, second, third and fourth sides that define a
`rectangular display
`area,
`the
`lighting
`assembly
`comprising:
`
` a
`
` power plug adjacent a first corner formed at the first and
`fourth sides of the rectangular display area;
`
` power receptacle adjacent a second corner formed at the
`first and second sides of the rectangular display area;
`
` a
`
` a
`
` first power wire in electrical connection with the power
`plug and the power receptacle, and defining the first side
`of the rectangular display area of the lighting assembly;
`
` a
`
` plurality of lamp assemblies distributed within the
`rectangular display area;
`
` a
`
` plurality of 22AWG reinforced intermediate wires
`electrically connecting the plurality of lamp assemblies,
`each of the plurality of 22AWG reinforced intermediate
`wires electrically connecting a pair of the plurality of lamp
`assemblies and extending in a direction from the first side
`of the rectangular display area to the third side of the
`rectangular display area, the plurality of 22AWG
`reinforced intermediate wires connected to the plurality of
`lamp assemblies forming a plurality of rows of the
`plurality of 22AWG reinforced intermediate wires
`connected to the plurality of lamp assemblies, each row of
`the plurality of 22AWG reinforced intermediate wires
`extending from the first side of the rectangular display area
`to the third side of the rectangular display area and
`
`5
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`PGR2019-00055
`Patent 10,119,664 B2
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`
`connecting a group of the plurality of lamp assemblies in
`each of the rows of the plurality of 22AWG reinforced
`intermediate wires, each of the plurality of 22AWG
`reinforced intermediate wires
`including an internal
`reinforcing strand, none of the plurality of 22AWG
`reinforced
`intermediate wires having an external
`reinforcing strand or other reinforcing structure;
`
` a
`
` plurality of mechanical-connection cords, each of the
`plurality of mechanical-connection cords extending from
`the first side of the rectangular display area to the third side
`of the rectangular display area and connecting the group
`of lamp assemblies of the plurality of lamp assemblies to
`form a plurality of rows of the plurality of mechanical-
`connection cords, none of the plurality of mechanical-
`connection cords including wire conductors, and each of
`the rows of the plurality of mechanical-connection cords
`directly mechanically connected to less than all of the
`plurality of lamp assemblies of the group of the plurality
`of lamp assemblies of each row of the plurality of 22AWG
`reinforced intermediate wires connected to the plurality of
`lamp assemblies, and each row of the plurality of
`mechanical-connection cords is adjacent to a row of the
`plurality of 22AWG reinforced intermediate wires
`connected to the plurality of lamp assemblies, thereby
`forming the rectangular display area with alternating rows
`of the plurality of mechanical-connection cords and the
`plurality of 22AWG reinforced intermediate wires
`connected to the plurality of lamp assemblies.
`
`
`Ex. 1001, 23:29–24:22.
`
`II. DISCUSSION
` Eligibility for Post Grant Review
`A.
`As a threshold matter, we must determine whether the ’664 patent is
`eligible for post-grant review. Post-grant review is available for patents
`“described in section 3(n)(1)” of the Leahy-Smith America Invents Act
`
`6
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`PGR2019-00055
`Patent 10,119,664 B2
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`(“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A). The
`post-grant review provisions set forth in § 6(d) of the AIA only apply to
`patents subject to the first-inventor-to-file provisions of the AIA. See AIA
`§ 6(f)(2)(A). Patents subject to the first-inventor-to-file provisions are those
`that issue from applications “that contain[ ] or contained at any time . . . a
`claim to a claimed invention that has an effective filing date as defined in
`section 100(i) of title 35, United States Code, that is on or after” March 16,
`2013. AIA § 3(n)(1). The “effective filing date” for a claim is either the
`application’s actual filing date or the filing date of the earliest application
`that supports the claim. 35 U.S.C. § 100(i).
`Petitioner has the burden of demonstrating eligibility for post-grant
`review. See Mylan Pharms. Inc. v. Yeda Res. & Dev. Co., PGR2016-00010,
`Paper 9 at 10 (PTAB Aug. 15, 2016). Petitioner states that, “[t]he ’664
`patent was issued on November 6, 2018 from U.S. Patent Application
`15/813,011, which was filed on November 14, 2017.” Pet. 3. Patent Owner
`does not appear to dispute post-grant review eligibility and its discussion of
`the prosecution history of the ’664 patent comports with Petitioner’s
`discussion as to the relevant filing dates. See Prelim. Resp. 8.
`In addition, “[a] petition for a post-grant review may only be filed not
`later than the date that is 9 months after the date of the grant of the patent or
`of the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c).
`Here, the ’664 patent issued November 8, 2019 (Ex. 1001, code (45)) and
`this Petition was filed August 5, 2019. Thus, on this record, we determine
`that the ’664 patent is eligible for post-grant review.
`
`7
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`PGR2019-00055
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`
` Level of Ordinary Skill
`B.
`As part of our determination as to whether an invention would have
`been obvious, 35 U.S.C. § 103 requires us to ascertain the level of ordinary
`skill in the pertinent art at the time of the invention. Graham v. John Deere,
`383 U.S. 1, 17 (1966). The resolution of this question is important because
`it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko
`Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person
`of ordinary skill in the art is a hypothetical person presumed to have known
`the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995).
`Factors to consider in determining the level of ordinary skill in the art
`include, but are not limited to, the types of problems encountered in the art,
`the sophistication of the technology, and educational level of active workers
`in the field. Id. In addition, the level of ordinary skill in the art is reflected
`by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). Generally, it is easier to establish obviousness under a higher
`level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t,
`Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of
`skill generally favors a determination of nonobviousness . . . while a higher
`level of skill favors the reverse.”).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention “would have had at least a Bachelor of Science degree (or
`equivalent) in Electrical Engineering, or a comparable field, and at least five
`years of experience in the fields of design of electrical wiring and/or
`decorative lighting.” Pet. 9 (citing Ex. 1009 ¶ 21). Patent Owner argues that
`Petitioner’s proposed definition recites an unnecessarily high level of skill.
`
`8
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`PGR2019-00055
`Patent 10,119,664 B2
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`Prelim. Resp. 21. Patent Owner contends that the appropriate level of
`ordinary skill “would have been (1) a technician with at least two years of
`experience in the design of electrical wiring and/or decorative lighting, or
`(2) a person with at least a bachelor’s degree in mechanical engineering,
`electrical engineering, or an equivalent field, and a basic familiarity with
`circuits used in decorative lighting.” Id. (citing Ex. 2001 ¶¶ 14–15).
`At this stage in the proceeding, we determine that the current record
`supports Patent Owner’s description of an ordinarily skilled artisan. For
`purposes of this Decision, therefore, we adopt Patent Owner’s description of
`an ordinarily skilled artisan. 7 We also note that the applied prior art reflects
`the appropriate level of skill at the time of the claimed invention. See
`Okajima, 261 F.3d at 1355.
`C. Claim Construction
`In an AIA proceeding filed on or after November 13, 2018, we apply
`the same claim construction standard that would be used in a civil action
`under 35 U.S.C. § 282(b), including construing claims in accordance with
`the ordinary and customary meaning of such claims, as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`37 C.F.R. § 42.100(b) (2018); 83 Fed. Reg. 51340 (Oct. 11, 2018). In
`applying such standard, claim terms generally are given their plain and
`ordinary meaning, as would be understood by a person of ordinary skill in
`the art, at the time of the invention and in the context of the entire patent
`
`
`7 At this time, the parties have not argued and based on the current record,
`we are not persuaded that the differences between the parties’ proposed
`levels of ordinary skill would have made a difference as to the outcome of
`this institution decision.
`
`9
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`PGR2019-00055
`Patent 10,119,664 B2
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`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc).
`Neither party offers any proposed constructions for any claim terms.
`Pet. 8–9; Prelim. Resp. 20. Specifically, Petitioner indicates, “no terms
`require a specific construction, as they would be readily understandable to a
`[person of ordinary skill in the art].” Pet. 9 (citing Ex 1009 ¶ 22). Patent
`Owner also indicates, for purpose of its Preliminary Response, that no claim
`construction is necessary at this stage, but reserves the right to propose
`constructions should trial be instituted. Prelim. Resp. 20.
`On this record and for purposes of this decision, we determine that no
`claim term requires express construction. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
` Asserted Obviousness over Sylvania, Gao, and Optionally UL
`D.
`2002 Standards
`Petitioner asserts that claims 1, 2, and 5–10 would have been obvious
`over Sylvania, Gao, and optionally UL 2002 Standards. Pet. 18–61.
`Petitioner explains how Sylvania, Gao, and optionally UL 2002 Standards
`allegedly teach the claimed subject matter and relies upon the testimony of
`Dr. Fantone to support its positions. Id.; Ex. 1009. We have reviewed
`Petitioner’s assertions and supporting evidence and Patent Owner’s
`Preliminary Response and associated evidence and on this record, we find
`Petitioner has not made a sufficient showing as to the unpatentability of
`claims 1, 2, and 5–10 based on Sylvania, Gao, and UL 2002 Standards.
`
`10
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`PGR2019-00055
`Patent 10,119,664 B2
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`
`1. Sylvania (Ex. 1007)
`Petitioner’s declarant, William E. Shelleman, contends that he
`purchased a Sylvania net light set from BJ’s Wholesale Club on September
`10, 2008. Ex. 1010 ¶ 4. In support of his testimony, he provides a copy of a
`receipt that purportedly shows the purchase of this product. Ex. 1010,
`App. A. At this time, Patent Owner does not challenge the prior art status of
`Sylvania. See generally Prelim. Resp.
`As described on the box, the product at issue purports to be “Sylvania
`LED Series LED Micro Net-Style Lights.” Ex. 1007, 1. Each net light set
`includes 70 lights that use 9.6 watts of energy. Id. Page 2 of Exhibit 1007 is
`reproduced below.
`
`Page 2 of Exhibit 1007 purports to be a photograph of the net light set. Ex.
`1007, 2. There appear to be electrical plugs/receptacles on the left and right
`
`
`
`11
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`PGR2019-00055
`Patent 10,119,664 B2
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`corners of the net light set. Id. at 2–3. In addition, lights appear to be
`disposed throughout the net light set. Id. at 2, 7–8.
`2. Gao (Ex. 1003)
`Gao, a Chinese patent titled “Novel Wire.” Ex. 1003, code (54). Gao
`describes “a novel wire which comprises a wire body including an insulating
`surface layer and a conductive wire in the insulating surface layer.” Id. at
`code (57). Figure 1 of Gao is reproduced below.
`
`
`Figure 1 of Gao is a cross-sectional view of Gao’s wire. Id. ¶ 11. Gao’s
`wire comprises a wire body, which includes insulating surface layer 1 and
`conductive wire 2 in insulating surface layer 1. Id. ¶ 13. The wire includes
`reinforcing members 3, which are disposed between an outer surface of the
`conductive wire 2 and an inner surface of the insulating surface layer 1. Id.
`“The reinforcing member 3 comprises a monofilament or fiber of plastic
`such as PE, PET, PA, and the like, thereby increasing the tensile strength of
`the wire.” Id. ¶ 16.
`
`3. UL 2002 Standards (Ex. 1008)
`UL 2002 Standards is a publication from Underwriters Laboratory
`titled “UL Standard for Safety for Seasonal and Holiday Decorative
`
`12
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`PGR2019-00055
`Patent 10,119,664 B2
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`Products, UL 588.” Ex. 1008, tr18. These standards “cover temporary-use,
`seasonal decorative-lighting products and accessories.” Id. at 13.
`As described in UL 2002 Standards, “[t]he wire employed in a series-
`connected seasonal product shall be a minimum No. 22 AWG9 (0.32 mm2)
`Type CXTW twisted conductor.” Id. at 40. There are several exceptions to
`this general rule. Id. In particular, Exception No. 2 notes “[w]hen a net
`lighting string employs single conductor Type CXTW flexible cord, it shall
`be a minimum No. 18 AWG.” Id. In addition, Exception No. 4 notes
`“[s]ingle conductor CXTW wire may be employed if the wire is twisted with
`a non-current carrying polymeric supporting rope.” Id.
`4. Claim 1
`Petitioner identifies where in the prior art references it asserts each
`recitation of claim 1 is disclosed, taught, or suggested, and articulates a
`rationale to combine Sylvania, Gao, and optionally UL 2002 Standards. Pet.
`19–51. Petitioner relies on Sylvania to teach most aspects of claim 1. See
`id. Petitioner relies on Gao to teach the use of reinforced wires. Id. at 31–
`33. Petitioner further relies on UL 2002 Standards to teach the use of 22
`AWG wires and as additional evidence that one of ordinary skill in the art
`would have used reinforced wires. Id. at 30, 31, 33.
`Patent Owner asserts that Petitioner failed to make the requisite
`showing because it fails to demonstrate that the asserted art teaches “22
`AWG reinforced intermediate wires” that include “an internal reinforcing
`strand, none of the plurality of 22 AWG reinforced intermediate wires
`
`
`8 We use the page numbering from the original document.
`9 We note that the larger the AWG numbers indicate smaller wires. For
`example, 18 AGW is 0.82 mm2 and 22 AGW is 0.32 mm2. Ex. 1008, 39.
`
`13
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`having an external reinforcing strand or other reinforcing structure” as
`recited in claim 1. Prelim. Resp. 23–39. In other words, Patent Owner with
`the support of its declarant Dr. Stuart B. Brown, urges us to find that
`Sylvania, Gao, and UL 2002 Standards fail to teach or suggest 22 AWG
`reinforced intermediate wires that have an internal reinforcing strand and
`that may not have external reinforcing strands or structures. Id.
`As to these limitations, Petitioner asserts “Sylvania’s net light
`includes a plurality of intermediate wires that electrically connect the
`plurality of lamp assemblies.” Pet. 28. Photographs annotated by Petitioner,
`from page 9 of the Petition are reproduced below.
`
`
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`Petitioner annotates a picture of Sylvania to indicate which portions of
`Sylvania include the recited intermediate wires. Id. at 29. As can be seen
`above, twisted pairs of wires connect the lamp assemblies throughout the
`body of Sylvania’s net lights. Id. at 28. Petitioner points out that Sylvania’s
`net lights include a tag that indicates the lights were manufactured in
`accordance with Underwriters Laboratory’s standards for decorative string
`lights. Id. at 30. Petitioner directs us to UL 2002 Standards which state that
`“wire employed in a series connected seasonal product shall be a minimum
`No. 22 AWG (0.32 mm2) Type CXTW twisted conductor.” Id. (quoting Ex.
`1008, 40 §13.2.4). Thus, Petitioner contends that Sylvania’s intermediate
`wires would have been 22 AWG. Id. (citing Ex. 1009 ¶ 50). Further,
`Petitioner argues that “[t]o the extent Sylvania’s intermediate wires are not
`reinforced, reinforced wires having the structure called for by the claimed
`invention have been known in the art for many years and well-before the
`time of the alleged invention, as indicated by Gao.” Id. at 31 (citing Ex.
`1009 ¶ 52, Appx. B.). In addition, Petitioner asserts that “the UL standards
`governing decorative lighting products as far back as 2001 have
`contemplated the use of reinforced wiring in decorative lighting products.”
`Id. (citing Ex. 1008, 40 §13.2.4 (Exception 4)). Petitioner’s declarant Dr.
`Fantone opined, “internally reinforced wires with the structure required by
`the claimed invention, e.g., with polymer reinforcing strands, have been
`known in the art for many years and well-before the time of the alleged
`invention, as indicated by Gao, Debladis, 10 Fujii, and Huang.” Ex. 1009 ¶
`
`
`10 We note that Petitioner and its declarant repeatedly refer to Debladis,
`Fujii, and Huang. See e.g., Pet. 31, 32, 40. The Petition does not include
`any cites to or specific argument referring to these references. Thus, we do
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`52. Petitioner argues that one of ordinary skill in the art would have used
`Gao’s wire in Sylvania’s net light in order “to achieve more durable
`intermediate wires for the net light.” Pet. 33.
`Patent Owner points out that Petitioner lacks evidence as to the wire
`gauge of Sylvania’s net lights. Prelim. Resp. 24. Petitioner provides Exhibit
`1007, which is a series of photographs of the Sylvania net lights, its
`packaging, and its inserts from the box. See Ex. 1007; see also Ex. 1010 ¶ 7
`(describing Ex. 1007 as “a collection of photographs”). Petitioner also
`submitted Exhibit 1010, which is a declaration from William Shelleman
`describing the purchase of Sylvania. See Ex. 1010. Finally, Dr. Fantone’s
`declaration includes a description of Sylvania. Ex. 1009 ¶ 28. We have
`reviewed Petitioner’s evidence and we agree with Patent Owner that
`Petitioner has not established the wire gauge of Sylvania’s net lights because
`none of these documents purport to indicate the gauge of the wires in
`Sylvania. Thus, the question is whether the recited wire gauge teaches the
`asserted combination.
`Patent Owner correctly points out that Gao does not address wire
`gauge and as such, Petitioner’s allegations must rely on UL 2002 Standards
`despite the Petitioner’s description of that reference as optional. Prelim.
`Resp. 25. UL 2002 Standards describe the use of 22 AWG twisted
`conductors (also known as a twisted pair). See Ex. 1008, 40. The document,
`however, also states that if a single wire is used it should be a larger 18
`AWG wire. Id. Petitioner does not explain why one of ordinary skill in the
`art would use a 22 AWG wire for a single wire. In light of Patent Owner’s
`
`not consider the disclosures of Debladis, Fujii, and Huang as part of our
`analysis of Petitioner’s asserted grounds.
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`arguments and the disclosures of UL 2002 Standards, we are persuaded that
`the UL 2002 Standards teach the use of 22 AWG in twisted pairs and 18
`AWG for single wires. As such, if Petitioner is relying on Gao’s wire to be
`a single wire11 replacement for Sylvania’s intermediate wires (which are a
`twisted pair), then the teachings would indicate that the single wire is 18
`AWG, and we are persuaded that this would not meet the limitations of
`claim 1.
`Thus, we are left with the question as to whether the limitations of
`claim 1 would have been met if Gao’s wires were used in a twisted pair.
`Patent Owner argues that Petitioner does not provide evidence as to whether
`Sylvania’s twisted pair of wires is a pair of conductive wires as opposed to a
`conductive wire and a non-conductive cord. Prelim. Resp. 27–28.
`According to Patent Owner, a non-conductive cord would constitute an
`external reinforcing structure and thus, would not meet the limitations of
`claim 1. Id. This argument seems to comport with Petitioner’s view of the
`evidence. Petitioner relies on UL 2002 Standards to support its argument
`that one of ordinary skill in the art would have reinforced Sylvania’s wires.
`Pet. 31 (citing Ex. 1008, 40 §13.2.4 (Exception 4)); id. at 33. Exception 4 of
`the UL 2002 Standards specifies that a “[s]ingle conductor CXTW wire may
`be employed if the wire is twisted with a non-current carrying polymeric
`supporting rope.” Ex. 1008, 40. Thus, it appears that Petitioner is relying
`
`
`11 We note that Petitioner’s allegations are not clear as to whether Gao is to
`be used as part of a twisted pair or if it is to be used as a single wire. This
`lack of clarity as to the proposed grounds is troubling, but we find that
`Petitioner’s allegations are insufficient under either interpretation and as
`such we do not need to determine which argument Petitioner intended to
`advance.
`
`17
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`PGR2019-00055
`Patent 10,119,664 B2
`
`upon the description of a wire twisted with a non-conductive wire as an
`example of reinforcement. See Ex. 1009 ¶ 53 (“[A]t the time of the
`invention, one skilled in the art would have known to reinforce current
`carrying wires with polymeric supporting rope per the UL Standards and as
`disclosed by Gao.”). Petitioner, however, does not argue that reinforcing
`non-conductive cord is not an external reinforcing structure. We credit Dr.
`Brown’s testimony that such a reinforcing non-conductive cord would be an
`external strengthening element and thus, would not meet the limitations of
`claim 1 that exclude external reinforcing strands or structures. See Ex. 2001
`¶ 30. Therefore, we agree with Patent Owner that if the pair of wires
`includes a non-conductive cord, that cord would be an additional external
`reinforcement and as such, the claim limitation would not be met if the pair
`included such a support cord. See Prelim. Resp. at 28.
`If, however, we were to assume that both wires in the pair were
`conductive then we would need to examine whether a pair of conductive
`wires would meet claim 1. Patent Owner argues that even if the second wire
`is conductive the claim is not met. Id. at 29. Dr. Brown testified on behalf
`of Patent Owner that “[a] POSITA would appreciate that a second wire
`twisted with a first wire is a form of external reinforcement of the first wire.”
`Ex. 2001 ¶ 65. Patent Owner asserts “[t]his is demonstrated by the UL 2002
`Standards’ specification of 18 AWG (e.g., a thicker wire) for single
`conductor (Exception No. 2) as compared to the 22AWG minimum gauge
`wire which is specified for two wires twisted together (Section 13.2.4) and
`wires twisted with the proper non-current carrying rope (Exception No. 4).”
`Prelim. Resp. 30 (citing Ex. 1008, 54; Ex. 2001 ¶ 65). As such, Patent
`Owner asserts that twisting the wires together causes the wires to have an
`
`18
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`PGR2019-00055
`Patent 10,119,664 B2
`
`external reinforcement that is expressly disallowed by the claim language,
`which excludes “wires having an external reinforcing strand or other
`reinforcing structure.” Id. at 32–33.
`Petitioner describes Sylvania’s wires as a twisted pair, but does not
`address whether the twisting of the wires would have been an external
`reinforcing strand or other reinforcing structure. See id. at 28, 40. Gao
`focuses on increasing the tensile strength and durability of its wire, but is
`silent as to whether its wire is to be used in twisted pairs. See Ex. 1003,
`code (57). UL 2002 Standards require a thicker wire if the wire is used
`without a non-conductive cord or without being part of a twisted pair. Ex.
`1008, 40. Petitioner does not address the differing wire gauges used for
`single versus paired wires. Petitioner also does not explain why a pair of
`wires would not constitute external reinforcement. We are persuaded that
`2002 UL Standard’s disclosure of using a thinner wire in a twisted pair
`supports Patent Owner’s argument that the twisting of the wires provides an
`external reinforcement. This is because we are persuaded that the
`reinforcement from the second wire provides additional strength such that a
`thinner wire could be used and still provide the requisite strength and
`durability provided by a single thicker wire. Thus, Petitioner has not met its
`burden to establish that these references would teach “22 AWG reinforced
`intermediate wires” that include “an internal reinforcing strand, none of the
`plurality of 22 AWG reinforced intermediate wires having an external
`reinforcing strand or other reinforcing structure” as recited in claim 1.
`For the foregoing reasons, based on the current record, we determine
`Petitioner has not made a sufficient showing as to claim 1.
`
`19
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`PGR2019-00055
`Patent 10,119,664 B2
`
`5. Claims 2, and 5–10
`Claims 2 and 5–10 depend from claim 1. As such, they also include
`the above-discussed limitations. Petitioner’s arguments as to claims 2 and
`5–10 do not alter the analysis presented above as to claim 1. Thus, for the
`same reasons discussed above as to claim 1, we find that Petitioner has not
`made a sufficient showing as to the unpatentability of claims 2 and 5–10.
` Asserted Obviousness Over Kumada, Gao, Lin, and Optionally
`E.
`UL 2002 Standards
`Petitioner contends that claims 1–10 of the ’664 patent would have
`been obvious over Kumada, Gao, Lin, and optionally UL 2002 Standards.
`Pet. 61–93. We have considered the record before us and are persuaded that
`Petitioner has not shown sufficiently that claims 1–10 would have been
`obvious over Kumada, Gao, Lin, and UL 2002 Standards.
`1. Kumada (Ex. 1006)
`Kumada discloses “[a]n economical method of making a net or mesh
`light,” wherein the net light includes a plurality of series-connected light
`strings, each light string including a plurality of lamp sockets and a plurality
`of intermediate lengths of wire connecting the lamp sockets, and at least one
`non-electrical rope physically fastened to the lamp sockets, thereby forming
`a net or mesh. Ex. 1003, code (57). Kumada notes that “[i]n the United
`States, the UL (“Underwriters Laboratory”) approves of a net light only
`where the active and return wires A, R are twisted together on each light
`string (the only permissible alternative being the use of a very thick wire,
`which would render the product economically unfeasible).” Id. at 2:52–56.
`One embodiment of Kumada’s net light is depicted in Figure 6B, reproduced
`below.
`
`20
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`PGR2019-00055
`Patent 10,119,664 B2
`
`
`Figure 6B is a circuit diagram and physical layout of a net light having light
`strings 130, wires 22 connecting the individual lamps sockets (L1, L2, L3,
`. . . .Ln) in the light strings, and rope 200´ which joins all of the lamp
`sockets of all light strings 130. Id. at 10:22–44, 11:7–12.
`2. Lin (Ex. 1004)
`Lin discloses a “lamp netting assembly” that seeks to improve upon
`conventional lamp netting assemblies by including a string or strings
`connected to the light sockets to replace a portion of wire and to support
`stably a large
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