Date: August 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`EVERSTAR MERCHANDISE CO. LTD.,
`Petitioner
`
`
`v.
`
`
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner
`____________
`
`
`Case PGR2019-00055
`Patent 10,119,664
`
`____________
`
`PETITION FOR POST-GRANT REVIEW OF U.S. PATENT NO. 10,119,664
`UNDER 35 U.S.C. §§ 321-329 AND 37 C.F.R. § 42.200 ET SEQ.
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`Case PGR2019-00055
`Patent 10,119,664
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................... 1
`MANDATORY NOTICES ......................................................................... 2
`
`I.
`II.
`
`A.
`
` Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1) ................................. 2
`
`B. Related Matters Under 37 C.F.R. §42.8(b)(2) .............................................. 2
`
`C. Lead and Backup Counsel Under 37 C.F.R. §42.8(b)(3) .............................. 2
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`D. Service Information Under 37 C.F.R. §42.8(b)(4) ........................................ 2
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`III.
`
`IV.
`
`PAYMENT OF FEES .................................................................................. 2
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`GROUNDS FOR STANDING AND RELIEF REQUESTED ................... 3
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`A. Grounds for Standing Under 37 C.F.R. § 42.204(a) ..................................... 3
`
`B.
`
`Identification of Statutory Grounds for Each Claim ..................................... 3
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`V.
`
`BACKGROUND AND PRELIMINARY MATTERS ............................... 6
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`A. The Prosecution History of the ’664 Patent .................................................. 6
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`B. Level of Ordinary Skill.................................................................................. 8
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`C. Claim Construction ........................................................................................ 8
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`VI.
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`OVERVIEW OF PRIOR ART .................................................................... 9
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`A. Gao (Ex. 1003) .............................................................................................. 9
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`B. Lin (Ex. 1004) ............................................................................................... 9
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`C. Won (Ex. 1005) ...........................................................................................11
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`D. Kumada (Ex. 1006) .....................................................................................12
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`E.
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`Sylvania (Ex. 1007) .....................................................................................15
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`F. UL 2002 Standards (Ex. 1008) ....................................................................17
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`VII.
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`THE CHALLENGED CLAIMS ARE UNPATENTABLE ......................17
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`A. GROUND 1: Claims 1-2 and 5-10 are obvious over Sylvania in view of
`Gao (and optionally the UL 2002 Standards). ...........................................18
`
`i.
`
` Commercial Sale of Sylvania’s Net Light Set ......................................18
`
`ii.
`
` Independent Claim 1 .............................................................................19
`
`iii.
`
` Claim 2 ..................................................................................................51
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`iv.
`
` Claim 5 ..................................................................................................53
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`v.
`
` Claim 6 ..................................................................................................53
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`i
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`vi.
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` Claim 7 ..................................................................................................55
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`vii.
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` Claim 8 .................................................................................................55
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`viii.
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` Claim 9 .................................................................................................58
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`ix.
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` Claim 10 ................................................................................................60
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`B. GROUND 2: Claims 1-10 are obvious over Kumada in view of Gao
`and Lin (and optionally the UL 2002 Standards). .....................................61
`
`i.
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` Independent Claim 1 .............................................................................61
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`ii.
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` Claim 2 ..................................................................................................81
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`iii.
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` Claim 3 ..................................................................................................82
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`iv.
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` Claim 4 ..................................................................................................85
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`v.
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` Claim 5 ..................................................................................................85
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`vi.
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` Claim 6 ..................................................................................................86
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`vii.
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` Claim 7 .................................................................................................87
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`viii.
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` Claim 8 .................................................................................................87
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`ix.
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` Claim 9 ..................................................................................................88
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`x.
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` Claim 10 ................................................................................................90
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`C. GROUND 3: Claims 1-10 are obvious over Won in view of Gao and
`Kumada (and optionally the UL 2002 Standards). ....................................93
`
`i.
`
` Independent Claim 1 .............................................................................93
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`ii.
`
` Claim 2 ................................................................................................108
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`iii.
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` Claim 3 ................................................................................................109
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`iv.
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` Claim 4 ................................................................................................110
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`v.
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` Claim 5 ................................................................................................110
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`vi.
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` Claim 6 ................................................................................................110
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`vii. Claim 7 ................................................................................................111
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`viii. Claim 8 ................................................................................................112
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`ix.
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` Claim 9 ................................................................................................113
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`x.
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` Claim 10 ..............................................................................................114
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`VIII.
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`CONCLUSION ........................................................................................115
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`PETITIONER’S LIST OF EXHIBITS
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`Exhibit No.
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`U.S. Patent No. 10,119,664 (“Chen”)
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`U.S. Patent No. 10,119,664 Prosecution History
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`CN 203910314 (“Gao”)
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`Canadian Pat. App. Pub. No. CA2238113 (“Lin”)
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`U.S. Pat. No. 6,217,193 (“Won”)
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`U.S. Pat. No. 6,367,951 (“Kumada”)
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`2008 Sylvania Net Light Set
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`Underwriters Laboratories Standard for Safety for
`Seasonal and Holiday Decorative Products, UL 588, 18th
`Ed., dated February 15, 2002 (UL 2002 Standards)
`
`Declaration of Stephen D. Fantone, Ph.D.
`
`Declaration of William E. Shelleman
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`U.S. Pat. No. 8,692,120 (“Debladis”)
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`U.S. Pat. No. 5,216,205 (“Fujii”)
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`U.S. Pat. Pub. No. 2013/0062095 (“Huang”)
`
`
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`iii
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`Case PGR2019-00055
`Patent 10,119,664
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`I.
`
`INTRODUCTION
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`Everstar Merchandise Co., Ltd. (Petitioner) respectfully requests Post-Grant
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`Review of U.S. Patent No. 10,119,664 (the “’664 patent”) (Ex. 1001) and the
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`cancellation of claims 1-10 (the “Challenged Claims”).
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`Net lights such as the ones claimed have been on sale for years, long before
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`the application for the ’664 patent was filed. In 2008, Petitioner purchased a net
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`light product with the claimed structure and characteristics save for a reinforced
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`intermediate conductive wire. Reinforced conductive wires, as claimed, further
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`have been known well-before the date of the alleged ’664 invention, and the UL
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`standards for decorative lighting have even contemplated the use of wires with a
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`reinforced polymer strand since at least 2002. Further, Patent Owner filed the
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`application that led to the ’664 patent years after filing a series of applications in
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`another patent family that cover substantially the same subject matter, and yet
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`Patent Owner failed to bring the most relevant of those co-pending applications to
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`the Patent Office’s attention. The ’664 patent represents a brazen attempt to
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`unlawfully extend a monopoly for an alleged invention that should not have been
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`granted patent protection in the first instance, as decorative lighting products and
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`art with the claimed features were known and available long before the priority
`
`date. The Challenged Claims of the ’664 patent are unpatentable.
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`II.
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`MANDATORY NOTICES
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`A. Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1)
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`Petitioner certifies that Everstar Merchandise Co., Ltd. is the real party-in-
`
`interest.
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`B. Related Matters Under 37 C.F.R. §42.8(b)(2)
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`Petitioner states that Patent Owner has not asserted the ’664 patent against
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`Petitioner and there therefore are no other judicial or administrative matters that
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`would affect, or be affected by, a decision in this proceeding.
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`C. Lead and Backup Counsel Under 37 C.F.R. §42.8(b)(3)
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`Lead counsel: Barry J. Herman (Reg. No. 51,254). Backup counsel: Preston
`
`H. Heard (Reg. No. 64,675), Aaron Reinhardt (Reg. No. 72,260), and Heath
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`Misley (Reg. No. 68,389). A Power of Attorney accompanies this Petition.
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`D.
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`Service Information Under 37 C.F.R. §42.8(b)(4)
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`Petitioner consents to electronic service by email at barry.herman@wbd-
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`us.com,
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`preston.heard@wbd-us.com,
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`aaron.reinhardt@wbd-us.com
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`and
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`heath.misley@wbd-us.com.
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`III.
`
`PAYMENT OF FEES
`
`Petitioner authorizes the Office to charge the fees specified by 37 C.F.R. §§
`
`42.103(a) and 42.15(a) to Deposit Account 09-0528 as well as any additional fees
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`that might be due in connection with this Petition.
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`IV.
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`GROUNDS FOR STANDING AND RELIEF REQUESTED
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`A. Grounds for Standing Under 37 C.F.R. § 42.204(a)
`
`The ’664 patent was issued on November 6, 2018 from U.S. Patent
`
`Application 15/813,011, which was filed on November 14, 2017. Petitioner
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`thereby certifies that the ’664 patent is available for post-grant review, and this
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`Petition is being filed “not later than the date that is 9 months after the date of the
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`grant of the patent.” 35 U.S.C. § 321(c); 37 C.F.R. § 42.202. Pursuant to 37
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`C.F.R. § 42.204(a), Petitioner further certifies that it is not barred or estopped from
`
`requesting post-grant review of the ’664 patent challenging the patent claims on
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`the grounds identified herein.
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`B.
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`Identification of Statutory Grounds for Each Claim
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`Petitioner requests review of the Challenged Claims on the grounds set forth
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`in the table below. An explanation of how the Challenged Claims are unpatentable
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`is provided in the form of detailed descriptions and claim charts, which indicate
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`where each claim element can be found in the cited prior art. Additional
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`explanation and support for each ground of rejection is set forth in Exhibit 1009,
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`the Declaration of Stephen D. Fantone, Ph.D., referenced throughout this Petition.
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`Dr. Fantone’s testimony is offered as evidence of the knowledge that one of
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`ordinary skill in the art would have possessed at the time of the claimed invention.
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`The following references constitute prior art and are relied upon in this
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`Petition:
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`Exhibit 1003 – CN 203910314 (“Gao”), filed June 16, 2014 and issued
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`October 29, 2014, qualifies as prior art to the ’664 patent under 35 U.S.C.
`
`§ 102(a)(1) and (a)(2). Gao was not cited during prosecution of the ’664 patent.
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`Exhibit 1004 – Canadian Pat. App. Pub. No. CA2238113 (“Lin”), filed May
`
`20, 1998 and published November 20, 1999, qualifies as prior art to the ’664 patent
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`under 35 U.S.C. § 102(a)(1) and (a)(2). Lin was not cited during prosecution of
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`the ’664 patent.
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`Exhibit 1005 – U.S. Pat. No. 6,217,193 (“Won”), filed October 29, 1999
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`and issued April 17, 2001, qualifies as prior art to the ’664 patent under 35 U.S.C.
`
`§ 102(a)(1) and (a)(2). Won was not cited during prosecution of the ’664 patent.
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`Exhibit 1006 – U.S. Pat. No. 6,367,951 (“Kumada”), filed March 28, 2000
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`and issued April 9, 2002, qualifies as prior art to the ’664 patent under 35 U.S.C.
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`§ 102(a)(1) and (a)(2). Kumada was not cited during prosecution of the ’664
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`patent.
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`Exhibit 1007 – Commercial sale of Sylvania Net Light Set (“Sylvania”),
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`purchased on September 9, 2008. Sylvania was not cited during prosecution of the
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`’664 patent.
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`Exhibit 1008 – Underwriters Laboratories Standard for Safety for Seasonal
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`and Holiday Decorative Products, UL 588, 18th Ed., dated February 15, 2002 (“UL
`
`2002 Standards”), qualifies as prior art to the ’664 patent under 35 U.S.C.
`
`§ 102(a)(1) and (a)(2). UL 2002 Standards was not cited during prosecution of the
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`’664 patent.
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`Exhibit 1011 – U.S. Pat. No. 8,692,120 (“Debladis”), filed July 9, 2008 and
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`issued April 8, 2014, qualifies as prior art to the ’664 patent under 35 U.S.C.
`
`§ 102(a)(1) and (a)(2). Debladis was not cited during prosecution of the ’664
`
`patent.
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`Exhibit 1012 – U.S. Pat. No. 5,216,205 (“Fujii”), filed September 27, 1991,
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`and issued June 1, 1993, qualifies as prior art to the ’664 patent under 35 U.S.C.
`
`§ 102(a)(1) and (a)(2). Fujii was not cited during prosecution of the ’644 patent.
`
`Exhibit 1013 – U.S. Pat. Pub. No. 2013/0062095 (“Huang”), filed March
`
`15, 2012 and published March 14, 2013, qualifies as prior art to the ’664 patent
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`under 35 U.S.C. § 102(a)(1) and (a)(2). Huang was not cited during prosecution of
`
`the ’664 patent.
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`The Challenged Claims of the ’664 patent are unpatentable on the following
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`grounds:
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`Ground
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`Claims
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`Basis for Rejection
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`Ground 1 1-2 and 5-10 Obvious under 35 U.S.C. § 103 over Sylvania in view
`of Gao (and optionally the UL 2002 Standards)
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`Ground 2
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`1-10
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`Ground 3
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`1-10
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`Obvious under 35 U.S.C. § 103 over Kumada in view
`of Gao and Lin (and optionally the UL 2002
`Standards)
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`Obvious under 35 U.S.C. § 103 over Won in view of
`Gao and Kumada (and optionally the UL 2002
`Standards)
`
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`Each of the grounds of rejection involve references that were not cited or
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`
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`considered during prosecution, and thus there is no basis for a determination under
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`35 U.S.C. § 325(d) that substantially similar prior art and/or arguments have
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`already been presented to the Office. The factors identified in the Patent and Trial
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`Appeal Board’s (“PTAB”) informative decision overwhelmingly weigh against
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`such a finding. See Becton, Dickinson and Co. v. B. Braun Melsungen AG,
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`IPR2017-01586, Paper 8 at 17-28 (PTAB Dec. 15, 2017).
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`V. BACKGROUND AND PRELIMINARY MATTERS
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`A. The Prosecution History of the ’664 Patent
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`The ’664 patent was filed on November 14, 2017, and is a continuation
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`application of U.S. Patent No. 9,845,925 (the ’925 patent). The ’925 patent
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`claimed the benefit of U.S. Provisional Patent Application No. 62/246,423.
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`Notably, the Patentee also had several patents applications related to
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`decorative lighting assemblies that were co-pending with the application that
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`issued as the ’664 patent. For example, the Patentee filed U.S. Patent No.
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`10,222,037 (the ’037 patent) on May 5, 2017. The ’037 patent is a continuation of
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`U.S. Patent No. 9,671,097, filed October 19, 2015, which is a continuation of U.S.
`
`Patent No. 9,243,788, filed February 20, 2015, which is a continuation of U.S.
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`Patent No. 9,140,438 (the ’438 patent), filed September 15, 2014, which is a
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`continuation-in-part of U.S. Patent No. 9,157,588, filed July 10, 2014, which
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`claims priority to a U.S. Provisional Patent Application Serial No. 61/877,854,
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`filed September 13, 2013. These patents also attempt to claim decorative lighting
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`assemblies that were well-known in the art prior to 2013.
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`The ’037 patent claims a net-like decorative lighting structure, e.g., with a
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`power plug, power wires, lamp assemblies, internally reinforced intermediate
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`wires, and non-wire support cords, that has a substantially similar construction to
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`that of the claimed invention of the ’664 patent.1 The ’037 patent, however, was
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`never brought to the attention of the Examiner during the prosecution of the
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`application that granted as the ’664 patent. The Patentee did cite the ’048 patent
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`(to which the ’037 patent claims priority) in the parent application (i.e., the ’925
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`1 Indeed, Petitioner believes that there are obvious double patenting issues
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`between the ’664 patent and the ’037 patent, which cannot be raised in the present
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`Petition.
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`application); but the ’048 patent’s claims are just directed to “[a] reinforced wire
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`for decorative lighting” rather than the decorative net lighting structures claimed in
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`the ’037 patent and at issue here.2
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`B.
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`Level of Ordinary Skill
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`
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`For purposes of this PGR, a person of ordinary skill in the art (“POSITA”)
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`would have had at least a Bachelor of Science degree (or equivalent) in Electrical
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`Engineering, or a comparable field, and at least five years of experience in the
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`fields of design of electrical wiring and/or decorative lighting. Ex. 1009 ¶21.
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`C. Claim Construction
`
`A claim subject to a PGR is accorded its “ordinary and customary meaning
`
`of such claim as understood by one of ordinary skill in the art and the prosecution
`
`history pertaining to the patent.” 37 C.F.R. § 42.200(b) (2018). This rule “adopts
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`the same claim construction standard used by Article III federal courts and the
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`ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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`(en banc), and its progeny.” 83 Fed. Reg. 51,340, 51,341 (Oct. 11, 2018).
`
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`2 Petitioner believes Patent Owner’s failure to cite the relevant applications from
`
`its separate family of applications and earlier commercial sales constitutes
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`inequitable conduct, and Petitioner reserves the right to raise such grounds of
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`unenforceability of the ’664 patent in any other proceeding.
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`For purposes of this proceeding, Petitioner submits that no terms require a
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`specific construction, as they would be readily understandable to a POSITA. See
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`Ex. 1009 ¶22.
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`VI. OVERVIEW OF PRIOR ART
`
`A. Gao (Ex. 1003)
`
`Gao discloses a wire including a wire body with an insulating surface layer 1
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`and a conductive wire 2 inside the insulating surface layer 1. Ex. 1003 ¶[0013] and
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`Fig. 1. The wire body also includes a reinforcing member 3 that is disposed
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`between the outer surface of the conductive wire 2 and an inner surface of the
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`insulating surface layer 1. Id. Figure 1 of Gao is reproduced below:
`
`Ex. 1003 at Fig. 1.
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`B.
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`Lin (Ex. 1004)
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`
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`Lin discloses a lamp netting assembly that has a plurality of decoration
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`lamps. As shown in Figure 10, the lamp netting assembly comprises a first main
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`wire 75 and a second main wire 76 connected to a plug 74. Three branch wires
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`751, 752, and 753 are connected to the first main wire 75. In addition, a string 60
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`is connected to sockets 87, 88, 871, 881, 872, 882, and 874. Ex. 1004 at 6:1-6.
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`The string 60 includes a plastic thread and a metal cord. Id. at 4:11-12.
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`Figure 10 of Lin is shown below.
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`10
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`Ex. 1004 at Fig. 10.
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`C. Won (Ex. 1005)
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`Won discloses ornamental lamp strings in a network structure 11. Ex. 1005
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`at Title. As indicated in Figures 1 and 2, Won’s network 11 of ornamental lamp
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`strings includes a main power-supply cable 13 and a plurality of lamp strings 12.
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`Id. at 2:41-43. The lamp strings 12 are knitted together by knitting cords 19. Id. at
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`2:43-44. These knitting cords 19 are expressly disclosed to be formed without
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`copper wire. Id. at 2:44. Won additionally discloses that every two adjacent lamp
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`strings 12 are connected together with a knitting cord 19. Id. at 2:48-49. Figure 1
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`of Won is copied below.
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`Ex. 1005 at Fig. 1.
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`11
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`D. Kumada (Ex. 1006)
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`Kumada discloses an economical net or mesh light set. Ex. 1006 at Title.
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`As shown in Figs. 4A (below), the net light 10D is formed of a plurality of
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`parallel-wired light sets, with two such light sets 20D, 20D’ electrically wired in
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`parallel shown. Each light set is formed of a plurality of series wired sub-sets 32D
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`wired in parallel with each other. A common wire means portion 40 of each sub-
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`set 32D includes an active wire A, a return wire R, and a sub-set bypass wire B.
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`The return wire R and bypass wire B are electrically connected to an end connector
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`30. See Ex. 1006 at 7:39-47.
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`Ex. 1006 at Fig. 4A.
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`12
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`Figures 6A-6B further show that parallel columns of the net light are defined
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`by light strings 130, and non-electrical ropes 200/200’ that are physically secured
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`to lamp sockets L1, L2 . . . Ln of the plurality of light strings 130. Kumada further
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`explains that the absence of any electrical wire within the ropes greatly reduces
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`their costs and suffices to render both the light set and its method of manufacture
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`economical. See Ex. 1006 at 11:3-6.
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`Fig. 6A (below) illustrates an embodiment where a first non-electrical rope
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`200A connects the first or highest lamp sockets L1 of the various light strings 130,
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`a second non-electrical rope 200B connects the second or next highest lamp
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`sockets L2 of the various light strings 130, and a last non-electrical rope 200n
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`connects the lowest or last lamp sockets Ln of the various light strings 130. See
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`Ex. 1006 at 10:45-59. Fig. 6B illustrates an embodiment that uses a single rope
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`200’ to join all of the lamp sockets Ln of the light strings 130. See id. at 11:7-11.
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`Ex. 1006 at Fig. 6A.
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`
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`The rope(s) 200/200’ can be approximately of the same thickness and color
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`as the light strings, and the rope(s) 200/200’ may be made of the same insulating
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`material as the outside of the active and return wires of a light string. See Ex. 1006
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`at 10:60-64.
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`Figure 6B of Kumada is shown below.
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`Ex. 1006 at Fig. 6B.
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`E.
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`Sylvania (Ex. 1007)
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`
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`Sylvania’s net light set includes a rectangular net light structure having a
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`plurality of LED lights (i.e., 70 LEDs) and that is configured to be placed over
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`trees, bushes, etc. for decoration. As indicated below, Sylvania’s net light includes
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`a power plug at a first corner of the rectangular net light, and a power receptacle at
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`a second corner of the rectangular net light. A power cord connected to the plug
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`and receptacle extends along one side of the net light. As further indicated,
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`15
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`Case PGR2019-00055
`Patent 10,119,664
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`Sylvania’s net light includes a plurality of intermediate wires (exemplary
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`intermediate wires are indicated by the solid, purple arrows below) electrically
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`connecting each of the LEDs, and a plurality of non-electrical, mechanical
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`connection cords (exemplary intermediate wires are indicated by the dashed,
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`orange arrows below) that also connect the LEDs to form the net light structure.
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`These non-electrical cords extend across the net light in a zig zag pattern
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`alternately connecting groups of the LEDs.
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`F. UL 2002 Standards (Ex. 1008)
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`The UL (Underwriters Laboratory) standards contain basic requirements for
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`products to be covered by Underwriters Laboratories Inc. Ex. 1008 at 12, ¶A. The
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`UL standards require that wire employed in a series connected seasonal product be
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`“a minimum [of] 22 AWG (0.32 mm2). Ex. 1008 at 40 §13.2.4.
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`VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`Pursuant to 37 C.F.R. §42.204(b)(4), the following detailed comparison of
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`the claimed subject matter and the prior art for each ground of rejection specifies
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`where each element of the challenged claim is found in the prior art references.
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`A. GROUND 1: Claims 1-2 and 5-10 are obvious over Sylvania in
`view of Gao (and optionally the UL 2002 Standards).
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`i.
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`Commercial Sale of Sylvania’s Net Light Set
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`To establish the on-sale bar, a patent challenger must show a commercial
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`offer for sale and that the invention was “ready for patenting.” Pfaff v. Wells
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`Elecs., Inc., 525 U.S. 55, 67-68 (1998). “Section 102(b) may create a bar to
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`patentability either alone, if the device placed on sale is an anticipation of the later
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`claimed invention or, in conjunction with 35 U.S.C.A. § 103 (1988), if the claimed
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`invention would have been obvious from the on-sale device in conjunction with the
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`prior art.” LaBounty Mfg., Inc. v. U.S. Int’l. Trade Comm'n, 958 F.2d 1066, 1071
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`(Fed. Cir. 1992); see also Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1344, (Fed.
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`Cir. 2007) (“Prior art under the § 102(b) on-sale bar is also prior art for the
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`purposes of obviousness under § 103.”).
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`Here, the Sylvania net light set was clearly on sale, as evidenced by the
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`commercial purchase of the device in 2008 from a BJ’s Wholesale Club in
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`Maryland. Ex. 1010 ¶¶4-7. A commercial product that is publicly available for
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`sale has been reduced to practice, which satisfies the “ready for patenting”
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`standard. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1371 (Fed. Cir.
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`2007); Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1331 (Fed. Cir. 2001)
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`(citing Abbott Labs. v. Geneva Pharm., Inc., 182 F.3d 1315, 1318 (Fed. Cir. 1999).
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`Accordingly, Sylvania qualifies as a prior art commercial sale for purposes of the
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`on-sale bar.
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`ii.
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`Independent Claim 1
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`
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`Feature 1(pre)
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`The preamble of claim 1 recites “[a] tangle-resistant decorative lighting
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`assembly having first, second, third and fourth sides that define a rectangular
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`display area.” Ex. 1001 at 23:29-31.
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`It is well understood that “[i]f the body of a claim fully and intrinsically sets
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`forth all of the limitations of the claimed invention, and the preamble merely states,
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`for example, the purpose or intended use of the invention, rather than any distinct
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`definition of any of the claimed invention’s limitations, then the preamble is not
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`considered a limitation and is of no significance to claim construction.” MPEP
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`2111.02(II); see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
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`1305 (Fed. Cir. 1999).
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`Here, the preamble arguably provides structural limitations that should be
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`considered part of the claimed invention – namely, “first, second, third and fourth
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`sides that define a rectangular display area.” As indicated in the annotated image
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`of Sylvania’s net light below, Sylvania discloses a net light (i.e., a decorative
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`lighting assembly) having first, second, third, and fourth sides that define a
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`rectangular display area, which is indicated by the dashed lines.
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`1st side
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`4th side
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`Rectangular
`display area
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`3rd side
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`2nd side
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`The first part of the preamble, however – “A tangle-resistant decorative
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`lighting assembly” – is not limiting and is of no significance to the claim
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`construction, because it “merely extol[s] benefits or features of the claimed
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`invention . . . without clear reliance on those benefits or features as patentably
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`significant.” MPEP § 2111.02; see also Poly-America LP v. GSE Lining Tech.,
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`Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004).
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`Notwithstanding the preamble’s lack of significance in the construction of
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`claim 1, Sylvania’s packaging indicates that the net light is intended for use as a
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`decoration on a bush or tree, and Sylvania’s Instruction Manual further makes clear
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`that the net light is suitable for decoration of a live tree. Ex. 1009 ¶37. Notably, as
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`discussed further below, Sylvania’s net light was manufactured to meet the UL
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`Standards for Decorative Lighting Strings. In addition, regarding any tangle-
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`resistant features provided by the claimed invention, the ’664 patent discloses that
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`“the use of unique wire and lamp connectors, the layout of the wires, and in some
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`cases, the reduction of wires between lamps, contributes to the tangle-resistant or
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`tangle-reduced features of the embodiments.” Ex. 1001 at 1:47-51. As discussed
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`in detail below, the general structure and connection arrangements of Sylvania’s
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`net light is identical to that of the claimed invention, and thus, Sylvania’s net light
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`will likewise exhibit the same tangle-resistant benefits as the claimed invention.
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`Ex. 1009 ¶38.
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`Accordingly, Sylvania meets Feature 1(pre).
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`
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`Feature 1(a)
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`Feature 1(a) requires “a power plug adjacent a first corner formed at the
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`first and fourth sides of the rectangular display area.” Ex. 1001 at 23:32-34.
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`As indicated in the annotated images of Sylvania’s net light below, Sylvania
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`discloses a power plug adjacent a first corner formed at the first and fourth sides of
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`the rectangular display area, such as required by Feature 1(a).
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`Power plug
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`1st corner
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`1st side
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`4th side
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`Rectangular
`display area
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`1st corner
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`1st side
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`Power plug
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`4th side
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`Rectangular
`display area
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`Sylvania thus teaches Feature 1(a).
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`
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`Feature 1(b)
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`Feature 1(b) requires “a power receptacle adjacent a second corner formed
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`at the first and second sides of the rectangular display area.” Ex. 1001 at 23:34-35.
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`As shown in the annotated images of Sylvania’s net light below, Sylvania
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`includes a power receptacle adjacent a second corner formed at the first and second
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`sides of the rectangular display area, as required by Feature 1(b).
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`1st side
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`2nd corner
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`Power receptacle
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`2nd side
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`Rectangular
`display area
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`Power receptacle
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`2nd side
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`Rectangular
`display area
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`2nd corner
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`1st side
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`Sylvania thus teaches Feature 1(b).
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`
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`Feature 1(c)
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`Feature 1(c) requires “a first power wire in electrical connection with the
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`power plug and the power receptacle, and defining the first side of the rectangular
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`display area of the lighting assembly.” Ex. 1001 at 23:36-39.
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`As indicated in the annotated image of Sylvania’s net light below, Sylvania
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`discloses a first power wire that extends along and defines the first side of its
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`rectangular display area. The annotated image of Sylvania’s net light below
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`further indicates that this power wire is in electrical connection with both the
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`power plug and the power receptacle, as claimed. Ex. 1009 ¶46.
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`Power plug
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`First power wire in
`electrical connection
`with power plug
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`First power wire
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`Rectangular
`display area
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`Power receptacle
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`1st side
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`First power wire in
`electrical connection
`with power receptacle
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`Patent 10,119,664
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`Power plug
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`Power wire in electrical
`connection with power
`receptacle
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`Power wire in
`electrical connection
`with power plug
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`Power receptacle
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`Sylvania thus teaches Feature 1(c).
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`
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`Feature 1(d)
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`Feature 1(d) requires “a plurality of lamp assemblies distributed within the
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`rectangular display area.” Ex. 1001 at 23:40-41.
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`Case PGR2019-00055
`Patent 10,