`571-272-7822
`
`Paper No. 40
`Entered: February 18, 2021
`
`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.
`
`PGR2019-00056
`Patent 10,222,037 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, STACEY G. WHITE, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`ABRAHAM, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`Granting Joint Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`
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`PGR2019-00056
`Patent 10,222,037 B2
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`INTRODUCTION
`I.
`A. Background and Summary
`Everstar Merchandise Co., Ltd. (“Petitioner”) filed a petition for post-
`grant review (Paper 1, “Pet.”) of claims 1–33 (the “challenged claims”) of
`U.S. Patent 10,222,037 B2 (Ex. 1001, “the ’037 patent”). Willis Electric
`Co., Ltd. (“Patent Owner”) timely filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Pursuant to 35 U.S.C. § 324, the Board instituted trial on
`February 20, 2020, after determining, based on the information presented in
`the papers and evidence before us at that time, it was more likely than not
`that at least one challenged claim was unpatentable over the cited art. Paper
`7 (“Institution Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response to the Petition (Paper
`15, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response (Paper
`21, “Reply”), and Patent Owner filed a Sur-reply (Paper 25, “Sur-reply”).
`Patent Owner also filed a Motion to Exclude (Paper 31, “Mot.”),
`Petitioner filed an Opposition to Patent Owner’s Motion to Exclude (Paper
`32, “Mot. Opp.”), and Patent Owner filed a Reply in Support of its Motion
`to Exclude (Paper 36, “Mot. Reply”).
`
`The parties also filed a Joint Motion to Seal Exhibit 1026. Paper 37.
`On December 16, 2020, the parties presented arguments at an oral
`hearing for this proceeding and for IPR2019-01485. The transcripts of the
`hearings have been entered into the record. Paper 38 (“PGR Tr.”); Paper 39
`(“IPR Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written
`Decision pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. Based on
`the record before us, we conclude that Petitioner has not shown, by a
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`preponderance of the evidence, that claims 1–33 of the ’037 patent are
`unpatentable.
`
`B. Related Matters
`Petitioner states that there are no other judicial or administrative
`matters that would affect, or be affected by, a decision in this proceeding.
`Pet. 1.
`Patent Owner indicates that U.S. Patents 9,140,438 B2, 9,157,588 B2,
`9,243,788 B2, and 9,671,097 B2 are related to the ’037 patent. PO Resp. 4;
`Paper 4, 1. In particular, those patents and the ’037 patent claim priority to
`U.S. Provisional Patent Application 61/877,854. PO Resp. 4; Paper 4, 1.
`Patent Owner also indicates that U.S. Patent 9,157,588 B2 is the subject of
`IPR2019-01485 (institution granted on Feb. 20, 2020) and U.S. Patent
`9,671,097 B2 is the subject of IPR2019-01484 (institution denied on Feb.
`20, 2020). Paper 4, 2; IPR2019-01484, Paper 7; IPR2019-01485, Paper 7.
`The ’037 Patent (Ex. 1001)
`C.
`The ’037 patent, titled “Decorative Lighting With Reinforced
`Wiring,” issued March 5, 2019. Ex. 1001, codes (45), (54). The ’037 patent
`states that decorative lighting, such as seasonal holiday lighting, “often
`comprises one or more strings of lights constructed of multiple wires, lamp
`assemblies and an electrical connector or power plug.” Ex. 1001, 1:34–36.
`According to the ’037 patent, a typical light string may be constructed of
`wire that includes copper strands twisted together and covered with an
`insulating polymer. Ex. 1001, 1:40–44. The ’037 patent explains that a
`decorative light string needs to be able to “withstand physical abuse with
`limited risk of breakage,” because breakage of the wiring “could result in
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`shock or electrocution to persons coming into contact with the decorative
`lighting.” Ex. 1001, 1:53–59.
`The ’037 patent identifies two previously known methods of
`increasing the mechanical strength of wires: (1) relying on large gauge
`wiring and (2) twisting pairs of wires together. Ex. 1001, 1:60–61, 2:1–3.
`These methods, however, “tend[] to drive up material cost and make lighting
`heavier and bulkier.” Ex. 1001, 5:66–6:2. To overcome these shortcomings,
`the ’037 patent is directed to “internally reinforced, electrically-conducting
`wires having superior tensile strength and elongation,” wherein the wire
`includes one or more reinforcing strands or threads and one or more
`conductor strands surrounded by an insulating layer or jacket. Ex. 1001,
`6:6–9, 6:29–33.
`One embodiment of the reinforced decorative lighting wire of the ’037
`patent is shown in Figure 3, reproduced below:
`
`
`Figure 3 shows a perspective view of reinforced decorative wire 100
`comprising reinforcing strand 102, conductor strands 104, and insulating
`layer 106. Ex. 1001, 3:51–52, 6:29–33. The ’037 patent indicates that
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`“reinforcing strands 102 and conductor strands 104 may be arranged in a
`variety of manners, and in a variety of quantities, dependent upon a number
`of factors, including desired wire properties, including, but not limited to,
`tensile strength, resistivity and conductivity.” Ex. 1001, 6:36–41.
`The ’037 patent discloses the use of reinforced wiring in “net light”
`configurations, wherein a patterned array of lamp elements and reinforced
`wire form a two dimensional lighting structure. Ex, 1001, 36:29–33. The
`’037 patent states that “[k]nown net lights typically require some kind of
`reinforcing strands wrapped about the various wiring segments . . . to
`provide additional strength,” but the use of its reinforced wire reduces or
`eliminates the need for such reinforcing strands to be wrapped around the
`net wires. Ex. 1001, 36:33–43.
`One embodiment of the reinforced-wire net light of the ’037 patent is
`depicted in Figure 38, reproduced below.
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`Figure 38 is a front view of a reinforced-wire net light, having power plug
`142, power-terminal wires 144 and 146, lamp assemblies 150, lamp
`elements 154, power-connecting reinforced wires 148, and pattern-support
`cords 314. Ex. 1001, 5:36–37, 36:51–37:29. In Figure 38, lamp assemblies
`150 are arranged in a matrix pattern with the lamp assemblies aligned
`horizontally and vertically to form a two-dimensional rectangular shape, and
`every other lamp assembly staggered to create a diamond pattern. Ex. 1001,
`37:12–20.
`
`Illustrative Claims
`D.
`Of the challenged claims, claims 1, 21, and 33 are independent claims.
`Claims 2–20 depend directly or indirectly from claim 1 and claims 22–32
`depend directly or indirectly from claim 21. Claim 1 is illustrative, and
`reproduced below.
`1. A strength-enhanced, net-like decorative lighting structure,
`comprising:
`a power plug configured to connect to an external source of
`power;
`a first power wire and a second power wire, each of the first
`and second power wires connected to the power plug; and
`a plurality of light sets in electrical connection with the power
`plug via the first power wire and the second power wire,
`each light set defining an electrical circuit, the plurality of
`light sets including a first light set defining a first electrical
`circuit and a second light set defining a second electrical
`circuit, each of the plurality of light sets including:
`a plurality of lamp assemblies, each lamp assembly
`including a lamp element; and
`a plurality of internally-reinforced intermediate wires
`electrically connecting the lamp assemblies, each of the
`plurality of internally-reinforced intermediate wires
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`including a plurality of conductors, one or more
`reinforcing strands, and an outer insulating layer
`surrounding the plurality of conductors and the one or
`more reinforcing strands; and
`one or more non-wire support cords mechanically connected
`to the first light set,
`wherein the plurality of light sets in combination with the one
`or more non-wire support cords define a rectangular-shaped,
`net-like decorative lighting structure.
`Ex. 1001, 42:47–43:7.
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`E.
`Claim(s) Challenged
`1–16, 33
`
`17–20
`
`21–29
`
`30–32
`
`1, 12, 21
`
`33
`
`1, 4, 5, 10–14, 16, 21,
`22, 25, 27
`
`103
`
`103
`
`103
`
`Reviewed Challenges to Patentability
`35 U.S.C. §
`References
`Kumada,1 Debladis ’120,2 Liu,3
`103
`Lawrence4
`Kumada, Debladis ’120,
`Debladis ’614,5 Huang6
`Kumada, Debladis ’120, Lin,7
`Liu, Lawrence
`Kumada, Debladis ’120, Lin,
`Debladis ’614, Huang
`Lin, Debladis ’120
`Lin, Debladis ’120, Liu,
`Kumada
`Sylvania,8 Debladis ’120, 2002
`UL 588 Standards9 (optionally)
`
`103
`
`103
`
`103
`
`Pet. 5.
`
`Petitioner submits declarations from Stephen D. Fantone, Ph.D., (Ex.
`1010 (“Dr. Fantone’s First Declaration”), Ex. 1020 (“Dr. Fantone’s
`Supplemental Declaration”)), Bruce R. Proper (Ex. 1021), and Wai Lung
`(“Patrick”) Wong (Exs. 1022, 1032). Patent Owner submits declarations
`from Stuart Brown (Exs. 2001, 2011, 2041) and Michael Sugar (Ex. 2045).
`
`
`1 US 6,367,951 B1, issued Apr. 9, 2002 (Ex. 1003).
`2 US 8,692,120 B2, issued Apr. 8, 2014 (Ex. 1007).
`3 CN 2644876 Y, published Sept. 29, 2004 (Ex. 1006).
`4 US 5,601,361, issued Feb. 11, 1997 (Ex. 1005).
`5 US 2010/0089614 A1, published Apr. 15, 2010 (Ex. 1009).
`6 US 2013/0062095 A1, published Mar. 14, 2013 (Ex. 1008).
`7 CA 2,238,113 A1, published Nov. 20, 1999 (Ex. 1004).
`8 Sylvania LED Micro Net-Style Lights, 2008 (sale/purchase) (Ex. 1013).
`9 Underwriters Laboratories Inc., UL Standard for Safety for Seasonal and
`Holiday Decorative Products, UL 588 (2000) (Ex. 1011).
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`II. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991)).
`Petitioner asserts that “a person of ordinary skill in the art (‘POSITA’)
`would have had at least a Bachelor of Science degree (or equivalent) in
`Electrical Engineering, or a comparable field, and five (5) or more years of
`experience in the fields of designing electrical wiring or decorative lighting.”
`Pet. 8 (citing Ex. 1010 ¶ 19).
`In its Preliminary Response, Patent Owner disagreed with Petitioner’s
`definition, asserting “the subject matter of the ’037 Patent does not require
`the level of experience for a POSITA that Petitioner proposes.” Prelim.
`Resp. 22. Instead, Patent Owner submitted
`a POSITA during the relevant timeframe 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.
`Prelim. Resp. 22 (citing Ex. 2001 ¶¶ 14–15).
`In the Institution Decision, we adopted Patent Owner’s proposed
`definition, noting that “[b]ased on our review of the ’037 patent and the prior
`art of record, we determine that the definition offered by Patent Owner
`comports with the qualifications a person would have needed to understand
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`and implement the teachings of the ’037 patent and the prior art.” Inst. Dec.
`9–11.
`
`In its Patent Owner Response, Patent Owner offered a modified
`definition, contending that a person of ordinary skill in the art “would have
`(1) at least two years of experience in the design of decorative lighting, or
`(2) 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.” PO Resp. 18. In this modified definition, Patent
`Owner removes the requirement that a person of ordinary skill in the art is “a
`technician” and removes the reference to “electrical wiring” from the first
`part of its originally-proposed definition. PO Resp. 18; see Reply 4.
`According to Patent Owner, “experience only in electrical wiring [would
`not] provide a familiarity with the particularities of decorative lighting.” PO
`Resp. 18. Patent Owner also contends that the subject matter of the ’037
`patent does not require five years of decorative lighting experience (per
`Petitioner’s definition) to understand. PO Resp. 18.
`Petitioner argues Patent Owner is attempting to lower the level of skill
`in the art to include one of its declarants, Mr. Sugar, as a person of ordinary
`skill in the art. Reply 5. Our determination of the appropriate level of skill
`in the art, however, does not depend on whether Mr. Sugar qualifies as a
`person of ordinary skill in the art under a particular definition. To testify as
`an expert under Federal Rule of Evidence 702, a person need not be a person
`of ordinary skill in the art, but rather must be “qualified in the pertinent art.”
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed.
`Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–
`73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to
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`provide testimony at trial because the expert “had sufficient relevant
`technical expertise” and the expert’s “knowledge, skill, experience, training
`[and] education . . . [wa]s likely to assist the trier of fact to understand the
`evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882,
`886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the
`testimony of an expert who “had experience relevant to the field of the
`invention,” despite admission that he was not a person of ordinary skill in
`the art).
`Petitioner also argues that Patent Owner eliminated the reference to
`electrical wiring in its modified definition because it “suddenly realized it
`could not have a [person of ordinary skill in the art] who had knowledge and
`experience in electrical wiring outside of the decorative lighting space, as
`that contradicted the non-analogous art positions it is taking.” Reply 5. Dr.
`Brown, however, testified (1) that he did not consider the change removing
`the express reference to electrical wiring to be significant, (2) that “if you’re
`designing decorative lighting, you have to be designing electrical wiring,”
`and (3) that he considers the term “decorative lighting” in his description of
`a person of ordinary skill in the art to incorporate electrical wiring. Ex.
`1016, 25:16–26:2, 28:5–8; see Ex. 2041 (“Dr. Brown’s Third Declaration”)
`¶ 14. In view of this, we do not consider the definition Patent Owner
`proposes in its Response to be substantively different from the definition it
`proposed in its Preliminary Response, which we adopted in the Institution
`Decision.
`We note that there is at least some overlap in the parties’ proposed
`definitions of a person of ordinary skill in the art, namely that a person of
`ordinary skill in the art would have at least a bachelor’s degree in electrical
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`engineering or an equivalent field. Although Petitioner adds a requirement
`of five or more years of experience, we agree with Patent Owner that five
`years of decorative lighting experience in addition to a degree in electrical
`engineering or an equivalent subject would not be required to understand the
`subject matter of the ’037 patent. PO Resp. 18.
`Thus, after considering the ’037 patent, the asserted prior art, and the
`parties’ arguments, we adopt Patent Owner’s proposed definition and
`determine that a person of ordinary skill in the art “would have (1) at least
`two years of experience in the design of decorative lighting, or (2) 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.” PO Resp. 18. For the reasons discussed above, we understand
`“decorative lighting” to include “electrical wiring.” Ex. 1016, 25:16–26:2,
`28:5–8. Furthermore, despite the fact that Patent Owner offers two “prongs”
`in its definition, we understand that these prongs ultimately define the same
`level of skill in the art. Ex. 1016, 29:16–30:8 (Dr. Brown testifying that
`someone with experience can have “a level of familiarity with a product and
`its design which is equivalent” to someone with a formal education and
`college degree), 30:20–31:6 (Dr. Brown generally agreeing that a person of
`ordinary skill in the art could have less education but more specialized
`experience, or more education and more generalized experience). Further,
`Dr. Fantone states that his opinions would not change if we adopt Patent
`Owner’s definition of the level of ordinary skill in the art. Ex. 1020, ¶ 13;
`see also PGR Tr. 9:24–10:1 (counsel for Petitioner stating that “as long as
`the level of skill is not being used as a bludgeon to try to eliminate the
`Debladis and Huang’s internally reinforced wires as analogous art,” then
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`adopting Patent Owner’s level of skill in the art “wouldn’t have any
`impact”).
`
`B. Claim Construction
`We construe claim terms according to the standard set forth in Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37
`C.F.R. § 42.200(b). Under Phillips, claim terms are afforded “their ordinary
`and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art
`is deemed to read the claim term not only in the context of the particular
`claim in which the disputed term appears, but in the context of the entire
`patent, including the specification.” Id.
`The parties agree that we do not need to construe any claim terms.
`Pet. 8–9; PO Resp. 16–17. We likewise agree. 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) (“[O]nly those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy.”)).
`Asserted Obviousness over Kumada, Debladis ’120, and
`C.
`Liu or Lawrence
`Petitioner contends claims 1–16 and 33 would have been unpatentable
`as obvious in view of the combined teachings of Kumada, Debladis ’120,
`and Liu or Lawrence. Pet. 19–55.
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`1. Overview of References
`Kumada (Ex. 1003)
`a)
`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). One embodiment of Kumada’s net light
`is depicted in Figure 6B, reproduced below.
`
`
`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,
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`L3, . . . Ln) in the light strings, and rope 200’ which joins all of the lamp
`sockets of all light strings 130. Ex. 1003, 6:23–25, 6:53–64, 11:7–12.
`Debladis ’120 (Ex. 1007)
`b)
`Debladis ’120 discloses “electrical control cables, or power cables,
`used for delivering electricity.” Ex. 1007, 1:11–12. Debladis ’120 explains
`that such cables are used in various fields, and need to be “as lightweight as
`possible, and to be compact, while retaining good mechanical strength.”
`Ex. 1007, 1:16–22. Debladis ’120 depicts one embodiment of its cable in
`Figure 3, which is reproduced below.
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`Figure 3 of Debladis ’120 shows the structure of a cable, wherein
`strands 20, made of conductive material such as copper, extend in the
`longitudinal direction of, and surround, central core 40 made of a
`multifilament polymer. Ex. 1007, 3:15–26. The cable also contains outer
`sheath 30 made of insulating material. Ex. 1007, 3:18.
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`2. Analysis
`a) Claim 1
`Petitioner contends that Kumada and Debladis ’120 teach or suggest
`all of the limitations in claim 1. Pet. 19–33. Relying on Figures 4A and 6B
`of Kumada, Petitioner argues that Kumada discloses a power plug
`configured to connect to an external power source (plug 14), first and second
`power wires connected to the plug (active wire A and return wire B), a
`plurality of light sets defining an electrical circuit (32D) and including a
`plurality of lamp assemblies and lamp elements (L1 . . . Ln), and non-wire
`support cords connected to the first light set (rope 200´), wherein the
`plurality of light sets and non-wire support cords define a rectangular-
`shaped, net-like decorative lighting structure. Pet. 19–33 (citing Ex. 1003,
`Figs. 4A and 6B, 1:20–23, 2:57–59, 3:44–46, 6:61–64, 7:39–43, 7:46–47,
`7:55–58, 8:6–12, 10:13, 10:24–35, 10:48–50, 11:9–11, 11:41–44).
`Petitioner also directs us to portions of Debladis ’120 purportedly disclosing
`internally-reinforced intermediate wires including a plurality of conductors
`(strands 20 in Figure 3), one or more reinforcing strands (strand 40 in Figure
`3), and an outer insulating layer (outer sheath 30 in Figure 3), as recited in
`claim 1. Pet. 26–29 (citing Ex. 1007, Fig. 3, 3:15–18, 3:46–51).
`Patent Owner does not dispute that the combined teachings of
`Kumada and Debladis ’120 disclose each limitation of claim 1. Patent
`Owner, however, does dispute Petitioner’s proposed reasons for combining
`Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous
`art. PO Resp. 36–61.
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`1. Whether Debladis ’120 is analogous art
`“A reference qualifies as prior art for an obviousness determination
`under § 103 only when it is analogous to the claimed invention.” In re
`Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). “Two separate tests define the
`scope of analogous prior art: (1) whether the art is from the same field of
`endeavor, regardless of the problem addressed and, (2) if the reference is not
`within the field of the inventor’s endeavor, whether the reference still is
`reasonably pertinent to the particular problem with which the inventor is
`involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`Petitioner contends that Kumada and Debladis ’120 are analogous art
`to the ’037 patent, arguing that the references are in the same field of
`endeavor because they all disclose a conductive wire that connects various
`resistive elements used in products that require electricity. Pet. 29–30.
`Petitioner also argues that Kumada, Debladis ’120, and the ’037 patent have
`overlapping U.S. and International patent classifications—H01B, relating to
`“CABLES; CONDUCTORS; INSULATORS.” Reply 7. Petitioner also
`directs us to the file history of the ’037 patent, noting that Patent Owner
`cited at least one prior art reference in an IDS “relating to electrical wiring
`outside of decorative lighting,” and that Patent Owner did not raise a non-
`analogous art argument when the examiner applied a non-decorative lighting
`reference in an office action rejecting the claims. Reply 7.
`Patent Owner contends that Debladis ’120 is from a different field of
`endeavor as compared to Kumada and the ’037 patent. According to Patent
`Owner, Kumada and the ’037 patent are both directed to the field of
`decorative lighting, and more specifically, net lights. PO Resp. 59. On the
`other hand, Patent Owner argues that Debladis ’120 is directed to an entirely
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`different field of endeavor because it discloses a “lightweight, reduced-
`copper control cable,” and the only explicit use of the cable is in the
`automotive industry. PO Resp. 59. Patent Owner argues Debladis ’120
`“do[es] not relate to decorative lighting, mention lights, or even mention
`connecting a series of resistive elements.” Sur-reply 6. Patent Owner
`further argues that Petitioner’s proposed field of endeavor is “unclear and
`devoid of lighting.” Sur-reply 7.
`With regard to Petitioner’s arguments about the citation of references
`during prosecution of the application leading to the ’037 patent, Patent
`Owner notes that Petitioner cites no authority in support of its arguments,
`asserts that there is no requirement that a patent applicant make every
`argument during prosecution, and argues that citation in an information
`disclosure statement is not an admission of relevance of the cited reference.
`Sur-reply 8–9 (citing MPEP § 2266.01 and 37 C.F.R. §1.97(h)).
`We are persuaded by Petitioner’s argument that the references are in
`the same field of endeavor. The Federal Circuit in Bigio held that the field
`of endeavor test for analogous art “requires the PTO to determine the
`appropriate field of endeavor by reference to explanations of the invention’s
`subject matter in the patent application, including the embodiments,
`function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325.
`Despite quoting this portion of Bigio in its Sur-reply, Patent Owner focuses
`only on the end-use of the subject matter described in the ’037 patent,
`namely decorative lighting, in defining the field of endeavor. Sur-reply 6.
`The “explanations of the invention’s subject matter” in the ’037 patent,
`however, extend beyond decorative lighting. Bigio, 381 F.3d at 1325.
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`For example, the title, Abstract, and Field of Invention in the ’037
`patent each refer to wiring. Ex. 1001, codes (54) and (57), 1:20–27. The
`’037 patent states that “[w]ires used in decorative lighting typically include
`an electrical conductor surrounded by an insulating material. The electrical
`conductor usually comprises multiple, individual strands of copper
`conductors.” Ex. 1001, 1:37–40. Additionally, the ’037 patent contains
`several figures depicting the structure of its wires, and describes several
`embodiments of its reinforced wires. E.g., Ex. 1001, Figs. 3–6 and 9–13,
`2:34–59, 6:29–15:28, 16:50–19:23. Although the ’037 patent describes the
`use of this reinforced wiring in decorative lighting applications, it is clear
`that at least some of “the embodiments, function, and structure of the
`claimed invention” focus on the wiring itself.
`Consistent with the holding in Bigio, Petitioner’s characterization of
`the field of endeavor is not limited by, or based on, the end-use of the wire.
`The wires/cables of Kumada, Debladis ’120, and the ’037 patent all share
`common fundamental features associated with electric wiring, namely an
`electrical conductor, often comprised of multiple, individual strands of
`copper, surrounded by an insulating material. See Ex. 1001, 1:37–40; Ex.
`1007, 1:11–32 (describing conventional cables made of copper strands
`surrounded by an insulating sheath); Ex. 1003, 6:53–55 (referring to
`“common wire means 40” used in decorative net light products).
`Furthermore, despite Patent Owner’s characterization of Debladis ’120 as
`being limited to automotive applications, Debladis ’120 states that its
`invention “relates to electrical control cables, or power cables, used for
`delivering electricity,” and that “[s]uch cables are used in various fields in
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`industry.” Ex. 1007, 1:11–17. Accordingly, we determine that Kumada,
`Debladis ’120, and the ’037 patent are all from the same field of endeavor.
`Even if we were to agree with Patent Owner that the appropriate field
`of endeavor is “decorative lighting,” the outcome here would not change.
`Dr. Brown testified that “if you’re designing decorative lighting, you have to
`be designing electrical wiring,” and that decorative lighting “incorporates
`. . . electrical wiring.” Ex. 1016, 25:16–18, 28:5–8. Dr. Fantone agreed,
`testifying in his Supplemental Declaration that “[d]ecorative lighting design
`necessarily involves design of electrical wiring.” Ex. 1020 ¶ 16. Thus,
`declarants from both parties agree that decorative lighting and electrical
`wiring are inexorably intertwined, which undermines Patent Owner’s
`arguments that Debladis ’120, a reference addressing electrical wiring, is
`from a different field of endeavor than decorative lighting.
`For all of the foregoing reasons, we determine that Debladis ’120,
`Kumada, and the ’037 patent are analogous art.
`2. Whether Petitioner presented evidence sufficient to demonstrate a
`reason to combine Kumada and Debladis ’120
`To show obviousness, it is not enough to merely show that the prior
`art includes separate references covering each separate limitation in a
`challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
`(Fed. Cir. 2011). Rather, “it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007). According to the Supreme Court in
`KSR, “[t]his is so because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries almost of
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`necessity will be combinations of what, in some sense, is already known.”
`Id. at 418–19. As a result, Petitioner must articulate a reason why a person
`of ordinary skill in the art would have combined or modified the prior art
`references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see
`also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed.
`Cir. 2017) (“In determining whether there would have been a motivation to
`combine prior art references to arrive at the claimed invention, it is
`insufficient to simply conclude the combination would have been obvious
`without identifying any reason why a person of skill in the art would have
`made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
`(Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only
`could have made but would have been motivated to make the combinations
`or modifications of prior art to arrive at the claimed invention.”) (citing
`InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed.
`Cir. 2014)). Furthermore, in performing an obviousness analysis, it is
`important to be aware of “the distortion caused by hindsight bias,” and also
`to “be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S.
`at 421.
`The Parties’ Arguments
`i.
`Petitioner first argues that “a person skilled in the art would have
`looked to combine Kumada with Debladis ’120 if she were looking for
`known methods that could be used to increase the strength and durability of
`the decorative lighting products.” Pet. 30 (citing Ex. 1010 ¶ 65). Petitioner
`contends a person of ordinary skill in the art “would have had a reasonable
`expectation of success incorporating the reinforced wires of Debladis ’120
`into the decorative light assembly of Kumada according to known principles
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`in the art to achieve a more durable wire.” Pet. 30. Additionally, Petitioner
`asserts that as far back as 2002, the UL 588 standards “contemplated the use
`of reinforced wiring in decorative lighting products.” Pet. 30 (citing. Ex.
`1011; Ex. 1010 ¶ 66).
`Petitioner next argues that “it would have been obvious to modify
`Kumada to incorporate the reinforced wires of Debladis ’120 because it
`involves a simpl