`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`EVERSTAR MERCHANDISE CO. LTD.,
`Petitioner
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner
`________________
`
`Case PGR2019-00056
`Patent 10,222,037
`________________
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`PETITIONER’S NOTICE OF APPEAL
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`PGR2019-00056
`U.S. Patent No. 10,222,037
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`Notice is hereby given, pursuant to 35 U.S.C. §§ 141 & 142 and 37 C.F.R.
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`
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`§ 90.2(a), that Petitioner Everstar Merchandise Co. Ltd. (“Everstar”) hereby
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`appeals to the United States Court of Appeals for the Federal Circuit from the Final
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`Written Decision on Remand in PGR2019-00056 entered on October 11, 2022 (the
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`“Final Written Decision on Remand,” Paper 45) of the Patent Trial and Appeal
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`Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”),
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`and the Order Denying Director Review of that decision in PGR2019-00056
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`entered on January 25, 2023 (the “Order Denying Director Review,” Paper 49) of
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`the USPTO.
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`Copies of the Final Written Decision on Remand and the Order Denying
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`Director Review are attached.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Everstar further indicates that
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`the issues on appeal include, but are not limited to, the following:
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`1)
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`The Board’s determination that Everstar failed to meet its burden of
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`proof that claims 1-33 of U.S. Patent 10,222,037 (“the ’037 patent”)
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`are unpatentable for obviousness over the asserted prior art, as set
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`forth in the Final Written Decision on Remand;
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`2)
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`The Board’s obviousness analyses for demonstrating a reason to
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`combine the prior art references, including but not limited to, physical
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`PGR2019-00056
`U.S. Patent No. 10,222,037
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`combinability of the references and quantification of the material
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`properties of that resulting combination;
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`3)
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`4)
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`The Board’s determination of the level of ordinary skill in the art;
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`The Board’s consideration, or lack thereof, of the expert testimony,
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`prior art references, knowledge of a person of ordinary skill in the art,
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`and other evidence in the record;
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`5)
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`The Board’s factual findings, conclusions of law, evidentiary rulings,
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`and/or other determinations supporting, opposing, or otherwise
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`relating to the above issues; and
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`6)
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`The Board’s compliance, or lack thereof, with its rules, regulations,
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`and the Administrative Procedures Act.
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`This Notice of Appeal is timely, having been filed within 63 days after the
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`USPTO issued its Order Denying Director Review. 37 C.F.R. §§ 90.3(a)(1) &
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`(b)(1); see PTAB Interim Process for Director Review, https://www.uspto.gov/
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`patents/patent-trial-and-appeal-board/interim-process-director-review (“A timely
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`Request for Rehearing by the Director will be considered a request for rehearing
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`under 37 CFR 90.3(b) and will reset the time for appeal or civil action as set forth
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`in that rule.”). Copies of this Notice of Appeal are being filed concurrently with
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`PGR2019-00056
`U.S. Patent No. 10,222,037
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`the Director, the Board, and the Clerk of the United States Court of Appeals for the
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`Federal Circuit, along with the Court’s requisite filing fee.
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`March 23, 2023
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`Respectfully submitted,
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`
`
`/ Brenton R. Babcock /
`Brenton R. Babcock, Reg. No. 39,592
`LOEB & LOEB LLP
`10100 Santa Monica Blvd., Ste. 2200
`Los Angeles, CA 90067
`Tel.: 310-282-2000; Fax: 310-282-2200
`Email: bbabcock@loeb.com
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`Counsel for Petitioner
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`CERTIFICATE OF FILING AND SERVICE
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`The undersigned hereby certifies that, in addition to being filed with the
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`Patent Trial and Appeal Board through the P-TACTS System, a true and correct
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`copy of the foregoing NOTICE OF APPEAL TO THE UNITED STATES COURT
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`OF APPEALS FOR THE FEDERAL CIRCUIT BY PETITIONER EVERSTAR
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`MERCHANDISE CO. LTD., is being sent via the U.S. Postal Service to the
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`Director of the United States Patent and Trademark Office, at the following
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`address:
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`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8, P.O. Box 1450
`Alexandria, VA 22313-1450
`I also certify that a true and correct copy of the foregoing NOTICE OF
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`APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE
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`FEDERAL CIRCUIT BY PETITIONER EVERSTAR MERCHANDISE CO.
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`LTD. and the prescribed fees were filed via the electronic filing system, CM/ECF
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`and pay.gov, on this 23rd day of March 2023, with the Clerk’s Office of the United
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`States Court of Appeals for the Federal Circuit.
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`I also certify that a true and correct copy of the foregoing NOTICE OF
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`APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE
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`FEDERAL CIRCUIT BY PETITIONER EVERSTAR MERCHANDISE CO.
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`LTD. was served on Patent Owner by filing this document through the P-TACTS
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`System as well as by delivering a copy via electronic mail to the following:
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`fonder@cfd-ip.com
`tbianchi@slwip.com
`SLW-PTAB@slwip.com
`christensen@cfd-ip.com
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`Dated: March 23, 2023
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`/ Brenton R. Babcock /
`Brenton R. Babcock, Reg. No. 39,592
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`Trials@uspto.gov
`571-272-7822
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`Paper No. 45
`Entered: October 11, 2022
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`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 on Remand
`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
`
`
`
`
`
`
`
`PGR2019-00056
`Patent 10,222,037 B2
`
`
`I.
`
`INTRODUCTION
`
`
`This decision addresses the opinion of the United States Court of
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`Appeals for the Federal Circuit in Everstar Merchandise Co. Ltd., v. Willis
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`Electric Co., Ltd., No. 2021-1882 (Fed. Cir. Apr. 12, 2022), vacating our
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`Final Written Decision and remanding for further proceedings. Having
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`analyzed the entirety of the record anew in light of the court’s directives in
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`Everstar, we conclude that Everstar Merchandise Co., Ltd. (“Petitioner”) has
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`not shown by a preponderance of the evidence that claims 1–33 (the
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`“challenged claims”) of U.S. Patent 10,222,037 B2 (Ex. 1001, “the ’037
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`patent”) are unpatentable.
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`A. Procedural History
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`Petitioner filed a petition for post-grant review (Paper 1, “Pet.”) of
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`claims 1–33 of the ’037 patent. Willis Electric Co., Ltd. (“Patent Owner”)
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`timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Pursuant to
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`35 U.S.C. § 324, the Board instituted trial on February 20, 2020, after
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`determining, based on the information presented in the papers and evidence
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`before us at that time, it was more likely than not that at least one challenged
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`claim was unpatentable over the cited art. Paper 7 (“Institution Decision” or
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`“Inst. Dec.”).
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`After institution, Patent Owner filed a Response to the Petition (Paper
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`15, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response (Paper
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`21, “Reply”), and Patent Owner filed a Sur-reply (Paper 25, “Sur-reply”).
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`Patent Owner also filed a Motion to Exclude (Paper 31, “Mot.”),
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`Petitioner filed an Opposition to Patent Owner’s Motion to Exclude (Paper
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`32, “Mot. Opp.”), and Patent Owner filed a Reply in Support of its Motion
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`2
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`PGR2019-00056
`Patent 10,222,037 B2
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`to Exclude (Paper 36, “Mot. Reply”).
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`
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`The parties also filed a Joint Motion to Seal Exhibit 1026. Paper 37.
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`On December 16, 2020, the parties presented arguments at oral
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`hearings for this proceeding and for IPR2019-01485. Because there are
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`some overlapping issues, and the parties made similar arguments in both
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`proceedings, the transcripts of both hearings have been entered into the
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`record. Paper 38 (“PGR Tr.”); Paper 39 (“IPR Tr.”).
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`On February 18, 2021, we issued a Final Written Decision. Paper 40.
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`We held that Petitioner had not shown, by a preponderance of the evidence,
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`that claims 1–33 of the ’037 patent are unpatentable. Paper 40, 43–44. In
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`particular, we stated “[a]fter reviewing the parties’ arguments and evidence,
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`we find Petitioner has failed to establish sufficiently that a person of
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`ordinary skill in the art would have had reason to combine the teachings of
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`Kumada and Debladis ’120 to arrive at the claimed invention.” Paper 40,
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`34.
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`Petitioner appealed our Final Written Decision to the Federal Circuit.
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`See Paper 41 (Petitioner’s Notice of Appeal”). The Federal Circuit issued an
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`opinion in Everstar vacating our Final Written Decision and remanding for
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`further proceedings. Everstar, No. 2021-1882, slip op. at 9. The Federal
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`Circuit stated
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`The Board should have considered whether cost, in addition to
`increased strength and durability, would have presented a
`sufficient motivation to combine the asserted references. The
`Board’s refusal to do so under these circumstances amounts to
`an abuse of discretion. We therefore vacate the Board’s decision
`and remand for further proceedings consistent with the above.
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`
`Id.
`
`3
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`PGR2019-00056
`Patent 10,222,037 B2
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` In our Final Written Decision, we addressed Petitioner’s argument
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`regarding cost reduction in combination with increased strength, stating that
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`“even if we were to consider Petitioner’s cost reduction arguments, the
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`outcome here would not change.” Paper 40, 33–34. In light of the Federal
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`Circuit’s guidance, we now additionally “consider whether cost reduction
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`would have motivated a skilled artisan to combine the asserted prior art.”
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`Everstar, No. 2021-1882, slip op. at 2.
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`On June 15, 2022, in accordance with the Board’s Standard Operating
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`Procedure 9, a call was held with the parties and Judges White, Stephens,
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`and Abraham to discuss the remand proceedings. During the call, the parties
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`agreed to submit papers identifying the portions of the record in this
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`proceeding that the Federal Circuit cited in the Everstar decision, including
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`those portions of the record addressing the parties’ arguments regarding cost
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`reduction. Papers 43, 44.
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` We have jurisdiction under 35 U.S.C. § 6. We issue this Final
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`Written Decision on Remand pursuant to 35 U.S.C. § 328(a) and 37 C.F.R.
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`§ 42.73. For the reasons discussed below, we conclude that Petitioner has
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`not shown, by a preponderance of the evidence, that claims 1–33 of the ’037
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`patent are unpatentable.
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`B. Related Matters
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`Petitioner states that there are no other judicial or administrative
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`matters that would affect, or be affected by, a decision in this proceeding.
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`Pet. 1.
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`Patent Owner indicates that U.S. Patents 9,140,438 B2, 9,157,588 B2,
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`9,243,788 B2, and 9,671,097 B2 are related to the ’037 patent. PO Resp. 4;
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`Paper 4, 1. In particular, those patents and the ’037 patent claim priority to
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`4
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`PGR2019-00056
`Patent 10,222,037 B2
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`U.S. Provisional Patent Application 61/877,854. PO Resp. 4; Paper 4, 1.
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`Patent Owner also indicates that U.S. Patent 9,157,588 B2 is the subject of
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`IPR2019-01485 (Final Written Decision issued February 18, 2021) and U.S.
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`Patent 9,671,097 B2 is the subject of IPR2019-01484 (institution denied on
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`Feb. 20, 2020). Paper 4, 2; IPR2019-01484, Paper 7; IPR2019-01485, Paper
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`41.
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`C.
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`The ’037 Patent (Ex. 1001)
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`The ’037 patent, titled “Decorative Lighting With Reinforced
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`Wiring,” issued March 5, 2019. Ex. 1001, codes (45), (54). The ’037 patent
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`states that decorative lighting, such as seasonal holiday lighting, “often
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`comprises one or more strings of lights constructed of multiple wires, lamp
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`assemblies and an electrical connector or power plug.” Ex. 1001, 1:34–36.
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`According to the ’037 patent, a typical light string may be constructed of
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`wire that includes copper strands twisted together and covered with an
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`insulating polymer. Ex. 1001, 1:40–44. The ’037 patent explains that a
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`decorative light string needs to be able to “withstand physical abuse with
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`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
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`lighting.” Ex. 1001, 1:53–59.
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`The ’037 patent identifies two previously known methods of
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`increasing the mechanical strength of wires: (1) relying on large gauge
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`wiring and (2) twisting pairs of wires together. Ex. 1001, 1:60–61, 2:1–3.
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`These methods, however, “tend[] to drive up material cost and make lighting
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`heavier and bulkier.” Ex. 1001, 5:66–6:2. To overcome these shortcomings,
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`the ’037 patent is directed to “internally-reinforced, electrically-conducting
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`wires having superior tensile strength and elongation,” wherein the wire
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`5
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`PGR2019-00056
`Patent 10,222,037 B2
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`includes one or more reinforcing strands or threads and one or more
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`conductor strands surrounded by an insulating layer or jacket. Ex. 1001,
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`6:6–9, 6:29–33.
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`One embodiment of the reinforced decorative lighting wire of the ’037
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`patent is shown in Figure 3, reproduced below:
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`
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`Figure 3 shows a perspective view of reinforced decorative wire 100
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`comprising reinforcing strand 102, conductor strands 104, and insulating
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`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
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`variety of manners, and in a variety of quantities, dependent upon a number
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`of factors, including desired wire properties, including, but not limited to,
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`tensile strength, resistivity and conductivity.” Ex. 1001, 6:36–41.
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`The ’037 patent discloses the use of reinforced wiring in “net light”
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`configurations, wherein a patterned array of lamp elements and reinforced
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`wire form a two dimensional lighting structure. Ex. 1001, 36:29–33. The
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`’037 patent states that “[k]nown net lights typically require some kind of
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`reinforcing strands wrapped about the various wiring segments . . . to
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`6
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`PGR2019-00056
`Patent 10,222,037 B2
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`provide additional strength,” but the use of its reinforced wire reduces or
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`eliminates the need for such reinforcing strands to be wrapped around the
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`net wires. Ex. 1001, 36:33–43.
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`One embodiment of the reinforced-wire net light of the ’037 patent is
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`depicted in Figure 38, reproduced below.
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`
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`Figure 38 is a front view of a reinforced-wire net light, having power plug
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`142, power-terminal wires 144 and 146, lamp assemblies 150, lamp
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`elements 154, power-connecting reinforced wires 148, and pattern-support
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`cords 314. Ex. 1001, 5:36–37, 36:51–37:29. In Figure 38, lamp assemblies
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`150 are arranged in a matrix pattern with the lamp assemblies aligned
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`horizontally and vertically to form a two-dimensional rectangular shape, and
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`every other lamp assembly staggered to create a diamond pattern. Ex. 1001,
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`37:12–20.
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`7
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`PGR2019-00056
`Patent 10,222,037 B2
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`D.
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`Illustrative Claims
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`Of the challenged claims, claims 1, 21, and 33 are independent claims.
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`Claims 2–20 depend directly or indirectly from claim 1 and claims 22–32
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`depend directly or indirectly from claim 21. Claim 1 is illustrative, and
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`reproduced below.
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`1. A strength-enhanced, net-like decorative lighting structure,
`comprising:
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`a power plug configured to connect to an external source of
`power;
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`a first power wire and a second power wire, each of the first
`and second power wires connected to the power plug; and
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`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
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`a plurality of internally-reinforced intermediate wires
`electrically connecting the lamp assemblies, each of the
`plurality of internally-reinforced intermediate wires
`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
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`one or more non-wire support cords mechanically connected
`to the first light set,
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`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.
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`Ex. 1001, 42:47–43:7.
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`8
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`PGR2019-00056
`Patent 10,222,037 B2
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`E.
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`Reviewed Challenges to Patentability
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`Claim(s) Challenged
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`35 U.S.C. §
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`1–16, 33
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`17–20
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`21–29
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`30–32
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`1, 12, 21
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`33
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`103
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`103
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`103
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`103
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`103
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`103
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`References
`Kumada,1 Debladis ’120,2 Liu,3
`Lawrence4
`
`Kumada, Debladis ’120,
`Debladis ’614,5 Huang6
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`Kumada, Debladis ’120, Lin,7
`Liu, Lawrence
`
`Kumada, Debladis ’120, Lin,
`Debladis ’614, Huang
`
`Lin, Debladis ’120
`
`Lin, Debladis ’120, Liu,
`Kumada
`
`1, 4, 5, 10–14, 16, 21,
`22, 25, 27
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`103
`
`Sylvania,8 Debladis ’120, 2002
`UL 588 Standards9 (optionally)
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`Pet. 5.
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`
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`Petitioner submits declarations from Stephen D. Fantone, Ph.D.,
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`(Ex. 1010 (“Dr. Fantone’s First Declaration”), Ex. 1020 (“Dr. Fantone’s
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`Supplemental Declaration”)), Bruce R. Proper (Ex. 1021), and Wai Lung
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`(“Patrick”) Wong (Exs. 1022, 1032). Patent Owner submits declarations
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`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).
`
`9
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`PGR2019-00056
`Patent 10,222,037 B2
`
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`II. ANALYSIS
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`A.
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`Level of Ordinary Skill in the Art
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`The level of skill in the art is a factual determination that provides a
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`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
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`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
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`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`
`F.2d 714, 718 (Fed. Cir. 1991)).
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`Petitioner asserts that “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
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`Electrical Engineering, or a comparable field, and five (5) or more years of
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`experience in the fields of designing electrical wiring or decorative lighting.”
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`Pet. 8 (citing Ex. 1010 ¶ 19).
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`In its Preliminary Response, Patent Owner disagreed with Petitioner’s
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`definition, asserting “the subject matter of the ’037 Patent does not require
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`the level of experience for a POSITA that Petitioner proposes.” Prelim.
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`Resp. 22. Instead, Patent Owner submitted
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`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.
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`Prelim. Resp. 22 (citing Ex. 2001 ¶¶ 14–15).
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`In the Institution Decision, we adopted Patent Owner’s proposed
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`definition, noting that “[b]ased on our review of the ’037 patent and the prior
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`art of record, we determine that the definition offered by Patent Owner
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`comports with the qualifications a person would have needed to understand
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`10
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`PGR2019-00056
`Patent 10,222,037 B2
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`and implement the teachings of the ’037 patent and the prior art.” Inst. Dec.
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`9–11.
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`In its Patent Owner Response, Patent Owner offered a modified
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`definition, contending that a person of ordinary skill in the art “would have
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`(1) at least two years of experience in the design of decorative lighting, or
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`(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
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`Owner removes the requirement that a person of ordinary skill in the art is “a
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`technician” and removes the reference to “electrical wiring” from the first
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`part of its originally-proposed definition. PO Resp. 18; see Reply 4.
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`According to Patent Owner, “experience only in electrical wiring [would
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`not] provide a familiarity with the particularities of decorative lighting.” PO
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`Resp. 18. Patent Owner also contends that the subject matter of the ’037
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`patent does not require five years of decorative lighting experience (per
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`Petitioner’s definition) to understand. PO Resp. 18.
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`Petitioner argues Patent Owner is attempting to lower the level of skill
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`in the art to include one of its declarants, Mr. Sugar, as a person of ordinary
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`skill in the art. Reply 5. Our determination of the appropriate level of skill
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`in the art, however, does not depend on whether Mr. Sugar qualifies as a
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`person of ordinary skill in the art under a particular definition.
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`Petitioner also argues that Patent Owner eliminated the reference to
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`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
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`experience in electrical wiring outside of the decorative lighting space, as
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`that contradicted the non-analogous art positions it is taking.” Reply 5.
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`11
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`PGR2019-00056
`Patent 10,222,037 B2
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`Patent Owner’s declarant, 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
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`lighting” in his description of a person of ordinary skill in the art to
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`incorporate electrical wiring. Ex. 1016, 25:16–26:2, 28:5–8; see Ex. 2041
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`(“Dr. Brown’s Third Declaration”) ¶ 14. In view of this, we do not consider
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`the definition Patent Owner proposes in its Response to be substantively
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`different from the definition it proposed in its Preliminary Response, which
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`we adopted in the Institution Decision.
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`We note that there is at least some overlap in the parties’ proposed
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`definitions of a person of ordinary skill in the art, namely that a person of
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`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
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`of five or more years of experience, we agree with Patent Owner that five
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`years of decorative lighting experience in addition to a degree in electrical
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`engineering or an equivalent subject would not be required to understand the
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`subject matter of the ’037 patent. PO Resp. 18.
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`Thus, after considering the ’037 patent, the asserted prior art, and the
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`parties’ arguments, we adopt Patent Owner’s proposed definition and
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`determine that a person of ordinary skill in the art “would have (1) at least
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`two years of experience in the design of decorative lighting, or (2) at least a
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`bachelor’s degree in mechanical engineering, electrical engineering, or an
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`equivalent field, and a basic familiarity with circuits used in decorative
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`lighting.” PO Resp. 18. For the reasons discussed above, we understand
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`“decorative lighting” to include “electrical wiring.” Ex. 1016, 25:16–26:2,
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`28:5–8. Furthermore, despite the fact that Patent Owner offers two “prongs”
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`in its definition, we understand that these prongs ultimately define the same
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`level of skill in the art. Ex. 1016, 29:16–30:8 (Dr. Brown testifying that
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`someone with experience can have “a level of familiarity with a product and
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`its design which is equivalent” to someone with a formal education and
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`college degree), 30:20–31:6 (Dr. Brown generally agreeing that a person of
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`ordinary skill in the art could have less education but more specialized
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`experience, or more education and more generalized experience). Further,
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`Petitioner’s declarant, Dr. Fantone, states that his opinions would not change
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`if we adopt Patent Owner’s definition of the level of ordinary skill in the art.
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`Ex. 1020 ¶ 13; see also PGR Tr. 9:24–10:1 (counsel for Petitioner stating
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`that “as long as the level of skill is not being used as a bludgeon to try to
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`eliminate the Debladis and Huang’s internally reinforced wires as analogous
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`art,” then adopting Patent Owner’s level of skill in the art “wouldn’t have
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`any impact”).
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`B. Claim Construction
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`We construe claim terms according to the standard set forth in Phillips
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`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37
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`C.F.R. § 42.200(b). Under Phillips, claim terms are afforded “their ordinary
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`and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
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`customary meaning of a claim term is the meaning that the term would have
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`to a person of ordinary skill in the art in question at the time of the
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`invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art
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`is deemed to read the claim term not only in the context of the particular
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`claim in which the disputed term appears, but in the context of the entire
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`patent, including the specification.” Id.
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`The parties agree that we do not need to construe any claim terms.
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`Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
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`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
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`Cir. 1999) (“[O]nly those terms need be construed that are in controversy,
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`and only to the extent necessary to resolve the controversy.”)).
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`C.
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`Asserted Obviousness over Kumada, Debladis ’120, and
`Liu or Lawrence
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`Petitioner contends claims 1–16 and 33 would have been unpatentable
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`as obvious in view of the combined teachings of Kumada, Debladis ’120,
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`and Liu or Lawrence. Pet. 19–55.
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`1. Overview of References
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`a)
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`Kumada (Ex. 1003)
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`Kumada discloses “[a]n economical method of making a net or mesh
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`light,” wherein the net light includes a plurality of series-connected light
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`strings, each light string including a plurality of lamp sockets and a plurality
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`of intermediate lengths of wire connecting the lamp sockets, and at least one
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`non-electrical rope physically fastened to the lamp sockets, thereby forming
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`a net or mesh. Ex. 1003, code (57). One embodiment of Kumada’s net light
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`is depicted in Figure 6B, reproduced below.
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`Patent 10,222,037 B2
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`Figure 6B is a circuit diagram and physical layout of a net light having light
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`strings 130, wires 22 connecting the individual lamp sockets (L1, L2, L3, . . .
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`Ln) in the light strings, and rope 200’ which joins all of the lamp sockets of
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`all light strings 130. Ex. 1003, 6:23–25, 6:53–64, 11:7–12.
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`b) Debladis ’120 (Ex. 1007)
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`Debladis ’120 discloses “electrical control cables, or power cables,
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`used for delivering electricity.” Ex. 1007, 1:11–12. Debladis ’120 explains
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`that such cables are used in various fields, and need to be “as lightweight as
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`possible, and to be compact, while retaining good mechanical strength.”
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`Ex. 1007, 1:16–22. Debladis ’120 depicts one embodiment of its cable in
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`Figure 3, which is reproduced below.
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`Figure 3 of Debladis ’120 shows the structure of a cable, wherein
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`strands 20, made of conductive material such as copper, extend in the
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`longitudinal direction of, and surround, central core 40 made of a
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`multifilament polymer. Ex. 1007, 3:15–26. The cable also contains outer
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`sheath 30 made of insulating material. Ex. 1007, 3:18.
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`2. Analysis
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`a) Claim 1
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`Petitioner contends that Kumada and Debladis ’120 teach or suggest
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`all of the limitations in claim 1. Pet. 19–33. Relying on Figures 4A and 6B
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`of Kumada, Petitioner argues that Kumada discloses a power plug
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`configured to connect to an external power source (plug 14), first and second
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`power wires connected to the plug (active wire A and return wire B), a
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`plurality of light sets defining an electrical circuit (32D) and including a
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`plurality of lamp assemblies and lamp elements (L1 . . . Ln), and non-wire
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`support cords connected to the first light set (rope 200´), wherein the
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`plurality of light sets and non-wire support cords define a rectangular-
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`shaped, net-like decorative lighting structure. Pet. 19–33 (citing Ex. 1003,
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`16
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`Figs. 4A and 6B, 1:20–23, 2:57–59, 3:44–46, 6:61–64, 7:39–43, 7:46–47,
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`7:55–58, 8:6–12, 10:13, 10:24–35, 10:48–50, 11:9–11, 11:41–44).
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`Petitioner also directs us to portions of Debladis ’120 purportedly disclosing
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`internally-reinforced intermediate wires including a plurality of conductors
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`(strands 20 in Figure 3), one or more reinforcing strands (strand 40 in Figure
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`3), and an outer insulating layer (outer sheath 30 in Figure 3), as recited in
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`claim 1. Pet. 26–29 (citing Ex. 1007, Fig. 3, 3:15–18, 3:46–51).
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`Patent Owner does not dispute that the combined teachings of
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`Kumada and Debladis ’120 disclose each limitation of claim 1. Patent
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`Owner, however, does dispute Petitioner’s proposed reasons for combining
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`Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous
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`art. PO Resp. 36–61.
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`1. Whether Debladis ’120 is analogous art
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`“A reference qualifies as prior art for an obviousness determination
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`under § 103 only when it is analogous to the claimed invention.” In re
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`Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). “Two separate tests define the
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`scope of analogous prior art: (1) whether the art is from the same field of
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`endeavor, regardless of the problem addressed and, (2) if the reference is not
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`within the field of the inventor’s endeavor, whether the reference still is
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`reasonably pertinent to the particular problem with which the inventor is
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`involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
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`Petitioner contends that Kumada and Debladis ’120 are analogous art
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`to the ’037 patent, arguing that the references are in the same field of
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`endeavor because they all disclose a conductive wire that connects various
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`resistive elements used in products that require electricity. Pet. 29–30.
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`Petitioner also argues that Kumada, Debladis ’120, and the ’037 patent have
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`overlapping U.S. and International patent classifications—H01B, relating to
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`“CABLES; CONDUCTORS; INSULATORS.” Reply 7. Petitioner also
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`directs us to the file history of the ’037 patent, noting that Patent Owner
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`cited at least one prior art reference in an IDS “relating to electrical wiring
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`outside of decorative lighting,” and that Patent Owner did not raise a non-
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`analogous art argument when the examiner applied a non-decorative lighting
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`reference in an office action rejecting the claims. Reply 7.
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`Patent Owner contends that Debladis ’120 is from a different field of
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`endeavor as compared to Kumada and the ’037 patent. According to Patent
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`Owner, Kumada and the ’037 patent are both directed to the field of
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`decorative lighting, and more specifically, net lights. PO Resp. 59. On the
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`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-
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`copper control cable,” and the only explicit use of the cable is in the
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`automotive industry. PO Resp. 59. Patent Owner argues Debladis ’120
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`“do[es] not relate to decorative lighting, mention lights, or even mention
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`connecting a series of resistive elements.” Sur-reply 6. Patent Owner
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`further argues that Petitioner’s proposed field of endeavor is “unclear and
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`devoid of lighting.” Sur-reply 7.
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`With regard to Petitioner’s arguments about the citation of references
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`during prosecution of the application leading to the ’037 paten