Trials@uspto.gov
`571-272-7822
`
`Paper No. 45
`Entered: October 11, 2022
`
`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
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 45
`Entered: October 11, 2022
`
`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
`
`Appeals for the Federal Circuit in Everstar Merchandise Co. Ltd., v. Willis
`
`Electric Co., Ltd., No. 2021-1882 (Fed. Cir. Apr. 12, 2022), vacating our
`
`Final Written Decision and remanding for further proceedings. Having
`
`analyzed the entirety of the record anew in light of the court’s directives in
`
`Everstar, we conclude that Everstar Merchandise Co., Ltd. (“Petitioner”) has
`
`not shown by a preponderance of the evidence that claims 1–33 (the
`
`“challenged claims”) of U.S. Patent 10,222,037 B2 (Ex. 1001, “the ’037
`
`patent”) are unpatentable.
`
`A. Procedural History
`
`Petitioner filed a petition for post-grant review (Paper 1, “Pet.”) of
`
`claims 1–33 of 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
`
`2
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`
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`PGR2019-00056
`Patent 10,222,037 B2
`
`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 oral
`
`hearings for this proceeding and for IPR2019-01485. Because there are
`
`some overlapping issues, and the parties made similar arguments in both
`
`proceedings, the transcripts of both hearings have been entered into the
`
`record. Paper 38 (“PGR Tr.”); Paper 39 (“IPR Tr.”).
`
`On February 18, 2021, we issued a Final Written Decision. Paper 40.
`
`We held that Petitioner had not shown, by a preponderance of the evidence,
`
`that claims 1–33 of the ’037 patent are unpatentable. Paper 40, 43–44. In
`
`particular, we stated “[a]fter reviewing the parties’ arguments and evidence,
`
`we find Petitioner has failed to establish sufficiently that a person of
`
`ordinary skill in the art would have had reason to combine the teachings of
`
`Kumada and Debladis ’120 to arrive at the claimed invention.” Paper 40,
`
`34.
`
`Petitioner appealed our Final Written Decision to the Federal Circuit.
`
`See Paper 41 (Petitioner’s Notice of Appeal”). The Federal Circuit issued an
`
`opinion in Everstar vacating our Final Written Decision and remanding for
`
`further proceedings. Everstar, No. 2021-1882, slip op. at 9. The Federal
`
`Circuit stated
`
`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.
`
`
`Id.
`
`3
`
`
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`PGR2019-00056
`Patent 10,222,037 B2
`
`
` In our Final Written Decision, we addressed Petitioner’s argument
`
`regarding cost reduction in combination with increased strength, stating that
`
`“even if we were to consider Petitioner’s cost reduction arguments, the
`
`outcome here would not change.” Paper 40, 33–34. In light of the Federal
`
`Circuit’s guidance, we now additionally “consider whether cost reduction
`
`would have motivated a skilled artisan to combine the asserted prior art.”
`
`Everstar, No. 2021-1882, slip op. at 2.
`
`On June 15, 2022, in accordance with the Board’s Standard Operating
`
`Procedure 9, a call was held with the parties and Judges White, Stephens,
`
`and Abraham to discuss the remand proceedings. During the call, the parties
`
`agreed to submit papers identifying the portions of the record in this
`
`proceeding that the Federal Circuit cited in the Everstar decision, including
`
`those portions of the record addressing the parties’ arguments regarding cost
`
`reduction. Papers 43, 44.
`
` We have jurisdiction under 35 U.S.C. § 6. We issue this Final
`
`Written Decision on Remand pursuant to 35 U.S.C. § 328(a) and 37 C.F.R.
`
`§ 42.73. For the reasons discussed below, we conclude that Petitioner has
`
`not shown, by a 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
`
`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.
`
`Patent Owner also indicates that U.S. Patent 9,157,588 B2 is the subject of
`
`IPR2019-01485 (Final Written Decision issued February 18, 2021) 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
`
`41.
`
`C.
`
`The ’037 Patent (Ex. 1001)
`
`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
`
`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
`
`5
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`
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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
`
`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
`
`“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
`
`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
`
`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.
`
`
`
`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.
`
`7
`
`
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`PGR2019-00056
`Patent 10,222,037 B2
`
`
`D.
`
`Illustrative Claims
`
`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
`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.
`
`8
`
`
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`PGR2019-00056
`Patent 10,222,037 B2
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`
`E.
`
`Reviewed Challenges to Patentability
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`1–16, 33
`
`17–20
`
`21–29
`
`30–32
`
`1, 12, 21
`
`33
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`References
`Kumada,1 Debladis ’120,2 Liu,3
`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
`
`1, 4, 5, 10–14, 16, 21,
`22, 25, 27
`
`103
`
`Sylvania,8 Debladis ’120, 2002
`UL 588 Standards9 (optionally)
`
`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).
`
`9
`
`
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`PGR2019-00056
`Patent 10,222,037 B2
`
`
`II. ANALYSIS
`
`A.
`
`Level of Ordinary Skill in the Art
`
`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
`
`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.
`
`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.
`
`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.
`
`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
`
`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
`
`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,
`
`12
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`PGR2019-00056
`Patent 10,222,037 B2
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`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,
`
`Petitioner’s declarant, 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 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.
`
`13
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`Patent 10,222,037 B2
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`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.”)).
`
`C.
`
`Asserted Obviousness over Kumada, Debladis ’120, and
`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.
`
`1. Overview of References
`
`a)
`
`Kumada (Ex. 1003)
`
`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.
`
`14
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`PGR2019-00056
`Patent 10,222,037 B2
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`
`
`Figure 6B is a circuit diagram and physical layout of a net light having light
`
`strings 130, wires 22 connecting the individual lamp sockets (L1, L2, 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.
`
`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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`Patent 10,222,037 B2
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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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`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
`
`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 patent, Patent
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`Owner notes that Petitioner cites no authority in support of its arguments,
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`asserts that there is no requirement that a patent applicant make every
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`argument during prosecution, and argues that citation in an information
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`disclosure statement is not an admission of relevance of the cited reference.
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`Sur-reply 8–9 (citing MPEP § 2266.01 and 37 C.F.R. § 1.97(h)).
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`We are persuaded by Petitioner’s argument that the references are in
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`the same field of endeavor. The Federal Circuit in Bigio held that the field
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`of endeavor test for analogous art “requires the PTO to determine the
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`appropriate field of endeavor by reference to explanations of the invention’s
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`subject matter in the patent application, including the embodiments,
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`function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325.
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`Despite quoting this portion of Bigio in its Sur-reply, Patent Owner focuses
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`only on the end-use of the subject matter described in the ’037 patent,
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`namely decorative lighting, in defining the field of endeavor. Sur-reply 6.
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`The “explanations of the invention’s subject matter” in the ’037 patent,
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`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
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`patent each refer to wiring. Ex. 1001, codes (54) and (57), 1:20–27. The
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`’037 patent states that “[w]ires used in decorative lighting typically include
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`an electrical conductor surrounded by an insulating material. The electrical
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`conductor usually comprises multiple, individual strands of copper
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`conductors.” Ex. 1001, 1:37–40. Additionally, the ’037 patent contains
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`several figures depicting the structure of its wires, and describes several
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`embodiments of its reinforced wires. E.g., Ex. 1001, Figs. 3–6 and 9–13,
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`2:34–59, 6:29–15:28, 16:50–19:23. Although the ’037 patent describes the
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`use of this reinforced wiring in decorative lighting applications, it is clear
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`that at least some of “the embodiments, function, and structure of the
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`claimed invention” focus on the wiring itself.
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`Consistent with the holding in Bigio, Petitioner’s characterization of
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`the field of endeavor is not limited by, or based on, the end-use of the wire.
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`The wires/cables of Kumada, Debladis ’120, and the ’037 patent all share
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`common fundamental features associated with electric wiring, namely an
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`electrical conductor, often comprised of multiple, individual strands of
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`copper, surrounded by an insulating material. See Ex. 1001, 1:37–40;
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`Ex. 1007, 1:11–32 (describing conventional cables made of copper strands
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`surrounded by an insulating sheath); Ex. 1003, 6:53–55 (referring to
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`“common wire means 40” used in decorative net light products).
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`Furthermore, despite Patent Owner’s characterization of Debladis ’120 as
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`being limited to automotive applications, Debladis ’120 states that its
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`invention “relates to electrical control cables, or power cables, used for
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`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,
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`Debladis ’120, and the ’037 patent are all from the same field of endeavor.
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`Even if we were to agree with Patent Owner that the appropriate field
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`of endeavor is “decorative lighting,” the outcome here would not change.
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`Dr. Brown testified that “if you’re designing decorative lighting, you have to
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`be designing electrical wiring,” and that decorative lighting “incorporates
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`. . . electrical wiring.” Ex. 1016, 25:16–18, 28:5–8. Dr. Fantone agreed,
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`testifying in his Supplemental Declaration that “[d]ecorative lighting design
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`necessarily involves design of electrical wiring.” Ex. 1020 ¶ 16. Thus,
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`declarants from both parties agree that decorative lighting and electrical
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`wiring are inexorably intertwined, which undermines Patent Owner’s
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`arguments that Debladis ’120, a reference addressing electrical wiring, is
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`from a different field of endeavor than decorative lighting.
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`For all of the foregoing reasons, we determine that Debladis ’120,
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`Kumada, and the ’037 patent are analogous art.
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`2. Whether Petitioner presented evidence sufficient to demonstrate a
`reason to combine Kumada and Debladis ’120
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`To show obviousness, it is not enough to merely show that the prior
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`art includes separate references covering each separate limitation in a
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`challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
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`(Fed. Cir. 2011). Rather, “it can be important to identify a reason that would
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`have prompted a person of ordinary skill in the relevant field to combine the
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`elements in the way the claimed new invention does.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007). According to the Supreme Court in
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`KSR, “[t]his is so because inventions in most, if not all, instances rely upon
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`building blocks long since
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