Polygroup Limitedv.Willis Electric Co., Ltd.

Patent Trial and Appeal Board

Jan 30, 2015

13461432 (P.T.A.B. Jan. 30, 2015)

Trials@uspto.gov Paper 12
Tel: 571–272–7822 Entered: January 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
POLYGROUP LIMITED,
Petitioner,
v.
WILLIS ELECTRIC CO., LTD.,
Patent Owner.
_______________

Case IPR2014-01264
Patent 8,454,187 B2
_______________

Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, and
BARBARA A. PARVIS, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2014-01264
Patent 8,454,187 B2

2

I. INTRODUCTION
Petitioner filed a Petition to institute an inter partes review (Paper 1,
“Pet.”) of claims 1–15 of U.S. Patent No. 8,454,187 B2 (Ex. 1001, “the ’187
patent”). Pet. 1. Petitioner included a declaration of Mike Wood (Ex.
1014). Patent Owner filed a Preliminary Response. Paper 8 (“Prelim.
Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that
an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” We have reviewed the Petition,
Preliminary Response, and the evidence cited therein. For the reasons
discussed below, we determine that Petitioner has not demonstrated a
reasonable likelihood of prevailing with respect to any of the challenged
claims of the ’187 patent.
A. Related Matters
Claims 1–15 of the ’187 patent have been challenged in ex parte
reexamination proceeding 90/020,074. Pet. 1; Paper 6, 2. Petitioner
challenges U.S. Patent No. 8,454,186 B2 in IPR2014-01263; the application
issuing as the ’187 patent is a continuation of the application issuing from
the ’186 patent.
B. The ’187 Patent
The ’187 patent describes artificial trees with decorative lighting
having separable, modular tree portions mechanically and electrically
connectable between trunk portions. Ex. 1001, 1:13–17. The ’187 patent
describes using light strings, which are modular and “offer[] a user the
IPR2014-01264
Patent 8,454,187 B2

3

opportunity to easily disconnect the light string . . . for replacement.” Id. at
18:42–44. The mechanical and electrical connections between trunk
portions are arranged such as to allow the trunk portions to be configured in
multiple rotational alignments because the electrical connections between
the trunk portions are made independent of the rotational orientation of the
trunk portions, such as by using a coaxial electrical connector. Id. at 15:40–
54. This eliminates the need for precise alignment when assembling the
tree. Id.
C. Illustrative Claim
Petitioner challenges all of the claims in the ’187 patent, of which
claims 1 and 7 are independent. Claim 7 is reproduced below:
7. A lighted artificial tree, comprising:
a first tree portion including a first trunk portion, a
first plurality of branches joined to the first
trunk portion, and a first light string affixed to a
portion of the first plurality of branches, the
first trunk portion having a first trunk body and
a trunk connector assembly, at least a portion of
the trunk connector assembly housed within the
first trunk body and electrically connected to
the first light string;
a second tree portion including a second trunk
portion, a second plurality of branches joined to
the second trunk portion, and a second light
string affixed to a portion of the first plurality
of branches, the second trunk portion having a
trunk body and a trunk connector assembly, at
least a portion of the trunk connector assembly
housed within the second trunk portion and
electrically connected to the second light string;
and
wherein the second tree portion is mechanically
and electrically connectable to the first tree
IPR2014-01264
Patent 8,454,187 B2

4

portion by coupling a lower end of the second
trunk body to an upper end of the first trunk
body along a common vertical axis at a
rotational orientation of the first trunk portion
relative the second trunk portion about the
common vertical axis, thereby causing the trunk
connector of the first trunk portion to make an
electrical connection with the trunk connector
of the second trunk portion within a trunk
interior defined by the first trunk body and the
second trunk body, the electrical connection
being made when the lower end of the second
trunk body is coupled to the upper end of the
first trunk body, the electrical connection being
independent of the rotational orientation of the
first trunk portion relative the second trunk
portion about the common vertical axis.

D. Prior Art and Asserted Grounds
Petitioner asserts 10 grounds using 6 references. Paper 1, 3–4. The
grounds asserted may be divided into two groups, one primarily relying on
Otto1, and one primarily relying on Smith2. We do not reproduce the list of
all 10 grounds or 6 references here because a dispositive issue involves
Petitioner’s reliance on each of Otto and Smith alone.

1 German Gebrauchsmuster No. G 84 36 328.2, published April 4, 1985 (Ex.
1005) (exhibit includes the original German and a certified English
translation).
2 U.S. Patent No. 3,970,834, issued July 20, 1976 (Ex. 1006).
IPR2014-01264
Patent 8,454,187 B2

5

II. ANALYSIS
A. Claim Construction
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Further, “the specification and prosecution history only compel
departure from the plain meaning in two instances: lexicography and
disavowal.” GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014) (citing Thorner v. Sony Computer Entm’t Am. LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and
disavowal are exacting, and require clear intent to define or narrow a term.
Thorner, 669 F.3d at 1365–66.
Petitioner and Patent Owner propose constructions for “wiring
harness” and “wiring assembly” (claims 1, 4–7, and 10). Pet. 5–6; Prelim.
Resp. 11–12. Patent Owner additionally proposes constructions for “light
string” (claims 1–15) and “in at least four different rotational alignments”
(claim 1). Prelim. Resp. 12–17. The construction of “light string” is a
dispositive issue and is the only term we need to construe for purposes of
this Decision.
Both independent claims of the ’187 patent recite at least “a first light
string.” Petitioner does not offer a construction of the term. Patent Owner
proposes that the term means: “string of lights that can be positioned over a
plurality of branches that includes a first electrical connector portion
IPR2014-01264
Patent 8,454,187 B2

6

connected to the light string wiring that is configured to connect to a second
electrical connector portion.” Prelim. Resp. 12–13. For the reasons that
follow, we construe a “light string” to be “a string of lights that can be
positioned over a plurality of branches.”
The ’187 patent does not define the term “light string,” but discusses
the term at length. In each of these descriptions of a light string, the
specification is describing a structure that is separate from the branches of
the tree and, instead, is placed on the branches of the tree. For example, the
specification contains the following passages that discuss “light strings”:
“[t]raditionally, consumers wrap strings of lights about the artificial tree”
(Ex. 1001, 1:26–27); “[w]ires of the light string are clipped to branch
structures” (id. at 1:35–36); “the modularity of individual light strings . . .
offers a user the opportunity to easily disconnect the light string from trunk
. . . for replacement” (id. at 18:41–44). The figures of the ’187 patent
likewise depict the light string as a structure apart from the branches. See,
e.g., id., Figs. 1, 2, and 4 (items 124, 162, 182). Figure 1 of the ’187 patent,
reproduced below, depicts several “light strings.”
IPR2014-01264
Patent 8,454,187 B2

7

Figure 1 of the ’187 patent depicts a lighted tree having light strings 124,
162, and 182, which are depicted as structures apart from the branches.
Extrinsic evidence likewise supports a construction of “light string”
being a structure apart from the branches. Otto distinguishes “string lights”
from lights “fixedly and permanently connected to the lighted branches.”
Ex. 1005, 15–18.3 Otto characterizes the string lights as “particularly
problematic” due to the appearance of the electrical lines. Id. at 17. Otto’s
solution is to place the electrical lines inside the branches rather than draping

3 Citations to Otto are to the page numbers stamped on the lower right hand
corner of the exhibit.
IPR2014-01264
Patent 8,454,187 B2

8

them over the branches. Id. at 17–18, Figs. 1, 2. Accordingly, we take this
as evidence that one of ordinary skill in the art considers light strings (or
string lights) to be a name for a particular lighting structure that is different
from a lighting structure wherein the lights are integrated into the branches.
Taking into consideration the above, we construe “light string,” on
this record, to mean “a string of lights that can be positioned over a plurality
of branches.”
B. Petitioner’s Reading of “Light String”
on the Prior Art
Petitioner reads the “light string” of both independent claims of the
’187 patent on certain structures of Otto and Smith. We address each
reference in turn.
1. Otto
Otto describes an artificial tree having electric lights. Ex. 1005,
16:13–21. As discussed in our claim construction section above, Otto
distinguishes the lights of his tree from “string lights.” Id. at 17 (“the object
of the invention is to provide a Christmas tree in which no lines are visible
between the candle lights”). Figure 1 of Otto is reproduced below:
IPR2
Paten
Figu
The
26. I
integ

1006
wirin
arran
014-0126
t 8,454,18

re 1 of Ott
electrical l
d. at 18:8
rated into
Smith de
, 1:30–32
g to powe
gement is
4
7 B2
o depicts c
ines powe
–15. Acco
the branch
scribes an
. As in Ot
r electrica
shown in
andle ligh
ring candl
rdingly, th
es.
2
artificial
to, the cen
l lights mo
Figure 4 o

9
ts 44 are m
e lights 44
e structur
. Smith
tree having
ter of the b
unted dire
f Smith, re
ounted di
are contai
e providin
built-in e
ranches c
ctly to the
produced

rectly to b
ned within
g lighting
lectric ligh
ontain the
branches.
below:
ranch 26.
branch
in Otto is
ts. Ex.
electrical
This

IPR2014-01264
Patent 8,454,187 B2

10

Figure 4 of Smith depicts light 66 attached to branch 58 and powered by
wires 82 and 84. Id. at 5:22–23. Accordingly, the structure providing
lighting in Smith is integrated into the branches.
3. Petitioner’s Assertions
With respect to claim 1, Petitioner asserts that the light string in Otto
is “candle lights 44 of a lighted branch 10.” Pet. 42; see also id. at 51
(referring back to this citation for independent claim 7). Similarly, with
respect to claim 1, Petitioner asserts that the light string in Smith is “[l]ight
29 and other lights . . . shown on branch 21”). Id. at 42–43; see also id. at 51
(referring back to this citation for independent claim 7). Reviewing these
assertions, we note that each of the structures that Petitioner asserts to
disclose a “light string” is not a string of lights that can be positioned over a
plurality of branches, but rather a series of lights integrated into a branch.
Accordingly, these structures are not “light strings” as we have construed the
term. Therefore, Petitioner has not shown, on this record, that Otto and
IPR2014-01264
Patent 8,454,187 B2

11

Smith describe “light strings” as required by independent claims 1 and 7.
Petitioner does not argue that any of the other references describe or render
obvious an artificial tree as claimed and specifically having a “light string.”
4. Conclusion
Petitioner has not demonstrated, on this record, that the prior art
describes each element of independent claims 1 and 7, or of claims 2–6 and
8–15, which depend therefrom.
III. ORDER
In view of the foregoing, it is hereby:
ORDERED that no inter partes review of the ’187 patent is instituted
and that all grounds set forth in the Petition challenging the ’187 patent are
denied.
PETITIONER:

Paul McGowan
Ben Wiles
Ryan Schneider
TROUTMAN SANDERS, LLP
paul.mcgowan@troutmansanders.com
ben.wiles@troutmansanders.com
ryan.schneider@troutmansanders.com

PATENT OWNER:

John Fonder
Douglas Christensen
Timothy Bianchi
CHRISTENSEN FONDER P.A.
fonder@cfpatlaw.com
christensen@cfpatlaw.com
tbianchi@slwip.com