WILLIS ELECTRIC CO., LTD.

Patent Trials and Appeals Board

Oct 8, 2020

IPR2016-01610 (P.T.A.B. Oct. 8, 2020)

Trials@uspto.gov Paper 211
571-272-7822 Date: October 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

POLYGROUP LIMITED MCO,
Petitioner,
v.
WILLIS ELECTRIC CO., LTD.,
Patent Owner.

IPR2016-01610 (Patent 8,454,186 B21)
IPR2016-01612 (Patent 8,454,187 B22)

Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
BARBARA A. PARVIS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.

JUDGMENT
Final Written Decision on Remand
Determining Some Challenged Claims Unpatentable
Granting-In-Part Patent Owner’s Contingent Motion to Amend
35 U.S.C. §§ 144, 318(a)

1 The grounds raised in IPR2016-00800 and IPR2016-01609 are
consolidated with IPR2016-01610.
2 The grounds raised in IPR2016-00801 and IPR2016-01611 are
consolidated with IPR2016-01612.
IPR2016-01610 (Patent 8,454,186 B2)
IPR2016-01612 (Patent 8,454,187 B2)
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I. INTRODUCTION
A. Background and Summary
IPR2016-01610 is a consolidation of Petitioner’s challenges in three
petitions directed to claims 1, 3, 4, 6–11, 15–22, 25, 26, and 28 of U.S.
Patent No. 8,454,186 B2 (“the ’186 patent”).3 IPR2016-01612 is a
consolidation of Petitioner’s challenges in three petitions directed to claims
1–15 of U.S. Patent No. 8,454,187 B2 (“the ’187 patent”).4
Our Final Written Decision was issued on February 26, 2018 as a
consolidated decision addressing both IPR2016-01610 and IPR2016-01612.
Paper 187 (“Original Decision”).5 The Original Decision determined that
Petitioner had not established unpatentability of any of the challenged claims
of the ’186 patent or the ’187 patent. Original Decision 63.
On appeal, the U.S. Court of Appeals for the Federal Circuit vacated
our Original Decision in part and remanded the cases for further
proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x
934 (Fed. Cir. 2019).
After conferring with the parties, we permitted additional briefing to
address the issues on remand from the Federal Circuit. Paper 196.

3 As used herein, “Petition I” or “Pet. I” refers to the petition originally filed
in IPR2016-00800, now Paper 28. “Petition II” or “Pet. II” refers to the
petition originally filed in IPR2016-01609, now Paper 34. “Petition III” or
“Pet. III” refers to the petition originally filed in IPR2016-01610, Paper 2.
4 Citations to the record are to the IPR2016-01610 proceeding unless
preceded by a “’1612” prefix to designate reference to the IPR2016-01612
proceeding. As used herein, “’1612 Petition I” or “’1612 Pet. I” refers to the
petition originally filed in IPR2016-00801, now Paper 28. “’1612 Petition
II” or “’1612 Pet. II” refers to the petition originally filed in IPR2016-01611,
now Paper 34. “’1612 Petition III” or “’1612 Pet. III” refers to the petition
originally filed in IPR2016-01612, Paper 2.
5 The procedural history is summarized in the Original Decision.
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Petitioner filed an opening brief (Paper 197 (“Pet. Remand Br.”)), followed
by a responsive brief from Patent Owner (Paper 203 (“PO Remand Resp.”)).
Petitioner then filed a reply (Paper 204 (“Pet. Remand Reply”)), followed by
a sur-reply from Patent Owner (Paper 205 (“PO Remand Sur-Reply”)).
After further conferring with the parties, an additional round of briefing was
filed to address argument waiver. Paper 208; Paper 209.
This is a consolidated Final Written Decision on Remand addressing
the patentability of the challenged claims in both the IPR2016-01610
proceeding and the IPR2016-01612 proceeding6, and is entered in each of
those proceedings. For the reasons discussed below, we determine that
Petitioner has shown by a preponderance of the evidence that claims 1, 3, 4,
6, 8, and 9 of the ’186 patent are unpatentable, but has failed to show by a
preponderance of the evidence that claims 7, 10, 11, 15–22, 25, 26, and 28
of the ’186 patent are unpatentable. Petitioner has failed to show by a
preponderance of the evidence that any claims of the ’187 patent are
unpatentable. This decision does not address claim 15 of the ’186 patent or
claims 4, 10, and 13 of the ’187 patent because the Federal Circuit affirmed
the Original Decision with respect to those claims. See 759 F. App’x at 942-
944. As explained below, the Federal Circuit affirmed the Original
Decision’s determination that those claims were not shown to be
unpatentable by a preponderance of the evidence. Thus, those claims are not
the subject of this remand decision and the affirmed determinations with
respect to those claims in the Original Decision remain untouched.

6 As discussed below, an issue addressed in our discussion of IPR2016-
01610 is dispositive to the resolution of IPR2016-01612 on remand.
IPR2016-01612 will be discussed in a separate Section III after our analysis
for the IPR2016-01610 proceeding.
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Because we find some of Patent Owner’s claims unpatentable, we also
address Patent Owner’s Contingent Motion to Amend. Paper 149 (“Mot. To
Amend”). Specifically, Patent Owner proposes replacing claim 1 with
replacement claim 29 if claim 1 is found unpatentable and replacing claim 8
with replacement claim 30 if claim 8 is found unpatentable. Mot. To Amend
1–3, 22–23. For the reasons discussed below, Petitioner’s Motion to Amend
is granted in part.
B. Related Matters
Petitioner and Patent Owner identify a number of proceedings, both in
district court and before the Patent Trial and Appeal Board related to the
’186 patent and the ’187 patent, including a district court proceeding
specifically directed to these patents with Petitioner as a party, as
summarized in our Original Decision. See Original Decision 3–4.
C. The ’186 and ’187 Patents
The ’186 patent is directed to a modular artificial tree (e.g., a
Christmas tree) with electrical connectors in the trunk. Ex. 1001, (54), (57).
An electrical connection runs up the trunk of the tree to provide a source of
electricity for light strings draped over the branches. See id. at Figs. 2–4.
Physically connecting the trunk sections during assembly of the tree also
electrically connects the trunk sections. Id. at (57), Fig. 4. The ’187 patent
is similar.
D. Illustrative Claims
Claims 1 and 10 of the ’186 patent are illustrative for this decision on
remand for IPR2016-01610 and are reproduced below.
1. 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
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light string, the first trunk portion defining a first trunk interior
and having a first trunk electrical connector and a first trunk
wiring assembly, the first trunk wiring assembly electrically
connectable to the first light string and the first trunk electrical
connector, and wherein at least a portion of the first trunk wiring
assembly is located within the first trunk interior;
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, the second trunk portion defining a
second trunk interior and having a second trunk electrical
connector and a second trunk wiring assembly, the second trunk
wiring assembly electrically connectable to the second lighting
string and the second trunk electrical connector, and wherein at
least a portion of the second wiring assembly is located within
the second trunk interior; and
wherein the second tree portion is mechanically
coupleable to the first tree portion about a central vertical axis,
and the second tree portion is electrically connectable to the first
tree portion such that a portion of the first trunk electrical
connector of the first trunk portion contacts a portion of the
second trunk electrical connector of the second trunk portion,
thereby creating an electrical connection between the first wiring
assembly and the second wiring assembly;
wherein an end of the second trunk portion is configured
to couple with an end of the first trunk portion in at least four
different rotational alignments of the first trunk portion relative
the second trunk portion about the central vertical axis, and the
electrical connection between the first and second tree portions
are made independent of the rotational alignments of the first
trunk portion relative the second trunk portion about the central
vertical axis when the lower end of the second trunk portion is
coupled to the upper end of the first trunk portion.
Ex. 1001, 21:15–53.
10. 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, the first trunk portion having a first trunk body and
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a trunk connector, at least a portion of the trunk connector 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, the second trunk portion having a trunk
body and a trunk connector, at least a portion of the trunk
connector 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 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 an interior of the lighted artificial tree, the electrical
connection being made independent of the rotational orientation
of the first trunk portion relative the second trunk portion about
the common vertical axis.
Id. at 22:33–60.
Claim 1 of the ’187 patent is illustrative for this decision on remand
for the IPR2016-01612 proceeding and is reproduced below.
1. 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 wall defining a first
trunk interior, a first trunk electrical connector and a first trunk
wiring assembly, the first trunk electrical connector including a
first electrical contact and a second electrical contact, the first
trunk wiring assembly electrically connectable to the first light
string and the first trunk electrical connector, and wherein at least
a portion of the first trunk wiring assembly is located within the
first trunk interior;
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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 second
plurality of branches, the second trunk portion having a second
trunk wall defining a second trunk interior, a second trunk
electrical connector and a second trunk wiring assembly, the
second trunk electrical connector including a first electrical
contact and a second electrical contact, the second trunk wiring
assembly electrically connectable to the second lighting string
and the second trunk electrical connector, and wherein at least a
portion of the second wiring assembly is located within the
second trunk interior; and
wherein the second tree portion is mechanically
coupleable to the first tree portion about a central vertical axis,
and the second tree portion is electrically connectable to the first
tree portion such that a portion of the first trunk electrical
connector of the first trunk portion contacts a portion of the
second trunk electrical connector of the second trunk portion
when the first tree portion and the second tree portion are
mechanically coupled, and the second electrical contact of the
first trunk connector makes an electrical connection with the
second electrical contact of the second trunk connector at a point
along the central vertical axis, and the first electrical contact of
the trunk connector of the first tree portion makes an electrical
connection with the first electrical contact of the trunk connector
of the second tree portion, thereby creating an electrical
connection between the first wiring assembly and the second
wiring assembly;
wherein the lower end of the second trunk portion is
configured to couple the upper end of the first trunk portion in at
least four different rotational orientations of the first trunk
portion relative the second trunk portion about the central
vertical axis, and the electrical connection between the first
electrical contacts of the first and second tree portions and the
electrical connection between the second electrical contacts of
the first and second tree portions are made independent of the
rotational orientations of the first trunk portion relative to the
second trunk portion about the central vertical axis when the
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lower end of the second trunk portion is coupled to the upper end
of the first trunk portion.
’1612 Ex. 1001, 21:9–64.
E. Prior Art and Asserted Grounds Relevant to IPR2016-01610 Remand
On remand, Petitioner asserts that claims 1, 3, 4, 6–11, 16–22, 25, 26,
and 28 of the ’186 patent would have been unpatentable on the following
grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 10, 20 (Pet. I)
3, 4, 6, 8, 9, 21, 25 (Pet. II)
11, 16 (Pet. III)
103 Miller7
28 (Pet. I) 103 Miller, Pan8
7, 22 (Pet. II) 103 Miller, Lessner9
26 (Pet. II)
18, 19 (Pet. III) 103 Miller, Janning
10
17 (Pet. III) 103 Miller, Yang11
F. Prior Art and Asserted Grounds Relevant to IPR2016-01612 Remand
On remand, Petitioner asserts that claims 1–3, 5–9, 11, 12, 14, and 15
of the ’187 patent would have been unpatentable on the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 7 (’1612 Pet. I)
2, 3, 5, 6 (’1612 Pet. II)
8, 9, 11, 12, 14 (’1612 Pet. III)
103 Miller, Pan
12, 15 (’1612 Pet. III) 103 Miller, Pan, Janning

7 U.S. Patent No. 4,020,201, issued Apr. 26, 1977 (Ex. 1007).
8 U.S. Patent No. 6,752,512 B2, issued June 22, 2004 (Ex. 1010).
9 U.S. Patent No. 3,409,867, issued Nov. 5, 1968 (Ex. 1063).
10 U.S. Pub. No. 2007/0273296 A9, re-published Nov. 29, 2007 (Ex. 1054)
(originally published on Aug. 11, 2005 as U.S. Pub. No. 2005/0174065 A1).
11 U.S. Patent No. 7,132,139 B2, issued Nov. 7, 2006 (Ex. 1011).
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G. CAFC Remand
On appeal, the Federal Circuit “affirm[ed] the Board’s determination
that [Petitioner] failed to establish the unpatentability of claim 15 of the ’186
patent[ and] claims 4, 10, and 13 of the ’187 patent . . . because [Petitioner]
failed to establish a motivation to combine the asserted prior art
references.”12 Polygroup, 759 F. App’x at 944. Accordingly, those claims
are not subject to this remand decision. Nor are the challenges of any claims
relying on the combination of teachings from Jumo13 and Otto14 subject to
this remand decision. The Federal Circuit “vacate[d] the Board’s
obviousness determinations of all remaining challenged claims of the ’186
[and] ’187 . . . patents . . . because the Board failed to consider whether
those claims are unpatentable in view of . . . Miller . . . alone.”15 Id. The
Federal Circuit held that “[Petitioner]’s petitions explicitly argued that
Miller alone teaches every element of the challenged claims of the ’186 . . .
patent[] in its limitation-by-limitation analysis except for claim 15 of the
’186 patent.” Id. at 942.
The Federal Circuit also “f[ou]nd that the Board erred in its
construction of both ‘tree portion’ and ‘modular lighted artificial tree.’” Id.

12 Because the Original Decision did not address Petitioner’s rationale to
combine the teachings of Pan, Lessner, Janning, or Yang with those of
Miller, we do not read the Federal Circuit’s decision as making any
determination with respect to those particular combinations.
13 French Patent No. 1,215,214, issued Nov. 16, 1959 (translated copy) (Ex.
1009). The inventor is not listed on the face of the patent and instead lists
Société Nouvelle des Établissements Jumo.
14 German Utility Model Patent G 84 36 328.2, published Apr. 4, 1985
(translated copy) (Ex. 1008).
15 We understand the Federal Circuit’s characterization of “Miller alone” as
Miller without the additional teachings from Otto and Jumo.
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at 939. The Federal Circuit “f[ou]nd nothing in the specification . . . that
supports limiting ‘tree portion’ to an embodiment with non-detachable
branches.” Id. at 940. The Federal Circuit found that “Miller . . . disclose[s]
artificial trees with branches attached to hollow trunk members” and does
not “require[] the trunk members to be connected before adding the
branches.” Id. The Federal Circuit determined that “the branches and lights
can first be attached to the trunk members, resulting in a modular trunk-
light-branch structure” and “[t]hat the branches are removable from the
trunk members is of no moment under a proper construction of ‘tree
portion.’” Id. The Federal Circuit also “f[ou]nd [Petitioner]’s proposed
construction, ‘an artificial tree with elements capable of being easily joined
or arranged with other parts or units,’ . . . represent[s] the broadest
reasonable interpretation of ‘modular lighted artificial tree’ in view of the
’186 patent’s specification.” Id. at 941.
II. ANALYSIS (IPR2016-01610)
A. Claim 1
Petitioner cites Miller as teaching each element of claim 1. Pet. I 44–
50. Figure 2 from the ’186 patent (left) and Figure 2 from Miller (right) are
each reproduced below.
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Figure 2 from the ’186 patent is a front view of its artificial tree in a partially
assembled state. Ex. 1001, 5:21–22. Figure 2 of Miller is a front, partial
section view of its artificial tree. Ex. 1007, 1:38–40.
The trees in the ’186 patent and Miller each include multiple trunk
portions that can be disassembled from one another, electrical
connectors/conduits in those trunk portions, branches that are removable
from those trunk portions, and light strings that can be located on the
branches and connected to the electrical connectors. Patent Owner
acknowledges that Miller discloses a tree with these various separate and
removable components. Paper 59 (“PO Resp.”) 82.
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One difference between the trees is the connection between the
branches and the trunk portions and how the lights are located on the
branches. Both trees, however, include branches that are removably
attached to the trunk portions and lights that are removably secured on the
branches. The ’186 patent explains that “[t]runk ends of branches 122 may
be bent or otherwise formed to define a loop or circular opening such that
trunk end 134 of branch 122 may be secured to branch receiver 128 by way
of a pin (not depicted) extending through branch receiver 128” and “[f]irst
light string 124 is affixed to one or more branches 122 of lighted tree portion
104 via multiple clips 150.” Ex. 1001, 7:1–5, 19–21. Miller includes
“apertures 7 . . . around trunk members 3 and 5 [that] receive cylindrical
limb sockets 8 . . . of some suitable flexible material, such as rubber or
plastic, to enable each socket to be inserted through each aperture” with
limbs 10 (and branches 11) located in the sockets 8. Ex. 1007, 2:3–18.
Miller includes lights 20 wrapped around its limbs 10/branches 11.
Although acknowledging that “Miller . . . has loose light strings that
must be separately added and wound around the tree,” Patent Owner
contends that Miller does not teach a “lighted artificial tree” as recited in the
preamble of claim 1. PO Remand Resp. 12. Patent Owner contends that the
preamble requires lighting that is integral to the tree in some unspecified
manner. Id. at 11–12. The Original Decision did not reach whether Miller
taught a “lighted artificial tree,” but to the extent the preamble is limiting,
we agree with Petitioner that Miller teaches “a lighted artificial tree,” and
see no support for Patent Owner’s assertions regarding an integral
requirement for the lighting. See Pet. I 44; see also Pet. Remand Reply 8–9.
There is no dispute that Miller teaches an artificial tree having lights thereon.
Moreover, Patent Owner’s contentions are not consistent with the Federal
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Circuit’s determinations regarding claim 28’s recitation of “[a] modular
lighted artificial tree.” See Polygroup, 759 F. App’x at 941.
Claim 1 requires that the tree has “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” and “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.” Patent Owner acknowledges that “the Federal
Circuit held that ‘Miller . . . disclose[s] artificial trees with branches attached
to hollow trunk members’ and therefore disclosed such tree portions.” PO
Remand Resp. 3 (citing Polygroup, 759 F. App’x at 940).
Patent Owner contends that “[t]he remainder of the PTAB’s ‘tree
portion’ ruling, including whether the trunk connectors, branches, lights, and
wiring must function as a modular unit, remains undisturbed.” PO Remand
Resp. 3. As noted above, the Federal Circuit found, however, that “Miller
. . . disclose[s] artificial trees with . . . a modular trunk-light-branch
structure.” Polygroup, 759 F. App’x at 940.
The only thing left for Patent Owner to dispute regarding Petitioner’s
contentions related to Miller’s teachings are the mechanical and electrical
connections required by the claim. Many of the contentions presented by
Patent Owner, however, are not commensurate with the scope of claim 1.
See, e.g., PO Remand Resp. 6–12. For example, Patent Owner contends that
“[u]nlike the easily-assembled tree portions of the ’186 Patent, the Miller
tree requires the separate steps of making an electrical connection between
the first and second trunk members and making a mechanical connection
between the trunk members.” PO Remand Resp. 7 (citing PO Resp. 27).
Patent Owner contends that “the claimed elements mean . . . that ‘when’ the
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mechanical connection is made, an electrical connection is also made.” Id.
at 8–9.
Claim 1 does not require structure that provides mechanical and
electrical connection in a single step (e.g., “‘when’ the mechanical
connection is made, an electrical connection is also made”) as Patent Owner
alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a
second trunk electrical connector” with “the second tree portion [being]
electrically connectable to the first tree portion such that a portion of the first
trunk electrical connector of the first trunk portion contacts a portion of the
second trunk electrical connector of the second trunk portion.” Although the
claim also requires that “the second tree portion is mechanically coupleable
to the first tree portion about a central vertical axis,” the claim permits that
mechanical connection to be independent of the electrical connection.
Giving claim 1 its proper reading, there is no dispute that Miller teaches first
and second trunk electrical connectors or that its tree portions are coupleable
about a central vertical axis as outlined in the Petition. See Pet. I 45–48.
Patent Owner additionally contends that Miller’s electrical connector
is not connectable independent of the rotational orientation of the trunk
portions. PO Remand Resp. 10–11 (citing PO Resp. 18). Later in its
Remand Response, however, Patent Owner acknowledges that Miller
provides a rotationally independent electrical connection. See id. at 12
(“Miller[ has a] non-discrete, continuous trunk structure.”). Indeed, Miller
teaches this feature, as made clear in the Petition. See Pet. I 29–30
(referenced by Petitioner in its mapping of claim 1’s elements and providing
an annotated portion of Miller’s Figure 2, shown below, along with an
explanation of Miller’s teachings).
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The figure reproduced above is a portion of Miller’s Figure 2, which is a
front, partial section view of its artificial tree, along with Petitioner’s
annotations noting Miller’s electrical connections (circled in red). Pet. I 29.
As explained in the Petition, and seen in the annotated figure above, Miller’s
plug and socket connection with wires 22 allows for rotationally
independent connection. See id. at 29.
Referring to claim 1’s requirement that “an end of the second trunk
portion is configured to couple with an end of the first trunk portion in at
least four different rotational alignments,” Patent Owner further contends
that “Miller does not disclose four different rotational alignments.” PO
Remand Resp. 12 (emphasis omitted). Patent Owner contends that “[t]his
limitation is directed to discrete mechanical orientations between the first
trunk portion and the second trunk portion that are four or greater in
number.” Id. That is, Patent Owner contends that this portion of the claim
requires a fixed number of orientations, rather than allowing any rotational
orientation (i.e., what Patent Owner refers to as “continuous trunk
structure”). This contention is not commensurate with the scope of claim 1.
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Contrary to Patent Owner’s assertions, claim 1 does not specify “discrete
mechanical orientations.” As noted above, Patent Owner acknowledges that
Miller provides any number of rotational orientations (a “continuous trunk
structure”), which includes “at least four different rotational alignments.”
For at least these reasons, Petitioner has established by a
preponderance of the evidence that Miller teaches each feature recited in
claim 1.
B. Claims 3, 4, 6, 8, and 9
Claims 3, 4, 6, 8, and 9 each depend from claim 1. Petitioner cites
Miller as teaching each element of these claims. Pet. II 43–54. Patent
Owner does not dispute Petitioner’s challenges to claims 3, 4, 8, and 9. For
claim 6, Patent Owner contends that Petitioner’s challenge lacks sufficient
specificity. PO Remand Resp. 12–13. We agree with Petitioner that Miller
teaches each element recited in claims 3, 4, 6, 8, and 9.
Claim 3 further recites that “the first trunk electrical connector of the
first trunk portion is housed within the first trunk interior and the second
trunk electrical connector of the second trunk portion is housed within the
second trunk interior.” Claim 4 specifies that “a male portion of the first
trunk electrical connector of the first trunk portion includes a male portion
insertable into a female portion of the second trunk electrical connector of
the second trunk portion.” Petitioner cites the structure circled in red in the
annotated version of Miller’s Figure 2 reproduced above, which shows the
features recited in claims 3 and 4. Pet II. 44, 47.
Claim 6 further recites that
the first trunk wiring assembly includes a first wire and a second
wire, each of the first wire and the second wire in electrical
communication with the first trunk electrical connector of the
first trunk portion and extending between a first end of the first
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trunk portion and a second end of the first trunk portion, and
providing power to the first light string.
Petitioner contends that “Miller teaches that the plug and socket connectors
between trunk sections 3, 5 are electrically connected to first and second
wires 22. Ex. 1007, 2:40–3:10, Fig. 2 (below, with wires 22 in the orange
circle, but not separately numbered).” Pet. II 50. The portion of Miller’s
Figure 2 referenced by Petitioner is reproduced below.

The figure reproduced above is a portion of Miller’s Figure 2, which is a
front, partial section view of its artificial tree, along with Petitioner’s
annotations noting Miller’s wires (circled in orange). Miller’s Figure 3,
reproduced below, illustrates wires 22 in greater detail.
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Miller’s Figure 3 “is an enlarged view, partly in section, of a trunk member,
showing a wiring socket and a spring holding clip, a limb socket and limb
therein, and the wiring extending from the wiring socket with a bulb
arranged on the limb.” Miller 1:41–45. Based on Petitioner’s contentions,
in combination with the figures reproduced above, and without further
dispute from Patent Owner, we fail to see what structure is missing from
Miller to meet the limitations of claim 6.
Claim 8 further recites that
a portion of the first trunk wiring assembly includes a light string
connector attached to a first trunk wall, and the first light string
at a trunk end includes a connector for detachably connecting to
the light string connector such that the first light string is
detachably connected to the first trunk wall and the first trunk
wiring assembly.
As identified by Petitioner (Pet. II 51–53), Miller includes electrical
connector 13 attached to its trunk wall with light string 20 detachably
connecting to electrical connector 13, as seen in Miller’s Figure 3
reproduced above.
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Claim 9 further recites that “the first tree portion comprises a base
portion.” Petitioner contends that “Miller teaches a first tree portion (i.e.,
trunk member 3 with limbs 10 and lights 20) with tubular hollow lower
trunk 3. Ex. 1007, 1:57–2:18, 2:28–33, Fig. 2 (below)” and “[t]his first tree
portion can include ‘a flat base 1 having an upstanding centrally arranged
stub shaft 2.’” Pet. II 53. This is consistent with Miller’s teachings as seen
at the blue arrow in Petitioner’s annotated version of Miller’s Figure 2
reproduced above in connection with the discussion of claim 6.
C. Claim 7
Claim 7 depends from claim 6 and further requires that “the first wire
and the second wire are detachably connected to the first trunk electrical
connector of the first trunk portion.” Petitioner acknowledges that “Miller
does not expressly teach that the wiring assembly is ‘modular’ or ‘separably
connected.’” Pet. II 65. Petitioner contends that “assemblies for providing a
detachable connection between electrical contact sets and wiring harnesses
were well-known in the art.” Id. (citing Ex. 1006 ¶¶ 261–67). Petitioner
contends that “Lessner teaches a ‘quick-disconnect electrical connector for
receiving and releasably retaining a male tab connector’ and a [person of
skill in the art (POSA)] would recognize that it may be used to create
detachable connections between the electrical contacts of a connector or
plug, and the wires of a wiring assembly.” Id. (citing Ex. 1008, 1:10–11;
Ex. 1006 ¶¶ 261–67).
Petitioner contends that one skilled in the art would have modified
Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner
reasons, for example, that “[i]t would have been obvious . . . to enhance the
mechanical and electrical connections between the electrical contacts sets
and wiring assemblies of Miller[] with the detachable electrical connectors
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of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66
(citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable
connectors of Lessner provide a quick-connect engagement allowing the
builder to easily and quickly attach the wires to the terminals on the trunk
connector during assembly,” which “also allows for easy separation of the
wires from the trunk connectors, as needed for repair or replacement of
parts.” Id. at 66.
Petitioner’s contentions as to why one skilled in the art would have
modified Miller’s teachings are unpersuasive. As discussed above,
Petitioner cited Miller’s plug and socket connectors as corresponding to the
recited trunk connectors. Petitioner’s proposed modification in the Miller
alone challenge adds an additional connection point in Miller’s plug and
socket connectors, further complicating assembly, rather than providing
greater “ease and speed of assembly and disassembly” as alleged.
Petitioner’s additional reasoning that the proposed modification “also allows
for easy separation of the wires from the trunk connectors, as needed for
repair or replacement of parts” is equally unpersuasive. The only difference
resulting from the modification is that the plug and socket connectors could
be removed from their respective wiring assemblies. That is, it provides for
removal of one connector by providing yet another connector, which fails to
provide a benefit because Miller’s plug and socket connectors are loose,
rather than fixed within the trunk portions like Patent Owner’s connectors.
For at least these reasons, Petitioner has failed to establish
unpatentability of claim 7 of the ’186 patent by a preponderance of the
evidence.
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D. Secondary Considerations
As explained in the Original Decision, Patent Owner provides
evidence related to non-obviousness of the claims. Original Decision 43–60.
Considering that evidence, as explained in the Original Decision, relative to
the fact that Miller alone teaches each element of these claims in a single
embodiment16, we determine that Patent Owner’s evidence does not
outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9.
For the reasons set forth above, Petitioner has established by the
preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are
unpatentable. Petitioner has failed to establish by the preponderance of the
evidence that claim 7 is unpatentable.
E. Claims 10, 20, and 28
Claims 10, 20, and 28 are independent. Critically distinguishing these
claims from independent claim 1 is that they require that the mechanical
connection between the tree/trunk portions results in the electrical
connections. The relevant portions of claims 10, 20, and 28 are reproduced
below, with emphasis added.
Claim 10 requires
wherein the second tree portion is mechanically and electrically
connectable to the first tree 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

16 Rather than requiring a combination of teachings, which was the basis for
the analysis weighing the secondary considerations evidence relative to the
challenge in the Original Decision, here, we rely on a single reference,
which presents a much stronger case of obviousness. Indeed, the challenges
based on Miller alone effectively amount to an anticipation challenge
labeled as obviousness.
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first trunk portion to make an electrical connection with the trunk
connector of the second trunk portion within an interior of the
lighted artificial tree, the electrical connection being made
independent of the rotational orientation of the first trunk portion
relative the second trunk portion about the common vertical axis.
Claim 20 requires
wherein the second tree portion is mechanically and electrically
connectable to the first tree portion by aligning the second trunk
portion with the first portion along a common axis such that a
portion of the first trunk wall is coupled to a portion of the second
trunk wall to form a first mechanical connection in one of a
plurality of rotational alignments of the first trunk portion to the
second trunk portion, and a first portion of the first connector is
received by the second connector, thereby forming a second
mechanical connection between the first trunk portion and the
second trunk portion and forming an electrical connection
between the first wiring assembly and the second wiring
assembly the electrical connection being made independent of
the plurality of rotational alignments of the first tree portion
relative to the second tree portion.
Claim 28 requires
wherein the second trunk portion is mechanically and
electrically connectable to the first trunk portion by coupling the
first end of the second trunk body to a second 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 an interior of the lighted artificial tree, the electrical
connection being made independent of the rotational orientation
of the first trunk portion relative the second trunk portion about
the common vertical axis.
Petitioner’s annotated version of a portion of Miller’s Figure 2 is reproduced
again below.
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The figure reproduced above is a portion of Miller’s Figure 2, which is a
front, partial section view of its artificial tree, along with Petitioner’s
annotations noting Miller’s electrical connections (circled in red). Pet. I 29.
As seen above, Petitioner cites Miller’s plug and socket connection as the
electrical connection recited in the claims. See Pet. I 33 (“Miller also
teaches that wires 22 of trunks 3, 5 are electrically connectable via plug and
socket connectors of Fig. 2.”), 42, 57–58 (presenting similar contentions for
claims 20 and 28).
The problem with Petitioner’s contentions that rely on Miller alone is
that the electrical connection in Miller is independent of the mechanical
connection of tree portions (i.e., the mechanical connection does not result in
the electrical connection in the manner claimed). For at least this reason,
Petitioner’s challenges to claims 10, 20, and 28 based on Miller alone fail.
Petitioner presents additional contentions related to whether it had
“notice and opportunity to be heard on [Patent Owner Preliminary
Response]-only arguments.” Paper 208, 1. There is no notice issue here.
See Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1341–42 (Fed.
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Cir. 2020) (citations omitted) (“the burden of proving invalidity in an IPR
remains on the petitioner throughout the proceeding” and “the IPR
regulations do not require a patent owner to submit any response to the
petition, either before or after institution”). Because “a patent owner carries
no obligation to raise any objection to the petitioner’s challenges at all . . . a
patent owner’s response, alone, does not define the universe of issues the
Board may address in its final written decision.” Id. at 1342 (citations
omitted). “[I]n an IPR, ‘the petitioner’s contentions . . . define the scope of
the litigation all the way from institution through to conclusion.’” Id.
F. Claims 11, 16–19, 21, 22, 25, and 26
Claims 11 and 16–19 depend from claim 10. Claims 21, 22, 25, and
26 depend from claim 20. The deficiency in the challenge to claims 10 and
20 results in the failure of Petitioner’s challenges to these dependent claims
as well.
III. ANALYSIS (IPR2016-01612)
A. Claims 1 and 7
Similar to claims 10, 20, and 28 of the ’186 patent, claims 1 and 7 of
the ’187 patent each requires that the mechanical connection between the
tree portions results in the electrical connections. The relevant portions of
claims 1 and 7 of the ’187 patent are reproduced below.
Claim 1 requires
wherein the second tree portion is mechanically coupleable to the
first tree portion about a central vertical axis, and the second tree
portion is electrically connectable to the first tree portion such
that a portion of the first trunk electrical connector of the first
trunk portion contacts a portion of the second trunk electrical
connector of the second trunk portion when the first tree portion
and the second tree portion are mechanically coupled.
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Claim 7 requires
wherein the second tree portion is mechanically and electrically
connectable to the first tree 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.
Petitioner relies on the same plug and socket connection from Miller as
discussed above relative to the IPR2016-01610 proceeding to teach the
electrical connection in claims 1 and 7 of the ’187 patent. See ’1612 Pet. I
27–44.
Again, the problem with Petitioner’s contentions that rely on Miller
alone is that the electrical connection in Miller is independent of the
mechanical connection of the tree portions. For at least this reason,
Petitioner’s challenge to claims 1 and 7 based on Miller alone fails.
B. Claims 2, 3, 5, 6, 8, 9, 11, 12, 14, and 15
Claims 2, 3, 5, and 6 depend from claim 1. Claims 8, 9, 11, 12, 14,
and 15 depend from claim 7. The deficiency in the challenge to claims 1
and 7 results in the failure of Petitioner’s challenges to these dependent
claims as well.
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IV. PATENT OWNER’S CONTINGENT MOTION TO AMEND
(IPR2016-01610)
Patent Owner filed a Contingent Motion to Amend, proposing to
substitute claims 29–36 for original claims 1, 8, 10, 15, 16, 20, 25, and 28 of
the ’186 patent, respectively. Mot. To Amend 22–28. Because Patent
Owner’s Motion to Amend is contingent upon us finding claims
unpatentable, and, of those original claims, we only find claims 1 and 8
unpatentable, we reach Patent Owner’s Motion to Amend only as it relates to
substitute claims 29 and 30.
A. Statutory and Regulatory Requirements
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). “Before considering the patentability of any substitute
claims, . . . the Board first must determine whether the motion to amend
meets the statutory and regulatory requirements set forth in 35 U.S.C.
§ 316(d) and 37 C.F.R. § 42.121.” Lectrosonics, Inc. v. Zaxcom, Inc.,
IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). We
must, therefore, consider whether: (a) the amendment proposes a reasonable
number of substitute claims; (b) the proposed claims are supported in the
original disclosure; (c) the amendment responds to a ground of
unpatentability involved in the trial; and (d) the amendment does not seek to
enlarge the scope of the claims of the patent or introduce new subject matter.
See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
Proposed substitute claims 29 and 30 are reproduced below.
[29.P] A modular lighted artificial tree, comprising:
[29.1] a first modular tree portion including
[29.2] a first trunk portion,
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[29.3] a first plurality of branches pivotally joined to the first
trunk portion, and
[29.4] a first light string positioned on and external to the first
plurality of branches,
[29.5] the first trunk portion defining a first trunk interior and
having a first trunk electrical connector and a first trunk wiring
assembly, the first trunk wiring assembly electrically
connectable to the first light string and the first trunk electrical
connector, and
[29.6] wherein at least a portion of the first trunk wiring assembly
is located within the first trunk interior; and
[29.7] a second modular tree portion including
[29.8] a second trunk portion,
[29.9] a second plurality of branches pivotally joined to the
second trunk portion, and
[29.10] a second light string positioned on and external to the
second plurality of branches,
[29.11] the second trunk portion defining a second trunk interior
and having a second trunk electrical connector and a second
trunk wiring assembly, the second trunk wiring assembly
electrically connectable to the second light string and the second
trunk electrical connector, and
[29.12] wherein at least a portion of the second trunk wiring
assembly is located within the second trunk interior; and
[29.13] wherein the second modular tree portion is mechanically
coupleable to the first modular tree portion about a central
vertical axis, and
[29.14] the second modular tree portion is electrically
connectable to the first modular tree portion such that a portion
of the first trunk electrical connector of the first trunk portion
contacts a portion of the second trunk electrical connector of the
second trunk portion, thereby creating an electrical connection
between the first trunk wiring assembly and the second trunk
wiring assembly within the modular lighted artificial tree, and
[[;]]
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[29.15] wherein an end of the second trunk portion is configured
to couple with an end of the first trunk portion in at least four
different discrete rotational alignments of the first trunk portion
relative to the second trunk portion about the central vertical axis,
and
[29.16] wherein the electrical connection between the first trunk
wiring assembly and the second trunk wiring assembly of the
respective first and second modular tree portions are is made
independent of any one discrete rotational alignment of the at
least four discrete rotational alignments of the first trunk portion
relative to the second trunk portion about the central vertical axis
when the a lower end of the second trunk portion is coupled to
the an upper end of the first trunk portion.
[30.P] The modular lighted artificial tree of claim 1 29,
[30.1] wherein a portion of the first trunk wiring assembly
includes a light string connector attached to a the first trunk wall,
and the first light string at a trunk end includes a connector for
detachably connecting to the light string connector such that the
first light string is detachably connected to the first trunk wall
and the first trunk wiring assembly.
Mot. To Amend 22–23. The underlining and strikethrough represents the
changes relative to original claims 1 and 8.
1. reasonable number of substitute claims
Patent Owner proposes to substitute one claim (claim 29) for original
claim 1 and one claim (claim 30) for original claim 8, which we determine is
a reasonable number of substitute claims.
2. support in the original disclosure
Patent Owner cites support for proposed substitute claims 29 and 30
in the original disclosure. See Mot. To Amend 10–15, 18–19 (mapping
proposed substitute claims 29 and 30 to support from original disclosure).
Petitioner’s only dispute in this regard concerns the meaning of the term
“discrete” in claim 29, contending that Patent Owner’s proposed
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construction of that term is not supported. Paper 157 (“Pet. Opp.”) 5–6, 67–
70.
Patent Owner contends that “[d]iscrete is intended to clarify a more
limited claim directed toward a multitude, but less than an infinite, number
of possible mechanical alignments between the tree portions for final
assembly.” Mot. To Amend 4. Petitioner explains that Patent Owner
“replaces ‘different’ with ‘discrete’ to describe the rotational alignments
between the ends of the trunk portions” and “[a] POSA would not consider
this to change the meaning of the original claim, as a POSA would have
found that, under BRI, ‘discrete’ and ‘different’ are sufficiently synonymous
as to have the same basic meaning.” Pet. Opp. 5 (citing Ex. 1501, 3).
Exhibit 1501 is a dictionary definition, which defines “discrete” as “separate
and different from each other” and provides an example as “a number of
discrete steps.” Ex. 1501, 3 (emphasis omitted).
Patent Owner’s proposed construction is consistent with both the
Specification of the ’186 patent and the plain and ordinary meaning of
“discrete” advanced by Petitioner. Patent Owner identifies the discussion of
a square arrangement for ends of tree portions as supporting the addition of
“discrete rotational alignments” to substitute claim 29, as opposed to a
circular arrangement providing a continuously variable alignment. Mot. To
Amend 15 (citing Ex. 2264, 28:17–20). Petitioner’s proposed construction
would make no distinction between “discrete” and “continuous.” As implied
by the example in the definition provided by Petitioner, although discrete
may require things to be separate and different from one another, it also
requires that there be a fixed number (i.e., a number of discrete steps).
Moreover, if orientations are continuous, as Petitioner proposes, that
removes the separation required by its own definition of “discrete.” As
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discussed in the original application resulting in the ’186 patent, Patent
Owner provides an example of a square arrangement having a number (i.e.,
four) of different orientations as an alternative to continuously variable
orientations. See Ex. 2264 28:17–20. For the reasons set forth above, we
accept Patent Owner’s proposed meaning of “discrete.”
Although Petitioner does not present a challenge to proposed
substitute claim 29 as indefinite, in the discussion of the term “discrete,”
Petitioner contends that under Patent Owner’s proposed meaning, one
skilled in the art would have no way to know how many different
orientations “discrete” requires, and “[f]or this reason, PO’s proposed
construction of ‘discrete’ lacks written description support and, if accepted,
would render Substitute Claim 29 indefinite.” Paper 173 (“Pet. MTA Sur-
Reply”) 6–7. The claim requires “at least four discrete rotational
alignments,” consistent with the square example discussed above. Based on
the record before us, we have no reason to believe the claim language to be
indefinite. To the extent Petitioner alleges indefiniteness because there is no
upper limit, one skilled in the art would understand that practical upper
limits exist for structures providing a fixed number of rotational alignments
based on the simplicity of the structure involved.
Based on our construction of “discrete,” we determine that Patent
Owner has set forth written description support for proposed substitute
claims 29 and 30 in the original disclosure. See Mot. To Amend 10–15, 18–
19 (mapping proposed substitute claims 29 and 30 to support from original
disclosure).
3. amendment responds to a ground of unpatentability
Petitioner contends that the amendment to “Substitute Claim 29 [that]
replaces the ‘different’ rotational alignments in Challenged Claim 1 with
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‘discrete’ rotational alignments” fails to “distinguish[] the claim from any
asserted Ground” because “each Ground in the IPR relies on art (e.g., Jumo)
having discrete rotational alignments under any proffered definition.” Pet.
Opp. 72. That is not a correct characterization of the challenge because, as
the Federal Circuit held, Miller alone also was set forth by Petitioner to
challenge claim 1. Miller does not teach discrete rotational alignments.
Accordingly, the proposed amendment is responsive to the Miller alone
ground. Claim 30 depends from claim 29, and is essentially a reproduction
of original claim 8, modified for consistency with the preamble of substitute
claim 29 (adding “modular”) and for antecedent basis.
4. amendment does not enlarge the scope of the claims
Finally, there is no dispute that the amendments do not seek to enlarge
the scope of the claims. We determine that they do not. See Mot. To
Amend 4–6.
5. additional considerations
Petitioner additionally contends that “the reduction of a burden
signaled by the Aqua Products en banc decision is hardly a justification for
allowing the Patent Owner to revise its substitute claims after being apprised
of all of Petitioner’s arguments.” Pet. Opp. 75. We disagree, as set forth in
our order authorizing Patent Owner’s filing of revised substitute claims.17
Paper 143.
B. Patentability
The Board must assess the patentability of proposed substitute claims
“without placing the burden of persuasion on the patent owner.” Aqua
Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017) (en banc); see

17 Petitioner did not file a request for rehearing of that order.
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Lectrosonics, Paper 15 at 3–4. After the issuance of Aqua Products, the
Federal Circuit issued a decision in Bosch Automotive Service Solutions,
LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (“Bosch”), as well as a
follow-up Order amending that decision on rehearing. See Bosch Auto. Serv.
Sols., LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928
(Fed. Cir. Mar. 15, 2018).
In accordance with Aqua Products, Bosch, and Lectrosonics, Patent
Owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing). See
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
“arguments and theories raised by the petitioner in its petition or opposition
to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020). The Board determines whether substitute claims are unpatentable by
a preponderance of the evidence based on the entirety of the record,
including any opposition made by the Petitioner. “[T]he opposition to a
motion to amend typically should guide the contours of the motion to amend
patentability analysis.” Hunting Titan, Inc. v. Dynaenergetics Europe
Gmbh, IPR2018-00600, Paper 67 at 11 (PTAB July 6, 2020) (precedential).
Petitioner’s Opposition provides two challenges to substitute claim
29. Pet. Opp. 6–23, 38–53. As seen above, claim 29 requires that “an end
of the second trunk portion is configured to couple with an end of the first
trunk portion in at least four discrete rotational alignments of the first trunk
portion relative to the second trunk portion about the central vertical axis.”
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As discussed below each of Petitioner’s challenges fails because of the
reliance on a combination of teachings including those from Jumo, which is
non-analogous art. See 759 F. App’x at 942.
1. Yao98118 Challenge
Petitioner’s first challenge proposes modifying the teachings of Yao981.
Pet. Opp. 6–23. Petitioner provides an illustration of the proposed
modifications, which is reproduced below.

The figure reproduced above is Petitioner’s modified version of Yao981’s
tree based on the teachings of Miller and Jumo. Pet. Opp. 15. As seen in the
figure reproduced above, Petitioner relies on Jumo’s electrical connectors (in

18 U.S. Patent No. 7,055,981, issued June 6, 2006 (Ex. 1143).
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green) to provide both the mechanical and electrical connections between
the tree portions.
With respect to the “four discrete rotational alignments,” Petitioner
states that “[t]he combined teachings of Yao981-Otto-Jumo-Miller (as
described supra Part III.A.1) teaches this element,” which is not helpful,
because the discussion referenced by Petitioner does not address the specific
limitation noted above. Pet. Opp. 22. To the extent that discussion can be
read as not relying on Jumo for the “four discrete rotational alignments,” it is
deficient in that it does not map to any structure from the other cited
references teaching the “four discrete rotational alignments” limitation.
The discussion on page 22 of Petitioner’s Opposition makes clear that
Jumo is required for the challenge to meet the “four discrete rotational
alignments” limitation. Because Jumo is non-analogous art, the challenge to
substitute claims 29 and 30 fails. See 759 F. App’x at 942.
2. Loomis19 Challenge
Petitioner’s second challenge proposes modifying the teachings of
Loomis. Pet. Opp. 38–53. Petitioner provides an illustration of the
proposed modifications, which is reproduced below.

19 U.S. Patent No. 8,053,042, issued Nov. 8, 2011 (Ex. 1028).
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The figure reproduced above is Petitioner’s modified version of Loomis’s
tree based on the teachings of Miller, Jumo, and Pan. Id. at 43. In the figure
reproduced above, Petitioner again relies on Jumo’s electrical connectors (in
green) to provide both the mechanical and electrical connections between
the tree portions.
Petitioner initially alleges that “Loomis arguably teaches all elements
of the Substitute Claims.” Pet. Opp. 38. Loomis, however, does not teach
the recited “four discrete rotational alignments.” Petitioner explains that
“Loomis teaches that the first and second trunk segments rotate relative to
one another about a central vertical axis ‘until the guide slot and detent are
properly aligned, ensuring that the plug prongs will then slide straight into
the socket holes.’” Id. at 52 (citing Loomis 3:57–63). In its Opposition,
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however, Petitioner never explains how Loomis actually meets the “four
discrete rotational alignments” required by the claim. Instead, Petitioner
again refers us back to its earlier general discussion of the references. See
id. (“The combined teachings of Loomis-Otto-Jumo-Miller-Pan (as
described supra Part III.B.1) teach this element.”).
To the extent Petitioner relies on Loomis teaching the recited “four
discrete rotational alignments,” that challenge fails because Loomis teaches
a single rotational alignment, as made clear by Petitioner’s own discussion
of that reference. See Pet. Opp. 39. Figure 2 from Loomis is reproduced
below.

Figure 2 of Loomis is a perspective view of its trunk segments. As
Petitioner explains, “[t]he second trunk segment 16 has a lower portion
having a notch or guide slot 50 in the outside wall 46 of the trunk segment,
and a recessed end face 52 bearing an electrical connector such as plug 54,”
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and “connection with the corresponding socket 42 of the first trunk segment
is only possible when the detent on the first trunk segment has been aligned
with the guide slot on the second trunk segment.” Id. (citing Loomis, 6:21–
50, Abstract, Figs. 1, 2). That is, detent 38 and guide slot 50 allow only a
single rotational orientation.
To the extent Petitioner relies on Jumo teaching the recited “four
discrete rotational alignments,” again, we note that challenge to substitute
claims 29 and 30 fails because Jumo is non-analogous art. See 759 F. App’x
at 942.
The challenge to substitute claims 29 and 30 fails for at least the
reasons set forth above.
C. Conclusion
Patent Owner’s Motion to Amend is granted with respect to substitute
claims 29 and 30.

V. CONCLUSION20
On remand, we determine that Petitioner has established by a
preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 of the ’186
patent are unpatentable, but has failed to establish that claims 7, 10, 11, 16–

20 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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22, 25, 26, and 28 of the ’186 patent are unpatentable.21 Petitioner has failed
to establish by a preponderance of the evidence that claims 1–3, 5–9, 11, 12,
14, and 15 of the ’187 patent are unpatentable.22 Petitioner has failed to
establish by a preponderance of the evidence that proposed substitute claims
29 and 30 are unpatentable.
The following summarizes the outcome on remand:

Motion to Amend Outcome ’186 Patent Claim(s)
Substitute Claims Proposed in the Amendment 29–36

21 As noted above, claim 15 of the ’186 patent is not subject to the remand.
22 As noted above, claims 4, 10, and 13 of the ’187 patent are not subject to
the remand.
’186
Patent
Claims

35
U.S.C.
§
Reference(s) Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3, 4, 6,
8–11, 16,
20, 21, 25
103 Miller
1, 3, 4, 6, 8, 9 10, 11, 16, 20,
21, 25
28 103 Miller, Pan 28
7, 22 103 Miller, Lessner 7, 22
18, 19, 26 103 Miller, Janning 18, 19, 26
17 103 Miller, Yang 17
Overall
Outcome
1, 3, 4, 6, 8, 9 7, 10, 11, 16–
22, 25, 26, 28
’187
Patent
Claims

35
U.S.C.
§
Reference(s) Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–3, 5–9,
11, 12, 14
103 Miller, Pan 1–3, 5–9, 11,
12, 14
12, 15 103 Miller, Pan, Janning 12, 15
Overall
Outcome
1–3, 5–9, 11,
12, 14, 15
IPR2016-01610 (Patent 8,454,186 B2)
IPR2016-01612 (Patent 8,454,187 B2)
39
Substitute Claims: Motion to Amend Granted 29, 30
Substitute Claims: Not Reached 31–36

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that,
Petitioner has established by a preponderance of the evidence that
claims 1, 3, 4, 6, 8, and 9 of the ’186 patent are unpatentable;23
Petitioner has failed to establish by a preponderance of the evidence
that claims 7, 10, 11, 16–22, 25, 26, and 28 of the ’186 patent are
unpatentable;
Petitioner has failed to establish by a preponderance of the evidence
that claims 1–3, 5–9, 11, 12, 14, and 15 of the ’187 patent are
unpatentable;24
Patent Owner’s Contingent Motion to Amend is granted with respect
to substitute claims 29 and 30; and
FURTHER ORDERED that, because this is a Final Written Decision
on Remand, parties to this proceeding seeking judicial review of the
Decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

23 The Federal Circuit affirmed the Original Decision’s determination that
claim 15 was not shown to be unpatentable by a preponderance of the
evidence. Polygroup, 759 F. App’x at 944.
24 The Federal Circuit affirmed the Original Decision’s determination that
claims 4, 10, and 13 were not shown to be unpatentable by a preponderance
of the evidence. Polygroup, 759 F. App’x at 944.
IPR2016-01610 (Patent 8,454,186 B2)
IPR2016-01612 (Patent 8,454,187 B2)
40
FOR PETITIONER:
Christopher J. Forstner
Ryan Schneider
Alexis N. Simpson
Robert Angle
Dabney J. Carr, IV
TROUTMAN SANDERS LLP
chris.forstner@troutmansanders.com
ryan.schneider@troutmansanders.com
alexis.simpson@troutmansanders.com
robert.angle@troutmansanders.com
dabney.carr@troutmansanders.com

FOR PATENT OWNER:
Larina A. Alton
Douglas J. Christensen
MASLON LLP
larina.alton@maslon.com
christensen@cfpatlaw.com

Lukas Toft
FOX ROTHSCHILD LLP
ltoft@foxrothschild.com