Polygroup Ltd. MCO v. Willis Elec. Co.
United States Court of Appeals for the Federal Circuit
January 28, 2019, Decided; January 28, 2019, Opinion Issued
2018-1745, 2018-1746, 2018-1747
[*936] Hughes, Circuit Judge.
This is a patent case involving lighted artificial trees. Polygroup Ltd. MCO petitioned for inter partes review of U.S. Patents Nos. 8,454,186, 8,454,187, and 9,044,056. The Patent Trial and Appeal Board instituted review of all the challenged claims of the patents. The Board determined that Polygroup had not established the unpatentability of any of the challenged claims. The Board also granted Willis Electric Co.'s Motion to Amend the '056 patent. Polygroup now appeals both the Board's decisions on patentability and Willis's Motion to Amend. Because the Board's finding that Polygroup failed to establish a motivation to combine prior art references is supported [**2] by substantial evidence, we affirm the Board's determination that claim 15 of the '186 patent; claims 4, 10, and 13 of the '187 patent; and claims 2 and 4 of the '056 patent were not shown to be unpatentable. However, we conclude that the Board applied erroneous claim constructions and refused to consider Polygroup's arguments that a single reference renders many of the claims obvious. Therefore, we vacate the Board's patentability determinations as to the remaining challenged claims of the '186, '187, and '056 patents. On remand, the Board should consider Polygroup's arguments based on Miller or Hicks alone and whether those claims are unpatentable under a proper construction. We affirm the Board's grant of Willis's Motion to Amend the '056 patent.
Willis Electric Co., Ltd. owns the '186, '187, and '056 patents, all of which are directed to a lighted artificial tree. The trees are comprised of "separable modular tree portions mechanically and electrically connectable between trunk portions." '186 patent col. 1 ll. 15-18. The hollow trunk portions contain electrical wiring and electrical connectors that provide a source of electricity for light strings draped over the branches. The connectors are designed so that mechanically connecting trunk portions during assembly also creates [**3] an electrical connection between the trunk portions. The connectors form this electrical connection regardless of the rotational alignment of the trunk portions. These features simplify tree assembly by removing the need to "rotate or reposition a particular tree portion after lifting it up and before placing it onto a base portion." '186 patent col. 15 ll. 51-53.
[*937] The '186, '187, and '056 patents share much of the same specification, and their independent claims follow a common pattern. Claim 1 of the '186 patent is representative and is reproduced below.Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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759 Fed. Appx. 934 *; 2019 U.S. App. LEXIS 2753 **; 2019 WL 350753
POLYGROUP LIMITED MCO, Appellant v. WILLIS ELECTRIC COMPANY, LTD, Appellee
Subsequent History: OPINION MODIFIED: March 28, 20191.
Related proceeding at Polygroup Ltd. MCO v. Willis Elec. Co., 758 Fed. Appx. 943, 2019 U.S. App. LEXIS 2754 (Fed. Cir., Jan. 28, 2019)
Opinion withdrawn by, Rehearing granted by Polygroup Ltd. MCO v. Willis Elec. Co., Ltd., 759 Fed. Appx. 992, 2019 U.S. App. LEXIS 9185 (Fed. Cir., Mar. 28, 2019)
Related proceeding at Polygroup Ltd. MCO v. Willis Elec. Co., 2019 U.S. App. LEXIS 19592 (Fed. Cir., July 1, 2019)
Prior History: [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-00800, IPR2016-00801, IPR2016-01609, IPR2016-01610, IPR2016-01611, IPR2016-01612, IPR2016-01613.
Polygroup Ltd. v. Willis Elec. Co., 2018 Pat. App. LEXIS 7039 (P.T.A.B., Feb. 26, 2018)
Disposition: AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED.
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Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Nonobviousness, Evidence, Fact & Law Issues, Elements & Tests, Prior Art