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Willis Elec. Co. v. Polygroup Macau Ltd. (BVI)

United States Court of Appeals for the Federal Circuit

July 1, 2019, Decided

2018-2125, 2018-2151

Opinion

 [*496]  Larina Alton, Fox Rothschild LLP, Minneapolis, MN, argued for appellant.

Robert A. Angle, Troutman Sanders LLP, Richmond, VA, argued for cross-appellant. Also represented by Dabney Jefferson Carr, IV, Christopher Forstner, Laura Anne Kuykendall; Douglas Salyers, Atlanta, GA.

Prost, Chief Judge.

Willis Electric Co., Ltd. ("Petitioner") appeals from the Patent Trial and Appeal Board's ("the Board") final decision on inter partes review upholding the patentability of claims 2-3 and 5-10 of U.S. Patent No. 8,863,416 ("the '416 patent"). Willis Elec. Co. v. Polygroup Macau Ltd. (BVI), No. IPR2017-00309, Paper 47 (P.T.A.B. May 7, 2018). Pol-ygroup Macau Ltd. (BVI) ("Patent Owner") cross-appeals from the Board's decision invalidating claims 1 and 4 of the '416 patent as obvious. Id. We affirm the Board's decision as to claims 1 and 4. We vacate, however, the Board's decision as to claims 2-3 and 5-10 and remand for further consideration.

Background

The '416 patent includes ten claims directed to electric artificial trees. '416 patent col. 2 ll. 27-30. [**2]  Decorating trees, a widely held holiday tradition, often includes draping multiple light strands on tree branches and using electricity to illuminate the light bulbs. Id. col. 6 ll. 57-60. Conventionally, multiple light strands lie in series, with one strand connecting to the wall outlet and providing electricity to each consecutive strand. Id. col. 6 ll. 59-62. According to the patent, some decorators find powering light strands in this manner frustrating and cumbersome, as it requires attaching the light strands before or after placing them on the tree. Id. col. 7 ll. 11-13. Prior attachment requires repeatedly circling the tree with trailing light strands. Id. col. 7 ll. 16-19. And delayed attachment entails reaching through tree branches to electrically connect the light strands. Id. col. 7 ll. 19-22.

To alleviate difficulties associated with powering light strands on conventional artificial trees, the '416 patent contemplates incorporating power transfer subsystems ("PTS") into neighboring tree-trunk sections. Id. col. 7 ll. 26-29. The trunk sections are mechanically connected, which in turn facilitates an electrical connection between the male end of the first trunk section's PTS and the [**3]  female end of the second trunk section's PTS. Id. col. 7 ll. 37-41. The PTS's female end comprises "a central void for receiving [an inner] male prong of the male end and a channel void disposed around the central void for receiving [an outer] male prong." Id. col. 7 l. 65-col. 8 l. 2. The PTS connects to a power outlet, enabling electricity to flow from the outlet to each tree-trunk section. Id. col. 7 ll. 41-44. The central void contains a  [*497]  spring-activated contact, which presses against the central male prong to maintain the electrical connection between the tree-trunk sections. Id. col. 13 ll. 19-23.

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777 Fed. Appx. 495 *; 2019 U.S. App. LEXIS 19597 **; 2019 U.S.P.Q.2D (BNA) 242941; 2019 WL 2723163

WILLIS ELECTRIC COMPANY, LTD., Appellant v. POLYGROUP MACAU LTD. (BVI), Cross-Appellant

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [**1] Appeals from the United States Patent and Trademark. Office, Patent Trial and Appeal Board in No. IPR2017-00309.

Disposition: AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED.

CORE TERMS

void, channel, female, Patent, sections, provisional, disclosure, electrical, combined, prong, strands, trunk, male, comprising, subsystem, disposed, substantial evidence, nonprovisional, recited, skilled, tree trunk, inner, intrinsic evidence, spring-activated, cross-appeal, invalidating, connect

Patent Law, Infringement Actions, Claim Interpretation, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Nonobviousness, Evidence, Fact & Law Issues, Elements & Tests