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From Intellectual Property Law Daily, January 28, 2019

Certain patent claims for lighted artificial trees were invalid as obvious

By Jody Coultas, J.D.

Several claims of four patents related to lighted artificial trees were unpatentable in light of prior art references, contrary to two separate decisions by the Patent Trial and Appeal Board, the U.S. Court of Appeals for the Federal Circuit has held.

In two nonprecedential dispositions, the U.S. Court of Appeals for the Federal Circuit has affirmed, in part, decisions by the Patent Trial and Appeal Board regarding a dispute over the patentability of four patents related to lighted artificial trees. The court remanded both decisions to the Board to determine whether certain claims of the patents at issue were unpatentable in light of prior art (Polygroup Ltd. MCO v. Willis Electric Co., Ltd., January 28, 2019, Hughes, T.).

Willis Electric Co., Ltd. owns U.S. Patents Nos. 8,454,186, 8,454,187, 8,936,379, and 9,044,056, all of which are directed to lighted artificial trees. The tree is comprised of "separable, modular tree portions mechanically and electrically connectable between trunk portions." The ’379 patent is related to the three other patents, but focuses more specifically on the structure and positioning of the mechanical-electrical connectors within the trunk sections.

Polygroup Ltd. MCO filed eight petitions for inter partes review of the ’186, ’187, and ’056 patents, asserting obviousness based on several different combinations of prior art references, and three petitions for review of the ’379 patent alleging obviousness based on different combinations of prior art references. A majority of the Patent Trial and Appeal Board found that Polygroup failed to prove by a preponderance of the evidence that any of the challenged claims of the four patents were unpatentable.

The ‘379 patent. In the first decision, the court held that the Board erred in its construction of "modular artificial tree" because the Board’s construction did not represent the broadest reasonable interpretation of the term, according to the court. The Board construed "modular artificial tree" to mean "a tree constructed of modular portions, each modular portion being a separate tree section." Relying on the testimony of Willis’s expert, the Board concluded that a modular tree is "a ‘distinct’ type of artificial tree with tree sections that come ‘with branches pre-attached to the trunk.’" However, none of the independent claims of the ’379 patent recite branches. While it can be proper to rely on expert testimony to establish meaning, unsupported assertions are not useful during claim construction. Here, the expert’s statement was a conclusory and unsupported assertion, and inconsistent with the intrinsic record. Thus, there was no support for reading such a limitation into the claims as the Board did here.

Also, while the ’379 patent’s specification discloses "modular tree portions" in the Field of Invention, it also describes other aspects of the tree as "modular" throughout the specification, such as the connector assembly and light system. Given these disclosures, the court was not persuaded that the broadest reasonable interpretation of "modular artificial tree" required a tree with "tree sections that come ‘with branches pre-attached to the trunk.’" The construction of "modular tree portions" as "an artificial tree with elements capable of being easily joined or arranged with other parts or units," was proper.

The Board also erred in holding that Polygroup established a sufficient motivation to combine two prior art references, according to the court. Polygroup argued that a skilled artisan would have been motivated to enhance the tree from one prior art reference with the "interference fit-type connection" taught by another prior art reference. The Board rejection of Polygroup’s proposed motivation was not supported by substantial evidence for three reasons. The court concluded that the Board’s determination that a skilled artisan would not replace the connectors in DeVicaris with the connectors from Korengold was irrelevant to the motivation actually proposed by Polygroup. Also, the fact that Korengold does not teach an "interference fit" as that term is used in claims 12, 15, and 32 was also irrelevant to the motivation to combine analysis. Finally, the Board’s determination that Korengold failed to teach rotational freedom is not supported by substantial evidence.

However, the Board did not err in its construction of "interference fit," according to the court. The Board construed "interference fit" to mean "an engineered connection where two components or parts to be connected are manufactured to be of different dimensions such that when one component is pressed into the other, they interfere and deform to force a connection."

The ‘186, ‘187 and ‘056 patents. In the second decision, the court held that the Board erred in its construction of both "tree portion" and "modular lighted artificial tree," according to the court. Polygroup’s proposed construction of "tree portion" as "an artificial tree with elements capable of being easily joined or arranged with other parts or units," represented the proper interpretation of the term in view of the ’186 patent’s specification. Nothing in the specification of any of the challenged patents supported the Board’s limitation of "tree portion" to an embodiment with nondetachable branches.

Polygroup failed to establish the unpatentability of claim 15 of the ’186 patent, claims 4, 10, and 13 of the ’187 patent, and claims 2, 4, and 5 of the ’056 patent based on a lack of motivation to combine the asserted prior art references, according to the court. The Board held that Polygroup failed to establish that a person of ordinary skill would have been motivated to combine prior art references Miller with Otto and Jumo or Hicks with Otto and McLeish. Although the challenged patents cover electrical connections between tubular portions of a device, those connections are all within the context of an artificial tree. Therefore, the Board did not err in defining the field of endeavor as "artificial trees with decorative lighting." Also, the Board did not err in defining the problem with which the inventor was faced as "assembly and disassembly ... as it relates to artificial trees." Jumo did not relate to artificial trees or decorative lighting, and Polygroup was unable to show that Jumo addressed the problem of convenient assembly or disassembly. Because Jumo was not analogous art, substantial evidence supported the Board’s determination that Polygroup failed to establish a motivation to combine Miller with Otto and Jumo.

The court vacated 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 a prior art reference. The Board declined to consider prior art reference Miller alone, however, because it found that Polygroup "set forth an obviousness ground containing and requiring [] three references." Miller discloses artificial trees with branches attached to hollow trunk members. Polygroup’s petitions explicitly argued that Miller alone teaches every element of the challenged claims of the ’186 and ’187 patents in its limitation-by-limitation analysis except for claim 15 of the ’186 patent and claims 4, 10, and 13 of the ’187 patent. The court vacated and remanded the decision to determine whether Miller rendered the claims obvious.

Because the Board’s decisions with respect to claims 11, 13, and 16–19 of the ’056 patent relied solely on its erroneous construction of "tree portion," the court vacated the Board’s decision with respect to those claims and remanded for the Board to consider the patentability of those claims under a proper construction.

The cases are Nos. 2018-1745, 2018-1746, and 2018-1747 and Nos. 2018-1748, 2018-1749, and 2018-1750.

Attorneys: Robert A. Angle (Troutman Sanders LLP) for Polygroup Ltd. MCO. Larina Alton (Fox Rothschild LLP) for Willis Electric Co., Ltd.

Companies: Polygroup Ltd. MCO; Willis Electric Co., Ltd.

MainStory: TopStory Patent FedCirNews

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