NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
POLYGROUP LIMITED MCO,
Appellant
v.
WILLIS ELECTRIC COMPANY, LTD,
Appellee
______________________
2018-1745, 2018-1746, 2018-1747
______________________
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.
______________________
OPINION ISSUED: January 28, 2019
OPINION MODIFIED: March 28, 2019 *
______________________
ROBERT A. ANGLE, Troutman Sanders LLP, Richmond,
VA, argued for appellant. Also represented by DABNEY
JEFFERSON CARR, IV, CHRISTOPHER FORSTNER, LAURA
ANNE KUYKENDALL; DOUGLAS SALYERS, Atlanta, GA.
* This opinion has been modified and reissued fol-
lowing a petition for panel rehearing filed by appellant.
2 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
LARINA ALTON, Fox Rothschild LLP, Minneapolis, MN,
argued for appellee.
______________________
Before DYK, REYNA, and HUGHES, Circuit Judges.
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 Wil-
lis Electric Co.’s Motion to Amend the ’056 patent. Poly-
group 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 motiva-
tion to combine prior art references is supported by sub-
stantial 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 and4of the ’056 patent were not shown
to be unpatentable. However, we conclude that the Board
applied erroneous claim constructions and refused to con-
sider Polygroup’s arguments that a single reference ren-
ders 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 pa-
tent.
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 3
I
A.
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 por-
tions mechanically and electrically connectable between
trunk portions.” ’186 patent col. 1 ll. 15–18. The hollow
trunk portions contain electrical wiring and electrical con-
nectors that provide a source of electricity for light strings
draped over the branches. The connectors are designed so
that mechanically connecting trunk portions during assem-
bly also creates an electrical connection between the trunk
portions. The connectors form this electrical connection re-
gardless 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.
The ’186, ’187, and ’056 patents share much of the same
specification, and their independent claims follow a com-
mon pattern. Claim 1 of the ’186 patent is representative
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, the first trunk por-
tion 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 por-
tion, a second plurality of branches joined to the
4 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
second trunk portion, and a second light string, the
second trunk portion defining a second trunk inte-
rior 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 electri-
cally 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 sec-
ond 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 con-
figured to couple with an end of the first trunk por-
tion 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 rota-
tional alignments of the first trunk portion relative
the second trunk portion about the central vertical
axis when the lower end of the second trunk por-
tion is coupled to the upper end of the first trunk
portion.
’186 patent col. 21 ll. 15–53 (emphasis added).
Except for claim 28 of the ’186 patent, every challenged
claim requires at least one “tree portion” comprised of var-
ious parts, such as a trunk portion, branches, and light
strings. The specifications describe the tree portions as
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 5
“modular” and explain that the trees provide “simplified
structures . . . for mechanically coupling tree portions along
the trunk without the burden of multiple steps such as ro-
tational alignment or affixing external fasteners.” ’186 pa-
tent col. 1 l. 17, col. 14 ll. 21–24. Claim 28 of the ’186 patent
does not claim a tree portion. Instead, its preamble recites
a “modular lighted artificial tree” comprised of multiple
trunk portions. ’186 patent col. 24 l. 26.
B.
Polygroup Ltd. MCO filed eight petitions for IPR of the
’186, ’187, and ’056 patents, asserting obviousness based on
several different combinations of prior art references. For
each patent, the Board consolidated the petitions into a sin-
gle IPR proceeding and instituted review on all challenged
claims on all challenged grounds.
For every challenged claim of the ’186 and ’187 patents
as well as claims 2 and 4 of the ’056 patent, Polygroup re-
lies on
U.S. Patent No. 4,020,201 (Miller) as a primary ref-
erence in combination with German Patent No.
DE8466328 (Otto) and French Patent No. FR 1,215,214
(Jumo). Miller discloses an artificial tree with hollow trunk
members that house electrical wiring for a light system.
The Miller tree is assembled by “removably sleev[ing] to-
gether” its trunk members and “removably sleev[ing]”
branches into apertures on the trunk members. J.A. 842–
43. Miller uses a traditional plug and socket electrical con-
nector within its hollow trunk to form an electrical connec-
tion between light strings.
Otto discloses an artificial tree with coaxial connectors
between its trunk sections that create simultaneous elec-
trical and mechanical connections. Polygroup uses Otto
“only to show the availability of trunk connectors that pro-
vide simultaneous electrical and mechanical connections at
a multitude of rotational positions.” J.A. 332 (emphasis
added). Polygroup argues that based on Otto, a person of
ordinary skill in the art would have been motivated to
6 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
enhance Miller with the electrical connector taught by
Jumo. Jumo discloses coaxial electrical connectors for use
in electrical devices with multiple tubular elements, such
as a lamp. Jumo’s connectors create a simultaneous me-
chanical and electrical connection when fitted together,
and they may be connected in multiple rotational positions.
For claims 11, 13, and 16–19 of the ’056 patent, Poly-
group relies on a combination of Miller and either U.S. Pa-
tent No. 1,974,472 (Seghers) or
U.S. Patent No. 8,053,042
(Loomis).
For claim 5 of the ’056 patent, Polygroup relies on U.S.
Patent Application Publication No. 2007/0230174 A1
(Hicks) as a primary reference in combination with Otto
and
U.S. Patent No. 7,066,739 B2 (McLeish). Hicks dis-
closes an artificial tree with hollow trunk members that
house the light wiring system. Hicks teaches removable
branches, each having its own electrical connector. Elec-
tricity is provided to the light strings on each branch indi-
vidually, so that a branch can be removed and replaced
without affecting lights on other branches. McLeish dis-
closes a coaxial electrical connector with male and female
parts having magnetic portions designed to attract one an-
other and form a simultaneous mechanical and electrical
connection.
Following institution, Willis sought to amend the ’056
patent by substituting claim 21 for claim 1. Proposed claim
21 adds the limitation of a third electrical terminal and re-
quires that the “second and third electrical terminals are
configured to provide power to the first light string separate
from power provided to a second light string.” J.A. 196 (em-
phasis added).
C.
The Board issued a consolidated decision for the IPRs
involving the ’186 and ’187 patents and a separate decision
for the IPR involving the ’056 patent. In both decisions, a
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 7
majority of the Board found that Polygroup failed to prove
by a preponderance of the evidence that any of the chal-
lenged claims are unpatentable. 1
The Board first addressed the construction of “tree por-
tion” and “modular lighted artificial tree.” It construed
“tree portion” to mean “a mechanically and electrically con-
nectable modular and unitary portion of an artificial tree.”
J.A. 12; see also J.A. 174. Because the branches in both
Miller and Hicks are detachable from the trunk sections,
the Board found that neither reference discloses the
“trunk-branch-light unit” required under its construction.
J.A. 33; see also J.A. 186–87.
Turning to “modular lighted artificial tree,” the Board
found the preamble of claim 28 of the ’186 patent to be lim-
iting. It then construed “modular lighted artificial tree” to
mean “a tree constructed of modular portions, each modu-
lar portion being a separate tree section.” J.A. 22. The
Board clarified that its construction “means that the mod-
ules in [claim 28] are the various trunk portions and their
associated structures, . . . similar to the tree portions of
claims 1, 10, and 20 [of the ’186 patent].” J.A. 24. The
Board thus found that just as Miller does not disclose a
“tree portion,” Miller also does not disclose a “modular
lighted artificial tree.” Because Polygroup relied on either
Miller or Hicks to teach a “tree portion” and a “modular
lighted artificial tree” for each of its asserted grounds of
obviousness, the Board determined that Polygroup failed
to prove that any of the challenged claims are obvious.
As an alternate basis for its patentability determina-
tions for all claims of the ’186 and ’187 patents as well as
claims 2 and 4 of the ’056 patent, the Board found that
1 A single member of the Board dissented in both de-
cisions and would have found all challenged claims un-
patentable as obvious under
35 U.S.C. § 103.
8 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
Polygroup failed to establish that a skilled artisan would
have been motivated to combine Miller with Otto and Jumo
because Jumo is not analogous prior art. 2 Similarly, as an
alternate basis for claim 5 of the ’056 patent, the Board
found that Polygroup failed to establish a motivation to
combine Hicks with Otto and McLeish because Polygroup
did “not give sufficient technical reasoning or evidence that
a person of ordinary skill in the art would consider modify-
ing Hicks’s connector with McLeish’s.” J.A. 188 (emphasis
in original).
The Board also granted Willis’s Motion to Amend the
’056 patent. The Board rejected Polygroup’s assertion that
proposed claim 21 would have been obvious in view of
Hicks, Otto, and
U.S. Patent No. 5,049,403 (Falossi) be-
cause “Hicks does not disclose . . . separate power provided
to the first and second light strings” as required by claim
21. J.A. 203.
Polygroup now appeals. We have jurisdiction under
28
U.S.C. § 1295(a)(4)(A).
II
We first consider the Board’s claim construction of
“tree portion” and “modular lighted artificial tree.” We re-
view the Board’s ultimate claim construction de novo and
any underlying factual determinations involving extrinsic
evidence for substantial evidence. In re Cuozzo Speed
2 The Board also found that secondary considera-
tions of commercial success, industry praise, and licensing
demonstrate the non-obviousness of the ’186 patent. Be-
cause we remand the Board’s patentability determinations
of the ’186 patent except for claim 15, we do not reach the
merits of parties’ arguments with respect to secondary con-
siderations. On remand, the Board may also consider sec-
ondary considerations for the remanded claims of the ’187
patent.
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 9
Techs., LLC,
793 F.3d 1268, 1280 (Fed. Cir. 2015). During
IPR of an unexpired patent, the Board gives the claims
their broadest reasonable interpretation in light of the
specification.
37 C.F.R. § 42.100(b). Under this standard,
claim terms are generally given their ordinary and custom-
ary meaning, as would be understood by a skilled artisan
in the context of the entire disclosure. See In re Translogic
Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
For the reasons below, we find that the Board erred in
its construction of both “tree portion” and “modular lighted
artificial tree.” Because the Board’s decisions with respect
to claims 11, 13, and 16–19 of the ’056 patent rely solely on
its erroneous construction of “tree portion,” we vacate the
Board’s decision with respect to those claims and remand
for the Board to consider the patentability of those claims
under a proper construction.
A.
The Board construed “tree portion” to mean “a mechan-
ically and electrically connectable modular and unitary
portion of an artificial tree.” J.A. 12. It emphasized that
“tree portion” requires “that the subcomponents are struc-
tured, arranged, and connectable in a way that they are
interfaced with as a unit.” J.A. 21. The Board noted that
the specification “explains that the module of its modular
tree is called a ‘tree portion,’ and that the tree is made by
connecting the various tree portion modules to assemble
the tree.” J.A. 15. The Board also highlighted a disclosed
embodiment where branches are non-detachably connected
to the trunk by “branch support rings,” which it found “pro-
vides modularity by making it easy for the user to interact
with the tree portion as a modular unit.” J.A. 16–17.
Applying its construction to Miller and Hicks, the
Board found that neither reference teaches a “tree portion”
because they disclose branches and lights that are separate
and removable from the trunk sections. Accordingly, the
Board found that both Miller and Hicks fail to disclose the
10 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
“trunk-light-branch” unit required under the Board’s con-
struction. J.A. 33, 186–87. Thus, although it is not clear
from the plain language of its construction, the Board’s
analysis makes clear that the Board understood “unitary”
to require non-detachable branches. Polygroup argues this
was error. We agree.
Although the specification supports the Board’s finding
that “tree portion” requires some level of modularity, see
’186 patent col. 1 ll. 15–17 (describing the present inven-
tion as an artificial tree having “separable, modular tree
portions”), it does not support reading “tree portion” to re-
quire a “unitary” structure with branches that are non-de-
tachably affixed to the trunk. While the patents disclose
an embodiment with branches non-detachably connected to
the trunk via “branch support rings,”
id. at col. 6 ll. 53-55,
col. 7 ll. 1–8, we have warned against confining claims to
the specific embodiments recited in the specification. See
Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir.
2005). We find nothing in the specification of any of the
challenged patents that supports limiting “tree portion” to
an embodiment with non-detachable branches. Therefore,
the Board erred by construing “tree portion” to require a
“unitary” structure, i.e. one with non-detachable branches.
Both Miller and Hicks disclose artificial trees with
branches attached to hollow trunk members. Neither ref-
erence requires the trunk members to be connected before
adding the branches. Thus, in either reference, the
branches and lights can first be attached to the trunk mem-
bers, resulting in a modular trunk-light-branch structure.
That the branches are removable from the trunk members
is of no moment under a proper construction of “tree por-
tion.”
B.
The Board found the preamble of claim 28 of the ’186
patent to be limiting, and it construed the term “modular
lighted artificial tree” to mean “a tree constructed of
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 11
modular portions, each modular portion being a separate
tree section.” J.A. 22. Under this construction, the Board
found that “modular lighted artificial tree” incorporates the
structural requirements of “tree portion.” This was error.
We find no support in the specification of the ’186 pa-
tent for reading “tree portion” into claim 28 based on the
“modular lighted artificial tree” language in the preamble.
While the ’186 patent’s specification describes “tree por-
tion” as “modular” in the Field of Invention, see ’186 patent
col. 1 l. 17, it also describes other aspects of the tree as
“modular” throughout the specification, such as the con-
nector assembly and light system, see e.g.
id. at col. 17 l. 25
(noting the “modularity and detachability of connector as-
sembly 200”); see also
id. at col. 18 ll. 33, 46, 50 (discussing
the “modularity” of the lighting system). Thus, the ’186
specification describes a tree that is “modular” in several
respects, only one of which relates to “tree portion.” We,
therefore, disagree with the Board that “reciting that the
tree is ‘modular’ means that the tree has the multiple tree
portion construction described in the specification.” J.A.
23. Instead, we find Polygroup’s proposed construction, “an
artificial tree with elements capable of being easily joined
or arranged with other parts or units,” J.A. 22, to represent
the broadest reasonable interpretation of “modular lighted
artificial tree” in view of the ’186 patent’s specification.
III
Next, we consider the Board’s findings that Polygroup
failed to establish that a person of ordinary skill would
have been motivated to combine Miller with Otto and Jumo
or Hicks with Otto and McLeish. A party asserting that a
claimed invention is obvious “must demonstrate . . . that a
skilled artisan would have had reason to combine the
teaching of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a
reasonable expectation of success from doing so.” PAR
Pharm., Inc. v. TWI Pharm, Inc.,
773 F.3d 1186, 1193 (Fed.
12 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
Cir. 2014) (internal quotation marks omitted). Whether a
skilled artisan would have been motivated to combine the
prior art is a factual question, which we review for sub-
stantial evidence. Intercontinental Great Brands LLC v.
Kellogg N. Am. Co.,
869 F.3d 1336, 1343 (Fed. Cir. 2017);
see also In re Giannelli,
739 F.3d 1375, 1379 (Fed. Cir.
2014). Whether a reference in the prior art is analogous is
also a question of fact reviewed for substantial evidence.
Wyers v. Master Lock Co.,
616 F.3d 1231, 1237 (Fed. Cir.
2015). Substantial evidence requires that “a reasonable
mind might accept the evidence to support the finding.” In
re Giannelli, 739 F.3d at 1379.
Our analysis here applies to the Board’s patentability
findings for all challenged claims of the ’186 and ’187 pa-
tents as well as claims 2, 4, and 5 of the ’056 patent. For
the reasons set forth below, we find that substantial evi-
dence supports the Board’s determinations that Polygroup
failed to establish a motivation to combine either set of ref-
erences. We also find, however, that the Board erred in
failing to consider whether Miller alone renders many of
the challenged claims of the ’186 and ’187 patents obvious,
and in failing to consider whether Hicks alone renders
claim 5 of the ’056 patent obvious.
A.
For every challenged claim of the ’186 and ’187 patents,
as well as claims 2 and 4 of the ’056 patent, Polygroup ar-
gued that a person of ordinary skill would have been moti-
vated by Otto’s teaching of the use and availability of
coaxial connectors in artificial trees to modify the Miller
tree with the connector taught by Jumo. The Board re-
jected Polygroup’s proposed motivation because it found
that Jumo is not analogous prior art.
“Prior art is analogous where either (1) ‘the art is from
the same field of endeavor, regardless of the problem ad-
dressed’ or (2) even if the reference is not within the same
field of endeavor, ‘the reference still is reasonably pertinent
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 13
to the particular problem with which the inventor is in-
volved.’” In re Ethicon, Inc.,
844 F.3d 1344, 1349 (Fed. Cir.
2017) (quoting In re Clay,
966 F.2d 656, 658–59 (Fed. Cir.
1992)). The Board determined that the relevant field of en-
deavor here is “artificial trees with decorative lighting.”
J.A. 37. The Board found that Jumo, which is directed to a
“latching side-by-side support arm for electrical device,” is
not within this field of endeavor because it is unrelated to
decorative lighting or artificial trees.
Id. Next, the Board
found the problem faced by the inventor was “convenient
assembly and disassembly . . . as it relates to artificial
trees.”
Id. The Board concluded that Jumo is concerned
with durability rather than convenient assembly. J.A. 40.
Thus, “even under [Polygroup’s] own proposed definition of
the problem,” “assembly, disassembly, and electrically con-
necting sections of an artificially lit object,” Jumo is not
reasonably pertinent to the problem faced by the inventor.
J.A. 37–40.
Polygroup argues that none of the Board’s findings
above are supported by substantial evidence. We disagree.
Although the challenged patents cover electrical connec-
tions between tubular portions of a device, those connec-
tions are all within the context of an artificial tree. The
Board thus did not err in defining the field of endeavor as
“artificial trees with decorative lighting.” J.A. 37. Simi-
larly, the Board did not err in defining the problem with
which the inventor was faced as “assembly and disassem-
bly . . . as it relates to artificial trees.”
Id. We agree with
the Board that Jumo does not relate to artificial trees or
decorative lighting, and Polygroup points to nothing in
Jumo addressing the problem of convenient assembly or
disassembly. Substantial evidence supports the Board’s
finding that Jumo is not analogous art. Because “[g]ener-
ally, a skilled artisan would only have been motivated to
combine analogous art,” In re Ethicon, Inc., 844 F.3d at
1349, we also find that substantial evidence supports the
14 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
Board’s determination that Polygroup failed to establish a
motivation to combine Miller with Otto and Jumo.
Polygroup also claims the Board erred in concluding
that its petition “does not rely on Otto for the structure of
the[] connections” and in considering only whether a
skilled artisan would enhance Miller with the connector
from Jumo. J.A. 28. We find no such error. Polygroup’s
petition uses Otto “only to show the availability of trunk
connectors that provide simultaneous electrical and me-
chanical connections” in support of its claim that a skilled
artisan “would have been motivated to enhance Miller’s ar-
tificial tree with a similar concept via the multi-position
Jumo connectors.” J.A. 332.
B.
Polygroup argues that even if there is no motivation to
combine Miller with Otto and Jumo, Miller alone renders
many of the challenged claims obvious. The Board declined
to consider Miller alone, however, because it found that
Polygroup “set forth an obviousness ground containing and
requiring [] three references.” J.A. 41 n. 31. We disagree.
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 analy-
sis except for claim 15 of the ’186 patent and claims 4, 10,
and 13 of the ’187 patent. See J.A. 360–384, 2546–67,
2570–76 (’186 patent); Polygroup Ltd. v. Willis Elec. Co.,
IPR2016-01609, Paper 2 at 34–73 (P.T.A.B. Sept. 2, 2016)
(same); see also Polygroup Ltd. v. Willis Elec. Co., IPR2016-
01612, Paper 2 at 37–72 (P.T.A.B. Aug. 26, 2016) (’187 pa-
tent); Id., Paper 28 at 27–51 (P.T.A.B. Apr. 18, 2016)
(same); Id., Paper 34 at 36–69 (P.T.A.B. Aug. 26, 2016)
(same). The Board erred when it refused to consider these
arguments. See Realtime Data, LLC v. Iancu, No. 2018-
1154,
2019 WL 149835, *4 (Fed. Cir. Jan. 10, 2019) (affirm-
ing the Board’s obviousness finding based on a single ref-
erence where the petitioner’s primary argument was that
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 15
all of the elements were disclosed in a single reference, and
the petitioner also argued, in the alternative, that some of
the elements were disclosed by a second reference). 3
Therefore, we vacate the Board’s obviousness determina-
tions of all challenged claims of the ’186 and ’187 patents
except claim 15 of the ’186 patent and claims 4, 10, and 13
of the ’187 patent. 4 On remand, the Board should consider
whether Miller alone renders those claims obvious.
C.
For claim 5 of the ’056 patent, Polygroup argued that a
person of ordinary skill would have been motivated by Otto
to enhance Hicks with the connector taught by McLeish.
The Board rejected Polygroup’s proposed motivation be-
cause Polygroup gave insufficient technical reasoning or
evidence that a skilled artisan “would consider modifying
Hicks’s connector with McLeish’s.” J.A. 188. The Board
found no evidence that McLeish’s connector is substituta-
ble for use in artificial trees. Instead, it found that
3 Although the Board instituted review on the
ground of “Miller in view of Otto and Jumo,” J.A. 41 n. 31,
we do not read the Board’s institution decision as a partial
institution. Instead, we merely recognize as we did in
Realtime Data, that when a petition sets forth a ground
with multiple references, but the petitioner’s primary ar-
guments rely on a single reference, the Board should con-
sider those arguments irrespective of a motivation to
combine references. Therefore, this case does not raise any
issue under SAS Insitute Inc. v. Iancu,
138 S.Ct. 1348
(2018), or our cases interpreting it.
4 Claim 15 of the ’186 patent and claims 4, 10, and
13 of the ’187 patent each require a “coaxial” connector. See
’186 patent col. 23 l. 9; ’187 patent col. 22 ll. 7–12, col. 23 ll.
2–7, 16. Because Polygroup does not rely on Miller to teach
a “coaxial” connector, the Board did not err in failing to con-
sider Miller alone for these claims.
16 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
“McLeish functions to connect loose, movable structures, or
structures that are otherwise out of reach.” J.A. 189.
We agree with the Board that Polygroup fails to point
to any persuasive evidence that a skilled artisan would con-
sider McLeish suitable for use in artificial trees. Accord-
ingly, we find that substantial evidence supports the
Board’s conclusion that Polygroup failed to establish a mo-
tivation to enhance the Hicks tree with the connector from
McLeish. However, for the same reasons given above with
respect to Polygroup’s Miller alone argument, we find that
the Board erred by failing to consider whether Hicks alone
renders claim 5 of the ’056 patent obvious. Polygroup’s pe-
tition explicitly argued that Hicks alone teaches every ele-
ment of claim 5. See Polygroup Ltd. v. Willis Elec. Co.,
IPR2016-00802, Paper 2 at 45–48 (P.T.A.B. Apr. 28, 2016).
Therefore, we vacate the Board’s patentability determina-
tion of claim 5 of the ’056 patent. On remand, the Board
should consider whether Hicks alone renders that claim ob-
vious.
IV
Finally, we consider the Board’s grant of Willis’s Mo-
tion to Amend the ’056 patent by substituting claim 1 with
proposed claim 21. Polygroup argues the Board erred be-
cause the combination of Hicks with Otto and Falossi ren-
ders proposed claim 21 obvious. The Board found that the
proposed claim would not have been obvious in view of
those references because “Hicks does not disclose . . . sepa-
rate power provided to the first and second light strings” as
required by claim 21. J.A. 203. We find no reversible error
in this conclusion.
Proposed claim 21 requires the second and third elec-
tric terminals to be “configured to provide power to the first
light string separate from power provided to a second light
string.” J.A. 196 (emphasis added). Although Hicks dis-
closes separate power cords in its upper and lower sections,
the Board found that “all light strings in Hicks would
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 17
reside on the same power connection” because they all flow
through the same three prong adapter. J.A. 202–03. Thus,
Hicks does not provide separate power in the manner re-
quired by claim 21.
Polygroup argues that Hicks’s “second power cord 48
only provides power to the bottom portion, [so] it does not
connect via the three-prong plug 44.” Appellant’s Reply Br.
at 31. Figure 2 of Hicks, however, appears to depict power
cord 48 connecting to the three-prong adapter 44. See J.A.
942. Given this disclosure, we find that the Board’s conclu-
sion that Hicks does not teach separate power in the man-
ner of claim 21 is supported by substantial evidence.
Accordingly, the Board did not err in granting Willis’s Mo-
tion to Amend.
V
We affirm the Board’s determination that 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 and 4 of the ’056 patent because Polygroup failed
to establish a motivation to combine the asserted prior art
references. We vacate the Board’s obviousness determina-
tions of all remaining challenged claims of the ’186 and ’187
patents, as well as claim 5 of the ’056 patent, because the
Board failed to consider whether those claims are un-
patentable in view of either Miller or Hicks alone. We also
vacate the Board’s patentability determinations of claims
11, 13, and 16–19 of the ’056 patent because they rely solely
on the Board’s erroneous claim construction of “tree por-
tion.” On remand, the Board should consider whether the
claims are unpatentable in light of our opinion. We affirm
the Board’s grant of Willis’s Motion to Amend the ’056 pa-
tent.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
18 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
COSTS
No costs.
