Polygroup Limited McO v. Willis Electric Company, Ltd.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
POLYGROUP LIMITED MCO,
Plaintiff-Appellant
v.
WILLIS ELECTRIC COMPANY, LTD,
Defendant-Appellee
______________________
2018-1745, 2018-1746, 2018-1747
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2016-00800, IPR2016-00801, IPR2016-01609,
IPR2016-01610, IPR2016-01611, IPR2016-01612,
IPR2016-01613.
______________________
Decided: January 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.
LARINA ALTON, Fox Rothschild LLP, Minneapolis,
MN, argued for appellee.
______________________
2 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
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 un-
patentability 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 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, 4, and 5 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 argu-
ments 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
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.
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
portions mechanically and electrically connectable be-
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 3
tween trunk portions.” ’186 patent col. 1 ll. 15–18. The
hollow trunk portions contain electrical wiring and elec-
trical 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 an electrical con-
nection 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 reposi-
tion 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
common pattern. Claim 1 of the ’186 patent is repre-
sentative 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 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 electri-
cal connector and a second trunk wiring assembly,
the second trunk wiring assembly electrically
connectable to the second lighting string and the
4 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
second trunk electrical connector, and wherein at
least a portion of the second wiring assembly is lo-
cated 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
second trunk electrical connector of the second
trunk portion, thereby creating an electrical con-
nection 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
portion in at least four different rotational align-
ments of the first trunk portion relative the sec-
ond 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 cen-
tral vertical axis when the lower end of the second
trunk portion 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 chal-
lenged claim requires at least one “tree portion” com-
prised of various parts, such as a trunk portion, branches,
and light strings. The specifications describe the tree
portions as “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 rotational alignment or affixing external
fasteners.” ’186 patent col. 1 l. 17, col. 14 ll. 21–24. Claim
28 of the ’186 patent does not claim a tree portion. In-
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 5
stead, its preamble recites a “modular lighted artificial
tree” comprised of multiple trunk portions. ’186 patent
col. 24 l. 26.
B.
Polygroup Ltd. 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
single IPR proceeding and instituted review on all chal-
lenged claims on all challenged grounds.
For every challenged claim of the ’186 and ’187 pa-
tents as well as claims 2 and 4 of the ’056 patent, Poly-
group relies on U.S. Patent No. 4,020,201 (Miller) as a
primary reference 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] together” its trunk members and “removably
sleev[ing]” branches into apertures on the trunk mem-
bers. J.A. 842–43. Miller uses a traditional plug and
socket electrical connector within its hollow trunk to form
an electrical connection between light strings.
Otto discloses an artificial tree with coaxial connect-
ors between its trunk sections that create simultaneous
electrical and mechanical connections. Polygroup uses
Otto “only to show the availability of trunk connectors
that provide 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 enhance Miller with the electrical connector
taught by Jumo. Jumo discloses coaxial electrical con-
nectors for use in electrical devices with multiple tubular
elements, such as a lamp. Jumo’s connectors create a
simultaneous mechanical and electrical connection when
6 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
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.
Patent 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
discloses an artificial tree with hollow trunk members
that house the light wiring system. Hicks teaches remov-
able branches, each having its own electrical connector.
Electricity is provided to the light strings on each branch
individually, so that a branch can be removed and re-
placed without affecting lights on other branches.
McLeish discloses a coaxial electrical connector with male
and female parts having magnetic portions designed to
attract one another 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 requires that the “second and third electrical termi-
nals are configured to provide power to the first light
string separate from power provided to a second light
string.” J.A. 196 (emphasis added).
C.
The Board issued a consolidated decision for the IPRs
involving the ’186 and ’187 patents and a separate deci-
sion for the IPR involving the ’056 patent. In both deci-
sions, a majority of the Board found that Polygroup failed
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 7
to prove by a preponderance of the evidence that any of
the challenged claims are unpatentable. 1
The Board first addressed the construction of “tree
portion” and “modular lighted artificial tree.” It con-
strued “tree portion” to mean “a mechanically and electri-
cally connectable 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
limiting. It then construed “modular lighted artificial
tree” to mean “a tree constructed of modular portions,
each modular portion being a separate tree section.” J.A.
22. The Board clarified that its construction “means that
the modules 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
1 A single member of the Board dissented in both
decisions and would have found all challenged claims
unpatentable as obvious under 35 U.S.C. § 103.
8 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
claims 2 and 4 of the ’056 patent, the Board found that
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 Similar-
ly, as an alternate basis for claim 5 of the ’056 patent, the
Board found that Polygroup failed to establish a motiva-
tion 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 modifying 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)
because “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 constructions of
“tree portion” and “modular lighted artificial tree.” We
review the Board’s ultimate claim construction de novo
and any underlying factual determinations involving
2 The Board also found that secondary considera-
tions of commercial success, industry praise, and licensing
demonstrate the non-obviousness of the ’186 patent.
Because we remand the Board’s patentability determina-
tions of the ’186 patent except for claim 15, we do not
reach the merits of parties’ arguments with respect to
secondary considerations. On remand, the Board may
also consider secondary considerations for the remanded
claims of the ’187 patent.
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 9
extrinsic evidence for substantial evidence. In re Cuozzo
Speed 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 customary 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 light-
ed 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 me-
chanically and electrically connectable modular and
unitary portion of an artificial tree.” J.A. 12. It empha-
sized that “tree portion” requires “that the subcomponents
are structured, 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 “provides 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 por-
10 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
tion” because they disclose branches and lights that are
separate and removable from the trunk sections. Accord-
ingly, the Board found that both Miller and Hicks fail to
disclose the “trunk-light-branch” unit required under the
Board’s construction. 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 under-
stood “unitary” to require non-detachable branches.
Polygroup argues this was error. We agree.
Although the specification supports the Board’s find-
ing that “tree portion” requires some level of modularity,
see ’186 patent col. 1 ll. 15–17 (describing the present
invention as an artificial tree having “separable, modular
tree portions”), it does not support reading “tree portion”
to require a “unitary” structure with branches that are
non-detachably 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 sup-
ports 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
reference 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
members, resulting in a modular trunk-light-branch
structure. That the branches are removable from the
trunk members is of no moment under a proper construc-
tion of “tree portion.”
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 11
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
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 connector assembly and light system, see e.g. id. at col.
17 l. 25 (noting the “modularity and detachability of
connector assembly 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 “modu-
lar” 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
12 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
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. 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 substantial 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 re-
quires 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
patents as well as claims 2, 4, and 5 of the ’056 patent.
For the reasons set forth below, we find that substantial
evidence supports the Board’s determinations that Poly-
group failed to establish a motivation to combine either
set of references. 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.
A.
For every challenged claim of the ’186 and ’187 pa-
tents, as well as claims 2 and 4 of the ’056 patent, Poly-
group argued that a person of ordinary skill would have
been motivated by Otto’s teaching of the use and availa-
bility of coaxial connectors in artificial trees to modify the
Miller tree with the connector taught by Jumo. The
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 13
Board rejected 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
addressed’ or (2) even if the reference is not within the
same field of endeavor, ‘the reference still is reasonably
pertinent to the particular problem with which the inven-
tor is involved.’” 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 endeavor 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 elec-
trical 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, disassem-
bly, and electrically connecting sections of an artificially
lit object,” Jumo is not reasonably pertinent to the prob-
lem faced by the inventor. J.A. 37–40.
Polygroup argues that none of the Board’s findings
above are supported by substantial evidence. We disa-
gree. Although the challenged patents cover electrical
connections between tubular portions of a device, those
connections are all within the context of an artificial tree.
The Board thus did not err in defining the field of endeav-
or as “artificial trees with decorative lighting.” J.A. 37.
Similarly, 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.” Id. We
agree with the Board that Jumo does not relate to artifi-
cial trees or decorative lighting, and Polygroup points to
nothing in Jumo addressing the problem of convenient
14 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
assembly or disassembly. Substantial evidence supports
the Board’s finding that Jumo is not analogous art.
Because “[g]enerally, 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 Board’s determination that Poly-
group 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
mechanical connections” in support of its claim that a
skilled artisan “would have been motivated to enhance
Miller’s artificial 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
analysis 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)
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 15
(’187 patent); 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 consid-
er these arguments. See Realtime Data, LLC v. Iancu,
No. 2018-1154, 2019 WL 149835, *4 (Fed. Cir. Jan. 10,
2019) (affirming the Board’s obviousness finding based on
a single reference where the petitioner’s primary argu-
ment was that 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 determinations 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.
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 par-
tial 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
arguments rely on a single reference, the Board should
consider 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 consider Miller alone for these claims.
16 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
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 moti-
vation because Polygroup gave insufficient technical
reasoning or evidence that a skilled artisan “would con-
sider modifying Hicks’s connector with McLeish’s.” J.A.
188. The Board found no evidence that McLeish’s con-
nector is substitutable for use in artificial trees. Instead,
it found that “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
consider McLeish suitable for use in artificial trees.
Accordingly, we find that substantial evidence supports
the Board’s conclusion that Polygroup failed to establish a
motivation to enhance the Hicks tree with the connector
from McLeish.
IV
Finally, we consider the Board’s grant of Willis’s
Motion to Amend the ’056 patent by substituting claim 1
with proposed claim 21. Polygroup argues the Board
erred because the combination of Hicks with Otto and
Falossi renders proposed claim 21 obvious. The Board
found that the proposed claim would not have been obvi-
ous in view of those references because “Hicks does not
disclose . . . separate 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
electric 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). Alt-
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 17
hough Hicks discloses separate power cords in its upper
and lower sections, the Board found that “all light strings
in Hicks would 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 required 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 conclusion that Hicks does not teach separate
power in the manner of claim 21 is supported by substan-
tial evidence. Accordingly, the Board did not err in grant-
ing Willis’s Motion 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, 4, and 5 of the ’056 patent because Polygroup
failed to establish a motivation to combine the asserted
prior art references. We vacate 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. We also vacate the Board’s patentability determi-
nations of claims 11, 13, and 16–19 of the ’056 patent
because they rely solely on the Board’s erroneous claim
construction of “tree portion.” On remand, the Board
should consider whether the claims are unpatentable in
light of our opinion. We affirm the Board’s grant of Wil-
lis’s Motion to Amend the ’056 patent.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
18 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD
COSTS
No costs.