Polygroup Limited McO v. Willis Electric Company, Ltd.

• Court: Court of Appeals for the Federal Circuit
• Decided: January 19, 2022
• Docket: 21-1401
• Status: Unpublished

Opinion

Case: 21-1401 Document: 44 Page: 1 Filed: 01/19/2022

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

POLYGROUP LIMITED MCO, Appellant

v.

WILLIS ELECTRIC COMPANY, LTD., Appellee ______________________

2021-1401, 2021-1402 ______________________

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. ______________________

Decided: January 19, 2022 ______________________

DOUGLAS SALYERS, Troutman Pepper Hamilton Sand- ers LLP, Atlanta, GA, argued for appellant. Also repre- sented by PUJA PATEL LEA; ROBERT A. ANGLE, CHRISTOPHER FORSTNER, Richmond, VA.

PATRICK M. ARENZ, Robins Kaplan LLP, Minneapolis, MN, argued for appellee. Also represented by BRENDA L. JOLY, EMILY ELIZABETH NILES, RONALD JAMES SCHUTZ. ______________________ Case: 21-1401 Document: 44 Page: 2 Filed: 01/19/2022

Before DYK, HUGHES, and STOLL, Circuit Judges. Opinion for the court filed by Circuit Judge HUGHES. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge STOLL. HUGHES, Circuit Judge. This is a patent case involving lighted artificial trees. Polygroup Limited MCO appeals from the final written de- cision of the Patent Trial and Appeal Board in an inter partes review upholding the patentability of claims 7, 10, 11, 16–22, 25, 26, and 28 of U.S. Patent No. 8,454,186 and claims 1–3, 5–9, 11, 12, 14, and 15 of U.S. Patent No. 8,454,187. With respect to every claim except claim 7 of the ’186 patent, we reverse the Board’s determination that Polygroup failed to establish the unpatentability of the challenged claims. We conclude that the Board applied erroneous claim constructions and that, under the proper constructions, Miller teaches every limitation of claims 10, 11, 16–22, 25, 26, and 28 of the ’186 patent and claims 1– 3, 5–9, 11, 12, 14, and 15 of the ’187 patent. Polygroup has, therefore, established that these claims are unpatentable. For claim 7 of the ’186 patent, the Board exceeded the scope of our remand when it considered a combination of Miller and Lessner. We therefore vacate and remand its decision with regard to claim 7 of the ’186 patent. I A Willis Electric Company, Ltd. owns the ’186 and ’187 patents, both of which are “directed to lighted artificial trees having separable, modular tree portions mechani- cally and electrically connectable between trunk portions.” ’186 patent 1:16–19; ’187 patent 1:15–18. The trunk por- tions house connector assemblies containing electrical wir- ing and electrical connectors that provide a source of electricity for light strings. ’186 patent 11:4–7, 11:57–67, Case: 21-1401 Document: 44 Page: 3 Filed: 01/19/2022

POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 3

14:65–67. The connector assemblies “are securely posi- tioned within their respective trunk sections” and designed to “permit the electrical connection of the connectors at any rotational orientation about a vertical axis,” thus simplify- ing tree assembly. Id. 15:1–6, 15:45–59. The patents share much of the same specification and their independent claims follow a common pattern, disclos- ing components of a first tree portion, components of a sec- ond tree portion, and—pertinent to this appeal—how those tree portions connect to each other. Claim 10 of the ’186 patent is representative and is reproduced below. 10. A lighted artificial tree, comprising: a first tree portion including a first trunk por- tion, a first plurality of branches joined to the first trunk portion, and a first light string, the first trunk portion having a first trunk body and a trunk connector, at least a portion of the trunk connector housed within the first trunk body and electrically connected to the first light string; 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 having a first trunk body and a trunk connector, at least a portion of the trunk connector housed within the second trunk portion and electrically con- nected to the second light string; and wherein the second tree portion is mechanically and electrically connectable to the first tree por- tion by coupling a lower end of the second trunk body to an upper end of the first trunk body along a common vertical axis at a rotational orientation of the first trunk portion relative the second trunk portion about the common Case: 21-1401 Document: 44 Page: 4 Filed: 01/19/2022

vertical axis, thereby causing the trunk con- nector of the first trunk portion to make an elec- trical connection with the trunk connector of the second trunk portion within an interior of the lighted artificial tree, the electrical connection being made independent of the rotation orien- tation of the first trunk portion relative the sec- ond trunk portion about the common vertical axis. ’186 patent 22:33–60 (emphasis added as by the Board at Appx21–22). Polygroup petitioned for and the Board insti- tuted inter partes review of claims 1, 3, 4, 6–9, 11, 15–22, 25, 26, and 28 of the ’186 patent and claims 1–15 of the ’187 patent. For every challenged claim, Polygroup relied on U.S. Patent No. 4,020,201 (Miller) as a primary reference for ob- viousness. Miller discloses an artificial tree “wherein the lighting system wiring is essentially housed and concealed within the trunk members” that are “removably sleeved to- gether.” Miller 1:5–6, 1:30–32. Miller uses a traditional plug and socket electrical connector within its hollow trunk to form an electrical connection between light strings. Appx11, 15. The Board initially found that Polygroup had failed to prove by a preponderance of the evidence that any of the challenged claims were unpatentable. On appeal, we af- firmed the Board’s decision with respect to claim 15 of the ’186 patent and claims 4, 10, and 13 of the ’187 patent. Pol- ygroup Ltd. MCO v. Willis Elec. Co., Ltd., 759 F. App’x 934, 936 (Fed. Cir. 2009) (Polygroup I). But we vacated the Board’s patentability determinations on the remaining claims because “the Board [had] applied erroneous claim constructions and [had] refused to consider Polygroup’s ar- guments that a single reference renders many of the claims obvious.” Id. We therefore instructed the Board to consider on remand “Polygroup’s arguments based on Case: 21-1401 Document: 44 Page: 5 Filed: 01/19/2022

POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 5

Miller . . . alone and whether those claims are unpatenta- ble under a proper construction.” Id. B On remand, the Board found that Polygroup had estab- lished by a preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 of the ’186 patent are unpatentable in view of Miller alone, 1 but had failed to establish the same for the remaining challenged claims—specifically, claims 7, 10, 11, 16–22, 25, 26, and 28 of the ’186 patent and claims 1–3, 5– 9, 11, 12, 14, and 15 of the ’187 patent. 1 Willis contended, and the Board agreed, that Miller “requires the separate steps of making an electrical connec- tion between the first and second trunk members and mak- ing a mechanical connection between the trunk members.” 2 Appx13–14, 23. Thus, the dispositive consideration, accord- ing to the Board, was whether the claims “require that the mechanical connection between the tree/trunk portions re- sults in the electrical connections.” Appx21, 24. The Board found that independent claim 1 of the ’186 patent had no such requirement, based on its reading of the following “wherein” clause: 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

1 The Board’s decision with respect to the patenta- bility of claims 1, 3, 4, 6, 8, and 9 of the ’186 patent has not been challenged on appeal and is final. 2 Polygroup does not dispute this. Case: 21-1401 Document: 44 Page: 6 Filed: 01/19/2022

portion, thereby creating an electrical connection between the first wiring assembly and the second wiring assembly. ’186 patent 21:14–53. Under the Board’s reading, “[c]laim 1 does not require structure that provides mechanical and electrical connection in a single step (e.g., when the me- chanical connection is made, an electrical connection is also made).” Appx14 (internal quotation marks omitted). The Board acknowledged that this claim “requires that ‘the sec- ond tree portion is mechanically coupleable to the first tree portion about a central vertical axis.’” Appx14. But it de- termined that “the claim permits that mechanical connec- tion to be independent of the electrical connection.” Appx14. The Board concluded that Polygroup had established the unpatentability of claim 1 of the ’186 patent in view of Miller alone. It further concluded that claims 3, 4, 6, 8, and 9—all of which depend from independent claim 1—of the ’186 patent are obvious in view of Miller alone. 2 The Board separately considered the patentability of claim 7 of the ’186 patent. Polygroup had conceded that Miller alone does not teach every limitation of that claim and instead asserted that “one skilled in the art would have modified Miller’s teachings based on those” in U.S. Patent No. 3,409,867 (Lessner). Appx19. The Board was not per- suaded. According to the Board, combining Miller and Lessner “adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing ease and speed of assembly and dis- assembly.’” Appx20. Because the Board found no motiva- tion to combine, the Board concluded that Polygroup failed to establish the unpatentability of claim 7 of the ’186 pa- tent. Case: 21-1401 Document: 44 Page: 7 Filed: 01/19/2022

POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 7

3 The Board found that Polygroup had failed to establish that the remaining challenged claims are unpatentable. Although all of the independent claims—i.e., claims 1, 10, 20, and 28 of the ’186 patent and claims 1 and 7 of the ’187 patent—generally follow a common pattern, the Board de- termined that only independent claim 1 of the ’186 patent is obvious in view of Miller alone. “Critically distinguishing” the remaining independent claims “from independent claim 1,” the Board said, “is that they require that the mechanical connection between the tree/trunk portions results in the electrical connections.” Appx21, 24. With little explanation, the Board relied upon the independent claims’ similarly-patterned “wherein” clauses as support for reading a “results in” limitation into each respective claim. Appx21–22, 24–25 (quoting the “wherein” clauses in claims 10, 20, and 28 of the ’186 patent and claims 1 and 7 of the ’187 patent). The Board proceeded to decide that, because “the elec- trical connection in Miller is independent of the mechanical connection [between] tree portions,” Appx23, 25, Polygroup had failed to establish the unpatentability of claims 10, 20, and 28 of the ’186 patent and claims 1 and 7 of the ’187 patent based on Miller alone. Consequently, it also con- cluded that Polygroup had failed to establish the unpatent- ability of claims 11, 16–19, 21, 22, 25, and 26 of the ’186 patent—all of which depend from either independent claim 10 or 20—and dependent claims 2, 3, 5, 6, 8, 9, 11, 12, 14, and 15 of the ’187 patent—all of which depend from either independent claim 1 or 7. Polygroup now appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). II We first address claim 7 of the ’186 patent. The Board should not have considered whether that claim was obvious Case: 21-1401 Document: 44 Page: 8 Filed: 01/19/2022

in view of Miller and Lessner because its consideration of Lessner was outside the scope of our mandate. “Unless re- manded by [an appellate] court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudi- cation.” Hayward Indus., Inc. v. Pentair Water Pool & Spa, Inc., 814 F. App’x 592, 597 (Fed. Cir. 2020) (alteration in original) (quoting Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Our mandate in Poly- group I remanded to the Board the question of whether, under a proper construction, the challenged claims are un- patentable in view of Miller alone. See 759 F. App’x at 936, 944. The Board went beyond that question when it ren- dered its obviousness determination based on a lack of mo- tivation to combine Miller and Lessner. We therefore vacate and remand the Board’s decision concluding that Polygroup failed to establish the unpatent- ability of claim 7 of the ’186 patent in view of Miller and Lessner. We note that Polygroup admitted that Miller does not teach every limitation in the claim. See Oral Argument at 5:35–54, https://oralarguments.cafc.uscourts. gov/de- fault.aspx?fl=21-1401_10052021.mp3 (Oct. 5, 2021); Appx19. The Board may consider this statement on re- mand when it considers the unpatentability of claim 7 in view of Miller alone. III Polygroup asserts that the Board erroneously con- strued the challenged independent claims to “require that the mechanical connection between the tree/trunk portions results in the electrical connections.” Appx21, 24. We agree. We review the Board’s ultimate claim construction de novo and any underlying factual determinations involving extrinsic evidence for substantial evidence. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015). Because Polygroup filed its IPR petition before November Case: 21-1401 Document: 44 Page: 9 Filed: 01/19/2022

POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 9

13, 2018, we apply the broadest reasonable interpretation standard. See Ethicon LLC v. Intuitive Surgical, Inc., 847 F. App’x 901, 906 n.4 (Fed. Cir. 2021). 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. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061 (Fed. Cir. 2016). Despite the similarities between the language in claims 1 and 10, the Board construed claim 10 to “require that the mechanical connection between the tree/trunk portions results in the electrical connections.” Appx21. Said differently, the claim “require[s] structure that pro- vides mechanical and electrical connection in a single step (e.g., when the mechanical connection is made, an electri- cal connection is made).” Appx14 (internal quotation marks omitted). Under the broadest reasonable interpretation standard, we cannot agree. While the term “coupling” is broad enough to mean me- chanically connecting or electrically connecting or both, 3 neither the claim language nor the specification requires such “coupling” occur in a single step. Indeed, the specifi- cation discloses embodiments in which a series of mechan- ical connections are made when assembling the lighted artificial tree’s tree/trunk portions. See, e.g., ’186 patent 8:63–9:5 (“[S]uch mechanical and electrical connections are accomplished in part through a series of trunk connectors and wiring harnesses inserted into base 102 and trunk por- tions 120, 160, and 180.”); id. 15:13–18 (“These multiple points of mechanical contact between connector assemblies 200 and 212 combined with the secure fit of connection

3 See, e.g., Couple, Merriam-Webster.com Dictionary, https://www.merriam-webster.com/dictionary/couple (last visited Dec. 16, 2021) (“to join for combined effect”; “to fas- ten together”; “to bring (two electric circuits) into such close proximity as to permit mutual influence”). Case: 21-1401 Document: 44 Page: 10 Filed: 01/19/2022

assemblies 200 and 212 to the trunk portions via plugs 254 creates a substantial mechanical coupling not only at the trunk walls, but also at the inside, center portions of base portion 102 and trunk portion 120.”); id. 16:50–53 (“Conse- quently, a secondary mechanical coupling between con- nector assembly 212 and connector assembly 244, and between trunk portions 160 and 180, is formed.”). And the specification also indicates that electrical connections can precede mechanical connections. See id. 16:14–17 (“[W]hen trunk portions 120 and 160 are joined, first trunk wiring harness 222, already in electrical connection with con- nector assembly 200, becomes electrically connected with second trunk wiring harness 230 via connector assembly 212.” (emphasis added)). Thus, under the broadest reasonable interpretation, we construe claim 10 of the ’186 patent to permit the mechan- ical and electrical connections be made independently. For the same reasons that we reject the Board’s construction of claim 10, we also reject the Board’s identical constructions of claim 28 of the ’186 patent and claims 1 and 7 of the ’187 patent. In addition, we conclude that claim 20 of the ’186 pa- tent does not require a mechanical connection to result in an electrical connection. Claim 20 provides that the tree portions can be connected mechanically and electrically “by aligning” the trunk portions “such that a portion of the first trunk wall is coupled to a portion of the second trunk wall to form a first mechanical connection” between the trunk portions, and a “portion of the first [trunk] connector is re- ceived by the second [trunk] connector, thereby forming a second mechanical connection between” the trunk portions “and forming an electrical connection between” the trunk wiring assemblies. Id. 23:52–24:3 (emphases added). This language makes clear that the mechanical and electrical connections need not occur in a single step. The “aligning” step forms the first mechanical connection, while the “re- ceiving” step forms both the second mechanical connection Case: 21-1401 Document: 44 Page: 11 Filed: 01/19/2022

POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 11

between the trunk portions and the electrical connection between the trunk wiring assemblies. We accordingly conclude that the Board applied erro- neous claim constructions when it upheld the patentability of independent claims 10, 20, and 28 of the ’186 patent and independent claims 1 and 7 of the ’187 patent. Under the proper construction, we conclude that Miller teaches every limitation of these claims and, therefore, that Polygroup has established the unpatentability of each independent claim challenged on appeal. See In re Hodges, 882 F.3d 1107, 1115–16 (Fed. Cir. 2018) (overturning the Board’s claim construction and then finding claims unpatentable under the proper construction because that was the “only permissible factual finding”). As Willis admitted, the de- pendent claims all rise and fall with their corresponding independent claims. See Oral Argument at 25:08–30 (Oct. 5, 2021). Therefore, claims 11, 16–19, 21, 22, 25, and 26 of the ’186 patent, which depend from either independ- ent claim 10 or 20, are unpatentable. As are claims 2, 3, 5, 6, 8, 9, 11, 12, 14, and 15 of the ’187 patent, which depend from either independent claim 1 or 7. REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED COSTS No costs. Case: 21-1401 Document: 44 Page: 12 Filed: 01/19/2022

United States Court of Appeals for the Federal Circuit ______________________

WILLIS ELECTRIC COMPANY, LTD., Appellee ______________________

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. ______________________

STOLL, Circuit Judge, concurring-in-part and dissenting- in-part. I respectfully dissent-in-part. I agree with the Board’s construction of claims 10, 20, and 28 of the ’186 patent and claims 1 and 7 of the ’187 patent, which, in my view, cover a different embodiment than claim 1 of the ’186 patent. Thus, I would affirm the Board’s patentability determina- tions. As to claim 7 of the ’186 patent, however, I agree with the majority’s analysis and therefore concur with the vacatur and remand of the Board’s decision as to that claim. Case: 21-1401 Document: 44 Page: 13 Filed: 01/19/2022

The shared patent specification discloses two distinct embodiments relevant to this claim construction dispute: (1) an embodiment in which the mechanical coupling and electrical connection are made separately and inde- pendently, and (2) an embodiment in which the mechanical coupling simultaneously creates an electrical connection. In my view, Polygroup’s construction, which the majority accepts, is erroneous because it fails to account for the claim language requiring a simultaneous connection. Claim 1 of the ’187 patent provides a particularly strong example: A lighted artificial tree, comprising: . . . a first tree portion . . . [and] a second tree portion . . . and the second tree portion is electrically connect- able 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 elec- trical connector of the second trunk portion when the first tree portion and the second tree portion are mechanically coupled, . . . ’187 patent col. 21 ll. 9–64 (emphasis added). Claim 1 of the ’187 patent clearly requires an electrical connection “when [the tree portions] are mechanically coupled.” Id. at col. 21 ll. 41–42. In other words, the plain claim lan- guage dictates that when the mechanical connection is made, an electrical connection is also made. In contrast with claim 1 of the ’186 patent, which recites a mechanical connection that is independent of the electrical connection, claim 1 of the ’187 patent requires the mechanical and elec- trical connection to occur in a single step—the same step. Accordingly, claim 1 of the ’187 patent requires structure that provides mechanical and electrical connection in a sin- gle step, whereas claim 1 of the ’186 patent does not require such structural elements. Case: 21-1401 Document: 44 Page: 14 Filed: 01/19/2022

Similarly, claim 7 of the ’187 patent, and claims 10, 20, and 28 of the ’186 patent also require the mechanical cou- pling to “caus[e],” “make,” or “form” the electrical connec- tion. See ’186 patent col. 24 ll. 51–63 (“the second trunk portion is mechanically and electrically connectable to the first trunk portion . . . thereby causing the trunk connector of the first trunk portion to make an electrical connection with the trunk connector of the second trunk portion . . .”); see ’187 patent col. 15 ll. 48–52 (“A user simply aligns the trunk portion with the base portion or other trunk portion along a vertical axis and brings the trunk portion down- ward to couple with the stationary base or trunk portion, thus mechanically coupling and electrically connecting the tree portions.”). As such, in my view, the plain language of those claims also requires simultaneous electrical and me- chanical connection. For these reasons, I respectfully dissent-in-part. I would affirm the Board’s determination that Polygroup failed to prove that claims 10, 11, 16–22, 25, 26, and 28 of the ’186 patent and claims 1–3, 5–9, 11, 12, 14, and 15 of the ’187 patent are unpatentable over the prior art of rec- ord.