UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`
`Polygroup Limited (MCO),
`Petitioner,
`
`v.
`
`Willis Electric Co., LTD.,
`Patent Owner
`_________________________
`Case IPR2016-01613
`Patent 9,044,056
`_________________________
`MOTION TO AMEND
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`
`Polygroup Limited (MCO),
`Petitioner,
`
`v.
`
`Willis Electric Co., LTD.,
`Patent Owner
`_________________________
`Case IPR2016-01613
`Patent 9,044,056
`_________________________
`MOTION TO AMEND
`
`
`
`
`
`Patent No. 9,044,056
`(IPR2016-01603)
`
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`Table of Contents
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`I.
`Introduction ............................................................................................ 1
`II. Claim Listing ......................................................................................... 1
`III. Discussion of Proposed Changes ........................................................... 2
`IV. The New and Original Limitations have Written Support .................... 3
`A. Substitute claim 21 ............................................................................. 4
`B. Substitute Claim 22 ............................................................................ 8
`C. Substitute Claim 23 .......................................................................... 11
`D. Substitute Claim 24 .......................................................................... 15
`V. Level of Ordinary Skill in the Art ........................................................ 17
`VI. The Substitute Claims are Patentable over the Prior Art ..................... 17
`A. Claim 21 is Patentable Over the Relevant Prior Art ........................ 18
`B. Claim 22 is Patentable Over the Relevant Prior Art ........................ 27
`C. Claim 23 is Patentable Over the Relevant Prior Art ........................ 28
`D. Claim 24 is Patentable Over the Relevant Prior Art ........................ 29
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`VII. Conclusion ....................................................................................... 36
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`Patent No. 9,044,056
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`EXHIBIT LIST
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`Exhibit No.
`2052
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`2053
`2054
`
`Description
`Declaration of Dr. Stuart Brown in Support of Motion to
`Amend US 9,044,056
`Patent Application No. 13/836,026 as originally filed
`Provisional Patent Application No. 61/643,968 as
`originally filed
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`Patent No. 9,044,056
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`I.
`Introduction
`Pursuant to 35 U.S.C. §316 and 37 C.F.R. §42.121, Willis Electric Co. Ltd.
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`(“Patent Owner”) moves to amend US 9,044,056 (the “‘056 Patent”) contingent on
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`the outcome of the trial. If any of issued claims 1, 5, 11 or 18 are found unpatentable,
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`Patent Owner requests that the Board cancel the unpatentable claims and replace
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`them with substitute claims 21, 22, 23 or 24, respectively.
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`Each of claims 21-24 is responsive to an alleged ground of unpatentability
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`involved in the present Inter Partes Review (“present IPR”), and does not broaden
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`the scope of the issued claims. 37 C.F.R. §42.121(a)(2). The original disclosure of
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`the ‘056 Patent (originally filed as 13/836,026), and the original disclosure of
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`Provisional Patent Application 61/643,968 support claims 21-24, for which the
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`benefits of the filing dates are sought. 37 C.F.R. §42.121(b)(1)-(2).
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`Each of the substitute claims incorporate limitations into the original
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`independent claims that distinguish over the prior art that is relevant to the substitute
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`claims, including prior art of record and other prior art known to Patent Owner.
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`II. Claim Listing
`A listing of proposed substitute claims 21-24 is provided in the attached
`Claim Listing Appendix. Amendments to the issued claims are indicated by
`underlining to indicate newly-added elements, and brackets to indicate elements
`removed.
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`1
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`III. Discussion of Proposed Changes
`In summary, substitute claim 21 is amended to add a third electrical terminal
`to make each connector a three-terminal connector [21.5, 21.10], to add a power cord
`to transmit power to the tree [21.1], to add another light string [21.3], and add that
`two of the three terminals are in electrical connection with the light string to power
`the light string, and another of the three terminals is in electrical connection with the
`power cord [21.6]. As will be described below, having three terminals that are all
`electrically powered distinguishes over known three-terminal connectors wherein
`two terminals are for power, and a third is earth ground (not power).
`Because claim 21 adds additional elements and does not delete any elements,
`the scope of the claim is not expanded.
`three-terminal
`In summary, substitute claim 22, originally claiming
`connectors, is amended to add a power cord to transmit power to the tree [22.1], and
`to add that two of the three terminals of the second electrical connector are in
`electrical connection with the light string to power the light string, and the other one
`of the three terminals is configured to electrically connect with the power cord
`through the third electrical connector of the first electrical terminal [22.5]. As will
`be described below, having three terminals that are all electrically powered
`distinguishes over known three-terminal connectors wherein two terminals are for
`power, and a third is earth ground (not power).
`Because claim 22 adds additional elements and does not delete any elements,
`the scope of the claim is not expanded.
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`In summary, substitute claim 23 is amended in a manner similar to claim 21
`but with more specificity relating to wiring. More specifically, claim 23 is amended
`to make a two-terminal connector into three-terminal connector with two terminals
`in electrical connection with the added light string to power the light string, and
`another terminal in connection with a first or second wire of power cord [23.4, 23.6].
`Claim 23 also adds a third wire connected to a third terminal and connected to the
`power cord [23.7]. As will be described below, the amendments distinguish the
`claim over known three-terminal connectors wherein two terminals are for power,
`and a third is earth ground (not power).
`Because claim 23 adds additional elements and does not delete any elements,
`the scope of the claim is not expanded.
`Claim 24 is amended to add only one element: “wherein power transmitted
`to the first light string of the second tree portion and the second light string of the
`second tree portion is commonly transmitted through the electrical hub of the second
`tree portion.” [24.6]. This element distinguishes over the relevant prior art as
`described further below.
`Because claim 24 adds an additional element and does not delete any
`elements, the scope of the claim is not expanded.
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`IV. The New and Original Limitations have Written Support
`Each of the proposed substitute claims are supported by the original disclosure
`of U.S. App. Ser. No. 13/836,026 (“the ‘026 App.”), that issued as the ‘056 Patent,
`and the original disclosure of Provisional Patent Application 61/643,968, and
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`reasonably convey to a person of ordinary skill in the art that the inventor had
`possession of the claimed subject matter as of the filing dates. 37 C.F.R.
`§§42.121(b)(1)-(2); see also Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper
`27 at 3, (PTAB June 3, 2013) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
`1336, 1351 (Fed. Cir. 2010) (en banc)).
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`A.
`Substitute claim 21
`Support for the amendments to substitute claim 21 are found at least as
`follows: [21.1]1 at Ex. 2053, 6:8-13, 14:3-7, 15:20-16:2, 32:1-3, and FIGS. 1, 3, 37,
`identifying a power cord 216 configured to receive electrical power and to transmit
`power to the artificial tree; and at Ex. 2054, 6:12-19, 8:13-22, 17:1-14, FIGS. 1-2,
`78, identifying a power cord 194, 716 configured to receive electrical power and to
`transmit power to the artificial tree; [21.3] at Ex. 2053, 4:20-22, 11:3-6, and FIGS.
`2, 3, 13, 14, 21-22, 37-39, identifying a first light string 124 on a first tree portion
`104; and at Ex. 2054, 7:1-6, 7:1-22, 8:1-9, 9:1-12, 10:1-3, 17:4-9, FIGS. 1-2, 78, 81,
`82 identifying a first light string 124 on a first tree portion 104; [21.5]-[21.6] at Ex.
`2053, 4:20-5:1, 14:12-19, 27:9-17, 28:1-8, 28:14-19, 30:9-19, 31:20-32:3, and FIGS.
`29-37, identifying an electrical terminal set 616 of electrical connector 222 that
`includes electrical terminals 616a-616d, where power cord wires 218 and 220 are
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`1 Format identifies the element number [xx.yy] of the substitute claim as listed in
`Part II of this Motion, where xx is the substitute claim no. and yy is the element
`identifier.
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`4
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`electrically connected to wires 632a and 632d, which are connected to two electrical
`terminals of connector 222 (616a, 616d), and where wires 670 and 672 are connected
`to two terminals of connector 222 (616b, 616c) and wires 660 and 662 (through hub
`658) to power light strings 124 (see annotated Fig. 37 below with connections to
`power cord in green and connections to light string 124 in pink, and 32:10-12: “Hub
`658 is substantially the same as hub 652, receiving power from electrical connector
`222 and/or conductors 670 and 672, and distributing power to wire sets 660 and 662
`for powering light strings 124 (not shown)”);
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`5
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`and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74,
`79-80, depicting tiered connectors 602, 604 being substantially similar to electrical
`system 500 having an electrical terminal set including first, second, and third coaxial
`electrical terminals, allowing for at least three separate electrical connections
`between connectors 602, 604, and depicting a wiring assembly 800 depicting two
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`wires of connectors 810, 812, 820 connected to light string and another in electrical
`connection with power cord; [21.10] at Ex. 2053, original claim 5 (claiming a first
`electrical connector with first, second, and third electrical terminals), 5:1-6, 14:20-
`15:4, 27:9-28:19, and in FIGS. 6-37, identifying a first, second, and third electrical
`terminal 616a-616d, 642a-642d of tiered connectors 222, 230 where the second
`electrical terminal defines a ring shape that encircles the first electrical terminal; and
`at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-
`80, depicting tiered electrical connectors 602, 604 having an electrical terminal set
`including first, second, and third coaxial electrical terminals; [21.14] at Ex. 2053,
`5:7-13, 27:9-28:19, 28:20-29:18, and FIGS. 3, 6-37, identifying that when coupled
`the first, second, and third electrical terminals 616a-616d, 642a-642d of the first
`tiered connector 222, 230 connect to the first, second and third electrical terminals
`616a-616d, 642a-642d of the second tiered connector 222, 230, respectively; and at
`Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-
`80, depicting connectors 602, 604 being substantially similar to electrical system
`500 having an electrical terminal set including first, second, and third coaxial
`electrical terminals, allowing for at least three separate electrical connections
`between connectors 602, 604 and such that when coupled, the first, second, and third
`electrical terminals of the first connector 602, 604 connect to the first, second and
`third electrical terminals of the second tiered connector 602, 604 respectively.
`Support for the various claim elements of claim 21 that are original to claim
`1 are found at least as follows: [21.P] at Ex. 2053, 9:2-4, and FIGS. 1-2; and at Ex.
`2054, 4:1-2, 5:18-19, and FIGS. 1-2; [21.2] at Ex. 2053, 4:20-22, 9:5-12, and FIGS.
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`1-2; and at Ex. 2012, 5:1-6:11, 6:20-7:6, and FIGS. 1-2; [21.4] at Ex. 2053, 4:20-
`5:1, 14:12-15, 30:1-4, and FIGS. 3, 6-37; and at Ex. 2054, 16:1-8, 16:11-15, 16:18-
`17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-80; [21.7] at Ex. 2053, 4:21-5:7, 9:5-
`12, and FIGS. 1 & 2; and at Ex. 2054, 9:10-21, FIGS. 1-2; [21.8] at Ex. 2053, 5:1-
`4, 12:6-14, 23:1-6, 24:20-22, and FIGS. 2, 13-14, and 21-22; and at Ex. 2054, 9:10-
`21, FIGS. 1-2; [21.9] at Ex. 2053, 5:1-7, 14:20-15:4, and FIGS. 3, 6-37; and at Ex.
`2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-80;
`[21.11] at Ex. 2053, 5:7-13, 23:1-9, 29:5-16, and FIGS. 3, 6-37; and at Ex. 2054,
`16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-80; [21.12]
`at Ex. 2053, 16:12-19, 30:9-31:2, 31:20-32:3, and FIGS. 1-3, 6-37; and at Ex. 2054,
`16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-80; [21.13]
`at Ex. 2053, 5:7-13, 23:1-9, 28:20-29:16, 33:14-22, and FIGS. 2, 13-14, 21-22, 36;
`and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74,
`79-80.
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`B.
`Substitute Claim 22
`Support for the various amendments to substitute claim 22 are found at least
`as follows: [22.1] at Ex. 2053, 6:8-13, 14:3-7, 15:20-16:2, 32:1-3, and FIGS. 1, 3,
`37 identifying a power cord 216 configured to receive electrical power and to
`transmit power to the artificial tree; and at Ex. 2054, 6:12-19, 8:13-22, 17:1-14,
`FIGS. 1-2, 78, identifying a power cord 194, 716 configured to receive electrical
`power and to transmit power to the artificial tree; [22.5] at Ex. 2053, 4:20-5:1, 14:12-
`19, 27:9-17, 28:1-8, 28:14-19, 30:9-19, 31:20-32:3, and FIGS. 29-37, identifying an
`electrical terminal set 642 of electrical connector 230 (FIGS. 29, 31-32), that
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`includes electrical terminals 642a-642d (terminals 642b and 642c electrically
`connected to wires 634b and 634c power light strings 126-see pink highlighting in
`annotated FIG. 37 below), configured to connect to electrical terminals 616a-616d,
`respectively, of electrical connector 222, where terminals 616a and 616d are
`electrically connected to power cord wires 218 and 220 via wires 632a and 632d,
`respectively (see green highlighting in Annotated FIG. 37 below):
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`and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67,
`68-74, 79-80, depicting tiered connectors 602, 604 being substantially similar to
`electrical system 500 having an electrical terminal set including first, second, and
`third coaxial electrical terminals, allowing for at least three separate electrical
`connections between connectors 602, 604, and depicting a wiring assembly 800
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`Patent No. 9,044,056
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`depicting two wires of connectors 810, 812, 820 connected to light string and another
`in electrical connection with power cord.
`Support for the various claim elements of claim 22 that are original to claim
`5 are found at least as follows: [22.P] at Ex. 2053, 9:2-4, and FIGS. 1-2; and at Ex.
`2054, 4:1-2, 5:18-19, and FIGS. 1-2; [22.2] at Ex. 2053, 4:20-5:1, 9:5-12, 11:3-6,
`14:12-19, 27:9-17, 28:1-8, 28:14-19, 30:1-4, 30:9-19, 31:20-32:3, and FIGS. 1-2, 3,
`6-37; and at Ex. 2012, 5:1-6:11, 6:20-7:6, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3
`and FIGS. 1-2, 52-67, 68-74, 79-80; [22.3] at Ex. 2053, 4:21-5:7, 9:5-12, 12:6-14,
`14:20-15:4, 23:1-6, 24:20-22, 27:9-28:19, and FIGS. 1-3, 6-37; and at Ex. 2054,
`9:10-21, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3, and FIGS. 1-2, 52-67, 68-74,
`79-80; [22.4] at Ex. 2053, 16:12-19, 30:9-31:2, 31:20-32:3, and FIGS. 1-3, 6-37; and
`at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-
`80; [22.6] at Ex. 2053, 5:7-13, 23:1-9, 27:9-28:19, 28:20-29:16, 33:14-22, and FIGS.
`2, 3, 6-37; and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS.
`52-67, 68-74, 79-80.
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`C.
`Substitute Claim 23
`Support for the various amendments to substitute claim 23 are found at least
`as follows: [23.1] at Ex. 2053, 6:8-13, 14:3-7, 14:12-19, 15:20-16:2, and FIGS. 1, 3,
`37 identifying a power cord 216 configured to receive electrical power and to
`transmit power to the artificial tree, the power cord 216 having a first polarity wiring
`218 having one or multiple wires and a second polarity wiring 220, also having one
`or multiple wires; and at Ex. 2054, 6:12-19, 8:13-22, 17:1-18:3, FIGS. 1-2, 78-80,
`identifying a power cord 194, 716 configured to receive electrical power and to
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`transmit power to the artificial tree, and depicting the power cord 716 having a first
`and second wire; [23.4] at Ex. 2053, 11:3-6, 17:8-15, identifying the artificial tree
`as having a first light string 124; and at Ex. 2054, 7:1-2, 8:1-22, 9:1-9, 18:4-10, and
`FIGS. 1-2, 78-82, depicting a first light string 124; [23.7] at Ex. 2053, 4:20-5:1,
`15:20-16:2, 27:9-17, 28:1-8, 28:14-19, 29:17-22, 30:9-31:2, 31:20-32:3, and FIGS.
`29-37, identifying an electrical terminal set 616 of electrical connector 222 that
`includes electrical terminals 616a-616d, where power cord wires 218 and 220 are
`electrically connected to wires 632a and 632d, which are connected to two electrical
`terminals of connector 222 (616a, 616d), and where wires 670 and 672 are connected
`to two terminals of connector 222 (616b, 616c) and wires 660 and 662 (through hub
`658) to power light strings 124 (see annotated Fig. 37 below with connections to
`power cord in green and connections to light string 124 in pink, and 32:10-12: “Hub
`658 is substantially the same as hub 652, receiving power from electrical connector
`222 and/or conductors 670 and 672, and distributing power to wire sets 660 and 662
`for powering light strings 124 (not shown)”):
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`and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67,
`68-74, 79-80, depicting tiered connectors 602, 604 being substantially similar to
`electrical system 500 having an electrical terminal set including first, second, and
`third coaxial electrical terminals, allowing for at least three separate electrical
`connections between connectors 602, 604, and depicting a wiring assembly 800
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`depicting two wires of connectors 810, 812, 820 connected to light string and another
`in electrical connection with power cord 216; [23.8] at Ex. 2053, FIG. 37 depicting
`wiring harness 604 with wires 632a and 632d (either of which could be a “third wire”
`electrically connected to wires 218 and 230 of power cord 216, and wires 670 and
`672 (first and second wires) connected to terminals 616b and 616c, and connected
`to a light string 124 through hub 658, and as described at 30:1-36:16; and at Ex.
`2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-80,
`depicting tiered connectors 602, 604 being substantially similar to electrical system
`500 having an electrical terminal set including first, second, and third coaxial
`electrical terminals, allowing for at least three separate electrical connections to a
`wiring assembly 800 at least partially in the trunk body and including a first, second,
`and third wire, connecting to the respective terminals, and depicting one of the wires
`connected to the power cord 716; [23.9] at Ex. 2053, 5:20-6:7, 17:18-18:3, 18:8-15,
`34:14-35:5, 36:5-16, and FIGS. 3-5, and 37-39, identifying that the first light string
`124 has a first wire 143, a plurality of intermediate wires 145, a plurality of light
`element assemblies, and a last wire 147; and at Ex. 2054, 7:1-2, 8:1-22, 9:1-9, 18:4-
`10, and FIGS. 1-2, 78-82, depicting a first light string 124 having a first wire, a
`plurality of intermediate wires, a plurality of light element assemblies 142, and a last
`wire.
`
`Support for the various claim elements of claim 23 that are original to claim
`11 are found at least as follows: [23.P] at Ex. 2053, 9:2-4, and FIGS. 1-2; and at Ex.
`2054, 4:1-2, 5:18-19, and FIGS. 1-2; [23.2] at Ex. 2053, 4:20-22, 9:5-12, and FIGS.
`1-2; and at Ex. 2012, 5:1-6:11, 6:20-7:6, and FIGS. 1-2; [23.3] at Ex. 2053, 5:14-16,
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`10:5-8, and FIGS. 2, 3, 13, 14, 21-22, 37; and at Ex. 2054, 7:1-6, 7:1-22, 8:1-9, 9:1-
`12, 10:1-3, 17:4-9, FIGS. 1-2, 78, 81, 82; [23.5] at Ex. 2053, 5:14-16, 13:16-14:2,
`15:15-16:2, and FIGS. 3 and 6-37; and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14,
`17:21-18:3 and FIGS. 52-67, 68-74, 79-80; [23.6] at Ex. 2053, 4:20-5:1, 14:12-15,
`30:1-4, and FIGS. 3, 6-37; and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-
`18:3 and FIGS. 52-67, 68-74, 79-80; [23.10] at Ex. 2053, 5:20-6:7, 16:20-17:7,
`17:18-18:3, 35:19-36:4, and FIGS. 3-5 and 37-39; and at Ex. 2054, 7:1-2, 8:1-22,
`9:1-9, 18:4-10, and FIGS. 1-2, 78-81; [23.11] at Ex. 2053, 5:20-6:7, 16:20-17:7,
`18:8-15, 35:19-36:4, and FIGS. 3-5 and 37-39; and at Ex. 2054, 7:1-2, 8:1-22, 9:1-
`9, 18:4-10, and FIGS. 1-2, 78-81; [23.12] at Ex. 2053, 5:20-6:7, 16:20-17:7, 18:8-
`15, 35:19-36:4, and FIGS. 3-5 and 37-39; and at Ex. 2054, 7:1-2, 8:1-22, 9:1-9, 18:4-
`10, and FIGS. 1-2, 78-81; [23.13] at Ex. 2053, 5:20-6:7, 17:3-7, 18:8-15, 34:19-
`35:16, and FIGS. 3-5, 37-39; and at Ex. 2054, 7:1-2, 8:1-22, 9:1-9, 16:1-8, 16:11-
`15, 16:18-17:14, 17:21-18:3, 18:4-10, and FIGS. 1-2, 52-67, 68-74, 78-81.
`
`D.
`Substitute Claim 24
`Support for the various amendments to substitute claim 24 are found at least
`as follows: [24.6] at Ex. 2053, 6:8-7:5, 30:5-20, 31:5-32:9, 32:10-33:2, 33:3-10,
`34:1-10, and FIGS. 2 and 37, depicting power hubs in both of tree portions 104 and
`106, and describing in the first tree portion 104 power hub 652 electrically connected
`to power cord 216 via wires 632b, 632c to transmit power to one or more light strings
`124 and power hub 658, substantially the same as power hub 652 receiving power
`from electrical connector 222 and also distributing power to multiple light strings
`124, and also depicting the same hub-connector-light string arrangement in tree
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`portion 106 (also described at 33:8-10 (describing that “Wiring harness subassembly
`606 of tree portion 106 with its tiered connector 230 distributes power to lights 162
`(see FIG. 2), in a manner similar to wiring harness subassembly 604.”); and at Ex.
`2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 52-67, 68-74, 79-80,
`depicting hubs 802, 902 electrically connected to power cord 716 via wires to
`transmit power to one or more light strings 124.
`Support for the various claim elements of claim 24 that are original to claim
`18 are found at least as follows: [24.P] at Ex. 2053, 9:2-4, and FIGS. 1-2; and at Ex.
`2054, 4:1-2, 5:18-19, and FIGS. 1-2; [24.1] at Ex. 2053, 6:8-13, 14:3-7, 15:20-16:2,
`32:1-3, and FIGS. 1, 3, 37; and at Ex. 2054, 6:12-19, 8:13-22, 17:1-14, FIGS. 1-2,
`78; [24.2] at Ex. 2053, 6:8-7:5, 15:20-16:2, 26:14-20, 27:15-28:8, 30:5-31:2, and
`FIGS. 1-2, 6-37; and at Ex. 2012, 5:1-6:11, 6:20-7:6, 16:1-8, 16:11-15, 16:18-17:14,
`17:21-18:3 and FIGS. 1-2, 52-67, 68-74, 79-80; [24.3] at Ex. 2053, 6:13-21, 12:3-
`14, 14:20-15:4, 22:9-16, 23:1-6, and FIGS. 1-3, 6-37; and at Ex. 2054, 9:10-21, 16:1-
`8, 16:11-15, 16:18-17:14, 17:21-18:3, and FIGS. 1-2, 52-67, 68-74, 79-80; [24.4]-
`[24.5] at Ex. 2053, 6:8-7:5, 30:5-20, 31:5-32:9, 32:10-33:2, 33:3-10, 34:1-10, and
`FIGS. 2 and 37; and at Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and
`FIGS. 52-67, 68-74, 79-80; [24.7] at Ex. 2053, 6:8-7:5, 15:15-16:2, 27:9-28:19,
`28:20-29:16, 30:5-20, 31:5-32:9, 32:10-33:2, 33:8-10, and FIGS. 2, 3, 6-37; and at
`Ex. 2054, 16:1-8, 16:11-15, 16:18-17:14, 17:21-18:3 and FIGS. 68-74, 79-80.
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`V.
`Level of Ordinary Skill in the Art
`The relevant field for analyzing the ‘056 Patent are mechanical and electrical
`designs for lighted artificial trees. (Ex. 2052, ¶27.) A person having ordinary skill in
`the art during the relevant timeframe would have been a person with at least a
`bachelor’s degree in mechanical engineering or electrical engineering and at least
`one to two years of experience in mechanical and electrical design aspects of
`products having mechanical and electrical connections, or a designer with at least
`one to two years of experience in designing lighted artificial decorations. (Id., ¶28.)
`As lighted artificial trees do not require highly-skilled persons of ordinary skill, but
`only persons with a couple of years of experience in the field, the threshold of
`obviousness is higher. (Id.)
`Additional discussion of the level of ordinary skill and how it relates to certain
`newly-added elements is provided below as needed.
`
`VI. The Substitute Claims are Patentable over the Prior Art
`The patent owner bears the burden of proof to demonstrate patentability of the
`proposed claims over the prior art.2 Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-
`00027 Paper 66 at 33 (PTAB Jan. 7, 2014). Patent Owner must show patentability
`over the prior art that is relevant to the substitute claims, including prior art of record
`and prior art known to Patent Owner, and not just over the references applied by the
`
`
`2 Patent Owner reserves the right to submit a supplemental argument in the event
`the Federal Circuit changes this standard. See In re Aqua Products, Inc., 833 F.3d
`1335 (Fed. Cir. 2016.)
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`Petitioner against the original patent claims. Prior art of record includes any material
`art in the prosecution history of the patent; any material art of record in the current
`proceeding, including art asserted in grounds on which the Board did not institute
`review; and any material art of record in any other proceeding before the Office
`involving the patent. See MasterImage 3D, Inc. v. RealD, Inc., Case IPR2015-00040,
`slip op. at 2–3 (PTAB July 15, 2015) (Paper 42) (precedential). The reference to
`“prior art known to the patent owner” should be understood as no more than the
`material prior art that Patent Owner makes of record in the current proceeding
`pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11,
`in light of a Motion to Amend. Id.
`Patent Owner below provides an analysis of how substitute claims 21-24 are
`patentable over the prior art that is relevant to the substitute claims.
`
`A. Claim 21 is Patentable Over the Relevant Prior Art
`Claim 21 is patentable over the prior art of record, including over the
`combination of Miller, Otto and Jumo, and the combination of Hicks, Otto and
`McLeish, both combinations applied in the current proceeding, and over other
`material references known to Patent Owner. Patent Owner notes that no references
`were asserted against issued claim 1 during original prosecution of the claim.
`1. Claim 21 is Patentable over Miller, Otto and Jumo
`
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`Claim 21 is directed to a lighted artificial tree with electrical connectors that
`each include three electrical terminals [21.5, 21.10]. Miller does not disclose
`electrical terminals in the depicted electrical terminal
`dangling in free space in the tree, and therefore cannot
`disclose three electrical terminals in each trunk electrical
`connector. (Ex. 1006, Fig. 2.)
`Otto discloses a coaxial connector system with
`only two electrical terminals for each trunk connector/socket. (Ex. 1008, Fig. 2,
`electrical elements 26/38 and 32/34.) As such, Otto discloses two electrical
`terminals for each trunk electrical connector, not three terminals.
`Jumo discloses a lamp connector system with only two electrical terminals on
`each connector. (Ex. 1009, Fig. 1, upper conductive elements 15 and 18, and lower
`conductive elements 5 and 8.) As such, Jumo discloses two electrical terminals for
`each electrical connector, not three terminals.
`Further, lacking three electrical terminals per connector, the applied
`combination does not disclose other elements, such as 21.6 and 21.14.
`Not only do the references fail to disclose the recited elements, it would not
`have been obvious to add a third electrical terminal to each electrical connector, and
`to electrically connect the three terminals as recited in element 21.6, “wherein two
`of the electrical terminals of the electrical terminal set are in electrical connection
`with the first light string and configured to transmit power to the first light string,
`and another electrical terminal of the electrical terminal set, other than the two
`electrical terminals in electrical connection with the first light string, is in electrical
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`connection with the power cord,” regardless of whether the source of the third
`electrical terminal was a prior art tree reference, such as Hicks, a connector
`reference, or knowledge of a POSA. (Ex. 2052, ¶29.)
`Hicks discloses a lighted artificial tree that suggests that each trunk connector
`has three electrical terminals. (Ex. 1007, Fig. 4, depicting what could be three
`electrical terminals of a plug 78, and a corresponding female outlet 80 with three
`openings, suggestive of three electrical terminals; Ex. 2052, ¶30.)
`
`Hicks also discloses that pairs of wires 72 and 74 are connected with power
`cord system 30, and provide power to the lighted branches via wires 76. (Ex. 1007,
`Fig. 6, para. 28.) A POSA would understand that Hicks discloses electrically
`connecting a pair of wires, each of a different polarity, e.g., positive and negative
`(DC), or hot and neutral (AC) to provide power to the light strings. (Ex. 2052, ¶31.)
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`A POSA would also understand that female outlet 80 is a standard 3-
`prong/terminal receptacle in which two prongs provide electrical power to the device
`plugged into the outlet, e.g., lights, and the third prong is an earth ground prong or
`terminal. (see, Ex. 2052, ¶32 (explaining that an earth ground wire is typically
`connected from a terminal of an outlet to a conductive housing of an appliance, so
`that when connected to a grounded power source, the appliance is also grounded).)
`Hicks fails to disclose any wiring connected to a third terminal, and only discloses
`pairs of wires connected to the power cord for powering lights. (Ex. 1007, Fig. 6,
`para. 28, 30, disclosing that “wiring from the plug 78 extends therefrom and provides
`power to a light string….”). Therefore, Hicks at most discloses a third terminal, but
`fails to disclose how such a third terminal might be wired. (Ex. 2052, ¶33.) Further,
`a POSA would understand that if a third terminal was indeed present in Hicks, and
`if that terminal was electrically connected to the tree, then the third terminal would
`be used as an earth-ground terminal, i.e., the outlet 80 would include two terminals
`for power, and one for earth ground. (Ex. 2052, ¶32-34; see, also, McLeish, Ex.
`1010, 6:4-12 (disclosing a connector with live and neutral terminals (first and second
`terminals) and explaining that a third, earth terminal is optional), 11:13-18
`(disclosing that an earth terminal of the connector is connected to an earth terminal
`of the appliance via a wire).)
`On the other hand, claim 21 recites that two of the three terminals of the first
`electrical terminal are in electrical connection with, and provide power to, the first
`light string. However, rather than being connected to an earth-grounding circuit, a
`third terminal or “another electrical terminal of the electrical terminal set, other than
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`the two electrical terminals in electrical connection with the first light string” is in
`electrical connection with the power cord, which is configured to transmit power to
`the lighted artificial tree.
`A POSA would understand that using a third terminal in a trunk-to-trunk
`connector for power transmission, rather than earth ground, not only potentially
`divides the power transmitted across more terminals (three or more instead of two,
`e.g., two positive DC power and one negative DC), but provides more options for
`power delivery transmission configurations throughout the tree. (Ex. 2052, ¶35.)
`For example, different combinations of terminals could be used to power different
`light strings, or provide power to one light string and another powered outlet,
`ornament or other device on the tree, and even to provide power of different voltages
`to light strings on the tree. (Id.)
`Consequently, it would not have been obvious to modify the combination of
`Miller, Jumo and Otto with the teaching of a lighted tree with a three
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