Attorney Docket: PGRP186
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Inter Partes Review Case No. IPR2014-_______
`
`Inter Partes Review of: Johnny Chen
`
`U.S. Patent No. 8,454,186
`
`Issued: June 4, 2013
`
`For: Modular Lighted Tree with Trunk Electrical Connectors
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`USPN 8,454,186
`
`
`
`Paul E. McGowan, Reg. No. 46,917
`Ben C. Wiles, Reg. No. 63,174
`Ryan A. Schneider, Reg. No. 45,083
`Troutman Sanders LLP
`600 Peachtree Street, Suite 5200
`Atlanta, GA 30308
`(404) 885-3000
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Dated: August 8, 2014
`
`
`
`
`WILLIS EXHIBIT 1017
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`TABLE OF EXHIBITS UNDER 37 C.F.R. § 42.104 B(5) ..................................... I
`I.
`FORMAL REQUIREMENTS OF 37 C.F.R. § 42.8(B) ................................ 1
`A.
`REAL PARTY-IN-INTEREST............................................................ 1
`B.
`RELATED MATTERS ........................................................................ 1
`C.
`LEAD AND BACK-UP COUNSEL ................................................... 1
`D.
`SERVICE INFORMATION ................................................................ 2
`E.
`PROOF OF SERVICE ON THE PATENT OWNER ......................... 2
`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.15 .......................... 2
`II.
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 ........................................... 2
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ........ 2
`B.
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. §
`42.104(B) .............................................................................................. 2
`C. HOW THE CHALLENGED CLAIMS ARE TO BE
`CONSTRUED PURSUANT TO 37 C.F.R. § 42.104(B)(3) ................ 5
`EXPLANATION OF UNPATENTABILITY PURSUANT TO
`37 C.F.R. §§ 42.104(B)(4)-(5) ............................................................. 6
`IV. OVERVIEW OF THE ‘186 PATENT ........................................................... 6
`A.
`THE ALLEGED INVENTION OF THE ‘186 PATENT .................... 6
`B.
`SUMMARY OF ‘186 PATENT’S PROSECUTION HISTORY ...... 10
`C.
`SUMMARY OF PROSECUTION HISTORY OF RELATED
`CONTINUATION APPLICATION .................................................. 12
`SUMMARY OF EX PARTE ‘186 PATENT
`REEXAMINATION .......................................................................... 13
`SUMMARY OF PRIMARY PRIOR ART REFERENCES .............. 14
`E.
`V. DETAILED EXPLANATION OF PROPOSED GROUNDS ..................... 17
`A.
`CLAIMS 1-28 ARE ANTICIPATED AND/OR OBVIOUS
`OVER OTTO ..................................................................................... 17
`
`D.
`
`D.
`
`
`
`i
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`Page 2
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`

`
`B.
`
`2.
`
`3.
`4.
`5.
`
`2.
`
`3.
`4.
`5.
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`1.
`
`Proposed Ground A(1): Claims 1-6, 8-12, 15-16, 18-21,
`23-28 ........................................................................................ 17
`Proposed Grounds A(2), A(3), A(6), A(7): Claims 2-4,
`17, 21 ........................................................................................ 19
`Proposed Grounds A(4), A(5), A(8): Claims 6-8, 22-23 ........ 21
`Proposed Grounds A(5), A(9), A(10): Claims 12-14 ............. 23
`Proposed Grounds A(5), A(11): Claims 18, 19, 24, 26,
`27 .............................................................................................. 25
`Proposed Grounds A(4), A(5), A(12): Claim 28 .................... 26
`6.
`CLAIMS 1-28 ARE MADE OBVIOUS BY SMITH ........................ 28
`1.
`Proposed Ground B(1): Claims 1, 2, 5, 6, 9-11, 15, 16,
`20, 21 ........................................................................................ 28
`Proposed Grounds B(2)-B(4), B(9): Claims 3-4, 15-17,
`25 .............................................................................................. 31
`Proposed Grounds B(2), B(5)-B(6): Claims 7, 8, 22, 23 ........ 33
`Proposed Grounds B(6), B(7), B(8): Claims 12-14 ................ 34
`Proposed Grounds B(6), B(10): Claims 18, 19, 24, 26,
`27 .............................................................................................. 35
`Proposed Ground B(11), B(12): Claim 28 .............................. 37
`6.
`VI. CLAIM CHARTS ......................................................................................... 38
`TABLE A: ‘186 PATENT, CLAIMS 1-9 ............................................................. 39
`TABLE B: ‘186 PATENT, CLAIMS 10-19 .......................................................... 47
`TABLE C: ‘186 PATENT, CLAIMS 20-27 .......................................................... 53
`TABLE D: ‘186 PATENT, CLAIM 28 ................................................................. 57
`VII. CONCLUSION ............................................................................................. 60
`
`
`
`ii
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`Page 3
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`

`
`TABLE OF EXHIBITS
`
`
`
`TABLE OF EXHIBITS UNDER 37 C.F.R. § 42.104 b(5)
`Description
`Publication
`Date or
`Filing Date
`
`Type of
`Prior Art
`(35
`U.S.C.)
`May 20, 2011 N/A
`
`USPN 8,454,186 to Chen (“the ‘186 Patent”)
`(patent under Inter Partes Review)
`File History for USPN 8,454,186 (“‘186
`Patent File History”) [internally paginated for
`convenience]
`Ex Parte Reexamination No. 90/020,073 of
`the ‘186 Patent
`Continuation Application U.S. Serial No.
`13/718,028 (“the ‘028 Application”)
`German Pat. No. DE843632 to Otto (“Otto”)
`(includes German version; English translation;
`and Translation Certification of Wheatleigh
`Dunham per 37 C.F.R. § 42.63(b)
`USPN 3,970,834 to Smith (“Smith”)
`USPN 5,695,279 to Sonnleitner
`(“Sonnleitner”)
`USPN 4,775,922 to Engel (“Engel”)
`USPN 5,776,599 to Woolford (“Woolford”)
`USPN 7,052,156 to Primeau (“Primeau”)
`USPN 5,639,157 to Yeh (“Yeh”)
`USPN 5,149,282 to Donato (“Donato”)
`USPN 1,656,148 to Harris (“Harris”)
`USPN 5,517,390 to Zins (“Zins”)
`USPN 7,029,145 to Frederick (“Frederick”)
`
`i
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`Dec. 12, 1984 102(b)
`
`Dec. 16, 1974 102(b)
`Jun. 26, 1995
`102(b)
`
`102(b)
`Apr. 7, 1987
`Apr. 11, 1997 102(b)
`Nov. 6, 2003
`102(b)
`Oct. 3, 1995
`102(b)
`Mar. 2, 1992
`102(b)
`Apr. 5, 1926
`102(b)
`Jun. 27, 1994
`102(b)
`Jan. 31, 2003
`102(b)
`
`
`
`Ex.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`
`
`Page 4
`
`

`
`TABLE OF EXHIBITS
`
`Description
`
`PCT Pat. App. No. WO 96/26661 to Lala
`(“Lala”)
`USPN 2,188,529 to Corina (“Corina”)
`USPN 3,985,924 to Pritza (“Pritza”)
`Declaration of Mike Wood in Support of
`Request for Inter Partes Review of the ‘186
`Patent
`Chinese Patent No. 2332290 to Chen (“Chen”)
`(includes Chinese version; English translation;
`and Translation Certification of Wheatleigh
`Dunham per 37 C.F.R. § 42.63(b))
`
`
`
`Publication
`Date or
`Filing Date
`
`Type of
`Prior Art
`(35
`U.S.C.)
`Feb. 28, 1996 102(b)
`
`Mar. 16, 1938 102(b)
`Mar. 17, 1975 102(b)
`N/A
`N/A
`
`Aug. 11, 1999 102(b)
`
`ii
`
`
`
`Ex.
`
`1016
`
`1017
`1018
`1019
`
`1020
`
`
`
`
`
`Page 5
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`

`
`
`
`Petitioner Polygroup Limited (“Petitioner”) requests Inter Partes Review
`
`(“IPR”) of Claims 1-28 of USPN 8,454,186 (“the ‘186 Patent”). (Ex. 1001). This
`
`Petition shows that there is a reasonable likelihood that Petitioner will prevail in
`
`establishing that at least one of those claims is unpatentable. Petitioner requests
`
`that each of those claims be declared unpatentable and canceled.
`
`I.
`FORMAL REQUIREMENTS OF 37 C.F.R. § 42.8(B)
`A. REAL PARTY-IN-INTEREST
`Polygroup Limited is the real party-in-interest.
`
`B. RELATED MATTERS
`The following pending matters where the ‘186 Patent has been asserted
`
`against Petitioner would affect, or be affected by, a decision in this proceeding: Ex
`
`Parte Reexamination of the ‘186 Patent (90/020,073), filed July 7, 2014,
`
`challenging Claims 1-28, and Ex Parte Reexamination of a related patent, USPN
`
`8,454,187 (“the ‘187 Patent”) (90/020,074), filed July 14, 2014, challenging
`
`Claims 1-15, both filed by an anonymous third party requester; and Petition for
`
`Inter Partes Review of the ‘187 Patent, IPR2014-____, filed on August 8, 2014, by
`
`Polygroup Limited, challenging Claims 1-15. These proceedings are currently
`
`pending. Petitioner is unaware of any other relevant pending matters.
`
`C. LEAD AND BACK-UP COUNSEL
`Lead Counsel for the Petitioner is Paul E. McGowan with Ben C. Wiles and
`
`Ryan A. Schneider as back-up counsel, all of Troutman Sanders, LLP.
`
`
`
`1
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`Page 6
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`

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`
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`D.
`
`SERVICE INFORMATION
`Polygroup may be served at its counsel, Troutman Sanders, LLP, via email
`
`to lead counsel (paul.mcgowan@troutmansanders.com) and back-up counsel
`
`(ben.wiles@troutmansanders.com, ryan.schneider@troutmansanders.com) or
`
`otherwise to the above counsel at:
`
`Troutman Sanders, LLP
`600 Peachtree Street, Suite 5200
`Atlanta, GA 30308
`
`PROOF OF SERVICE ON THE PATENT OWNER
`The Petition is being served on the Patent Owner’s attorney of record.
`
`404.885.3000 (phone)
`404.885.3900 (fax)
`
`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.15
`The undersigned authorizes the Director to charge the fee specified by 37
`
`E.
`
`II.
`
`C.F.R. § 42.15(a) to Deposit Account No. 20-1507. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to the above referenced Deposit Account.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`Petitioner certifies that the ‘186 Patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting this IPR.
`
`B.
`
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B)
`In accordance with 35 U.S.C. § 311, Petitioner requests IPR of asserted
`
`Claims 1-28 of the ‘186 Patent (“Asserted Claims”) in view of the following
`
`proposed grounds of invalidity (denoted “Proposed Grounds” A(1), A(2), etc.):
`
`
`
`2
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`Page 7
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`

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`
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`A(1) Claims 1-6, 8-12, 15-16, 18-21, and 23-28 are unpatentable under
`§ 102 as anticipated by Otto. See Section V.A.1. See ¶¶ 86-103.1
`A(2) Claims 2 and 3 are unpatentable under § 103 as obvious over Otto in
`view of Engel. See Section V.A.2. See ¶¶ 104-109.
`
`A(3) Claim 4 is unpatentable under § 103 as obvious over Otto in view of
`Woolford. See Section V.A.2. See ¶¶ 110-112.
`
`A(4) Claims 6-8, 22, 23, and 28 are unpatentable under § 103 as obvious
`over Otto in view of Primeau. See Sections V.A.3 and V.A.6. See ¶¶
`113-121.
`
`A(5) Claims 6, 12, 13, 22, 27, and 28 are unpatentable under § 103 as
`obvious over Otto in view of Yeh. See Sections V.A.3-6. See ¶¶ 122-
`128.
`
`A(6) Claim 17 is unpatentable under § 103 as obvious over Otto in view of
`Donato. See Section V.A.2. See ¶¶ 129-130.
`
`A(7) Claim 21 is unpatentable under § 103 as obvious over Otto in view of
`Sonnleitner. See Section V.A.2. See ¶¶ 131-133.
`
`A(8) Claim 23 is unpatentable under § 103 as obvious over Otto in view of
`Harris. See Section V.A.3. See ¶¶ 134-136.
`
`A(9) Claim 14 is unpatentable under § 103 as obvious over Otto in view of
`Zins in further view of Frederick. See Section V.A.4. See ¶¶ 137-
`138.
`
`A(10) Claim 12 is unpatentable under § 103 as obvious over Otto in view of
`Lala. See Section V.A.4. See ¶¶ 139-140.
`
`A(11) Claims 18, 19, 24, and 26 are unpatentable under § 103 as obvious
`over Otto in view of Corina. See Section V.A.5. See ¶¶ 141-143.
`
`A(12) Claim 28 are unpatentable under § 103 as obvious over Otto in view
`of Donato in further view of Primeau. See Section V.A.6. See ¶¶
`144-146.
`
`
`1¶¶’s denote sections in the Declaration of Mike Wood (Ex. 1019) attached hereto.
`3
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`
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`Page 8
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`

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`
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`
`
`B(1) Claims 1-2, 5-6, 9-11, 15-16, 20, and 21 are unpatentable under § 103
`as obvious over Smith in view of Sonnleitner. See Section V.B.1. See
`¶¶ 147-158.
`
`B(2) Claims 22 and 25 are unpatentable under § 103 as obvious over Smith
`in view of Sonnleitner in further view of Otto. See Sections V.B.2-3.
`See ¶¶ 159-161.
`
`B(3) Claim 3 is unpatentable under § 103 as obvious over Smith in view of
`Sonnleitner in further view of Engel. See Section V.B.2. See ¶¶ 162-
`163.
`
`B(4) Claim 4 is unpatentable under § 103 as obvious over Smith in view of
`Sonnleitner in further view of Woolford. See Section V.B.2. See ¶¶
`164-166.
`
`B(5) Claims 7-8, 22-23 are unpatentable under § 103 as obvious over Smith
`in view of Sonnleitner in further view of Primeau. See Section V.B.3.
`See ¶¶ 167-172.
`
`B(6) Claims 12-13, 22, and 27 are unpatentable under § 103 as obvious
`over Smith in view of Sonnleitner in further view of Yeh. See Sections
`V.B.3-5. See ¶¶ 173-176.
`
`B(7) Claim 12 is unpatentable under § 103 as obvious over Smith in view
`of Sonnleitner in further view of Lala. See Section V.B.4. See ¶¶
`177-178.
`
`B(8) Claim 14 is unpatentable under § 103 as obvious over Smith in view
`of Sonnleitner in further view of Zins in further view of Frederick.
`See Section V.B.4. See ¶¶ 179-180.
`
`B(9) Claims 15-17 are unpatentable under § 103 as obvious over Smith in
`view of Sonnleitner in further view of Donato. See Section V.B.2;
`See ¶¶ 181-185.
`
`B(10) Claims 18, 19, 24, and 26 are unpatentable under § 103 as obvious
`over Smith in view of Sonnleitner in further view of Corina. See
`Section V.B.5. See ¶¶ 186-189.
`
`4
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`Page 9
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`

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`
`
`B(11) Claim 28 is unpatentable under § 103 as obvious over Smith in view
`of Sonnleitner in further view of Primeau. See Section V.B.6. See ¶¶
`190-191.
`
`B(12) Claim 28 is unpatentable under § 103 as obvious over Smith in view
`of Sonnleitner in further view of Donato in further view of Primeau.
`See Section V.B.6. See ¶¶ 192-194.
`C. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`PURSUANT TO 37 C.F.R. § 42.104(B)(3)
`Petitioner contends that the Patent Trial and Appeal Board (“PTAB”) should
`
`apply the “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b). Thus, the words of the claim
`
`are given their plain meaning unless that meaning is inconsistent with the
`
`specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).2 See also In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (recognizing that any “specialized
`
`definition” for a claim term must be set forth in the specification with reasonable
`
`clarity, deliberateness, and precision). A claim term will not receive its ordinary
`
`meaning if the patentee acted as his own lexicographer and set forth a definition of
`
`the disputed claim term. Sinorgchem Co. v. ITC, 511 F.3d 1132 (Fed. Cir. 2007).
`
`Petitioner identifies two claim terms requiring construction under a broadest
`
`reasonable construction. As used in Claim 28, the term “clip” as part of “light
`
`string clip” and “end clip” means “a detachable electrical connector.” See In re
`
`2 Petitioner expressly reserves the right to present different claim constructions
`
`during litigation before the District Court, or in any other forum.
`
`
`
`5
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`Page 10
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`

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`
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`Paulsen, 30 F.3d at 1480. This is consistent with the understanding of a person
`
`ordinarily skilled in the art (“POSA”) based on the disclosures in the specification.
`
`(Declaration of Mike Wood (Ex. 1019), ¶ 47).
`
`As used in Claims 1, 5-6, 8, 20, 22 and 28, the terms “wiring harness” and
`
`“wiring assembly” mean “wiring and associated hardware, e.g., electrical
`
`connector, power converter, power cord, and additional wiring.” These terms are
`
`used to refer to the same concepts in the specification (See, e.g., Ex. 1001, 5:27-31)
`
`and in the claims (see, e.g., Ex. 1001, 21:20-24, Claim 1 (“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;”) and 24:27-30, Claim 28 (“first
`
`trunk wiring harness and a first trunk connector, the first trunk wiring harness
`
`electrically connected to the first trunk connector;”)). (Ex. 1019, ¶ 48).
`
`D. EXPLANATION OF UNPATENTABILITY PURSUANT TO 37 C.F.R.
`§§ 42.104(B)(4)-(5)
`As required under 37 C.F.R. §§ 42.104(b)(4) and (5), Section V below
`
`explains why the Asserted Claims are not patentable.
`
`IV. OVERVIEW OF THE ‘186 PATENT
`A. THE ALLEGED INVENTION OF THE ‘186 PATENT
`The alleged invention of the ‘186 Patent relates to a lighted artificial tree
`
`having trunk sections with embedded mechanical and electrical connections to
`
`illuminate the tree branches when the trunk sections are assembled. As explained
`
`
`
`6
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`Page 11
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`

`
`
`
`by Polygroup’s expert, Mr. Wood, the subject matter claimed in the ‘186 Patent
`
`includes no novel features and employs concepts that have been known and used
`
`for decades. (Ex. 1019, ¶¶ 25-43). See, e.g., Harris (Ex. 1013, Figs. 1-6) and
`
`Pritza (Ex. 1018, Figs. 1-4) filed in 1926 and 1975, respectively. This amounts to
`
`the use of known elements – in combination – to produce the predictable result of a
`
`lighted artificial tree. Accordingly, the ‘186 Patent is readily anticipated and/or
`
`made obvious by at least the several prior art references identified herein.
`
`The Independent Claims
`All four independent claims, Claims 1, 10, 20, and 28, are similar. Claim 10
`
`is representative and includes features common to virtually all lighted artificial
`
`trees: multiple trunk portions; plurality of branches and a light string on each
`
`branch; and trunk connectors that allow mechanical coupling between the trunk
`
`portions and provide an electrical connection for the lights throughout the tree.
`
`The central advance and only purportedly patentably novel feature is the
`
`incorporation of a common coaxial connection allowing an electrical connection
`
`between the trunk portions that is independent of the rotational alignment
`
`(orientation) of the trunk portions with respect to each other. As described below,
`
`this was the sole basis on which the Examiner allowed the independent claims
`
`during prosecution. See Section IV.B. (citing ‘186 Patent File History (Ex. 1002)).
`
`However, the simplicity and lack of novelty of such an invention is readily
`
`
`
`7
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`Page 12
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`

`
`
`
`apparent from the relevant prior art – including in the artificial lighted tree
`
`disclosed in Otto (Ex. 1005), which squarely reads on such a connection and was
`
`published more than 25 years earlier. (See Tables A-D).
`
`The independent Claims 1, 10, 20, and 28 differ only by slightly different
`
`words used to describe this rotational alignment feature, as described below:
`
`10f
`
`20h, 20i
`
`Element Rotational Orientation Description
`1j
`an end of the second trunk portion is configured to couple with an end
`of the first trunk portion in at least four different rotational
`alignments of the first trunk portion relative the second trunk portion
`about the central vertical axis,
`the second tree portion is mechanically and electrically connectable to
`the first tree portion 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 vertical axis,
`the second tree portion is mechanically and electrically connectable to
`the first tree portion by aligning the second trunk portion with the first
`portion along a common axis...to form a first mechanical connection in
`one of a plurality of rotational alignments of the first trunk portion to
`the second trunk portion, ... [and] the electrical connection being made
`independent of the plurality of rotational alignments of the first tree
`portion relative to the second tree portion.
`the second trunk portion is mechanically and electrically connectable to
`the first trunk portion by coupling the first end of the second trunk body
`to a second 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 vertical axis... the electrical connection
`being made independent of the rotational orientation of the first
`trunk portion relative the second trunk portion about the common
`vertical axis.
`
`28j, 28l
`
`(See Ex. 1001, excerpts of Claims 1, 10, 20, and 28) (emphasis added). As the
`
`table reflects, each claim includes mechanical coupling made along a common axis
`
`
`
`8
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`Page 13
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`

`
`
`
`(sometimes vertical) for the trunk bodies, and the electrical connection is made at
`
`one or more rotational orientations along that axis. Merely using different words
`
`to describe the same basic feature does not create any novelty.
`
`The simplicity of the claimed elements also give a POSA numerous other
`
`options to design the connection between the trunk sections, e.g., floor lamps (e.g.,
`
`Engel (Ex. 1008) or Sonnleitner (Ex. 1007)) and general plug and socket
`
`assemblies of artificial trees (e.g., Otto (Ex. 1005)). For example, a designer could
`
`readily modify the screw-on connector of the artificial lighted tree of Smith (Ex.
`
`1006), using Otto’s plug-in, coaxial connector to provide the necessary mechanical
`
`coupling and electrical connections independent of rotational alignment between
`
`the trunk sections. A designer would be motivated to do so because both Smith
`
`and Otto are analogous art, in the same field, and a POSA would know a coaxial
`
`connection would provide the predictable result of a simple mechanical coupling
`
`with an electrical connection formed independent of the rotational alignment of the
`
`trunk sections. As a further example, a designer would be motivated to use the
`
`coaxial connections of well-known lighting and electrical components, such as
`
`Engel (Ex. 1008) or Sonnleitner (Ex. 1007), which provide the same convenience
`
`and efficiency in mechanically coupling two base components that include lighting
`
`elements, to accomplish the same design objectives.
`
`
`
`
`
`9
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`Page 14
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`

`
`
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`The Dependent Claims
`
`Similarly, the dependent claims add well-known, and often inherent,
`
`elements to this basic artificial lighted tree—none of which is patentably novel and
`
`all of which are easily found in the prior art as described below. These include, for
`
`example, a base portion (Claim 9), power cord (Claim 11), power transformer
`
`(Claims 12-14), coaxial trunk connectors (Claim 15), series or parallel electrical
`
`wiring (Claims 18-19), and incandescent/LED lighting elements (Claims 26-27).
`
`B.
`
`SUMMARY OF ‘186 PATENT’S PROSECUTION HISTORY
`The application leading to the ‘186 Patent, U.S. Serial No. 13/112,650 (“the
`
`‘650 Application”), was filed on May 20, 2011; it claims priority from Provisional
`
`Application No. 61/385,751 filed on Sep. 23, 2010. (Ex. 1001, cover).3
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`The ‘650 Application was filed with 36 claims, including four independent
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`claims. All claims were rejected in an Aug. 3, 2012 Office Action (“Aug. 3rd
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`OA”). (Ex. 1002, pp. 119-130). Three of the independent claims and most
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`dependent claims were rejected as anticipated by the primary reference, Smith (Ex.
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`3 Petitioner and reserves the right to challenge the priority date at a later time, but
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`each prior art reference cited herein predates the ‘650 Application by decades.
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`1006).4 (Id.). The Examiner found Smith disclosed every element of original
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`Claims 1-12, 16, 21-24, 26, 33, 34 and 36, and made obvious the remaining claims
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`in conjunction with a POSA’s knowledge or in view of other prior art, Murphy and
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`Hicks. (Ex. 1002, pp. 119-130).
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`Applicant acquiesced to the rejection and amended each independent claim
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`to require that the electrical connections within the trunk portions be made
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`independent of the rotational orientation of the first trunk portion relative to the
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`second portion.5 (Id., pp. 153-171). In the Notice of Allowance, the Examiner
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`allowed the previously-rejected claims based solely on this narrowing of the
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`claims. (Id., pp. 196-201). The Examiner reiterated that the prior art of record
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`covered all claim elements remaining from the initial application, but found that
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`this art did not anticipate electrical connections made independent of the rotational
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`alignments of the first portion relative to the second portion. Significantly, neither
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`the Applicant nor the Examiner identified any additional art outside the record or
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`addressed any obviousness combinations of prior art to address this allegedly
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`4 The fourth independent claim included an “end clip” element, which the
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`Examiner readily found in another prior art reference. (Ex. 1002, pp. 128-129
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`(rejecting application independent Claim 32 over Smith in view of Murphy)).
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`5 Applicant amended application Claims 1-5, 8-9, 11, 18, 21, and 32, and cancelled
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`application Claims 6, 29-31, and 33-36. Those remaining issued as Claims 1-28.
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`missing element under 35 U.S.C. § 103. The ‘186 Patent then issued without any
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`further action by the Office on June 4, 2013. (Ex. 1001, cover).
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`C.
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`SUMMARY OF PROSECUTION HISTORY OF RELATED
`CONTINUATION APPLICATION
`On December 18, 2012, Applicant filed a continuation, U.S. Serial No.
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`13/718,028 (“the ‘028 Application”), of the ‘650 Application. All claims of the
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`‘028 Application currently stand rejected by the Examiner.
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`The ‘028 Application was filed with 15 claims, including two independent
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`claims. All claims were rejected in a Jan. 16, 2014 Office Action (“Jan. 16th
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`OA”). (Ex. 1004, pp. 113-120). One independent claim (claiming merely two
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`electrically and mechanically coupleable trunk portions) and four dependent claims
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`were rejected as anticipated by the primary reference Hicks (2007/0230174A1).
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`(Id.). The remaining 10 claims were rejected as obvious over Hicks in view of
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`Williams (US 4,753,600 A) or general teachings in the art (e.g., lighting elements
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`in series or parallel electrical connections). (Id. at 117-120). The Examiner stated
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`that Hicks alone discloses all elements of Claim 9 except for “a connector with a
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`central contact and a peripheral concentric surrounding contact” – akin to the
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`independent rotational orientation of the first trunk portion relative to the second
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`portion found in the ‘186 Patent. (Id. at 118). However, the Examiner found that
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`this element was disclosed in Williams. (Id.).
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`Applicant also acquiesced to this rejection and amended independent Claim
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`1 seeking to differentiate it from the “non-circular” and “keyed or slotted” trunk
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`wall connector of Hicks. (Id. at 139, 154-157). Specifically, Applicant added a
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`“non-conductive” portion of a trunk connector and a “trunk wall forming an edge”
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`that “defin[es] a complete circle.” (Id. at 140-141). The Examiner’s interview
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`summary states, “Applicant’s representative agreed to propose amendments to the
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`claims that further clarify the structure of the non-conductive portion of the first
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`trunk connector and the shape of the first end of the first trunk wall.” (Id. at 197).
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`No such narrowing, yet unimportant, features are present in the ‘186 Patent.
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`D.
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`SUMMARY OF EX PARTE ‘186 PATENT REEXAMINATION
`The Ex Parte Reexamination of the ‘186 Patent (90/020,073) challenges
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`Claims 1-28 using five prior art references, including Pritza, Smith, and Hicks.
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`The Requester argues that Smith in combination with either Pritza, Henry, or
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`McCaslin, renders obvious at least each of the four independent claims of the ‘186
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`Patent. (Ex. 1003, pp. 5-175). Petitioner’s expert, Mike Wood, has reviewed
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`Pritza in detail and determined that it is a strong § 102 anticipatory reference for
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`the independent claims and many of the dependent claims. (Ex. 1019, ¶¶ 52-67).
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`The Requester’s proposed grounds raise a “significant new question of
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`patentability” because (1) none were considered during prosecution of the ‘186
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`Patent, and (2) they provide the single missing element – electrical connection
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`made independent of a rotational orientation of a first trunk portion relative to a
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`second trunk portion – noted by the Examiner during prosecution and not
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`challenged by the applicant. On August 5, 2014, the Examiner granted the request
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`for ex parte reexamination of all claims and on all proposed grounds.
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`E.
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`SUMMARY OF PRIMARY PRIOR ART REFERENCES
`Petitioner relies upon the following primary prior art references:6
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`1.
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`Otto (Ex. 1005) is a primary base reference that discloses a nearly
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`identical artificial lighted tree to that claimed in the ‘186 Patent. This reference is
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`not of record. Otto’s Fig. 1 shows a free-standing assembled tree having a base
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`with mechanically coupleable and electrically connectable trunk elements (14),
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`having branches (10) joined to the trunk with candle lights (44) electrically
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`connected along each lighted branch. The electrical plug-in connections for the
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`trunk elements are coaxial, so the connecting areas may be rotated relative to one
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`another to allow a mechanical coupling and an electrical connection at any desired
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`rotational orientation so as to supply power to the lights on the branches. Otto –
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`filed more than 25 years earlier – is a blueprint for the ‘186 Patent claims.
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`2.
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`Smith (Ex. 1006) discloses a free-standing artificial lighted tree using
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`a threaded connection between assembled trunk sections and having lights on the
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`branches that are fitted into each trunk section. Smith is an important reference, as
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`the Examiner recognized during prosecution. (Ex. 1002, pp. 119-130). Notably,
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`6 See Table of Exhibits, supra, for complete citation. See also Ex. 1019, ¶¶ 69-84.
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`Smith teaches all primary claim elements except for the purportedly novel feature
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`of an electrical connection that is “independent of the rotational orientation” of the
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`trunk sections, i.e., a simple coaxial connection. Smith is another prime example
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`of the lack of inventiveness in the ‘186 Patent – having been filed almost 40 years
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`before the patent at issue. Based on the Examiner’s findings during prosecution,
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`which the patentee did not challenge, the only “advance” missing in Smith is the
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`use of the well-known coaxial connection, which plainly predates the ‘186 Patent.
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`3.
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`Corina (Ex. 1017) discloses an artificial lighted tree with incandescent
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`lamps wired in series or parallel. This reference is not of record.
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`4.
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`Frederick (Ex. 1015) discloses a low voltage decorative light string
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`assembly and power supply with a toroidal power converter. While cited on the
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`‘186 Patent face, Frederick was not used in any rejections during prosecution.
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`5.
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`Harris (Ex. 1013) discloses an assembled artificial lighted tree
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`consisting of branches wired with lights and multiple electrically connectable trunk
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`sections. Harris was filed more than 85 years ago (1926). While cited on the face
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`of the ‘186 Patent, Harris was not used in any rejections during prosecution.
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`6.
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`Lala (Ex. 1016) discloses an artificial lighted tree with branches that
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`“slidably engage” with the trunk and on which lights are disposed. This reference
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`is not of record.
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`7.
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`Primeau (Ex. 1010) discloses an artificial lighted tree with detachable
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`wiring between the light strings mounted on the branches and the separate trunk
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`sections. While cited on the face of the ‘186 Patent, Primeau was not used in any
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`rejections during prosecution.
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`8. Woolford (Ex. 1009) discloses an artificial lighted tree with electrical
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`wiring consisting of multiple connectable trunk portions. While cited on the face
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`of the ‘186 Patent, Woolford was not used in any rejections prosecution.
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`9.
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`Yeh (Ex. 1011) discloses the use of multiple detachable wiring
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`harnesses for a decorative string lighting system for trees and also a power
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`converter. This reference is not of record.
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`10. Zins (Ex. 1014) discloses an artificial lighted tree equipped with
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`electrical wiring for lighting elements and a power converter in the trunk of the
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`tree. This reference is not of record.
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`11. Donato (Ex. 1012) discloses a modular stem system for lighting
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`applications that includes coaxial “in-line connector and plug assemblies” with
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`deformable extensions. This reference is not of record.
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`12. Engel (Ex. 1008) discloses a stem lighting system consisting of
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`multiple inte