Case: 21-1401 Document: 55 Page: 1 Filed: 04/20/2022
NOTE: This disposition is nonprecedential.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.
______________________
OPINION ISSUED: January 19, 2022
OPINION MODIFIED: April 20, 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.
∗ This opinion has been modified and reissued fol-
lowing a petition for rehearing filed by Appellee.
Case: 21-1401 Document: 55 Page: 2 Filed: 04/20/2022
2 POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD.
PATRICK M. ARENZ, Robins Kaplan LLP, Minneapolis,
MN, argued for appellee. Also represented by BRENDA L.
JOLY, EMILY ELIZABETH NILES, RONALD JAMES SCHUTZ.
______________________
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, 18–22, 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, 18–22, 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 unpatent-
able.
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
Case: 21-1401 Document: 55 Page: 3 Filed: 04/20/2022
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 3
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,
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
portion, 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 por-
tion, 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 connected to
the second light string; and
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4 POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD.
wherein the second tree portion is mechani-
cally 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,
thereby causing the trunk connector of the
first trunk portion to make an electrical con-
nection with the trunk connector of the sec-
ond trunk portion within an interior of the
lighted artificial tree, the electrical connec-
tion being made independent of the rota-
tion orientation of the first trunk portion
relative the second 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,
Case: 21-1401 Document: 55 Page: 5 Filed: 04/20/2022
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 5
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 Mil-
ler . . . alone and whether those claims are unpatentable
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:
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: 55 Page: 6 Filed: 04/20/2022
6 POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD.
wherein the second tree portion is mechanically
coupleable to the first tree portion about a central
vertical axis, and the second tree portion is electri-
cally connectable to the first tree portion such that
a portion of the first trunk electrical connector of
the first trunk portion contacts a portion of the sec-
ond trunk electrical connector of the second trunk
portion, thereby creating an electrical connection
between the first wiring assembly and the second
wiring assembly.
’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,
Case: 21-1401 Document: 55 Page: 7 Filed: 04/20/2022
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 7
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.
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.
Case: 21-1401 Document: 55 Page: 8 Filed: 04/20/2022
8 POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD.
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
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.
Case: 21-1401 Document: 55 Page: 9 Filed: 04/20/2022
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 9
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
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
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: 55 Page: 10 Filed: 04/20/2022
10 POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD.
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 as-
semblies 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
Case: 21-1401 Document: 55 Page: 11 Filed: 04/20/2022
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 11
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
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, 18, 19, 21, 22, 25,
and 26 of the ’186 patent, which depend from either inde-
pendent 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, VACATED, AND REMANDED
COSTS
No costs.
Case: 21-1401 Document: 55 Page: 12 Filed: 04/20/2022
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.
______________________
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: 55 Page: 13 Filed: 04/20/2022
2 POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD.
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: 55 Page: 14 Filed: 04/20/2022
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY, LTD. 3
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, 18–22, 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.
