Fox Client Wins Another Battle in Christmas Tree WarJune 5, 2018 – Press Releases
A Fox Rothschild IP litigation team led by partner Larina Alton in Minneapolis has secured another victory for client Willis Electric in matters before the Patent Trial and Appeal Board involving the patents for a revolutionary new design for pre-lit artificial holiday trees.
After confirming the validity of several key patents in February for Willis’s One Plug design – over the objections of rival Polygroup Ltd. – the PTAB in May invalidated all of Polygroup’s competing patents with the exception of some dependent claims of one patent.
Willis Electric transformed the holiday tree industry with its conception of a pre-lit tree that had wiring internal to the trunk, allowing users the benefit of simple assembly by mere alignment of the tree portions. Prior designs required users to reach into branches in order to plug the lights of each section together, a step entirely eliminated by the innovation championed by Willis Electric’s General Manager Johnny Chen.
In an initial victory, Willis Electric overcame a series of Petitions for inter partes review by Willis Electric’s competitor, Polygroup Ltd. The PTAB determined in February that all challenged claims of all four different patents were not unpatentable, confirming the validity of Willis Electric’s patents before the United States Patent and Trademark Office.
Those patents were the keystone 8,454,186, “Modular Lighted Artificial Tree with Trunk Electrical Connectors,” and 8,454,187, “Modular Lighted Tree,” as well as related 8,936,379, “Modular Lighted Tree,” and 9,044,056, “Modular Tree with Electrical Connector.”
On May 7, the PTAB confirmed the validity of an additional Willis Electric patent, 8,974,072 “Modular Lighted Tree with Trunk Electrical Connectors.” This was the last remaining challenge to Willis Electric’s patents, sealing the uniform affirmance of Willis Electric’s intellectual-property rights.
Also on May 7, the PTAB issued three decisions that completely invalidated two of Polygroup’s competing patents on One Plug technology, and all independent claims on a third, leaving only dependent claims to resolve on appeal.
Alton argued on behalf of Willis Electric that Polygroup’s patents were rendered obvious by Willis Electric’s because they were filed later and offered nothing sufficiently novel above what Willis Electric itself had invented.
The rulings are the latest development in a struggle between two major manufacturers of seasonal decorations. In 2014, Polygroup filed two petitions for inter partes review of Willis Electric’s ‘186 and ‘187 One Plug Tree patents. Simultaneously, an ex parte reexamination was anonymously filed against both patents. No trial was instituted as to the challenged claims, and the reexamination resulted in no changes to the two patents.
Having secured its patented claims, Willis Electric filed suit in 2015 in the District of Minnesota against Polygroup for infringement of six patents related to its revolutionary “One Plug” design for pre-lit artificial holiday trees. Willis Electric is presently seeking to lift the stay that was imposed during the inter partes proceedings.
Polygroup then filed 14 Petitions for inter partes review of Willis Electric’s patents, several of which were consolidated in the PTAB proceedings at issue in its February ruling. Because of these serial filings, Willis Electric was one of the top 25 parties most frequently involved in inter partes review in the year 2016. Alton was assisted by Luke Toft of Fox Rothschild and backup counsel Doug Christensen of Christensen Fonder Dardi PA.