CAFC addresses lighted artificial trees in POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

There was a mixed outcome:



This is a patent case involving lighted artificial trees.
Polygroup Ltd. MCO petitioned for inter partes review of
U.S. Patent No. 8,936,379. The Patent Trial and Appeal
Board instituted review of all challenged claims. The
Board determined that Polygroup had not established the
unpatentability of any of the challenged claims.
Polygroup now appeals. Because the Board did not err in
finding that Korengold does not teach an “interference fit”
under the broadest reasonable interpretation of that term,
we affirm the Board’s determination that claims 12, 15,
and 32 were not shown to be unpatentable. But, we find
that the Board erred in construing “modular artificial
tree” and erred in finding that Polygroup failed to establish
a motivation to combine the asserted prior art. As a
result, we vacate the Board’s determination that claims
1–6, 8, 10–11, 13–14, 16–17, and 28–29 were not shown to
be unpatentable. On remand, the Board should consider
whether those claims are unpatentable under a proper
construction.



Substantial evidence was lacking:


Polygroup suggested
enhancing DeVicaris with the connection used to insert
Korengold’s connectors into the conduit pipe, not the
connectors themselves. Because most of the Board’s
analysis, and the expert testimony it relied upon, focused
on the motivation to replace DeVicaris’s connector with
Korengold’s connector, neither that analysis nor the
expert testimony provides substantial evidentiary support
for the Board’s rejection of Polygroup’s proposed motivation.
See J.A. 41–43 (focusing on the finding that replacing DeVicaris’s
connector with Korengold’s connector
would make tree assembly more difficult).