NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

POLYGROUP LIMITED MCO,

Plaintiff-Appellant

v.

WILLIS ELECTRIC COMPANY, LTD,

Defendant-Appellee

______________________ 

2018-1745, 2018-1746, 2018-1747

______________________ 

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, 

IPR2016-01613.

______________________ 

Decided: January 28, 2019

______________________ 

 ROBERT A. ANGLE, Troutman Sanders LLP, Richmond, 

VA, argued for appellant. Also represented by DABNEY 

JEFFERSON CARR, IV, CHRISTOPHER FORSTNER, LAURA 

ANNE KUYKENDALL; DOUGLAS SALYERS, Atlanta, GA. 

 LARINA ALTON, Fox Rothschild LLP, Minneapolis, 

MN, argued for appellee. 

______________________ 
2 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

Before DYK, REYNA, and HUGHES, Circuit Judges.

HUGHES, Circuit Judge. 

This is a patent case involving lighted artificial trees. 

Polygroup Ltd. MCO petitioned for inter partes review of 

U.S. Patents Nos. 8,454,186, 8,454,187, and 9,044,056. 

The Patent Trial and Appeal Board instituted review of 

all the challenged claims of the patents. The Board

determined that Polygroup had not established the unpatentability of any of the challenged claims. The Board 

also granted Willis Electric Co.’s Motion to Amend the 

’056 patent. Polygroup now appeals both the Board’s 

decisions on patentability and Willis’s Motion to Amend. 

Because the Board’s finding that Polygroup failed to 

establish a motivation to combine prior art references is 

supported by substantial evidence, we affirm the Board’s 

determination that claim 15 of the ’186 patent; claims 4, 

10, and 13 of the ’187 patent; and claims 2, 4, and 5 of the 

’056 patent were not shown to be unpatentable. However, 

we conclude that the Board applied erroneous claim 

constructions and refused to consider Polygroup’s arguments that a single reference renders many of the claims 

obvious. Therefore, we vacate the Board’s patentability 

determinations as to the remaining challenged claims of 

the ’186, ’187, and ’056 patents. On remand, the Board 

should consider Polygroup’s arguments based on Miller 

alone and whether those claims are unpatentable under a 

proper construction. We affirm the Board’s grant of 

Willis’s Motion to Amend the ’056 patent.

I 

A.

Willis Electric Co., Ltd. owns the ’186, ’187, and ’056 

patents, all of which are directed to a lighted artificial 

tree. The trees are comprised of “separable modular tree 

portions mechanically and electrically connectable be-
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 3

tween trunk portions.” ’186 patent col. 1 ll. 15–18. The 

hollow trunk portions contain electrical wiring and electrical connectors that provide a source of electricity for 

light strings draped over the branches. The connectors 

are designed so that mechanically connecting trunk 

portions during assembly also creates an electrical connection between the trunk portions. The connectors form 

this electrical connection regardless of the rotational 

alignment of the trunk portions. These features simplify 

tree assembly by removing the need to “rotate or reposition a particular tree portion after lifting it up and before 

placing it onto a base portion.” ’186 patent col. 15 ll. 51–

53. 

The ’186, ’187, and ’056 patents share much of the 

same specification, and their independent claims follow a 

common pattern. Claim 1 of the ’186 patent is representative and is reproduced below.

1. 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 defining a first trunk interior and 

having a first trunk electrical connector and a 

first trunk wiring assembly, the 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;

a second tree portion including a second trunk 

portion, a second plurality of branches joined to 

the second trunk portion, and a second light

string, the second trunk portion defining a second 

trunk interior and having a second trunk electrical connector and a second trunk wiring assembly, 

the second trunk wiring assembly electrically 

connectable to the second lighting string and the 
4 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

second trunk electrical connector, and wherein at 

least a portion of the second wiring assembly is located within the second trunk interior; and

wherein the second tree portion is mechanically 

coupleable to the first tree portion about a central 

vertical axis, and the second tree portion is electrically 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 

second trunk electrical connector of the second 

trunk portion, thereby creating an electrical connection between the first wiring assembly and the 

second wiring assembly;

wherein 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, 

and the electrical connection between the first and 

second tree portions are made independent of the 

rotational alignments of the first trunk portion 

relative the second trunk portion about the central vertical axis when the lower end of the second 

trunk portion is coupled to the upper end of the 

first trunk portion.

’186 patent col. 21 ll. 15–53 (emphasis added).

Except for claim 28 of the ’186 patent, every challenged claim requires at least one “tree portion” comprised of various parts, such as a trunk portion, branches, 

and light strings. The specifications describe the tree 

portions as “modular” and explain that the trees provide 

“simplified structures . . . for mechanically coupling tree 

portions along the trunk without the burden of multiple 

steps such as rotational alignment or affixing external 

fasteners.” ’186 patent col. 1 l. 17, col. 14 ll. 21–24. Claim 

28 of the ’186 patent does not claim a tree portion. In-
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 5

stead, its preamble recites a “modular lighted artificial 

tree” comprised of multiple trunk portions. ’186 patent 

col. 24 l. 26. 

B.

Polygroup Ltd. filed eight petitions for IPR of the ’186, 

’187, and ’056 patents, asserting obviousness based on 

several different combinations of prior art references. For 

each patent, the Board consolidated the petitions into a 

single IPR proceeding and instituted review on all challenged claims on all challenged grounds. 

For every challenged claim of the ’186 and ’187 patents as well as claims 2 and 4 of the ’056 patent, Polygroup relies on U.S. Patent No. 4,020,201 (Miller) as a 

primary reference in combination with German Patent 

No. DE8466328 (Otto) and French Patent No. FR 

1,215,214 (Jumo). Miller discloses an artificial tree with 

hollow trunk members that house electrical wiring for a 

light system. The Miller tree is assembled by “removably 

sleev[ing] together” its trunk members and “removably 

sleev[ing]” branches into apertures on the trunk members. J.A. 842–43. Miller uses a traditional plug and 

socket electrical connector within its hollow trunk to form

an electrical connection between light strings. 

Otto discloses an artificial tree with coaxial connectors between its trunk sections that create simultaneous 

electrical and mechanical connections. Polygroup uses

Otto “only to show the availability of trunk connectors 

that provide simultaneous electrical and mechanical 

connections at a multitude of rotational positions.” J.A. 

332 (emphasis added). Polygroup argues that based on 

Otto, a person of ordinary skill in the art would have been 

motivated to enhance Miller with the electrical connector 

taught by Jumo. Jumo discloses coaxial electrical connectors for use in electrical devices with multiple tubular 

elements, such as a lamp. Jumo’s connectors create a 

simultaneous mechanical and electrical connection when 
6 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

fitted together, and they may be connected in multiple 

rotational positions. 

For claims 11, 13, and 16–19 of the ’056 patent, Polygroup relies on a combination of Miller and either U.S. 

Patent No. 1,974,472 (Seghers) or U.S. Patent No. 

8,053,042 (Loomis). 

 For claim 5 of the ’056 patent, Polygroup relies on 

U.S. Patent Application Publication No. 2007/0230174 A1

(Hicks) as a primary reference in combination with Otto 

and U.S. Patent No. 7,066,739 B2 (McLeish). Hicks 

discloses an artificial tree with hollow trunk members 

that house the light wiring system. Hicks teaches removable branches, each having its own electrical connector. 

Electricity is provided to the light strings on each branch 

individually, so that a branch can be removed and replaced without affecting lights on other branches. 

McLeish discloses a coaxial electrical connector with male 

and female parts having magnetic portions designed to 

attract one another and form a simultaneous mechanical 

and electrical connection. 

Following institution, Willis sought to amend the ’056 

patent by substituting claim 21 for claim 1. Proposed 

claim 21 adds the limitation of a third electrical terminal 

and requires that the “second and third electrical terminals are configured to provide power to the first light 

string separate from power provided to a second light 

string.” J.A. 196 (emphasis added). 

C.

The Board issued a consolidated decision for the IPRs 

involving the ’186 and ’187 patents and a separate decision for the IPR involving the ’056 patent. In both decisions, a majority of the Board found that Polygroup failed 
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 7

to prove by a preponderance of the evidence that any of 

the challenged claims are unpatentable.1 

The Board first addressed the construction of “tree 

portion” and “modular lighted artificial tree.” It construed “tree portion” to mean “a mechanically and electrically connectable modular and unitary portion of an 

artificial tree.” J.A. 12; see also J.A. 174. Because the 

branches in both Miller and Hicks are detachable from 

the trunk sections, the Board found that neither reference 

discloses the “trunk-branch-light unit” required under its 

construction. J.A. 33; see also J.A. 186–87. 

Turning to “modular lighted artificial tree,” the Board 

found the preamble of claim 28 of the ’186 patent to be 

limiting. It then construed “modular lighted artificial 

tree” to mean “a tree constructed of modular portions, 

each modular portion being a separate tree section.” J.A. 

22. The Board clarified that its construction “means that 

the modules in [claim 28] are the various trunk portions 

and their associated structures, . . . similar to the tree 

portions of claims 1, 10, and 20 [of the ’186 patent].” J.A. 

24. The Board thus found that just as Miller does not 

disclose a “tree portion,” Miller also does not disclose a 

“modular lighted artificial tree.” Because Polygroup 

relied on either Miller or Hicks to teach a “tree portion”

and a “modular lighted artificial tree” for each of its 

asserted grounds of obviousness, the Board determined 

that Polygroup failed to prove that any of the challenged 

claims are obvious. 

As an alternate basis for its patentability determinations for all claims of the ’186 and ’187 patents as well as

 

1 A single member of the Board dissented in both 

decisions and would have found all challenged claims 

unpatentable as obvious under 35 U.S.C. § 103. 
8 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

claims 2 and 4 of the ’056 patent, the Board found that 

Polygroup failed to establish that a skilled artisan would 

have been motivated to combine Miller with Otto and 

Jumo because Jumo is not analogous prior art.2 Similarly, as an alternate basis for claim 5 of the ’056 patent, the 

Board found that Polygroup failed to establish a motivation to combine Hicks with Otto and McLeish because 

Polygroup did “not give sufficient technical reasoning or 

evidence that a person of ordinary skill in the art would 

consider modifying Hicks’s connector with McLeish’s.” 

J.A. 188 (emphasis in original). 

 The Board also granted Willis’s Motion to Amend the 

’056 patent. The Board rejected Polygroup’s assertion 

that proposed claim 21 would have been obvious in view 

of Hicks, Otto, and U.S. Patent No. 5,049,403 (Falossi)

because “Hicks does not disclose . . . separate power 

provided to the first and second light strings” as required 

by claim 21. J.A. 203.

Polygroup now appeals. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A).

II

We first consider the Board’s claim constructions of 

“tree portion” and “modular lighted artificial tree.” We 

review the Board’s ultimate claim construction de novo 

and any underlying factual determinations involving 

 

2 The Board also found that secondary considerations of commercial success, industry praise, and licensing 

demonstrate the non-obviousness of the ’186 patent. 

Because we remand the Board’s patentability determinations of the ’186 patent except for claim 15, we do not 

reach the merits of parties’ arguments with respect to 

secondary considerations. On remand, the Board may 

also consider secondary considerations for the remanded 

claims of the ’187 patent.
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 9

extrinsic evidence for substantial evidence. In re Cuozzo 

Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015). 

During IPR of an unexpired patent, the Board gives the 

claims their broadest reasonable interpretation in light of 

the specification. 37 C.F.R. § 42.100(b). Under this 

standard, claim terms are generally given their ordinary 

and customary meaning, as would be understood by a 

skilled artisan in the context of the entire disclosure. See 

In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 

2007). 

For the reasons below, we find that the Board erred in 

its construction of both “tree portion” and “modular lighted artificial tree.” Because the Board’s decisions with 

respect to claims 11, 13, and 16–19 of the ’056 patent rely 

solely on its erroneous construction of “tree portion,” we 

vacate the Board’s decision with respect to those claims

and remand for the Board to consider the patentability of 

those claims under a proper construction.

A.

The Board construed “tree portion” to mean “a mechanically and electrically connectable modular and 

unitary portion of an artificial tree.” J.A. 12. It emphasized that “tree portion” requires “that the subcomponents 

are structured, arranged, and connectable in a way that 

they are interfaced with as a unit.” J.A. 21. The Board 

noted that the specification “explains that the module of 

its modular tree is called a ‘tree portion,’ and that the tree 

is made by connecting the various tree portion modules to 

assemble the tree.” J.A. 15. The Board also highlighted a 

disclosed embodiment where branches are non-detachably 

connected to the trunk by “branch support rings,” which it 

found “provides modularity by making it easy for the user 

to interact with the tree portion as a modular unit.” J.A. 

16–17. 

Applying its construction to Miller and Hicks, the 

Board found that neither reference teaches a “tree por-
10 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

tion” because they disclose branches and lights that are 

separate and removable from the trunk sections. Accordingly, the Board found that both Miller and Hicks fail to 

disclose the “trunk-light-branch” unit required under the 

Board’s construction. J.A. 33, 186–87. Thus, although it 

is not clear from the plain language of its construction, 

the Board’s analysis makes clear that the Board understood “unitary” to require non-detachable branches. 

Polygroup argues this was error. We agree.

Although the specification supports the Board’s finding that “tree portion” requires some level of modularity, 

see ’186 patent col. 1 ll. 15–17 (describing the present

invention as an artificial tree having “separable, modular 

tree portions”), it does not support reading “tree portion” 

to require a “unitary” structure with branches that are 

non-detachably affixed to the trunk. While the patents 

disclose an embodiment with branches non-detachably 

connected to the trunk via “branch support rings,” id. at 

col. 6 ll. 53-55, col. 7 ll. 1–8, we have warned against 

confining claims to the specific embodiments recited in 

the specification. See Phillips v. AWH Corp., 415 F.3d 

1303, 1323 (Fed. Cir. 2005). We find nothing in the 

specification of any of the challenged patents that supports limiting “tree portion” to an embodiment with nondetachable branches. Therefore, the Board erred by 

construing “tree portion” to require a “unitary” structure, 

i.e. one with non-detachable branches.

Both Miller and Hicks disclose artificial trees with 

branches attached to hollow trunk members. Neither 

reference requires the trunk members to be connected 

before adding the branches. Thus, in either reference, the 

branches and lights can first be attached to the trunk 

members, resulting in a modular trunk-light-branch 

structure. That the branches are removable from the 

trunk members is of no moment under a proper construction of “tree portion.” 
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 11

B.

The Board found the preamble of claim 28 of the ’186 

patent to be limiting, and it construed the term “modular 

lighted artificial tree” to mean “a tree constructed of 

modular portions, each modular portion being a separate 

tree section.” J.A. 22. Under this construction, the Board 

found that “modular lighted artificial tree” incorporates

the structural requirements of “tree portion.” This was 

error.

We find no support in the specification of the ’186 patent for reading “tree portion” into claim 28 based on the 

“modular lighted artificial tree” language in the preamble. 

While the ’186 patent’s specification describes “tree portion” as “modular” in the Field of Invention, see ’186 

patent col. 1 l. 17, it also describes other aspects of the 

tree as “modular” throughout the specification, such as 

the connector assembly and light system, see e.g. id. at col. 

17 l. 25 (noting the “modularity and detachability of 

connector assembly 200”); see also id. at col. 18 ll. 33, 46, 

50 (discussing the “modularity” of the lighting system). 

Thus, the ’186 specification describes a tree that is “modular” in several respects, only one of which relates to “tree 

portion.” We, therefore, disagree with the Board that 

“reciting that the tree is ‘modular’ means that the tree 

has the multiple tree portion construction described in the 

specification.” J.A. 23. Instead, we find Polygroup’s 

proposed construction, “an artificial tree with elements 

capable of being easily joined or arranged with other parts 

or units,” J.A. 22, to represent the broadest reasonable 

interpretation of “modular lighted artificial tree” in view 

of the ’186 patent’s specification. 

III

 Next, we consider the Board’s findings that Polygroup 

failed to establish that a person of ordinary skill would 

have been motivated to combine Miller with Otto and 

Jumo or Hicks with Otto and McLeish. A party asserting 
12 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

that a claimed invention is obvious “must demonstrate . . .

that a skilled artisan would have had reason to combine 

the teaching of the prior art references to achieve the 

claimed invention, and that the skilled artisan would 

have had a reasonable expectation of success from doing 

so.” PAR Pharm., Inc. v. TWI Pharm, Inc., 773 F.3d 1186, 

1193 (Fed. Cir. 2014) (internal quotation marks omitted). 

Whether a skilled artisan would have been motivated to 

combine the prior art is a factual question, which we 

review for substantial evidence. Intercontinental Great 

Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1343 

(Fed. Cir. 2017); see also In re Giannelli, 739 F.3d 1375, 

1379 (Fed. Cir. 2014). Whether a reference in the prior 

art is analogous is also a question of fact reviewed for 

substantial evidence. Wyers v. Master Lock Co., 616 F.3d 

1231, 1237 (Fed. Cir. 2015). Substantial evidence requires that “a reasonable mind might accept the evidence 

to support the finding.” In re Giannelli, 739 F.3d at 1379. 

Our analysis here applies to the Board’s patentability 

findings for all challenged claims of the ’186 and ’187 

patents as well as claims 2, 4, and 5 of the ’056 patent. 

For the reasons set forth below, we find that substantial 

evidence supports the Board’s determinations that Polygroup failed to establish a motivation to combine either 

set of references. We also find, however, that the Board 

erred in failing to consider whether Miller alone renders 

many of the challenged claims of the ’186 and ’187 patents 

obvious. 

A.

For every challenged claim of the ’186 and ’187 patents, as well as claims 2 and 4 of the ’056 patent, Polygroup argued that a person of ordinary skill would have 

been motivated by Otto’s teaching of the use and availability of coaxial connectors in artificial trees to modify the 

Miller tree with the connector taught by Jumo. The 
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 13

Board rejected Polygroup’s proposed motivation because it 

found that Jumo is not analogous prior art. 

“Prior art is analogous where either (1) ‘the art is 

from the same field of endeavor, regardless of the problem 

addressed’ or (2) even if the reference is not within the 

same field of endeavor, ‘the reference still is reasonably 

pertinent to the particular problem with which the inventor is involved.’” In re Ethicon, Inc., 844 F.3d 1344, 1349 

(Fed. Cir. 2017) (quoting In re Clay, 966 F.2d 656, 658–59 

(Fed. Cir. 1992)). The Board determined that the relevant 

field of endeavor here is “artificial trees with decorative 

lighting.” J.A. 37. The Board found that Jumo, which is 

directed to a “latching side-by-side support arm for electrical device,” is not within this field of endeavor because 

it is unrelated to decorative lighting or artificial trees. Id. 

Next, the Board found the problem faced by the inventor 

was “convenient assembly and disassembly . . . as it 

relates to artificial trees.” Id. The Board concluded that 

Jumo is concerned with durability rather than convenient 

assembly. J.A. 40. Thus, “even under [Polygroup’s] own 

proposed definition of the problem,” “assembly, disassembly, and electrically connecting sections of an artificially 

lit object,” Jumo is not reasonably pertinent to the problem faced by the inventor. J.A. 37–40. 

Polygroup argues that none of the Board’s findings 

above are supported by substantial evidence. We disagree. Although the challenged patents cover electrical 

connections between tubular portions of a device, those 

connections are all within the context of an artificial tree. 

The Board thus did not err in defining the field of endeavor as “artificial trees with decorative lighting.” J.A. 37. 

Similarly, the Board did not err in defining the problem 

with which the inventor was faced as “assembly and 

disassembly . . . as it relates to artificial trees.” Id. We 

agree with the Board that Jumo does not relate to artificial trees or decorative lighting, and Polygroup points to 

nothing in Jumo addressing the problem of convenient 
14 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

assembly or disassembly. Substantial evidence supports 

the Board’s finding that Jumo is not analogous art. 

Because “[g]enerally, a skilled artisan would only have 

been motivated to combine analogous art,” In re Ethicon, 

Inc., 844 F.3d at 1349, we also find that substantial 

evidence supports the Board’s determination that Polygroup failed to establish a motivation to combine Miller 

with Otto and Jumo.

 Polygroup also claims the Board erred in concluding 

that its petition “does not rely on Otto for the structure of 

the[] connections” and in considering only whether a 

skilled artisan would enhance Miller with the connector 

from Jumo. J.A. 28. We find no such error. Polygroup’s 

petition uses Otto “only to show the availability of trunk 

connectors that provide simultaneous electrical and 

mechanical connections” in support of its claim that a 

skilled artisan “would have been motivated to enhance 

Miller’s artificial tree with a similar concept via the multiposition Jumo connectors.” J.A. 332. 

B.

Polygroup argues that even if there is no motivation 

to combine Miller with Otto and Jumo, Miller alone 

renders many of the challenged claims obvious. The 

Board declined to consider Miller alone, however, because 

it found that Polygroup “set forth an obviousness ground 

containing and requiring [] three references.” J.A. 41 n. 

31. We disagree. 

Polygroup’s petitions explicitly argued that Miller 

alone teaches every element of the challenged claims of 

the ’186 and ’187 patents in its limitation-by-limitation 

analysis except for claim 15 of the ’186 patent and claims 

4, 10, and 13 of the ’187 patent. See J.A. 360–384, 2546–

67, 2570–76 (’186 patent); Polygroup Ltd. v. Willis Elec. 

Co., IPR2016-01609, Paper 2 at 34–73 (P.T.A.B. Sept. 2, 

2016) (same); see also Polygroup Ltd. v. Willis Elec. Co., 

IPR2016-01612, Paper 2 at 37–72 (P.T.A.B. Aug. 26, 2016) 
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 15

(’187 patent); Id., Paper 28 at 27–51 (P.T.A.B. Apr. 18, 

2016) (same); Id., Paper 34 at 36–69 (P.T.A.B. Aug. 26, 

2016) (same). The Board erred when it refused to consider these arguments. See Realtime Data, LLC v. Iancu, 

No. 2018-1154, 2019 WL 149835, *4 (Fed. Cir. Jan. 10, 

2019) (affirming the Board’s obviousness finding based on 

a single reference where the petitioner’s primary argument was that all of the elements were disclosed in a 

single reference, and the petitioner also argued, in the 

alternative, that some of the elements were disclosed by a 

second reference).3 Therefore, we vacate the Board’s 

obviousness determinations of all challenged claims of the 

’186 and ’187 patents except claim 15 of the ’186 patent 

and claims 4, 10, and 13 of the ’187 patent.4 On remand, 

the Board should consider whether Miller alone renders 

those claims obvious. 

 

3 Although the Board instituted review on the 

ground of “Miller in view of Otto and Jumo,” J.A. 41 n. 31, 

we do not read the Board’s institution decision as a partial institution. Instead, we merely recognize as we did in 

Realtime Data, that when a petition sets forth a ground 

with multiple references, but the petitioner’s primary 

arguments rely on a single reference, the Board should 

consider those arguments irrespective of a motivation to 

combine references. Therefore, this case does not raise 

any issue under SAS Insitute Inc. v. Iancu, 138 S.Ct. 1348 

(2018), or our cases interpreting it.

4 Claim 15 of the ’186 patent and claims 4, 10, and 

13 of the ’187 patent each require a “coaxial” connector. 

See ’186 patent col. 23 l. 9; ’187 patent col. 22 ll. 7–12, col. 

23 ll. 2–7, 16. Because Polygroup does not rely on Miller 

to teach a “coaxial” connector, the Board did not err in 

failing to consider Miller alone for these claims.
16 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

C. 

For claim 5 of the ’056 patent, Polygroup argued that 

a person of ordinary skill would have been motivated by 

Otto to enhance Hicks with the connector taught by 

McLeish. The Board rejected Polygroup’s proposed motivation because Polygroup gave insufficient technical 

reasoning or evidence that a skilled artisan “would consider modifying Hicks’s connector with McLeish’s.” J.A. 

188. The Board found no evidence that McLeish’s connector is substitutable for use in artificial trees. Instead, 

it found that “McLeish functions to connect loose, movable 

structures, or structures that are otherwise out of reach.” 

J.A. 189. 

We agree with the Board that Polygroup fails to point 

to any persuasive evidence that a skilled artisan would 

consider McLeish suitable for use in artificial trees. 

Accordingly, we find that substantial evidence supports 

the Board’s conclusion that Polygroup failed to establish a 

motivation to enhance the Hicks tree with the connector 

from McLeish.

IV

Finally, we consider the Board’s grant of Willis’s 

Motion to Amend the ’056 patent by substituting claim 1 

with proposed claim 21. Polygroup argues the Board 

erred because the combination of Hicks with Otto and 

Falossi renders proposed claim 21 obvious. The Board 

found that the proposed claim would not have been obvious in view of those references because “Hicks does not 

disclose . . . separate power provided to the first and 

second light strings” as required by claim 21. J.A. 203. 

We find no reversible error in this conclusion. 

Proposed claim 21 requires the second and third 

electric terminals to be “configured to provide power to 

the first light string separate from power provided to a 

second light string.” J.A. 196 (emphasis added). Alt-
POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD 17

hough Hicks discloses separate power cords in its upper 

and lower sections, the Board found that “all light strings 

in Hicks would reside on the same power connection” 

because they all flow through the same three prong 

adapter. J.A. 202–03. Thus, Hicks does not provide 

separate power in the manner required by claim 21. 

Polygroup argues that Hicks’s “second power cord 48 

only provides power to the bottom portion, [so] it does not 

connect via the three-prong plug 44.” Appellant’s Reply 

Br. at 31. Figure 2 of Hicks, however, appears to depict

power cord 48 connecting to the three-prong adapter 44. 

See J.A. 942. Given this disclosure, we find that the 

Board’s conclusion that Hicks does not teach separate 

power in the manner of claim 21 is supported by substantial evidence. Accordingly, the Board did not err in granting Willis’s Motion to Amend.

V 

We affirm the Board’s determination that Polygroup 

failed to establish the unpatentability of claim 15 of the 

’186 patent, claims 4, 10, and 13 of the ’187 patent, and

claims 2, 4, and 5 of the ’056 patent because Polygroup 

failed to establish a motivation to combine the asserted 

prior art references. We vacate the Board’s obviousness 

determinations of all remaining challenged claims of the 

’186 and ’187 patents because the Board failed to consider 

whether those claims are unpatentable in view of Miller 

alone. We also vacate the Board’s patentability determinations of claims 11, 13, and 16–19 of the ’056 patent 

because they rely solely on the Board’s erroneous claim 

construction of “tree portion.” On remand, the Board 

should consider whether the claims are unpatentable in 

light of our opinion. We affirm the Board’s grant of Willis’s Motion to Amend the ’056 patent.

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED
18 POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

COSTS

No costs.