IP Law Daily, PATENT—Fed. Cir.: PTAB erred in upholding lighting patent on the basis of no motivation to combine prior art, (May 28, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The PTAB erred in rejecting challenges to a decorative lighting patent and wrongly concluded there was no motivation to combine prior art in order to reduce the cost of copper in the lighting system.

The U.S. Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB’s) judgment that Everstar failed to establish the unpatentability of claim 1 of ’037 patent, and vacated the PTAB’s judgment that Everstar failed to prove by a preponderance of the evidence that the remaining claims of the ’037 patent are unpatentable. The Federal Circuit held that the PTAB legally erred in its motivation to combine analysis, and that substantial evidence only supports the conclusion that a person of ordinary skill in the art would have been motivated to combine Kumada and Debladis ’120 (Everstar Merchandise Co. Ltd. v. Willis Electric Co., Ltd., No. 23-1686 (Fed. Cir. May 27, 2025)).

’037 Patent. Willis Electric Co., Ltd. (Willis) owns U.S. Patent No. 10,222,037 (’037 patent), titled “Decorative lighting with reinforced wiring.” It purports to provide the novelty of internally reinforced wires—a single wire reinforced with a strand of polymer material running internally—in decorative light nets. This purportedly reduces material costs, bulk, and weight without a reduction in strength.

Post-grant review. Everstar Merchandise Co. Ltd. (Everstar) petitioned for post-grant review of all the ’037 patent’s claims, asserting that they are unpatentable as obvious over the combination of two prior art references. Everstar cited Kumada titled Economical Net or Mesh Light Set, which teaches that its design is economical because wire costs are perhaps the most significant element in the cost of a net light, and its non-electrical ropes do not contain wire (expensive copper), rendering both the light set and its method of manufacture economical. Everstar also cited Debladis ’120 as art to combine with Kumada as known methods that could be used to increase the strength and durability of decorative lighting products. Debladis ’120 teaches that copper is becoming ever more expensive, and it is important to find new cable structures that minimize the quantity of copper used. One of the stated goals of Debladis ’120 is to reduce significantly the quantity of copper that is used.

PTAB’s decision. The PTAB ruled that Everstar failed to show by a preponderance of the evidence that the challenged claims are unpatentable. The PTAB determined that Everstar had not shown a person of ordinary skill in the art (POSA) would have been motivated to combine the teachings of Kumada and Debladis ’120. Everstar appealed the PTAB’s final written decision to the Federal Circuit. The Federal Circuit ruled that “the PTAB abused its discretion when it refused to consider whether cost reduction would have motivated a skilled artisan to combine the asserted prior art” and instructed the PTAB on remand to consider whether a POSA would be motivated to combine Kumada with Debladis ’120 in order to reduce cost. On remand, the PTAB determined that Everstar failed to prove that a POSA would be motivated to combine Kumada and Debladis ’120 based on increased strength and durability, reduced cost as a “complementary motivation” to increased strength and durability, or reduced cost alone. Everstar appealed the PTAB’s ruling that it failed to show a POSA would be motivated to combine Kumada and Debladis ’120 based on reduced cost alone.

Legal standard to prove a motivation. Everstar argued that the PTAB applied the wrong legal standard to prove a motivation to combine by requiring Everstar to quantify the resulting material properties of its proposed combination. The Federal Circuit noted that Everstar provided substantial evidence that its proposed combination would reduce the amount of copper in Kumada. To the extent that the PTAB required Everstar to precisely quantify the amount of copper reduction provided by its proposed combination of Kumada and Debladis ’120, the Federal Circuit determined that this was legally incorrect. The Federal Circuit also noted that the PTAB did not cite any precedent to support the quantification requirement it appears to have imposed on Everstar. Nor do the claims at issue here require any certain quantity or reduction in the quantity of copper. Therefore, the Federal Circuit rejected any precise quantification requirement as overly rigid and inconsistent with well-established precedent.

Substantial evidence. Willis argued that the PTAB’s decision was supported by substantial evidence because Everstar’s expert, Dr. Fantone, testified that reinforced wires cost more than unreinforced wires. According to Willis, this testimony showed that Everstar’s proposed combination would not reduce costs. The Federal Circuit determined that Willis misrepresented Dr. Fantone’s testimony. Dr. Fantone did not testify that he expects that the proposed combination of Debladis ’120 and Kumada would cost more than Kumada itself. Instead, Dr. Fantone’s testimony is best understood as stating that a POSA would be motivated to reinforce a wire to increase its strength because, all else being equal (such as equal amounts of copper), a reinforced wire costs more than an unreinforced wire and a POSA would not increase cost unless they achieved another benefit.

The Federal Circuit also noted that precedent does not require that a patent challenger show that their proposed combination is “the best option, only that it be a suitable option.” Thus, even if a cheaper option may exist, that alone does not preclude a POSA from being motivated to combine Debladis ’120 and Kumada to reduce cost. In sum, substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120.

Accordingly, the Federal Circuit reversed the PTAB’s judgment that Everstar failed to establish the unpatentability of claim 1 of ’037 patent, vacated the PTAB’s judgment that Everstar failed to prove by a preponderance of the evidence that the remaining claims of the ’037 patent are unpatentable, and remanded the matter for further proceedings.

The Case is No. 23-1686.

Judge: Reyna, J.

Attorneys: Brenton R. Babcock (Sterlington, PLLC) for Everstar Merchandise Co Ltd. Patrick M. Arenz (Robins Kaplan LLP) for Willis Electric Co., Ltd.

Companies: Everstar Merchandise Co Ltd.; Willis Electric Co., Ltd.

Cases: Patent FedCirNews USPTO