Everstar Merchandise Co. Ltd. v. Willis Electric Co., Ltd.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EVERSTAR MERCHANDISE CO. LTD.,
Appellant
v.
WILLIS ELECTRIC CO., LTD.,
Appellee
______________________
2023-1686
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2019-
00056.
______________________
Decided: May 27, 2025
______________________
BRENTON R. BABCOCK , Sterlington, PLLC, New York,
NY, argued for appellant. Also represented by P RESTON
HAMILTON HEARD, Womble Bond Dickinson (US) LLP, At-
lanta, GA; BARRY J. HERMAN, Baltimore, MD.
EMILY ELIZABETH N ILES , Robins Kaplan LLP, Minne-
apolis, MN, argued for appellee. Also represented by
P ATRICK M. ARENZ, B RENDA L. J OLY .
______________________
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EVERSTAR MERCHANDISE CO. LTD. v.
WILLIS ELECTRIC CO., LTD.
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Before D YK, REYNA, and STARK, Circuit Judges.
REYNA, Circuit Judge.
Everstar Merchandise Co. Ltd. appeals the Patent
Trial and Appeal Board’s final decision in a post grant re-
view. The Board determined that Everstar failed to show
that a person of ordinary skill in the art would have been
motivated to combine the teachings of Kumada and
Debladis ’120 and thus Everstar failed to prove by a pre-
ponderance of the evidence that claims 1–33 of U.S. Patent
No. 10,222,037 are unpatentable. We hold that the Board
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 moti-
vated to combine Kumada and Debladis ’120. Accordingly,
we reverse-in-part, vacate-in-part, and remand.
BACKGROUND
I. ’037 Patent
Appellee Willis Electric Co., Ltd. (“Willis”) owns U.S.
Patent No. 10,222,037 (“’037 patent”), entitled “Decorative
Lighting With Reinforced Wiring.” ’037 patent, Title. The
’037 patent teaches a reinforced wire for decorative lighting
that includes a reinforcing strand comprising a polymer
material and a plurality of conductor strands, as well as an
outer insulating layer. Id. at Abstract. The ’037 patent
teaches that its invention provides superior tensile
strength and elongation properties over prior art decora-
tive lighting. Id. at 6:6–12.
Claims 1–33 are at issue on appeal. Claims 1, 21,
and 33 are independent claims, and claims 2–20 and 22–32
are dependent claims. The parties treat claim 1 as repre-
sentative of the issue on appeal. Claim 1 recites:
1. A strength-enhanced, net-like decorative light-
ing structure, comprising:
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a power plug configured to connect to an external
source of power;
a first power wire and a second power wire, each of
the first and second power wires connected to the
power plug; and
a plurality of light sets in electrical connection with
the power plug via the first power wire and the sec-
ond power wire, each light set defining an electrical
circuit, the plurality of light sets including a first
light set defining a first electrical circuit and a sec-
ond light set defining a second electrical circuit,
each of the plurality of light sets including:
a plurality of lamp assemblies, each lamp assembly
including a lamp element; and
a plurality of internally reinforced intermediate
wires electrically connecting the lamp assemblies,
each of the plurality of internally reinforced inter-
mediate wires including a plurality of conductors,
one or more reinforcing strands, and an outer insu-
lating layer surrounding the plurality of conduc-
tors and the one or more reinforcing strands; and
one or more non-wire support cords mechanically
connected to the first light set,
wherein the plurality of light sets in combination
with the one or more non-wire support cords define
a rectangular-shaped, net-like decorative lighting
structure.
Id. at 42:47–43:7 (emphasis added).
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II. Prior Art
There are two prior art references at issue on appeal:
Kumada1 and Debladis ’120.2 Kumada is entitled “Eco-
nomical Net or Mesh Light Set.” J.A. 1451, Title. Kumada
discloses a net light with a plurality of series-connected
light strings, each light string including a plurality of lamp
sockets and a plurality of intermediate lengths of wire con-
necting the lamp sockets, and at least one non-electrical
rope fastened to the lamp sockets, thereby forming a net or
mesh. J.A. 1451, Abstract. Kumada teaches that its de-
sign is economical because “[w]ire costs are perhaps the
most significant element in the cost of a net light,” and its
non-electrical ropes do not contain wire (also referred to as
“expensive copper”), rendering “both the light set and its
method of manufacture economical.” J.A. 1461, 2:50–51;
J.A. 1466, 11:3–16.
Debladis ’120 is entitled “Electrical Control Cable.”
J.A. 1509, Title. Debladis ’120 discloses a cable that has a
plurality of strands made of conductive material such as
copper surrounding a central core made of a multifilament
polymer, and an outer sheath made of insulating material.
J.A. 1513, 3:15–26. 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.” J.A. 1512, 1:52–54. To that end, one of the stated
goals of Debladis ’120 is to “reduce significantly the quan-
tity of copper that is used.” J.A. 1512, 1:62–64.
III. Procedural History
Appellant Everstar Merchandise Co. Ltd. (“Everstar”)
petitioned for post grant review of the ’037 patent, chal-
lenging claims 1–33. J.A. 173. The Patent Trial and Ap-
peal Board (“Board”) granted institution in 2020, J.A. 427,
1 U.S. Patent No. 6,367,951, J.A. 1451–67.
2 U.S. Patent No. 8,692,120, J.A. 1509–13.
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and in 2021 issued a final written decision ruling that
Everstar failed to show by a preponderance of the evidence
that the challenged claims are unpatentable. Everstar
Merch. Co. Ltd. v. Willis Elec. Co., Ltd., No. PGR2019-
00056, 2021 WL 653034 (P.T.A.B. Feb. 18, 2021). The
Board determined that Everstar had not shown a person of
ordinary skill in the art (“POSA”) would have been moti-
vated to combine the teachings of Kumada and Debladis
’120. Id. at *7–13. The Board ruled that Everstar failed to
show that increased strength and durability were a suffi-
cient motivation to combine the references and refused to
consider Everstar’s argument that reduced cost was a suf-
ficient motivation because the Board viewed this asserted
motivation as a new argument not presented in Everstar’s
petition. Id. at *9–13.
Everstar appealed the Board’s final written decision to
this court. On appeal, we vacated and remanded the
Board’s decision. Everstar Merch. Co. Ltd. v. Willis Elec.
Co., Ltd., No. 2021-1882, 2022 WL 1089909 (Fed. Cir.
Apr. 12, 2022) (Everstar I). Specifically, this court ruled
that “the Board abused its discretion when it refused to
consider whether cost reduction would have motivated a
skilled artisan to combine the asserted prior art” and in-
structed the Board on remand to consider whether a POSA
would be motivated to combine Kumada with Debladis ’120
in order to reduce cost. Id. at *1, *4.
On remand, the Board ruled that Everstar had not
shown a POSA would have been motivated to combine the
teachings of Kumada and Debladis ’120. J.A. 1–49. The
Board determined that Everstar failed to prove that a
POSA would be motivated to combine Kumada and
Debladis ’120 based on (1) increased strength and durabil-
ity, (2) reduced cost as a “complementary motivation” to
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increased strength and durability, or (3) reduced cost
alone. J.A. 26–36.3
Everstar appeals the Board’s ruling that it failed to
show a POSA would be motivated to combine Kumada and
Debladis ’120 based on reduced cost alone. Appellant
Br. 20 n.8. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
STANDARD OF REVIEW
This court reviews the Board’s compliance with govern-
ing legal standards de novo and its factual findings for sub-
stantial evidence. Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (citations omitted). Substantial
evidence is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Obvious-
ness is a question of law based on underlying findings of
fact, which include the “scope and content of the prior art,
differences between the prior art and the claims at issue,
the level of ordinary skill in the pertinent art, and any ob-
jective indicia of non-obviousness.” Randall Mfg. v. Rea,
733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966)). “The presence or ab-
sence of a motivation to combine references in an obvious-
ness determination is a pure question of fact.” Par Pharm.,
Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196
(Fed. Cir. 2014) (citation omitted).
3 The Board’s conclusion that Everstar failed to show
that claim 1 was unpatentable was predicated exclusively
on its determination that Everstar failed to establish a mo-
tivation to combine. Willis conceded that the “combined
teachings of Kumada and Debladis ’120 disclose each limi-
tation of claim 1.” J.A. 17.
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D ISCUSSION
Everstar argues that the Board applied the wrong legal
standard to prove a motivation to combine by requiring
Everstar to quantify resulting material properties of its
proposed combination. Appellant Br. 28–29. Everstar fur-
ther argues that substantial evidence can lead to only one
reasonable conclusion on the factual record of this case: A
POSA would have been motivated to combine Kumada and
Debladis ’120 based on reduced cost. Id. at 30. We agree
with both arguments.
I
In its brief analysis of reduced cost, the Board stated
that proving Everstar’s proposed motivation would “at
least require evidence comparing the amount of copper
used in Kumada’s system with the amount of copper used
in [Everstar]’s proposed modified system.” J.A. 34. With
this requirement in mind, the Board considered Everstar’s
arguments and evidence about why a POSA would under-
stand Everstar’s proposed combination to reduce the
amount of copper in Kumada and thus reduce Kumada’s
cost. J.A. 34–36. As discussed in greater detail below,
Everstar provided substantial evidence that its proposed
combination would reduce the amount of copper in Ku-
mada, and Willis conceded this point on appeal. See infra
Discussion Section II. Nonetheless, the Board deemed
Everstar’s arguments and evidence “deficien[t]” due to the
“lack of information comparing the amount of copper” be-
tween various systems, including because Kumada does
not discuss the amount of copper in the wires of its system.
J.A. 35. The Board concluded that Everstar failed to show
that a POSA would be motivated to combine Kumada and
Debladis ’120 based on reduced cost. J.A. 36.
To the extent that the Board required Everstar to pre-
cisely quantify the amount of copper reduction provided by
its proposed combination of Kumada and Debladis ’120,
this was legally incorrect. An obviousness analysis,
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including whether a motivation to combine exists, is “ex-
pansive and flexible.” KSR, 550 U.S. at 415. One way our
precedent frames the motivation to combine analysis is
that a patent challenger need only “show that there was a
known problem” in the art, that the prior art at issue
“helped address that issue,” and that combining the teach-
ings of the prior art references at issue was not beyond the
skill of an ordinary artisan. Intel Corp. v. PACT XPP
Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Once a
patent challenger has made these showings, “[n]othing
more is required to show a motivation to combine under
KSR.” Id. As such, we have not previously required any
general rule that a patent challenger must quantify the
precise amount of benefit achieved by their proposed com-
bination of prior art. Notably, the Board did not cite any
precedent to support the quantification requirement it ap-
pears to have imposed on Everstar. Nor do the claims at
issue here require any certain quantity or reduction in
quantity of copper. Axonics, Inc. v. Medtronic, Inc.,
73 F.4th 950, 957 (Fed. Cir. 2023) (“The proper inquiry is
whether the relevant artisan would be motivated to make
the combination to arrive at the claims’ actual limita-
tions.”). We reject any precise quantification requirement
as overly rigid and inconsistent with well-established prec-
edent.
II
Under the correct legal standard and on this factual
record, substantial evidence supports only one conclusion
as to whether reduced cost would motivate a POSA to com-
bine Kumada and Debladis ’120. Accordingly, there is no
need for this court to vacate and remand this issue to the
Board. See Corning v. Fast Felt Corp., 873 F.3d 896,
901–02 (Fed. Cir. 2017).
Before the Board, Everstar argued that Kumada and
Debladis ’120 both sought to reduce cost by reducing the
amount of copper in their systems. J.A. 660; J.A. 664;
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J.A. 671. Kumada and Debladis ’120 support this ra-
tionale, as does Willis’s characterizations of Kumada and
Debladis ’120 before the Board. J.A. 1461, 2:50–51;
J.A. 1466, 11:3–16; J.A. 1512, 1:52–54, 1:62–64; J.A. 385–
86 (Willis stating that Kumada relates to forming a “more
economical” net light; Debladis ’120 provides a solution
with a “reduced number of copper strands”). Everstar also
argued that a POSA would understand that using Debladis
’120 with Kumada’s net light would “allow for the use of a
single conductor 22 AWG wire” rather than “a twisted con-
ductor 22 AWG wire or a single conductor 18 AWG wire,”
which both contain more copper than a single conductor 22
AWG wire. J.A. 673. Everstar provided expert testimony
from several experts in support of the foregoing argument.
See, e.g., J.A. 2417–18 (Dr. Fantone identifying reduced
cost resulting from reducing the amount of copper as a mo-
tivation and citing Kumada and Debladis ’120); J.A. 2422
(same); J.A. 2437–38 (Mr. Proper identifying reduced cost
as a commercial advantage); J.A. 2462–64 (Mr. Wong iden-
tifying reduced cost resulting from reducing the amount of
copper as a motivation). Willis acknowledges on appeal
that much of Everstar’s evidence as to whether a POSA
would be motivated to combine Kumada and Debladis ’120
based on reduced cost alone is “not directly rebutted.” Ap-
pellee Br. 45 n.1.
Despite this argument and evidence, the Board ruled
that Everstar had failed to show that “the proposed modi-
fication or combination of Debladis ’120 and Kumada
would reduce the amount of copper in Kumada’s system.”
J.A. 34. Setting aside the legal error identified above, Wil-
lis’s counsel conceded at oral argument that the proposed
combination of Debladis ’120 and Kumada would in fact re-
duce the amount of copper in Kumada alone. Oral
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Arg. 19:06–21:05.4 Thus, Willis concedes that the Board’s
primary reason to reject Everstar’s motivation to combine
argument based on reduced cost is factually unsupported.
Willis argues that the Board’s decision is nonetheless
supported by substantial evidence because one of Ever-
star’s experts, Dr. Fantone, testified that reinforced wires
cost more than unreinforced wires. According to Willis,
this testimony shows that Everstar’s proposed combination
would not reduce costs. We disagree for two reasons.
First, Willis misrepresents Dr. Fantone’s testimony.
Dr. Fantone did not testify that he expects that the pro-
posed combination of Debladis ’120 and Kumada would
cost more than Kumada itself. Instead, Dr. Fantone’s tes-
timony addressed whether a POSA would be motivated by
Everstar’s increased strength rationale, which is not at is-
sue on appeal. With that in mind, Dr. Fantone’s testimony
is best understood as stating that a POSA would be moti-
vated 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 an-
other benefit. This is consistent with the context of
Dr. Fantone’s testimony:
A. Well, the issue of strength in claim 1 of the ’037
patent, they talk about using internally reinforced
intermediate wires, so there must have been a rea-
son to reinforce those wires.
Q. And what would that reason be?
A. They wanted to strengthen the wires.
4 Available at https://oralarguments.cafc.uscourts.
gov/default.aspx?fl=23-1686_04092025.mp3.
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Q. Sure. But does that mean that the wires are in-
sufficient for their intended function?
A. Well, they must have gotten something out of it
because I would expect that reinforced wires cost
more than unreinforced wires. And, I mean, there’s
a reason why the inventor did that.
J.A. 3045 (51:7–18) (emphasis added); see J.A. 2422.
Second, Willis’s argument is at most that a cheaper op-
tion may exist, i.e., an unreinforced wire. Our precedent
does not require that a patent challenger show that their
proposed combination is “the best option, only that it be a
suitable option.” Par Pharm., 773 F.3d at 1197–98 (citation
omitted). 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 conclu-
sion that a POSA would have been motivated to combine
the teachings of Kumada and Debladis ’120. The factual
record and Willis’s concession on appeal conclusively estab-
lish that the cost of copper was a known problem in the art,
Debladis ’120 (and Kumada) helped address that issue, and
Willis has not disputed that combining the teachings of Ku-
mada and Debladis ’120 was within the skill of an ordinary
artisan. Nothing more is required to establish a motivation
to combine. Intel, 61 F.4th at 1381. Given that Willis has
conceded that the combination of Kumada and Debladis
’120 disclose all the limitations in claim 1, J.A. 17, we re-
verse the Board’s patentability determination as to that
claim and vacate the Board’s judgment as to the remaining
claims of the ’037 patent.5
5 Willis suggests that its proffered secondary consid-
erations support the Board’s finding of nonobviousness as
to claim 1. Appellee Br. 54. The cited evidence consists
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CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons stated, we
reverse the Board’s judgment that Everstar failed to estab-
lish the unpatentability of claim 1, vacate the Board’s judg-
ment that Everstar failed to prove by a preponderance of
the evidence that the remaining claims of the ’037 are un-
patentable, and remand for further proceedings consistent
with this opinion.
REVERSED-IN-PART, VACATED-IN-PART,
AND REMANDED
COSTS
Costs against Willis.
only of a temporal connection between the introduction of
Willis’s invention and the UL 588 standards, and deposi-
tion testimony of a single witness who seemingly dis-
claimed any connection between the two. See J.A. 2360.
This is not sufficient to rescue a claim as to secondary con-
siderations.
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