       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

       WILLIS ELECTRIC COMPANY, LTD.,
                  Appellant

                           v.

         POLYGROUP MACAU LTD. (BVI),
                 Cross-Appellant
             ______________________

                 2018-2125, 2018-2151
                ______________________

    Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
00309.
                 ______________________

                 Decided: July 1, 2019
                ______________________

   LARINA ALTON, Fox Rothschild LLP, Minneapolis, MN,
argued for appellant.

   ROBERT A. ANGLE, Troutman Sanders LLP, Richmond,
VA, argued for cross-appellant. Also represented by
DABNEY JEFFERSON CARR, IV, CHRISTOPHER FORSTNER,
LAURA ANNE KUYKENDALL; DOUGLAS SALYERS, Atlanta,
GA.
               ______________________
2   WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.
                                                    (BVI)



       Before PROST, Chief Judge, LOURIE and DYK,
                     Circuit Judges.
PROST, Chief Judge.
     Willis Electric Co., Ltd. (“Petitioner”) appeals from the
Patent Trial and Appeal Board’s (“the Board”) final deci-
sion on inter partes review upholding the patentability of
claims 2–3 and 5–10 of U.S. Patent No. 8,863,416 (“the ’416
patent”). Willis Elec. Co. v. Polygroup Macau Ltd. (BVI),
No. IPR2017-00309, Paper 47 (P.T.A.B. May 7, 2018). Pol-
ygroup Macau Ltd. (BVI) (“Patent Owner”) cross-appeals
from the Board’s decision invalidating claims 1 and 4 of the
’416 patent as obvious. Id. We affirm the Board’s decision
as to claims 1 and 4. We vacate, however, the Board’s de-
cision as to claims 2–3 and 5–10 and remand for further
consideration.
                       BACKGROUND
     The ’416 patent includes ten claims directed to electric
artificial trees. ’416 patent col. 2 ll. 27–30. Decorating
trees, a widely held holiday tradition, often includes drap-
ing multiple light strands on tree branches and using elec-
tricity to illuminate the light bulbs. Id. col. 6 ll. 57–60.
Conventionally, multiple light strands lie in series, with
one strand connecting to the wall outlet and providing elec-
tricity to each consecutive strand. Id. col. 6 ll. 59–62. Ac-
cording to the patent, some decorators find powering light
strands in this manner frustrating and cumbersome, as it
requires attaching the light strands before or after placing
them on the tree. Id. col. 7 ll. 11–13. Prior attachment
requires repeatedly circling the tree with trailing light
strands. Id. col. 7 ll. 16–19. And delayed attachment en-
tails reaching through tree branches to electrically connect
the light strands. Id. col. 7 ll. 19–22.
    To alleviate difficulties associated with powering light
strands on conventional artificial trees, the ’416 patent
WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.        3
(BVI)


contemplates incorporating power transfer subsystems
(“PTS”) into neighboring tree-trunk sections. Id. col. 7 ll.
26–29. The trunk sections are mechanically connected,
which in turn facilitates an electrical connection between
the male end of the first trunk section’s PTS and the female
end of the second trunk section’s PTS. Id. col. 7 ll. 37–41.
The PTS’s female end comprises “a central void for receiv-
ing [an inner] male prong of the male end and a channel
void disposed around the central void for receiving [an
outer] male prong.” Id. col. 7 l. 65–col. 8 l. 2. The PTS
connects to a power outlet, enabling electricity to flow from
the outlet to each tree-trunk section. Id. col. 7 ll. 41–44.
The central void contains a spring-activated contact, which
presses against the central male prong to maintain the
electrical connection between the tree-trunk sections. Id.
col. 13 ll. 19–23.
    Representative claim 1 recites the above-described fea-
tures.
    An artificial tree, comprising:
    a plurality of tree trunk sections, the trunk sections
    forming a trunk of the artificial tree;
    a first power distribution subsystem disposed
    within an inner void of a first trunk section of the
    plurality of tree trunk sections, the first power dis-
    tribution subsystem comprising a male end, the
    male end having a central prong and a channel
    prong; and
    a second power distribution subsystem disposed
    within an inner void of a second trunk section of
    the plurality of tree trunk sections, the second
    power distribution subsystem comprising a female
    end, the female end having a central void and a
    channel void, the central void having a contact de-
    vice disposed at least partially therein, the contact
4   WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.
                                                    (BVI)


    device comprising one or more spring activated
    contact sections;
    wherein the central prong of the male end is con-
    figured to engage the central void of the female end
    and the channel prong of the male end is configured
    to engage the channel void of the female end to con-
    duct electricity between the first power distribu-
    tion subsystem and the second power distribution
    subsystem; and
    wherein, when the central prong engages the cen-
    tral void, the central prong pushes a spring acti-
    vated contact section of the one or more spring
    activated contact sections causing the spring acti-
    vated contact section to press against the central
    prong to maintain electrical contact between the
    central prong and the contact device.
Id. col. 15 l. 58–col. 16 l. 25 (emphasis added).
                              I
    Petitioner challenged various claims of the ’416 patent
in inter partes review on three independent grounds. The
Board instituted trial on two of the three: (1) Chen 1 in view
of McLeish 2 for claims 1–10 and (2) Otto 3 in view of
McLeish for claims 1–4 and 8–10. The Board found that,
under its claim construction, Chen’s nonprovisional disclo-
sure failed to disclose a “channel void.” However, the
Board found that Chen’s provisional did disclose the “chan-
nel void” limitation and rendered claims 1 and 4



    1   U.S. Patent No. 8,454,186, which includes a
nonprovisional disclosure and properly incorporates by ref-
erence Provisional Application No. 61/385,751 (“provi-
sional disclosure”).
    2   U.S. Patent No. 7,066,739.
    3   German Patent Publication No. DE8436328.
WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.      5
(BVI)


unpatentable. Further, the Board upheld the patentability
of claims 2–3 and 5–10 because it determined that Peti-
tioner failed to establish that the Chen-McLeish and Otto-
McLeish combinations rendered those claims obvious.
                             II
    Petitioner appealed the Board’s construction of “chan-
nel void”. Appellant’s Br. 26–29. Petitioner further ap-
pealed the Board’s determination that Petitioner failed to
establish (1) that Chen’s nonprovisional disclosure com-
bined with McLeish rendered obvious dependent claims 2–
3 and 5–10, (2) that Chen’s provisional disclosure combined
with McLeish rendered obvious dependent claims 2–3 and
5–10 and (3) that the Otto-McLeish combination rendered
obvious claims 2–3 and 10. Id. at 24–25.
    Patent Owner cross-appealed, arguing that substantial
evidence does not support the Board’s decision to invalidate
claims 1 and 4 as obvious in view of the Chen provisional
disclosure combined with McLeish.
   We have jurisdiction over the appeal and cross-appeal
under 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
                              I
    We begin our discussion with the Petitioner’s appeal.
We first address the Board’s claim construction then turn
to the Board’s obviousness determinations.
                             A
    The Board adopted Patent Owner’s proposed construc-
tion of “channel void,” which requires a “hollow aperture
disposed within a portion of the female end, which may be
substantially circular, offset from the central void and con-
figured to receive and engage a portion of the male end.”
J.A. 8–9 (emphasis added).
6   WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.
                                                    (BVI)


    “We review the Board’s constructions based on intrin-
sic evidence de novo and its factual findings based on ex-
trinsic evidence for substantial evidence.” HTC Corp. v.
Cellular Commc’ns Equip., LLC, 877 F.3d 1361, 1367 (Fed.
Cir. 2017).
    On appeal, Petitioner argues, as it did before the
Board, that the channel void need not be disposed within
the female end. J.A. 8; Appellant’s Br. 26–28. According
to Petitioner, “the claim language only states that [the fe-
male end] ‘has’ a void” and “[a] structure can ‘have’ a circu-
lar void without having an exterior boundary.” Appellant’s
Br. 28. Thus, in Petitioner’s view, a “tree trunk (or any
other external wall) is sufficient to define the external pe-
rimeter of the channel void.” Id. at 26. We disagree.
    “In construing patent claims, there is a heavy presump-
tion that the terms carry their ordinary and customary
meanings as would be understood by one of ordinary skill
in the art.” Goldenberg v. Cytogen, Inc., 373 F.3d 1158,
1164 (Fed. Cir. 2004). Here, it appears undisputed that
“channel void” itself does not have any special meaning in
the art. See J.A. 7. We therefore turn first to the intrinsic
evidence. See Goldenberg, 363 F.3d at 1164 (“Where a
claim term has no ordinary and customary meaning, a
court must resort to the remaining intrinsic evidence . . . to
obtain the meaning of that term.”).
    The intrinsic evidence supports the Board’s construc-
tion. The claims recite “a second power distribution sub-
system disposed within an inner void of a second trunk
section of the plurality of tree trunk sections, the second
power distribution subsystem comprising a female end
having . . . a channel void.” ’416 patent col. 16 ll. 6–10 (em-
phases added). Petitioner’s construction, however, does not
delineate between two separately recited elements—the
“inner void” of the second trunk section and the “channel
void” of the female end. Yet “[w]here a claim lists elements
separately, ‘the clear implication of the claim language’ is
WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.        7
(BVI)


that those elements are ‘distinct component[s]’ of the pa-
tented invention.” Becton, Dickinson & Co. v. Tyco
Healthcare Grp., 616 F.3d 1249, 1254 (Fed. Cir. 2010)
(quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed.
Cir. 2004)). Nothing in the claims suggest that “inner void”
and the “channel void” can coexist as the same element.
     A construction that leaves the boundaries of the
claimed female end undefined, as Petitioner’s construction
does, also fails to appreciate and give full effect to express
claim language. Claim 1 recites “the female end having
a . . . channel void,” ’416 patent col. 16 ll. 9–10, and “the
channel void of the female end,” id. col. 16 l. 17. These
claim limitations indicate that the channel void is an ele-
ment of the female end. Contrary to Petitioner’s position,
properly construing “channel void” thus requires determin-
ing the physical boundaries of the female end.
     The specification reinforces our claim analysis. As dis-
closed, “the channel void is circular,” id. col. 2 l. 57, which
implies that the channel void must have a circular outer
boundary. Further, the specification suggests that the re-
cited channel void lies within the female end. According to
the specification, “use of terms such as ‘having’ or
‘has’ . . . are intended to have the same meaning as terms
such as ‘comprising’ or ‘comprises.’” Id. col. 6 ll. 13–17. The
term “comprising” is synonymous with “containing.” Mars,
Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1375 (Fed. Cir. 2004)
(citing Webster’s Third New Int’l Dictionary at 491 (2002)).
And “[t]he ordinary meaning of ‘contain’ is ‘to have within.’”
Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1374 (Fed.
Cir. 2002) (emphasis added) (citing Webster’s Third New
Int’l Dictionary at 490–491 (1966)).
    In addition, as the Board noted, “[t]here is no dispute
that each embodiment of the ’416 patent shows the [female
end] is a component separate and distinct from the tubular
structure defining the body of the various ‘tree trunk sec-
tions.’” J.A. 9. In each disclosed embodiment, moreover,
8   WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.
                                                    (BVI)


the channel void exists within the outer boundary of the
female end. Although “particular embodiments appearing
in the specification will not generally be read into the
claims,” Specialty Composites v. Cabot Corp., 845 F.2d 981,
987 (Fed. Cir. 1988), they may corroborate a particular con-
struction, see Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 907 (Fed. Cir. 2004).
    Besides intrinsic evidence, the Board also relied on ex-
trinsic evidence to construe “channel void.” Patent Owner’s
expert, Dr. Lebby, testified that “the channel void includes
actual structure of the ‘female end,’ and is not simply air or
space,” as Petitioner’s expert, Dr. Durfee, testified. J.A. 8–
9. Substantial evidence supports the Board’s decision to
credit Patent Owner’s expert over Petitioner’s expert.
     Petitioner argues that under its proposed claim con-
struction, the combination of Chen’s nonprovisional disclo-
sure and McLeish discloses a “channel void” and renders
claims 2–3, and 5–10 obvious. Because we see no error
with the Board’s claim construction, as explained above, we
disagree with Petitioner’s position. Substantial evidence
therefore supports the Board’s finding that Petitioner
failed to establish by a preponderance of the evidence that
the Chen nonprovisional in view of McLeish renders claims
2–3, and 5–10 obvious.
                              B
    Using the construction of “channel void” adopted by the
Board, the Board invalidated claims 1 and 4 as obvious but
upheld the patentability of dependent claims 2–3 and 5–
10, finding that Petitioner failed to sufficiently establish
obviousness as to those claims.
    “Obviousness is a question of law based on underlying
factual findings.” Impax Labs., Inc. v. Lannett Holdings
Inc., 893 F.3d 1372, 1378 (Fed. Cir. 2018). “We review the
Board’s ultimate legal determination of obviousness de
novo and its underlying factual findings for substantial
WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.       9
(BVI)


evidence.” Paice LLC v. Ford Motor Co., 881 F.3d 894, 900
(Fed. Cir. 2018).
    Petitioner argues that, even under the Board’s con-
struction, the Board erroneously upheld the patentability
of dependent claims 2–3 and 5–10. The Board found that
“Petitioner offer[ed] no specific contentions with respect to
[those claims] in connection with the teachings of the pro-
visional application’s disclosure.” J.A. 25. We agree with
Petitioner that substantial evidence does not support the
Board’s finding.
    At the outset, the Petition expressly provides that “[a]ll
argument and citation for each claim and limitation from
Chen Ground 1, above, is hereby incorporated and com-
bined with [the Ground 2] arguments.” J.A. 90. Ground 1
challenged claims 1–4 and 6–10 as obvious in view of
Chen’s nonprovisional and provisional disclosures, treated
as a single reference. J.A. 43. Ground 2 asserted that the
Chen disclosures in view of McLeish rendered claims 1–10
obvious. Id. Having determined that the provisional ap-
plication is part of Chen’s nonprovisional disclosure, the
Board was required to conclude that Chen, as a whole,
teaches a “channel void,” and then determine whether it
would have been obvious to incorporate the additional ele-
ments of the dependent claims, such as a power cord, based
on the combined disclosure of the Chen nonprovisional and
Chen provisional.
    To the extent that different embodiments of Chen
would need to be combined to render the dependent claims
obvious, the Board overlooked certain rationales to com-
bine provided in the Petition. For example, the Petition
asserts that a skilled artisan would include an outlet dis-
posed on the trunk section, as recited in claim 6, “to provide
power to a strand of lights.” J.A. 86. In another example,
the Petition alleges that a skilled artisan would add align-
ment mechanism, as recited in claim 7, “to make the as-
sembled tree more convenient to a consumer, as the tree
10 WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.
                                                   (BVI)


portions will not spin, disrupting decorations or other
adornments of the tree.” J.A. 87.
    The Board erred in determining that the Petition
lacked discussion of any “particular combination or modifi-
cation,” J.A. 25, without considering these and other pro-
posed motivations to combine articulated in the Petition.
    We therefore vacate the Board’s decision as to depend-
ent claims 2–3 and 5–10 and remand for the Board to re-
consider whether these claims are obvious based on the en-
tirety of Chen.
                             II
   We next turn to Patent Owner’s cross-appeal. Patent
Owner argues that substantial evidence does not support
the Board’s determination invalidating claims 1 and 4 as
obvious in view of Chen’s provisional disclosure combined
with McLeish. According to Patent Owner, the Petition
lacked evidence showing that a skilled artisan would have
been motivated to add the claimed spring-activated con-
tacts to the Chen provisional’s connector. Cross-Appel-
lant’s Br. 70. We disagree.
    The Petition expressly incorporates by reference argu-
ments from preceding sections of the Petition, contending
that skilled artisans “would find it obvious to employ
spring-activated-contact sections in the contact device and
recognize how such connections function . . . to maintain
electrical contact between the central prong and the con-
tact device.” J.A. 83. Those incorporated sections set forth
several rationales for including spring-activated contacts—
for example, “to secure a reliable electrical connection” and
“to prevent arcing.” J.A. 75, 79. Substantial evidence sup-
ports the Board’s finding that “one skilled in the art would
have found it obvious to utilize a spring-activated contact
in the provisional application.” J.A. 22–23.
    Finally, Patent Owner’s challenge to the physical in-
corporation of a spring-activated contact into the Chen’s
WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.      11
(BVI)


provisional’s connector, and its functionality, is likewise
unavailing. Well-established law dictates that “[t]he test
for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of
the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the refer-
ences. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary
skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981).
    In sum, we reject each of Patent Owner’s arguments on
cross-appeal. Substantial evidence, in our view, supports
the Board’s determination that Chen’s provisional disclo-
sure combined with McLeish renders claims 1 and 4 obvi-
ous.
                        CONCLUSION
     For the foregoing reasons, we affirm the Board’s con-
struction of “channel void” and its determination invalidat-
ing claims 1 and 4 as obvious. We vacate, however, the
Board’s decision upholding the patentability of claims 2–3
and 5–10 and remand with instructions to consider the va-
lidity of those claims in view of the asserted prior art. Con-
sistent with this decision, we need not reach Petitioner’s
alternate argument on appeal that Otto in view of McLeish
renders claims 2–3 and 10 obvious. 4




    4    Oral   Arg.    at     3:08–53,    No.    2018-2125,
http://www.cafc.uscourts.gov/oral-argument-recordings.
(Q: “If we were, hypothetically, to agree with you [that the
Board’s decision needs to be remanded because the Board
erroneously did not consider the provisional disclosure of
Chen], are there still some dependent claims left unre-
solved that are affected by . . . the combination of Otto and
McLeish”? A: “No.”); Oral Arg. at 3:56–4:09 (Q: “So what
12 WILLIS ELECTRIC COMPANY, LTD. v. POLYGROUP MACAU LTD.
                                                   (BVI)


  AFFIRMED-IN-PART, VACATED-IN-PART, AND
                REMANDED
                          COSTS
   The parties shall bear their own costs.




was the relevance of the Otto reference”? A: “Well, it’s an
alternative argument, Your Honor.”).
