       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

           POLYGROUP LIMITED MCO,
                  Appellant

                           v.

       WILLIS ELECTRIC COMPANY, LTD.,
                     Appellee
              ______________________

                      2018-2137
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
01781, IPR2016-01782.
                 ______________________

                 Decided: July 1, 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 LIMITED MCO v. WILLIS ELECTRIC COMPANY,
                                                      LTD.


        Before PROST, Chief Judge, LOURIE and DYK,
                      Circuit Judges.
PROST, Chief Judge.
    Polygroup Limited MCO (“Polygroup”) appeals from
the final written decision of the Patent Trial and Appeal
Board (“the Board”) in an inter partes review upholding the
patentability of claims 1–5, 7, 8, 11, 12, 15–18 and 21–27.
Because substantial evidence does not support the Board’s
finding that Polygroup failed to establish a rationale to
combine the prior art, we vacate and remand.
                       BACKGROUND
    Willis Electric Co., Ltd. (“Willis”) owns U.S. Patent No.
8,974,072 (“the ’072 patent”), covering pre-lit artificial
trees with mechanically and electrically connectable tree
portions. ’072 patent col. 1 ll. 14–18. Polygroup petitioned
for inter partes review, alleging that Miller 1 in view of
Yang 2 and Patry 3 rendered claims 1, 2, 11, 12, 15–18 and
21–27 obvious under 35 U.S.C § 103, and claims 3–5, 7, and
8 obvious under the Miller-Yang-Patry combination plus
additional prior art. The petitions also explicitly argued
that Miller alone teaches every element of many of the
challenged claims. The Board instituted review on all chal-
lenged claims.
     Two of the three administrative judges on the Board’s
panel (“the Majority”) ultimately upheld the challenged
claims, finding that (1) under its construction, Miller failed
to teach a “tree portion” and (2) Polygroup failed to provide
sufficient rationale to combine Miller, Yang, and Patry.
The lone dissenting judge wrote separately, opining that
the Majority misconstrued “tree portion” and consequently



    1   U.S. Patent No. 4,020,201.
    2   U.S. Patent No. 7,132,139.
    3   U.S. Patent No. 3,602,531.
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,           3
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erred in finding that Miller failed to teach a “tree portion.”
He also disagreed with the Majority’s determination that
Polygroup failed to show a motivation to combine by a pre-
ponderance of the evidence.
    Polygroup appealed the Board’s decision. We have ju-
risdiction under 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
    Polygroup argues that the Board misconstrued “tree
portion.” Appellant’s Br. 35–48. But because we have al-
ready decided that issue in Polygroup’s favor in a previous
appeal concerning U.S. Patent No. 8,454,186, a parent of
the ’072 patent, that argument has been resolved against
Willis as a matter of collateral estoppel. 4 Polygroup Ltd.
MCO v. Willis Elec. Co., 759 F. App’x 934, 940 (Fed. Cir.
2019) (No. 2018-1745). Polygroup also argues that Miller
alone renders many of the challenged claims obvious and
that the Board declined to consider Miller alone. This issue
has also been resolved against Willis as a matter of collat-
eral estoppel. Id. at 942–43. Thus, on remand in this case,
the Board must consider Polygroup’s arguments based on
Miller alone and reconsider its obviousness determination
consistent the proper construction of “tree portion.”
   Polygroup also challenges the Board’s motivation to
combine determination. It advances three independent ar-
guments, but we need address only two of them to resolve


    4   Although Polygroup notified us that it anticipated
an earlier decision in Appeal No. 2018-1745 would control
the “tree portion” construction issue in this appeal, see Ap-
pellant’s Br. 1, we expected more. Pertinent and signifi-
cant authority came to the parties’ attention after the
briefing in this appeal concluded, yet both parties failed to
notify the Panel about this occurrence. Rule 28(j) contem-
plates the submission of such supplemental authority.
Fed. R. App. P. 28(j).
4       POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,
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this appeal: Substantial evidence does not support the
Board’s findings as to motivation to combine, and the
Board applied the law of obviousness too narrowly. 5 Ap-
pellant’s Br. 55–71.
    Obviousness is a legal question based on underlying
facts. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
(Fed. Cir. 2013). We review the Board’s legal determina-
tions de novo and its underlying factual findings for sub-
stantial evidence. Id. Whether there was a motivation to
combine references is a fact question. See Intelligent Bio-
Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
68 (Fed. Cir. 2016).
     Each ground of unpatentability includes either Miller
alone, or the combination of Miller, Yang, and Patry. The
Board found that Miller discloses an artificial tree with
“male and female plugs inside the tree trunk that [couple
to] allow electricity to travel between trunk sections.”
J.A. 16. Instead of plugs, Yang facilitates electricity flow
between trunk sections with male and female connectors
fitted within the trunk sections, such that “when the trunk
sections are mated, the electrical connection is also made.”
J.A. 16–17. The Board acknowledged that “[u]nlike the ar-
tificial tree in Miller, which must have the loose electrical
plugs connected prior to connecting the trunks, Yang’s de-
sign provides for a concurrent mechanical and electrical
connection to be made.” J.A. 17–18.
    To secure the male and female connectors within the
trunk sections, Yang contemplates a snap-fit connection.
Flexible plates with corresponding protrusions face oppo-
site directions on the outer side of each connector and fit



    5   We need not reach Polygroup’s other argument on
appeal that the Board violated Polygroup’s rights under
the APA by considering arguments, for the first time in its
final written decision, that Willis never made.
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,          5
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into locating holes in the outer wall of each trunk section.
See J.A. 16–17. In the Board’s view, Polygroup “propose[d]
to eliminate the snap-fitting portion of the connector of
Yang . . . and convert it into a ‘compression-fitted tapered
connector’ as allegedly taught in Patry.” J.A. 18. The
Board found that Patry teaches a “tubing coupler for se-
curely and permanently coupling two tubes,” the coupler
having “a tapered body to help obtain a friction fit.”
J.A. 18–19.
     Polygroup argued before the Board that a person of or-
dinary skill in the art (“POSITA”) would have been moti-
vated to incorporate the tapered compression-fitted
connectors of Patry into the Miller-Yang design for six dis-
tinct reasons. First, “to improve the fit of the connectors
inside Miller’s trunk members without needing [Yang’s] lo-
cating tabs or other alignment devices.” J.A. 180. Second,
to “ease manufacturing while maintaining resilience in the
mounting of the connection.” J.A. 182. Third, to “promote
insertion into the tubular sections and allow[] the con-
nector to be compressed into the same.” Id. Fourth, “to
seal the tubes from debris.” Id. Fifth, “to allow assembly
of the connectors into the trunk portions while preventing
the connector from dropping through the entire trunk seg-
ment.” J.A. 182–83. And finally, to “allow for an effective
insertion” even if “a trunk member is manufactured
slightly too large or too small.” J.A. 183.
    Polygroup further contended that “compression-fit con-
nectors were known alternatives to Yang’s snap-fit con-
nectors,” J.A. 182, and the “modification would have been
a substitution of one known element for another to obtain
predictable results . . . [that would have been obvious to
try] in light of the finite number of solutions identified in
the prior art teachings with a reasonable expectation of
success,” J.A. 183.
    The Board nonetheless rejected all of Polygroup’s pro-
posed rationales. In the Board’s view, because Patry
6       POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,
                                                     LTD.


teaches tapered connectors for mechanically joining two
tubes, Polygroup provided insufficient evidence that a
POSITA would have tapered electrical connectors to join
electrical components inside two tubes. J.A. 22–23. Alt-
hough Polygroup’s expert opined otherwise, the Board re-
mained unpersuaded that tapered, compression-fit
electrical connectors and snap-fit electrical connectors
were known alternatives to each other. J.A. 23–25. Ac-
cording to the Board, the prior art references on which Pol-
ygroup’s expert relied “all belie [Polygroup’s] assertions
and its expert’s opinions that it was known to use a [com-
pression-fit] electrical connector in the manner proposed in
the combination.” J.A. 25.
    The Board further rejected Polygroup’s argument that
tapering eases manufacturing and assembly. It first ques-
tioned whether such concerns would sufficiently motivate
a POSITA to convert Yang’s snap-fit connector into what it
characterized as “an entirely new type of connector.” J.A.
28. It next determined that Polygroup’s evidence and tech-
nical reasoning failed to support the proposition that the
modified design is easier to manufacture and assemble
than Yang’s design. See J.A. 28–29.
    Lastly, because Polygroup’s proposed modification re-
quires pushing the compression-fit connectors into the
trunk sections, the Board expressed concern that “one plug
may be pushed further back into the tube (e.g., due to the
force of mating the electrical plugs) and no longer be
properly located to permit the electrical connection.”
J.A. 30. Recognizing that several prior art references teach
physical protrusions for retaining connectors at certain lo-
cations, the Board concluded that “[Polygroup’s] proposal
to use a [compression-fit] connector without such an ob-
struction diverges from the art” and “further indicat[es]
that the proposed combination would not have been obvi-
ous.” J.A. 31.
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,           7
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     Substantial evidence does not support the Board’s find-
ings. As an initial matter, the Board appears to have mis-
understood Polygroup’s proposed rationale for tapering
Yang’s electrical connectors. Polygroup explained that the
proposed “fitted connector arrangement advantageously al-
lows a user to simultaneously electrically connect and me-
chanically couple the trunk sections.” J.A. 180 (Petition)
(emphasis added). So, the Board’s distinction between a
tapered connector for joining two tubes and a tapered con-
nection for joining electrical components inside two tubes
is inapplicable here.
    Moreover, the Board’s finding that Polygroup’s modifi-
cation does not use a tapered connector in the same way
that Patry teaches, see J.A. 22, contradicts its earlier find-
ing that “[t]he coupler of Patry has . . . a tapered body to
help obtain a [compression-fit],” J.A. 19, and Polygroup’s
proposed modification “convert[s]” Yang’s snap-fit con-
nector “into [Patry’s] ‘compression-fitted tapered con-
nector,’” J.A. 18. We do not regard such internally
inconsistent findings as supported by substantial evidence.
See Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A.
De C.V., 865 F.3d 1348, 1354 (Fed. Cir. 2017) (finding the
Board’s analysis flawed due to internal inconsistencies).
     Next, the Board applied the law of obviousness too nar-
rowly when analyzing Polygroup’s ease of manufacturing
and assembly rationales. While the Board explained its
finding that the prior art on which Polygroup’s expert re-
lied did not support easier manufacture and assembly, the
Board failed to consider other acceptable sources of moti-
vation. “[E]vidence of a motivation to combine need not be
found in the prior art references themselves, but rather
may be found in ‘the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem
to be solved.’” Dystar Textilfarben GmbH v. C.H. Patrick
Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (quoting In re
Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)). The Board
failed to explain its decision to discount Polygroup’s
8       POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,
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evidence concerning the knowledge and skill of a POSITA
and failed to consider the nature of the problem when ana-
lyzing the sufficiency of the proposed rationales. The
Board must do so on remand.
    As for the Board’s “push-through” concern, the prior art
inventions need not be physically combinable to render a
claim obvious. See Allied Erecting & Dismantling Co. v.
Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir.
2016). “The test for obviousness is not whether the fea-
tures of a secondary reference may be bodily incorporated
into the structure of the primary reference” but rather
whether a “skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve
the claimed invention.” Id. (quoting In re Keller, 642 F.2d
413, 425 (CCPA 1981) and Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007)).
     Upon tapering Yang’s connector and removing its snap-
fit components, it appears that a POSITA could well have
been motivated to modify the connector to maintain its ax-
ial position within the trunk section. Certain prior art ref-
erences may have taught physical obstruction to prevent
displacement within the tube, J.A. 30–31, but such obstruc-
tions are not necessarily compulsory to accomplishing the
desired result. Nor is such physical obstruction required
by the claims. As the Board itself explained, “[b]ecause
[Polygroup’s] proposed modification to Yang is simply to re-
move the locating snap-fit structures, [it] necessarily re-
quires that the press-fit be sufficiently tight to positively
maintain the location of the electrical connectors inside the
tubes.” J.A. 21 n.11. We therefore reject this reasoning as
a basis for finding no motivation to combine.
                       CONCLUSION
    In sum, we vacate the Board’s obviousness determina-
tions on all challenged claims of the ’072 patent because
the Board erroneously construed “tree portion” and failed
to consider whether those claims are unpatentable in view
POLYGROUP LIMITED MCO v. WILLIS ELECTRIC COMPANY,       9
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of Miller alone, and substantial evidence does not support
its factual findings regarding lack of motivation to com-
bine. We remand with instructions to consider whether the
challenged claims are invalid in light of this opinion.
            VACATED AND REMANDED
                         COSTS
   The parties shall bear their own costs.
