Patent infringement lawsuit in Minneapolis federal courtroom had an unlikely star: fake Christmas trees

For more than a week this month, any Minnesotan yet to take down their Christmas tree had unlikely company: Senior U.S. District Judge Joan Ericksen's 12th-floor courtroom in Minneapolis.

Nearly a dozen artificial Christmas trees at the center of a long-running patent infringement lawsuit adorned Erickson's courtroom throughout a trial that ended with a jury delivering what's thought to be the among biggest awards in any such case filed in Minnesota, finding that a Taiwanese maker of fake electric trees was owed more than $42 million.

The case marked a departure from the many other patent infringement lawsuits that Minneapolis attorney Patrick Arenz said he typically handles. Rather than cases more commonly concerning software products — which can be tricky to illustrate — jurors here could see and touch the product at issue.

This paid off, Arenz said: The first and only question from jurors during deliberation was to see and inspect the trees in question. Still, the case was not without logistical challenges.

"Just the space allocation was a huge issue," Arenz said. "There were over 10 Christmas trees in the courtroom at all times. We just recently put our trees away at home and they take up a lot of space, even if you have just one or two. And when you think about having 10, it really does add up."

The dispute between Taiwan-based Willis Electric Co. and Hong Kong-based Polygroup Limited over a U.S. patent made its way to Ericksen's Minnesota courtroom at least in part because of the connection of a Maple Grove-based patent attorney named John Fonder, who filed the patent application on behalf of Willis Electric.

Johnny Chen, whose father founded the Willis Electric company that Chen now runs, invented the "One-Plug" tree in 2010 as an answer to the previous multistep process previously required to rig electric trees. Rather than needing to connect multiple plugs dangling from each tree section, Chen's invention let users connect their trees in any rotational alignment with a single electrical connection running through the tree's trunk.

According to the lawsuit, Polygroup learned of Chen's design when it hit the shelves of Lowes stores in 2011. They did not finalize the molds for their own trees until after studying Chen's "One Plug" design. They were aware of the Patent Office issuing a patent for the design, but continued selling a tree that used Chen's now-patented invention, which they dubbed "Quick Set."

Arenz told jurors that the decision to keep selling the "Quick Set" was as "lucrative as it was deliberate," as Polygroup made more than $1 billion in sales of the trees that relied on Chen's patented invention.

Messages were left seeking comment from Rachel Zimmerman Scobie, an attorney representing Polygroup.

During her arguments before jurors, Scobie instead accused Willis Electric of "trying to compete against Polygroup in the courtroom instead of the marketplace" and pointed to earlier designs for internal power trees as evidence that Chen tried to take credit for another person's invention.

Yes, that tree was also on display throughout the trial.

Arenz acknowledged to jurors that Chen was not the first person to consider putting electricity inside the poles of artificial trees, rather it was his specific design of the tree that earned a patent.

Scobie argued that Polygroup developed its own design and did not learn about the "One-Plug" tree until after it completed its own work.

Arenz countered that Chen's "One-Plug" design survived multiple rounds of examination at the patent office.

"We're here because Polygroup will not respect the Patent Office no matter what," Arenz told jurors. "It will not respect the United States patent laws no matter what. Polygroup deliberately used this patented technology."

After more than five hours of deliberation, the jury found that Willis Electric proved "by a preponderance of the evidence" that Polygroup "directly or indirectly infringed" on its patent and that Polygroup did not prove that Willis Electric's patent claim was invalid.

The award to Willis Electric: $42,494,772.