On May 30, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) entered a decision in Tinnus Enterprises v. Telebrands Corporation to reverse and remand a decision by the Patent Trial and Appeal Board (PTAB) to invalidate U.S. Patent No. 9,051,066.  The CAFC found that the PTAB erred in its conclusion that the claim term “substantially filled” is indefinite under Packard, 751 F.3d 1307 (Fed. Cir. 2014).  The CAFC stated “[t]he Board erred in its analysis when it read the disputed claim term in isolation rather than in the context of the surrounding claim language.” 

U.S. Patent No. 9,051,066 titled “System and Method for Filling Containers with Fluids” is a toy known as “Bunch O Balloons” developed by Josh Malone.  The dispute began in June of 2015 when Tinnus sued Telebrands for selling a competing product known as “Balloon Bonanza” that infringed the ‘066 patent.  Tinnus subsequently moved for a preliminary injunction against Telebrands and the Magistrate Judge issued a Report and Recommendation that recommended granting the motion.  The district court overruled objections brought by Telebrand and granted the motion for injunction.  In retaliation to the suit, Telebrands filed a Post Grant Review (PGR) with the PTAB against the ‘066 patent on the grounds of U.S.C. § 103 for obviousness and 35 U.S.C. § 112 for indefiniteness.  The PTAB found the claim term “substantially filled” was ruled to be indefinite.  Independent Claim 1 illustrates the term in context:

An apparatus comprising:
        a housing comprising an opening at a first end, and a plurality of holes extending through a common face of the housing at a second end;
        a plurality of flexible hollow tubes, each hollow tube attached to the housing at a respective one of the holes at the second end of the housing;
        a plurality of containers, each container removably attached to a respective one of the hollow tubes; and
        a plurality of elastic fasteners, each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube, and each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water, and to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube, such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers,
        wherein the apparatus is configured to fill the containers substantially simultaneously with a fluid.

Tinnus appealed and the CAFC found that the PTAB was in err.  The CAFC stated, “At first blush, the claim term ’substantially filled’ appears to reference the volume of the container. When read in the context of the surrounding claim language, however, it is clear that ‘substantially filled’ serves to inform a person of ordinary skill of the strength of the elastic fastener disclosed in claim 1.”  The CAFC further stated, “[t]he Board erred in its analysis when it read the disputed claim term in isolation rather than in the context of the surrounding claim language as § 112(b) requires. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010) (“To comport with § 112’s definiteness requirement, the boundaries of the claim, as construed by the court, must be discernible to a skilled artisan based on the language of the claim, the specification, and the prosecution history, as well as other knowledge of the relevant field of art.”).”

Notable in this case is that the term language of “substantially filled” was not recited in the application that issued as the ‘066 patent, but was rather amended by the examiner with its surrounding language.  In particular, the examiner added the underlined language below in Claim 1:

A plurality of elastic fasteners, each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube, and each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water, and to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube, such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers . . . .

While further proceedings by the PTAB will review the ‘066 patent on grounds, the current ruling by the CAFC brings Tinnus one step closer to victory.  Many will view this ruling as an affirmation that inventors still have the ability to protect their patent rights amidst the changing landscape of United States patent law.

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