Tinnus Enterprises, LLC (“Tinnus”), owner of U.S. Patent No. 9,527,612 B2 (“the ‘612 patent”) recently suffered a setback when the U.S. Patent Trial and Appeal Board ordered institution of a post-grant review of the ‘612 patent on the ground of indefiniteness. Responsive to a petition by Telebrands Corp. (“Telebrands”) for a post-grant review of the ‘612 patent on 35 U.S.C. §103 and 35 U.S.C. §112(a) and §112(b) grounds, the PTAB granted review of claim 3 for a determination of whether a “filled state”, as used in claim 3, is indefinite. Interestingly, Telebrands’ request for review of the adequacy of the written description’s support of claim 3’s “unfilled state” was not granted, with the PTAB deciding it was adequately described. Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2017-00015 (October 11, 2017).
35 U.S.C. §103
The PTAB firmly rejected the proposed §103 grounds, noting that all of the references asserted in the petition were considered during the prosecution of the ‘612 patent.
35 U.S.C. §112(a)
Telebrands challenged the specification as not satisfying the requirement under §112(a) to provide an adequate written description of the invention of claim 3, especially the part reading: “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.” Telebrands was ultimately not able to show to the PTAB’s satisfaction that it (Telebrands) was more likely than not able to prevail in showing that the patent did not provide adequate guidance to a person of ordinary skill in the art.
The PTAB provided a threshold for the adequacy of the description:
“The specification satisfies the written description requirement when ‘the essence of the original disclosure’ conveys the necessary information—‘regardless of how it’ conveys such information, and even when the disclosure’s ‘words [a]re open to different interpretation[s].’ In re Wright, 866 F.2d 422, 424–25 (Fed. Cir. 1989) (citations and internal quotation marks omitted, emphasis omitted). Importantly, the ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge. Capon v. Eshhar, 418 F.3d 1349, 1358 (Fed. Cir. 2005).”
The field of art was found to be “well-developed and predictable,” weighing against a need for an exhaustively detailed description. The level of ordinary skill in the art (“general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering”), in combination with the predictability of the art, was found sufficient “to guide a person of ordinary skill with reasonable clarity to an embodiment where the balloons are touching.” This conclusion was reached over Telebrands’ allegations of inadequacies of the drawings. The PTAB determined that Telebrands had not demonstrated that it was more likely than not to prevail. The decision was somewhat surprising in the PTAB’s reliance on the use of “crowding” in the specification (column 4, line 23) as an indication that the containers may touch in the unfilled state, even though the only affirmative description of the containers pressing or pushing against each other is found in the following paragraph, when the containers are being filled.
35 U.S.C. §112(b)
Telebrands challenged the specification as not satisfying the requirement under §112(b), alleging that “the term is ‘filled’ is subjective . . . a container may be considered ‘filled’ when there is any amount of fluid in the container.” Telebrands successfully persuaded the PTAB that it was more likely than not that it would prevail in showing that claim 3 is unpatentable for indefiniteness of the term “filled state.”
The PTAB set forth a standard for indefiniteness:
“In reviewing indefiniteness of a claim, we consider whether the claim language is ‘cast in clear—as opposed to ambiguous, vague, indefinite—terms.’ In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014); see Manual of Patent Examining Procedure (“MPEP”) § 2173.02(II) (Rev. 07.2015, Nov. 2015) (advising Examiners that the indefiniteness standard is whether ‘the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement’ (citation omitted)). Exact precision is not required.”
The challenged language of claim 3 reads: “. . . regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state.” Telebrands argued that “the term ‘filled state’ in claim 3 is indefinite under 35 U.S.C. § 112(b), because the term is ‘filled’ is subjective . . . a container may be considered ‘filled’ when there is any amount of fluid in the container.”
The analysis set forth in the PTAB’s decision seems to be in conflict with the standard it set forth for indefiniteness. It seems that the PTAB expected the specification establish a measurable upper limit on the interpretation of “filled state” even though that did not seem to be critical to the interpretation of the claim. The PTAB dismissed the term “desired volume” as being subjective and thus insufficiently descriptive. The specification does place some limitation on “desired” in column 5, lines 50-54: “When fluid fills container 18A to a desired volume, for example, as indicated by volumetric measurement marking 44, container 18A may be detached from tube 16A.” This is presumably insufficient for failing to provide example volumes. Ultimately, the PTAB concludes that “Petitioner (Telebrands) has demonstrated, on this preliminary record, that it is more likely than not to prevail on its challenge that claim 3 of the ’612 patent is indefinite.”
The PTAB’s conclusion seems inconsistent with its analysis and conclusion on the adequacy of the disclosure under §112(a). Given the established level of skill in the art, it would be well within the ability of one of ordinary skill to determine, by calculations or by testing, a volume of fluid needed to remove the containers by shaking or falling. The specification states that “When containers 18 have reached a desired size and/or they are filled with the desired volume of fluid, they may be removed from tubes 16”, thus establishing a value for “filled.” That this value can be varied from application to application should not render the claim indefinite. What is also puzzling is that the PTAB agrees that the specification does teach that the containers can touch each other when unfilled, but does not sufficiently describe when the containers are in a filled state – when the precise nature of the filled state is not particularly important to the operation of the invention.
Lessons for Practice
- Be sure that your specification clearly supports your claims, being especially vigilant when making amendments.
- It’s OK to leverage the figures, but be sure that there is also support in the written description.
- Don’t include empty limitations. While I could understand the intent of the “regardless” provision in claim 3, given expanding containers, the inclusion of the container “in a filled state” seems to have little narrowing effect, and mostly a confusing one, as evidenced by the PTAB decision on the issue of indefiniteness.
- Use objective-standard words in both the claims and the specification (e.g., predetermined volume instead of desired volume).