Docket No. 2016-1410
MOORE, WALLACH, STOLL
January 24, 2017
Brief Summary: DC grant of PI and no invalidity for indefiniteness or obviousness affirmed.
Summary: Telebrands appealed DC entry of preliminary injunction (PI) barring it from selling its “Balloon Bonanza, or any colorable imitation thereof” after concluding the claims of Tinnus’s US 9,051,066 encompassing an apparatus for the simultaneous filling of multiple containers (e.g., water balloons) from a hose would likely be infringed, “were not vulnerable on indefiniteness or obviousness grounds”, and Tinnus showed irreparable harm. Telbrands argued to the DC that the tubes of its product are not “attached” to the housing (i.e., the end of the hose) as in the claims but the Magistrate relied on the plain and ordinary meaning of the term (“connected or joined to something”) and disagreed. It also argued that its product did not meet the “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” limitation but the Magistrate disagreed here as well. The Magistrate also disagreed “substantially filled” was indefinite as “there is no per se rule that the term ‘substantially’ is indefinite” and the claims include “‘specific parameters’…describing how to determine whether a container is substantially filled”. The Magistrate also disagreed that the term “connecting force” was not enabled and that the claims would have been obvious (e.g., references did not “disclose the required ‘elastic fasteners’” or “the claimed connecting force”, “the references come from diverse fields” (i.e., non-analogous art), secondary considerations irrelevant because accused product is “a near identical replica”). Regarding irreparable harm, the Magistrate agreed with Tinnus’s evidence of consumer confusion, reputational harm and loss of good will. Telebrands also filed a post-grant review (PGR) petition against the ‘066 patent which was instituted. The PTAB found, after the DC granted the PI, the “shake-to-detach” limitation “likely indefinite” as “the specificiation sets forth no limit on the amount of shaking needed to detach a filled container from the tube” and that the cited references would likely render claim 1 obvious (finding it to be “reasonably pertinent to a particular problem the inventor of the ‘066 patent was trying solve”). The FC panel explained its review of the grant of a PI is for an abuse of discretion (“clear error of judgment in weighing relevant factors”, “error of law or clearly erroneous factual findings”) and found none, even though some of the evidence pre-dated the patent. “[U]nobjected to factual findings and legal conclusions” (Magistrate’s indefiniteness and obviousness conclusions) are subjected to plain error review and did not find any with the DC’s conclusions (e.g., “we cannot say that the [DC erred] when it found insufficient motivation to combine these disparate references”). Conclusions of infringement are reviewed for clear error (AstraZeneca, FC 2010), and the FC panel found none with the DC’s conclusions (e.g., “We are aware of no case law prohibiting a court from relying on product instructions to find direct infringement.”)