In Tinnus Enterprises, LLV v. Telebrands Enterprises (Fed. Cir. 2016-1410), the CAFC considered whether a claim requiring that a container (think water balloon) be “substantially filled” was indefinite under 35 USC §112. Complicating the issue, in this case the district court and the Patent Trial and Appeal Board (PTAB) reached different conclusions regarding the claims at issue in Tinnus, with the district court finding the claims valid and the PTAB finding the claims invalid under 35 USC §112.
The technology at issue in this case is simply a device for filling a plurality of balloons with a liquid. In operation, an elastic connector provides a connecting force that connects each balloon to an individual tube in communication with a liquid source. When the balloon becomes filled to a certain level (referred to as “substantially filled”) and the device is shaken, the weight of the “substantially filled” balloon overcomes the connecting force, the balloon is detached and sealed by the elastic connector. Telebrands challenged the validity of the claims contending the term “substantially filled” rendered the claims indefinite.
The indefiniteness issue at the PTAB centered on the phrase “a connecting force that is not less than a weight of one of the containers when substantially filled with water” recited in claim 1. Telebrands argued that determining whether a container is filled or substantially filled “is a hopeless exercise contingent upon a user’s subjective desire.” Indeed the specification of the patent at issue equated the concept of “substantially filled” as being subjectively determined (for example, equating substantially filled with a “desired size”). Tinnius countered by arguing that in the context of the patent, the term “substantially filled” was clear based on the experience of the user and the structure of the claims. Tinnius also argued that the “substantially filled” limitation was analogous to the claim limitations in Orthokinetics (claim requiring a leg portion of the chair to be “so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof). Regarding the Orthokinetics argument, the PTAB held there was no reference to a well-defined reference as in Orthokinetics because the connecting force could be varied by the user (with the result that a water balloon filled to the same level might infringe the claim in one instance but not another based on the selection of the connecting force). The PTAB also gave little weight to Tinnius’ expert, in part due to the failure of the expert opinion to place limits on the term substantially (the expert opinion equated “substantially” to “approximately”).
The PTAB concluded that there was no objective standard given in the specification for measuring whether something was filled, stating “A person of ordinary skill in the art could not interpret the metes and bounds of the phrase so as to understand how to avoid infringement because neither claim 1 nor the specification provides any objective standard for measuring the scope of the term ‘filled.’”
Federal Circuit Reasoning
Like before the PTAB, the issue at the district court/CAFC was the meaning of the term “filled” and “substantially filled.” As an initial matter, the CAFC found that the specification did not equate “substantially filled” with a “desired size” (a factor relied on in the PTAB decision), instead holding that the structure of the claims provides for a determination of when a balloon is “substantially filled” (stating that “if the balloons detach after shaking, then they are substantially filled”). The CAFC also found it incredulous that a person of ordinary skill in the art could not read the specification and determine with reasonable certainty when a balloon was “substantially filed.” The CAFC found no clear error with the district court’s determination that the claims met the Nautilus standard.
The district court and CAFC applied the now familiar standard for claim indefiniteness under Nautilus, which states a claim is invalid as indefinite if the claim “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
The PTAB, however, applies the standard under In re Packard, which states a claim is indefinite “when it contains words or phrases whose meaning is unclear.” The PTAB does not interpret Nautilus “to mandate the Board’s approach to indefiniteness in patent examination or reexamination matters or in AIA proceedings, in which the claims are interpreted under the broadest reasonable interpretation standard, and an opportunity to amend the claims is afforded.” The PTAB also recognized that the analysis under Packard may make it easier for a claim to be invalidated under 35 USC §112 in front of the Board than in federal court.
Reasons for the different outcomes?
This decision makes it clear that the Federal Circuit does not feel the need to defer to the PTAB, particularly when different legal standards are at play. However, several other procedural factors could have led to differing conclusions as to the indefiniteness issue.
First, Telebrands did not object to the indefiniteness determination of the magistrate judge, which resulted in a more onerous plain error review of the decision on appeal. Second, Telebrands did not directly raise the same issues cited by the PTAB as a basis to deny the preliminary injunction. These factors may have contributed to the different outcomes. As a result, Telebrands was limited in the arguments it could make at the CAFC and how the previously decided issues were reviewed.
This case provides important factors to consider when considering claim indefiniteness. Clearly, the broadest reasonable interpretation standard makes it easier for a claim to be found indefinite. Without the broadest reasonable interpretation standard, the CAFC found more meaning and clarity in the individual claim terms than the PTAB. In advancing such arguments, the choice of administrative appeal versus litigation must be carefully considered based on the facts of each case in order to bring the case in the venue that is most advantageous.