Telebrands Corp v. Tinnus Enterprises LLC

1. Case Identification

• Case #: PGR2017-00015
• Patent #: 9,527,612
• Filed: March 22, 2017
• Petitioner(s): Telebrands Corp.
• Patent Owner(s): Tinnus Enterprises, LLC
• Challenged Claims: 1-4

2. Patent Overview

• Title: System and Method for Filling Containers with Fluids
• Brief Description: The ’612 patent discloses an apparatus for simultaneously filling a plurality of containers, such as water balloons. The system uses a housing connected to a fluid source, a plurality of hollow tubes extending from the housing, and elastic fasteners that removably attach the containers to the tubes and automatically seal them upon detachment.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Saggio in view of Donaldson.

• Prior Art Relied Upon: Saggio (Application # 2013/0118640) and Donaldson (Patent 5,014,757).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Saggio disclosed the core structural elements of claim 1, including a handheld housing with multiple hollow tubes for simultaneously filling a plurality of containers (balloons). However, Saggio used a complex internal elastic membrane for self-sealing. Petitioner contended that Donaldson taught the claimed elastic fastener by disclosing an O-ring that performs all four claimed functions: (1) clamping a balloon to a tube, (2) restricting detachment, (3) automatically sealing upon detachment, and (4) permitting detachment when the balloon is at least partially filled with fluid. The detachment function was argued to be an inherent property of Donaldson’s O-ring system, governed by the principle that the balloon’s tensile strength is greater than the O-ring's connecting force.
  • Motivation to Combine: A POSITA would combine these references to replace Saggio's complex and likely more expensive internal self-sealing membrane with Donaldson's simpler, cheaper, and commercially available O-ring. This modification would create a more efficient and commercially viable product for filling multiple balloons.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves substituting one known sealing mechanism for another in a predictable mechanical system.

Ground 2: Claims 1-4 are obvious over Saggio in view of Lee.

• Prior Art Relied Upon: Saggio (Application # 2013/0118640) and Lee (Application # 2005/0004430).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Donaldson for the claimed elastic fastener. Petitioner asserted that Saggio taught the basic multi-container filling apparatus, while Lee taught a self-sealing balloon system using a simple rubber band as the elastic fastener. Lee's rubber band was shown to clamp a balloon to a guide pipe and seal the balloon upon its release from the pipe. Petitioner argued that the ability of Lee's rubber band to permit detachment upon partial filling is necessarily present, as the device would be unusable if the rubber band clamped the balloon so tightly it could not be detached without tearing.
  • Motivation to Combine: The motivation was analogous to the Saggio/Donaldson combination: a POSITA would be motivated to combine Saggio's multi-filling system with Lee's simpler and cheaper rubber band sealing method. Even though Lee relates to a medical device, Petitioner argued it is analogous art because it solves the same technical problem of self-sealing a balloon after it is detached from a filling tube.
  • Expectation of Success: The substitution was argued to be a simple and predictable design choice with a high expectation of success.

Ground 3: Claim 3 is obvious over Saggio, Cooper or Weir, and Lee or Donaldson.

• Prior Art Relied Upon: Saggio (’640 application), Cooper (Patent 5,826,803) or Weir (Patent 6,478,651), and Lee (’430 application) or Donaldson (’757 patent).
• Core Argument for this Ground:
  • Prior Art Mapping: This combination specifically addressed the dependent claim 3 limitation requiring that containers "press against each other" in both filled and unfilled states. Petitioner argued that while Saggio was silent on this feature, Cooper taught a sprinkler with multiple flexible, posable tubes that could be bent to touch. Alternatively, Weir taught a balloon-filling apparatus where the balloons are explicitly shown pressing against each other to facilitate compact packaging.
  • Motivation to Combine: A POSITA would have been motivated to modify the Saggio/Donaldson or Saggio/Lee combination with the teachings of Cooper or Weir to create a more compact apparatus. Making the device smaller would be advantageous for packaging, shipping, and for use in confined spaces like a sink. This common-sense design goal would lead a POSITA to arrange the tubes closer together, inevitably causing the attached balloons to press against one another.
  • Expectation of Success: Modifying tube arrangement based on Cooper's teachings or packaging design based on Weir's teachings are simple mechanical tasks with predictable outcomes.
• Additional Grounds: Petitioner asserted that claim 3 is unpatentable under 35 U.S.C. §112(a) for lack of written description and §112(b) for indefiniteness, arguing the specification fails to disclose containers pressing in an "unfilled state" and that the term "filled state" is subjective and lacks objective boundaries.

4. Key Claim Construction Positions

• Petitioner argued for applying constructions consistent with prior Board decisions in related Post-Grant Reviews (PGRs) for the same patent family.
• "elastic fastener": Construed according to its ordinary and customary meaning as "an elastic element for attaching things together."
• "container": Construed to mean "an object that can hold something, such as fluids."
• These constructions were central to Petitioner's argument that the prior art O-rings and rubber bands met the broad claim limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate.
• It was asserted that the petition contained new arguments and evidence not previously considered by the USPTO during prosecution of the ’612 patent. Specifically, the Examiner did not have the benefit of the expert declaration of Dr. Ken Kamrin, which was presented as critical to establishing the inherency of the detachment function in the Donaldson and Lee references.

6. Relief Requested

• Petitioner requested the Board institute a post-grant review and cancel claims 1-4 of the ’612 patent as unpatentable under 35 U.S.C. §§ 103 and 112.