PTAB

PGR2017-00040

Telebrands Corp v. Tinnus Enterprises LLC

Key Events

Petition

petition

Title: System and Method for Filling Containers with Fluids
Brief Description: The ’789 patent discloses a device for simultaneously filling multiple inflatable containers, such as water balloons. The system comprises a housing or fitting that connects to a fluid source and has multiple outlets, each connected to a tube onto which a balloon is removably attached with an elastic fastener that also seals the balloon upon detachment.

Prior Art Relied Upon: N/A
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that claims 1-7 and 17-18 are indefinite because they describe the fastener's strength using the subjective functional term "a sufficient amount" of water or fluid. This term allegedly lacks objective boundaries, as the force required for detachment also depends on a "manually applied acceleration," which is undefined and variable. Petitioner contended that for expandable containers, the same device could infringe at one fill state but not another, rendering the claims indefinite. For claim 12, the terms "filled state" and "unfilled state" were argued to be subjective endpoints on a spectrum, preventing a POSA from determining with reasonable certainty when the claimed pressing of containers occurs.
- Key Aspects: This argument parallels a Final Written Decision in a related case (PGR2015-00018) where claims of the parent ’066 patent were found indefinite for similar reasons.

Prior Art Relied Upon: N/A
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued the specification fails to demonstrate possession of the inventions of claims 5 and 13, which require outlets that are "not disposed along a single line." Petitioner asserted that the only disclosed configuration is an "array" of holes which, under a broad interpretation, necessarily lie on a single curved line. For claim 12, Petitioner contended the patent does not disclose containers pressing against each other in an "unfilled state," as the figures show rounded, seemingly filled balloons, and the specification suggests pressing occurs only "as containers... fill with fluid and expand."

Prior Art Relied Upon: Saggio (Application # 2013/0118640), Donaldson (Patent 5,014,757), and Mead (Patent 600,967).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Saggio taught the core apparatus: a hose attachment with a main conduit (the claimed "fitting" or "housing") and multiple lateral conduits ("tubes") for simultaneously filling multiple balloons. Saggio, however, used an internal membrane for sealing. Donaldson and Mead were argued to supply the claimed fastener, teaching the use of an O-ring (Donaldson) or an elastic band (Mead) to attach a balloon to a tube, restrict its detachment, and automatically seal it once detached. Petitioner contended the detachment limitation (e.g., by gravity and manual acceleration) was inherently taught by Donaldson and Mead.
- Motivation to Combine: A POSITA would combine these references to replace Saggio's sealing mechanism with the simpler, cheaper, and well-known O-ring or elastic band taught by Donaldson or Mead to achieve the same result of a self-sealing, multi-fill balloon device.
- Expectation of Success: Given that elastic bands and O-rings were well-known for sealing balloons for over a century, a POSITA would have a high expectation of success in substituting them into Saggio’s system.

Prior Art Relied Upon: Zorbz (a YouTube video published August 19, 2014), Donaldson (Patent 5,014,757), and Mead (Patent 600,967).
Core Argument for this Ground:
- Prior Art Mapping: This ground was asserted based on an effective filing date after September 22, 2014. Petitioner argued that Zorbz, a publicly disclosed prototype device, taught nearly all claimed elements, including a housing for simultaneously filling multiple balloons that detach via an upward acceleration. Zorbz used an unspecified self-sealing mechanism. Petitioner argued a POSITA would have implemented this known function using the explicit O-ring fastener from Donaldson or the elastic band from Mead.
- Motivation to Combine: A POSITA looking to build the Zorbz device would have naturally turned to well-known, simple, and commercially available sealing mechanisms like the O-rings and elastic bands disclosed in Donaldson and Mead.
- Expectation of Success: The combination involved implementing a known sealing solution (Donaldson/Mead) into a known device type (Zorbz), leading to a high expectation of success.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Cooper (to teach flexible tubes allowing balloons to press together), Weir (to teach a compact configuration where balloons press together), and Pomerantz (to teach flexible tubes that displace as balloons expand).

"sufficient amount": Petitioner argued this term, used to define the condition for balloon detachment, is subjective and fails to provide objective boundaries for infringement, rendering claims indefinite.
"filled state" / "unfilled state": Petitioner contended these terms are subjective and lack clear delineations, making it impossible for a POSA to determine if the "pressing" limitation of claim 12 is met across the spectrum of fullness.
"single line": For its written description argument, Petitioner argued that under the broadest reasonable interpretation, this phrase would include a single curved line, meaning the patent’s disclosed "array" of outlets fails to provide support for the negative limitation "not disposed along a single line" in claims 5 and 13.

Inherency of Detachment: A central technical argument was that the detachment limitations are inherently taught by Donaldson and Mead. Petitioner’s expert relied on physics principles (Newton's second law), arguing that if the tensile strength of the balloon (Fstrength) is greater than the connecting force of the fastener (Fconnect), the balloon will always detach from the tube upon the application of sufficient force before it breaks, regardless of the force's source (e.g., gravity, acceleration).

Petitioner argued that discretionary denial under §325(d) would be inappropriate. It contended that the petition raised new arguments and evidence not before the Examiner during prosecution. Specifically, the Examiner did not consider the Mead reference, nor did the Examiner have the benefit of the expert declaration testimony (of Dr. Kamrin) explaining the inherency of the prior art, which is a central issue in the petition.

Petitioner requested institution of Post-Grant Review (PGR) and cancellation of claims 1-23 of the ’789 patent as unpatentable under 35 U.S.C. §§ 112 and/or 103.