Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 47
`Entered: October 10, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`_______________
`
`Case PGR2017-00015
`Patent 9,527,612 B2
`_______________
`
`
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 47
`Entered: October 10, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`_______________
`
`Case PGR2017-00015
`Patent 9,527,612 B2
`_______________
`
`
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`PGR2017-00015
`Patent 9,527,612 B2
`
`
`
`I.
`
`INTRODUCTION
`
`Telebrands Corp. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) for
`
`post-grant review of claims 1–4 of U.S. Patent No. 9,527,612 B2 (Ex. 1001,
`
`“the ’612 patent”). Pursuant to 35 U.S.C. § 324, we determined that
`
`Petitioner showed that the information presented in the Petition, if such
`
`information was not rebutted, would demonstrate that it is more likely than
`
`not that claim 3 of the ’612 patent was unpatentable for indefiniteness.
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`Paper 16 (“Inst. Dec.”). We did not institute post-grant review of claims 1,
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`2, and 4 or on all of the grounds set forth in the Petition. Inst. Dec. 24.
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`Tinnus Enterprises, LLC (“Patent Owner”) filed a Patent Owner Response
`
`(Paper 23, “PO Resp.”). Petitioner filed a Reply. Paper 28 (“Reply”).
`
`On April 24, 2018, the Supreme Court held that a decision to institute
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`under 35 U.S.C. § 314, the statute governing the related type of post-grant
`
`proceedings known as inter partes reviews, may not institute on less than all
`
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`
`1369–70 (2018). On May 3, 2018, we determined that SAS governed post-
`
`grant reviews as well, and issued an order instituting on all of claims and all
`
`of the grounds of the Petition as suggested by SAS. Paper 30 (“SAS Order”).
`
`On May 31, 2018, we issued a revised schedule. Paper 36 (“Order”).
`
`As we explained in our Order, Patent Owner had informed us that it would
`
`not participate any further in these proceedings. Order 3–4. We allowed
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`Patent Owner to rely on its arguments submitted in its Preliminary Response
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`(Paper 13, “Prelim. Resp.”) regarding the previously un-instituted grounds
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`and claims. Id. at 4. We further allowed Petitioner to submit a
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`Supplemental Reply (Paper 37, “Supp. Reply”). Petitioner also filed a
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`2
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`
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`PGR2017-00015
`Patent 9,527,612 B2
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`Motion to Exclude. Paper 39 (“Mot.”). An oral hearing was held on August
`
`31, 2018. Paper 86 (“Tr.”).1
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 328(a)
`
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine Petitioner
`
`has not proven by a preponderance of the evidence that claims 1–4 of the
`
`’612 patent are unpatentable. See 35 U.S.C. § 326(e). Petitioner’s Motion
`
`to Exclude is dismissed as moot.
`
`A. Related Proceedings
`
`We are informed that the ’612 patent is involved in the following two
`
`federal district court cases:
`
` Tinnus Enterprises, LLC v. Telebrands Corp., Civil Action No.
`
`6:17-cv-00170-RWS-JDL (E.D. Tex.); and
`
` Tinnus Enterprises, LLC v. Wal-Mart Stores, Inc. d/b/a Wal-
`
`Mart, Civil Action No. 6:17-cv-00361-RWS-JDL (E.D. Tex.)
`
`Pet. 3; Paper 12, 2–3. The ’612 patent was also subject to a petition for post-
`
`grant review in PGR2017-00051, which we denied.
`
`Related U.S. Patent No. 9,051,066 B1 (“the ’066 patent”) is the
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`subject of post-grant review in PGR2015-00018 involving the same parties
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`(“the -00018 PGR”). The Board instituted trial in the -00018 PGR on
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`January 4, 2016. See Telebrands Corp. v. Tinnus Enterprises, LLC, Case
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`PGR2015-00018 (PTAB Jan. 4, 2016) (Paper 7) (“-00018 PGR DI.”). A
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`final written decision in PGR2015-00018 issued on December 30, 2016
`
`
`1 The original hearing was scheduled for August 13, 2018 (see Papers 41,
`44), but Petitioner was unable to attend. A rescheduled hearing was held on
`August 31, 2018. See Paper 43.
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`3
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`PGR2017-00015
`Patent 9,527,612 B2
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`finding claims 1–6, 8, and 10–14 of the ’066 patent unpatentable for
`
`indefiniteness under 35 U.S.C. § 112(b). See Telebrands Corp. v. Tinnus
`
`Enterprises LLC, Case PGR2015-00018 (PTAB Dec. 30, 2016) (Paper 75)
`
`(“-00018 PGR FD”). The Federal Circuit reversed and remanded the -00018
`
`PGR FD determining that the claims were not indefinite. See Tinnus
`
`Enterprises, LLC v. Telebrands Corp., 733 F. App’x 1011 (Fed. Cir. May
`
`30, 2018) (non-precedential).
`
`The ’066 patent is also involved in federal district court proceedings,
`
`Tinnus Enterprises, LLC, et al. v. Telebrands Corp., et al., 6:15-cv-00551
`
`RWS-JDL (E.D. Tex.) and Tinnus Enterprises, LLC, et al. v. Telebrands
`
`Corp., Civil Action No. 6:17-cv-00199-RWS-JDL. Paper 12, 3–4. The
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`Federal Circuit affirmed the district court’s decision granting a preliminary
`
`injunction in the 15-cv-000551 proceeding in Tinnus Enterprises, LLC v.
`
`Telebrands Corp., 846 F.3d 1190 (Fed. Cir. 2017).
`
`Additionally, related U.S. Patent Nos. 9,242,749 B2 (“the ’749
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`patent”) and 9,315,282 B2 (“the ’282 patent”) are the subject of post-grant
`
`review petitions filed by Petitioner in PGR2016-00030 and PGR2016-
`
`00031, respectively. See Paper 12, 2. We instituted post-grant reviews
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`involving both patents on February 21, 2017. See Telebrands Corp. v.
`
`Tinnus Enterprises, LLC, Case PGR2016-00030 (PTAB Feb. 21, 2017)
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`(Paper 16) (instituting post-grant review as to the ’749 patent) (“-00030
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`DI”); Telebrands Corp. v. Tinnus Enterprises, LLC, Case PGR2016-00031
`
`(PTAB Feb. 21, 2017) (Paper 15) (instituting post-grant review as to the
`
`’282 patent) (“-00031 DI”). On February 7, 2018, we entered Final Written
`
`Decisions in both cases finding that Petitioner had failed to show any of the
`
`challenged claims were unpatentable. See Telebrands Corp. v. Tinnus
`
`4
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`PGR2017-00015
`Patent 9,527,612 B2
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`Enterprises, LLC, Case PGR2016-00030 (PTAB Feb. 7, 2018) (Paper 91)
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`(finding all claims of the ’749 patent had not been shown to be unpatentable
`
`as obvious) (“-00030 FD”); Telebrands Corp. v. Tinnus Enterprises, LLC,
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`Case PGR2016-00031 (PTAB Feb. 7, 2018) (Paper 88) (finding all of the
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`challenged claims of the ’282 patent had not been shown to be unpatentable)
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`(“-00031 FD”). These decisions are currently on appeal to the Federal
`
`Circuit. See Tinnus Enterprises, LLC v. Telebrands Corp., Nos. 2017-1175,
`
`2018-1681, 2018-1682 (Fed. Cir.).
`
`We are informed that Petitioner is named as a defendant in federal
`
`district court cases involving the ’749 and ’282 patents—Tinnus Enterprises,
`
`LLC v. Telebrands Corp., Civil Action No. 6:16-cv-00033-RWS-JDL (E.D.
`
`Tex.) and Tinnus Enterprises, LLC v. Wal-Mart Stores, Inc., Civil Action
`
`No. 6:16-cv-00034-RWS-JDL (E.D. Tex.). Paper 12, 3–4. The Federal
`
`Circuit issued summary orders affirming the district court’s grant of a
`
`preliminary injunction against Petitioner regarding the ’749 and ’282
`
`patents—Tinnus Enterprises, LLC v. Telebrands Corp., 709 F. App’x 704
`
`(Fed. Cir. Jan. 16, 2018) (non-precedential); Tinnus Enterprises, LLC v.
`
`Telebrands Corp., 708 F. App’x 1019 (Fed. Cir. Jan. 16, 2018) (non-
`
`precedential). On November 21, 2017, a jury issued a verdict in favor of
`
`Patent Owner finding infringement, no invalidity, and damages of $12.3
`
`million for the ’749 patent. Ex. 2028.
`
`There were also three additional petitions for post-grant review
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`filed—PGR2017-00024, PGR2017-00040, and PGR2017-00052. Paper 12,
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`2. PGR2017-00024 and PGR2017-00052 challenged U.S. Patent No.
`
`9,533,779 B2. PGR2017-00040 challenged U.S. Patent No. 9,682,789 B2.
`
`We denied institution of all of these petitions.
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`5
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`PGR2017-00015
`Patent 9,527,612 B2
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`B. The ’612 Patent
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`
`
`The ’612 patent, titled “SYSTEM AND METHOD FOR FILLING
`
`CONTAINERS WITH FLUIDS,” issued December 27, 2016, from U.S.
`
`Application No. 14/678,878 (“the ’878 application”), filed April 3, 2015.
`
`Ex. 1001, at [54], [10], [21], [22]. The ’878 application is a continuation of
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`U.S. Application No. 14/492,487, filed on September 22, 2014, which issued
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`as the ’066 Patent. Id. at [63]. The ’612 patent further claims the benefit of
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`U.S. Provisional Application No. 61/942,193 filed on February 20, 2014 and
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`U.S. Provisional Application No. 61/937,083 filed on February 7, 2014. Id.
`
`at [60].2
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`The ’612 patent is directed generally to systems and methods for
`
`filling containers with fluids. Ex. 1001, at [54]. Figure 1 of the ’612 patent
`
`is reproduced below.
`
`
`2 Because the earliest possible effective filing date for the ’612 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the America Invents Act) and this petition was filed within 9 months of its
`issue date, the ’612 patent is eligible for post-grant review. See 35 U.S.C.
`§ 321(c).
`
`6
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`PGR2017-00015
`Patent 9,527,612 B2
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`
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`Figure 1, reproduced above, is a simplified diagram illustrating an
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`exemplary embodiment of system 10 for filling containers with fluids. Id. at
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`2:36–37. As shown in Figure 1, system 10 includes housing 12 removably
`
`attached to hose 14 at end A and to a plurality of hollow tubes 16 at end B.
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`Id. at 2:38–40. A plurality of containers 18, such as water balloons, may be
`
`clamped to plurality of tubes 16 using elastic valves 20, which may comprise
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`elastic fasteners such as O-rings. Id. at 2:55–63, 3:10–12. In one
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`embodiment, housing 12 or tubes 16 may be shaken to detach filled
`
`containers 18 from tubes 16. Id. at 3:57–62. Elastic valves 20 or fasteners
`
`7
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`PGR2017-00015
`Patent 9,527,612 B2
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`may constrict the necks of containers 18, sealing them, when the containers
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`slide off tubes 16. Id. at 4:5–9.
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`C. Illustrative Claims
`
`Claim 1 is the sole independent claim. Claims 2–4 depend from
`
`claim 1. Claim 1 and claim 3, which depends from claim 1, are illustrative
`
`of the claimed subject matter, and are reproduced below:
`
`1. An apparatus comprising:
`a housing comprising a plurality of holes
`extending through the housing;
`a plurality of hollow tubes, each hollow tube
`attached to the housing at a respective one of
`the holes;
`a plurality of containers, each container removably
`attached to a respective one of the hollow
`tubes; and
`a plurality of elastic fasteners, each elastic fastener
`clamping a respective one of the plurality of
`containers to a respective tube, and each
`elastic
`fastener configured
`to
`restrict
`detachment of its respective container from
`its respective tube and to automatically seal
`its respective container upon detachment of
`the container from its respective tube, the
`restriction of each elastic fastener being
`sufficiently limited to permit its respective
`container to detach from its respective tube
`by at least partially filling the container with
`water;
`wherein the apparatus is configured to fill the
`containers substantially simultaneously with
`water.
`
`Id. at 6:37–55.
`
`
`
`8
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`PGR2017-00015
`Patent 9,527,612 B2
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`3. The apparatus of claim 1, wherein 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, regardless whether the first and
`second ones of the plurality of containers are
`in a filled state or an unfilled state.
`
`Id. at 6:58–64.
`
`D. Prosecution History
`
`The ’878 application was filed on April 3, 2015 as a continuation of
`
`the application that issued as the ’066 Patent. Ex. 1001, at [54]. The ’878
`
`application included original application claims 1–28. Ex. 1008, 194–197.
`
`On January 4, 2016, after two preliminary amendments that amended the
`
`original application claims 1–28, Applicant filed a preliminary amendment
`
`cancelling claims 1–28 and adding four new claims, including one
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`independent claim, new application claim 29. Ex. 1008, 87–90, 144–150,
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`166–170. Application claim 29, as filed, is similar to issued claim 1, except
`
`for the final limitations. Id. at 88. On November 9, 2016, the Examiner
`
`entered an Examiner’s Amendment and Notice of Allowability (“Notice”).
`
`Id. at 16. Application claim 29 showing the amendments made by the
`
`Examiner in the Notice is reproduced below:
`
`29. An apparatus comprising:
`a housing comprising a plurality of holes
`extending through the housing;
`a plurality of hollow tubes, each hollow tube
`attached to the housing at a respective one of
`the holes;
`a plurality of containers, each container removably
`attached to a respective one of the hollow
`tubes; and
`
`9
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`PGR2017-00015
`Patent 9,527,612 B2
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`a plurality of elastic fasteners, each elastic fastener
`clamping a respective one of the plurality of
`containers to a respective tube, and each
`elastic
`fastener configured
`to
`restrict
`detachment of its respective container from
`its respective tube and to automatically seal
`its respective container upon detachment of
`the container from its respective tube, the
`restriction of each elastic fastener being
`sufficiently limited to permit its respective
`container to detach from its respective tube
`by at least partially filling the container with
`water; upon one or more of (1) at least
`partially filling the container with fluid and
`(2) shaking the housing;
`wherein the apparatus is configured to fill the
`containers substantially simultaneously with
`fluid water.
`Ex. 1008, 19–20.
`
`In the Reasons for Allowances, the Examiner stated
`
`None of the prior art teaches the subject matter in . . . [the
`Sufficiently Limited” Limitation3] which is interpreted in
`accordance with In re Swinehart, 439 F.2d 210, 213 (CCPA
`1971) and MPEP 2114. Boise (US 2008/0121309) and Saggio
`. . . disclose devices which simultaneously fill multiple
`detachable water balloons. . . . Donaldson . . . discloses a
`balloon (10) with an elastic band (20) that seals the balloon
`after the balloon is detached by moving mechanical components
`(column 4, line 65 - column 5, line 6). Lee . . . also teaches a
`balloon (1) with a band (2) which seals the balloon after the
`
`
`3 We will refer to the final portion of the elastic fastener limitation— “the
`restriction of each elastic fastener being sufficiently limited to permit its
`respective container to detach from its respective tube by at least partially
`filling the container with water”—as the “Sufficiently Limited Limitation”
`in the discussion below.
`
`10
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`PGR2017-00015
`Patent 9,527,612 B2
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`
`balloon is detached manually using the front end of the guide
`pipe (4) (paragraph 0033). Lee further teaches that the rubber
`band has a “high elastic force” (paragraph 0033), and thus it is
`clear that elastic force varies among rubber bands. Immel (US
`6,053,816) at column 2,
`lines 23-53 and Lee (US
`2004/0159968) at paragraph 0032 further evidence that elastic
`force varies among rubber bands. Because it is not true that all
`elastic bands have the same elastic force as an inherent
`property, there is no basis to conclude that the bands disclosed
`in the prior art would be capable of functioning as claimed.
`Multiple variables would determine whether or not a device
`would achieve this function, including the elastic force of the
`band, the relative size of the band as compared to the outer
`diameter of the tube, the shape of the tube, the frictional
`coefficient of the outer surface of the tube, the size of the
`balloon which in turn determines the weight of the water which
`can be held, and so on. There is no basis to conclude that the
`elastic bands and balloons of Billon, Donaldson, or Lee would
`detach and seal in the manner required by claim . . . [1] even if
`they were used on the water balloon-filling devices of Boise or
`Saggio.
`
`Ex. 1008, 20–21.
`
`E. Evidence Relied Upon
`
`Petitioner relies upon the following references (Pet. 18–20):
`
`Reference
`
`Cooper
`
`Saggio
`
`Lee
`
`Patent or Pub. No.
`or Description
`US 5,826,803
`
`Date
`
`Exhibit No.
`
`Oct. 27, 1998
`
`Ex. 1029
`
`US 2013/0118640 A1 May 16, 2013
`
`Ex. 1011
`
`US 2005/0004430 A1 Jan. 6, 2005
`
`Ex. 1012
`
`Donaldson US 5,014,757
`
`May 14, 1991
`
`Ex. 1013
`
`Weir
`
`US 6,478,651 B1
`
`Nov. 12, 2002
`
`Ex. 1015
`
`11
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`PGR2017-00015
`Patent 9,527,612 B2
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`Petitioner also relies on the Declaration of Dr. Ken Kamrin (Ex. 1022,
`
`“Kamrin Declaration”) and Supplemental Declaration of Dr. Ken Kamrin
`
`(Ex. 1034, “Supplemental Declaration”).
`
`Patent Owner relies on the Declaration of Q. Todd Dickinson
`
`(Ex. 2032) and the Declaration of Joshua Malone (Ex. 2033).
`
`F. The Instituted Grounds
`
`Petitioner challenges claims 1–4 of the ’612 patent on the following
`
`grounds (Pet. 18–20):
`
` Reference(s)
`
` Basis
`
`Claim(s)
`Challenged
`
`
`
`
`
`Saggio and Donaldson
`
`Saggio and Lee
`
`Saggio, Cooper or Weir, and
`Lee or Donaldson4
`
`§ 112(a) for lack of
`written description
`§ 112(b) for
`indefiniteness
`§ 103
`
`§ 103
`
`§ 103
`
`3
`
`3
`
`1–4
`
`1–4
`
`3
`
`II. ANALYSIS
`
`A. Level of Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art at the time of
`
`the effective filing date of the ’612 patent (“POSA”) was a person having
`
`general knowledge about, and experience with, expandable containers,
`
`
`4 At one point, Petitioner seems to hint at a similar ground to a ground from
`PGR2016-00031 of Cooper, Saggio, and Donaldson. See Pet. 23. There is,
`however, no analysis of such a ground in the Petition, and we do not
`understand the Petition to be actually asserting such a ground.
`
`12
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`Patent 9,527,612 B2
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`including, without limitation, balloons, and at least an associate’s degree in a
`
`technical science or engineering. Pet. 20 (citing Ex. 1022 ¶¶ 10–14). Patent
`
`Owner does not offer a competing definition.
`
`We agree with Petitioner and determine that a POSA would have been
`
`a person having a general knowledge about, and experience with,
`
`expandable containers, including, without limitation, balloons, and at least
`
`an associate’s degree in mechanical engineering, or the equivalent. This
`
`level of skill is consistent with the types of problems and solutions described
`
`in the ’612 patent and cited prior art. For example, the ’612 patent describes
`
`a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket,
`
`O-ring, etc.) for sealing fluid inside multiple containers (e.g., water
`
`balloons). See Ex. 1001, 1:22–24, 3:10–16.
`
`In any event, none of the issues in this case turn on the definition of a
`
`POSA, and the prior art of record provides ample evidence of the level of
`
`skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(finding that the Board of Patent Appeals and Interferences did not err in
`
`concluding that the level of ordinary skill was best determined by the
`
`references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355
`
`(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
`
`the art does not give rise to reversible error ‘where the prior art itself reflects
`
`an appropriate level and a need for testimony is not shown”’) (internal
`
`citation omitted).
`
`B. Claim Construction
`
`As a first step in our analysis, we determine the meaning of the
`
`claims. In a post-grant review, the Board gives claim terms in an unexpired
`
`patent their broadest reasonable interpretation in light of the specification of
`
`13
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`the patent in which they appear. 37 C.F.R. § 42.200(b). “Under a broadest
`
`reasonable interpretation, words of the claim must be given their plain
`
`meaning, unless such meaning is inconsistent with the specification and
`
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`
`(Fed. Cir. 2016). Any special definition for a claim term must be set forth
`
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`1. Terms Construed in the Institution Decision
`
`We construed the term “elastic fastener” in our Decision on
`
`Institution, which is set forth in the following table. Inst. Dec. 14.
`
`Claim Term
`
`Construction in Institution Decision
`
`elastic fastener
`
`“an elastic element for attaching things
`
`together”
`
`Neither party disputes the language of this construction. See
`
`generally Prelim Resp. 17; Reply. We adopt them for this Final Written
`
`Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
`
`2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C.
`
`Cir. 1968)) (“‘an agency may not change theories in midstream without
`
`giving respondents reasonable notice of the change’ and ‘the opportunity to
`
`present argument under the new theory.’”)
`
`2. Other claim terms
`
`None of our other determinations require us to interpret expressly any
`
`other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999).
`
`14
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`C. Challenge under 35 U.S.C. § 112(b) for Indefiniteness
`
`1. Legal Standard
`
`In reviewing the 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)5;
`
`see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2173.02(II)
`
`(9th Ed., Rev. 08.2017, Jan. 2018) (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” (internal citation
`
`omitted)). Exact precision is not required. The test for determining the
`
`question of indefiniteness may be formulated as whether the claims “set out
`
`and circumscribe a particular area with a reasonable degree of precision and
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`particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
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`regard to the reasonableness standard, one must consider the language in the
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`context of the circumstances. Packard, 751 F.3d at 1313.
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`2. “regardless whether the first and second ones of the
`plurality of containers are in a filled state or an unfilled
`state”
`
`Petitioner contends 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
`
`
`5 Although we apply the Packard standard here, we also consider, and
`determine, that the result would be the same under the standard articulated
`by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
`2120, 2129 (2014).
`
`15
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`
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`PGR2017-00015
`Patent 9,527,612 B2
`
`container.” Pet. 35 (citing Ex. 1022 ¶ 43). Petitioner also argues that that
`
`the containers might not press against each other if they were held upside
`
`down while being filled with water. Pet. 35; Ex. 1022 ¶¶ 40–43. Petitioner
`
`asserts that “[c]ontainers that press against each other when they are unfilled
`
`do not necessarily press against each other when they are filled.” Pet. 35
`
`(emphasis omitted). Petitioner notes that “if the tubes are made of a flexible
`
`material, the containers may press when they are unfilled, but as they are
`
`filled with water, tubes may flex due to the increased weight of the
`
`containers, causing the containers to move away from each other.” Id.
`
`Based on the preliminary record, and for the purposes of the
`
`Institution Decision only, we instituted post-grant review on Petitioner’s
`
`challenge that the term “filled state” in claim 3 is indefinite under 35 U.S.C.
`
`§ 112(b), because the term is dependent upon the subjective desires of the
`
`user purportedly practicing claim 1. Inst. Dec. 22–24.
`
`In its Patent Owner Response, Patent Owner counters that our
`
`treatment of “filled state” is incorrect. PO Resp. 1–14. Patent Owner asserts
`
`that “[b]ased on the plain language of this claim, a POSA would understand
`
`that the containers touch each other no matter if they are empty, full, or any
`
`state in between.” Id. at 8. Patent Owner notes that this was the conclusion
`
`of the Magistrate Judge in the district court proceeding. Id. In particular,
`
`the Magistrate Judge stated that, “taking the plain language of the claim, it is
`
`understood that the containers are pressed against each other when any
`
`amount of fluid is in the containers.” Ex. 1023, 20. As for Petitioner’s
`
`argument that the tubes could bend if held upside down, Patent Owner
`
`argues that this is contrary to everyday experience. PO Resp. 11.
`
`16
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`PGR2017-00015
`Patent 9,527,612 B2
`
`
`Petitioner responds that without an objective definition of “filled
`
`state,” a POSA cannot understand the scope of claim 3, because “containers
`
`that press against one another when they are unfilled and during the
`
`beginning of the filling process may not press again each other as more
`
`water is added if, for example, the tubes are oriented upward during the
`
`filling process.” Reply 2.
`
`While the terms “unfilled state” and “filled state” describe the fullness
`
`for a container, we do not agree with Petitioner that the claim language
`
`requires determining the precise amount of fluid for each state. Section
`
`112(b) requires that we read claim terms in the context of the surrounding
`
`claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When
`
`we look at the entire claim phrase—“regardless whether the first and second
`
`ones of the plurality of containers are in a filled state or an unfilled state”—
`
`the plain language is clear that regardless of whether the balloons are in
`
`either state, the “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 other words, the exact volume of fluid or water needed to reach a
`
`“filled state” does not need to be determined in order to understand the
`
`metes and bounds of the claim so as to understand how to avoid
`
`infringement. We are further persuaded because this is consistent with the
`
`district court’s construction of this term. See Ex. 1023, 19–20.
`
`Petitioner attempts to inject ambiguity into this term through the
`
`testimony of its expert, but, in claim construction, when the meaning of the
`
`claim term is clear based on the intrinsic evidence—such as the claim
`
`language—“it is improper to rely on extrinsic evidence.” Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Even considering
`
`17
`
`
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`PGR2017-00015
`Patent 9,527,612 B2
`
`the extrinsic evidence, we are not persuaded by Petitioner’s and
`
`Dr. Kamrin’s argument that
`
`[I]f the tubes are made of a flexible material, the containers may
`press against each other when they are unfilled, i.e., empty.
`However, as the containers are filled with water, the tubes may
`flex due to the increased weight of the containers, causing the
`containers to move away from one another and not press.
`
`Ex. 1022 ¶ 41. We are not persuaded that the exact measurement of fullness
`
`is required in light of the entire claim phrase. Specifically, Dr. Kamrin’s
`
`proposed scenario is not relevant, because, in his scenario, the containers
`
`move away from each other when they are filled with water, and, thus,
`
`would not be pressing against each other regardless of whether filled or not
`
`filled, as required by the claim. Thus, we determine that the scope of this
`
`claim language is adequately clear and does not require, as Petitioner
`
`proposes, determining a precise subjective amount of fluid to be added to the
`
`containers. Moreover, a claim is construed in light of the specification from
`
`the perspective of a person of ordinary skill—in this case a person with an
`
`associate’s degree in mechanical engineering—not in view of hypothetical
`
`situations not contemplated by the specification. Just as infringement cannot
`
`be avoided because some non-infringing mode is possible, we do not think
`
`that a claim is necessarily rendered indefinite by a hypothetical situation
`
`inconsistent with what is shown in the specification. Cf. z4 Techs., Inc. v.
`
`Microsoft Corp., 507 F.3d 1340, 1350 (Fed. Cir. 2007) (“[I]nfringement is
`
`not avoided merely because a non-infringing mode of operation is
`
`possible”); Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354,
`
`1363 (Fed. Cir. 2006) (“[I]t matters not that the assembled device can be
`
`manipulated into a non-infringing configuration”).
`
`18
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`PGR2017-00015
`Patent 9,527,612 B2
`
`
`Based on the complete record, including all the arguments and
`
`evidence presented, we determine that Petitioner has not demonstrated by a
`
`preponderance of the evidence that claim 3 of the ’612 patent is indefinite.
`
`D. Challenge under 35 U.S.C. § 112(a) for Lack of Written
`Description
`
`To satisfy the written description requirement under 35 U.S.C.
`
`§ 112(a), the specification must sufficiently describe an invention
`
`understandable to a person of ordinary skill in the art and “show that the
`
`inventor actually invented the invention claimed.” Ariad Pharm., Inc. v. Eli
`
`Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In other
`
`words, a patent applicant must “convey with reasonable clarity to those
`
`skilled in the art that, as of the filing date sought, he or she was in possession
`
`of the invention. The invention is, for purposes of the ‘written description’
`
`inquiry, whatever is now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d
`
`1555, 1563–64 (Fed. Cir. 1991) (emphases in original omitted and emphasis
`
`added). “Such description need not recite the claimed invention in haec
`
`verba but must do more than merely disclose that which would render the
`
`claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
`
`F.3d 1368, 1377 (Fed. Cir. 2009). “An applicant’s disclosure obligation
`
`varies according to the art to which the invention pertains.” In re Hayes
`
`Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 1534 (Fed. Cir.
`
`1992).
`
`Petitioner asserts that the limitation, “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,”
`
`recited in claim 3, is not supported by the written description of the ’612
`
`19
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`PGR2017-00015
`Patent 9,527,612 B2
`
`patent. See Pet. 25–33. Specifically, Petitioner asserts that the ’612 patent
`
`only mentions that the containers “may push against each other” after, but
`
`not before, the filling process has begun. Pet. 27 (citing Ex. 1001, 4:29–30;
`
`Ex. 1022 ¶ 27).
`
`Petitioner asserts that to meet its burden of proof, the Petition only
`
`needs to “establish that one of ordinary skill in the art cannot discern—one
`
`way or the other—whether [the balloons] necessarily press.” Id. Under that
`
`standard, Petitioner submits that Figure 1 does not provide the required
`
`support, because the ’612 patent does not specify whether Figure 1 shows
`
`unfilled or partially filled containers. Id. at 28 (citing Ex. 1001, 3:15–19,
`
`3:53–67). According to Petitioner, a POSA cannot discern whether the
`
`containers are touching in Figure 1, because it is a “simplified perspective
`
`view” that “shows multiple containers in different depths of field.” Id. at 29
`
`(citing Ex. 1001, 1:53–54; Ex. 1022 ¶ 30) (emphasis omitted). Petitioner
`
`argues that “[i]f the balloons in Figure 1 were in an unfilled state, i.e.,
`
`empty, a [person of ordinary skill in the art] would expect they would have a
`
`distorted, as opposed to illustrated perfectly rounded, shape.” Id. (citing Ex.
`
`1022 ¶¶ 31–32). Petitioner asserts that a POSA would have to have looked
`
`at the spatial relationship of the containers to determine if they are close
`
`enough to be touching. Id. at 30 (citing Ex. 1022 ¶ 34).
`
`Petitioner further relies on Hockerson-Halberstadt, Inc. v. Avia Group
`
`International, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), “because Figure 1 is
`
`a perspective drawing, if one attempts to discern whether the balloons are
`
`touching or are instead at different depths and not touching, one would need
`
`to impermissibly measure the precise spacing between the tubes and th
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