Tinnus Enterprises, LLC v. Telebrands Corporation ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TINNUS ENTERPRISES, LLC,
Appellant
v.
TELEBRANDS CORPORATION,
Appellee
______________________
2017-1726
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. PGR2015-
00018.
______________________
Decided: May 30, 2018
______________________
THOMAS MANSFIELD DUNLAP, Dunlap Bennett & Lud-
wig PLLC, Leesburg, VA, argued for appellant. Also
represented by DAVID LUDWIG, ROBERT D. SPENDLOVE;
BRIAN M. KOIDE, Vienna, VA; CORTLAND CHRISTOPHER
PUTBRESE, Richmond, VA; THOMAS MILTON CROFT, Fort
Collins, CO; JEFFREY AHDOOT, Washington, DC; JASON
DANIEL EISENBERG, ROBERT GREENE STERNE, JONATHAN
TUMINARO, Sterne Kessler Goldstein & Fox, PLLC, Wash-
ington, DC.
2 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
MORGAN CHU, Irell & Manella LLP, Los Angeles, CA,
argued for appellee. Also represented by ROBERT THOMAS
MALDONADO, TONIA A. SAYOUR, VISHAL PARIKH, Cooper &
Dunham, LLP, New York, NY; ERIC J. MAURER, Boies,
Schiller & Flexner, LLP, Washington, DC.
______________________
Before O’MALLEY, WALLACH, and HUGHES, Circuit Judges.
O’MALLEY, Circuit Judge.
Tinnus Enterprises, LLC (“Tinnus”) appeals from a
final written decision of the Patent Trial and Appeal
Board (“Board”) in a post-grant review (“PGR”) proceeding
finding that Telebrands Corporation (“Telebrands”) had
demonstrated by a preponderance of the evidence that
claims 1–6, 8, and 10–14 of U.S. Patent No. 9,051,066
(“the ’066 patent”) are unpatentable for indefiniteness
under 35 U.S.C. § 112(b) (2012). Telebrands Corp. v.
Tinnus Enters., LLC, No. PGR2015-00018, 2016 WL
7985419, at *1 (P.T.A.B. Dec. 30, 2016) (“Board Deci-
sion”).
As a threshold issue, Tinnus challenges the Board’s
decision granting institution, arguing that the Board
applied the wrong statutory standard for instituting a
PGR proceeding. Tinnus also appeals the Board’s final
written decision, arguing that the Board erred in applying
the standard for indefiniteness articulated in In re Pack-
ard, 751 F.3d 1307 (Fed. Cir. 2014), rather than the
standard articulated in Nautilus, Inc. v. Biosig Instru-
ments, Inc., 134 S. Ct. 2120 (2014), and that, regardless,
the ’066 patent survives either standard. Because the
Board erred in its analysis, we reverse the Board’s finding
of indefiniteness and remand to allow the Board to ad-
dress the alleged obviousness grounds.
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 3
I. BACKGROUND
A. The ’066 Patent and Prosecution History
The ’066 patent, assigned to Tinnus, issued on June 9,
2015, and is directed to an apparatus that fills inflatable
containers, such as balloons, with fluid, such as water.
See ’066 patent, col. 1, ll. 26–30. Specifically, the patent
discloses an apparatus comprising a housing attached to a
plurality of flexible hollow tubes, which are, in turn,
attached to a plurality of containers by elastic fasteners.
Id. at col. 6, ll. 30–41. The ’066 patent discloses that each
elastic fastener is configured such that “shaking the
hollow tubes in a state in which the containers are sub-
stantially filled with water overcomes the connecting force
and causes the containers to detach from the hollow tubes
thereby causing the elastic fastener[] to automatically
seal the containers.” Id. at col. 6, ll. 46–51; see also id. at
col. 6, ll. 41–51.
Figure 1, reproduced below, is “a simplified diagram
illustrating an example embodiment” of the invention. Id.
at col. 2, ll. 33-34.
4 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
The ’066 patent discloses, in Figure 1, that fluid en-
ters through a hose 14 and flows down through a housing
12 and a plurality of hollow tubes 16 into a plurality of
containers 18. See id. at col. 2, ll. 33–53. The containers
are “clamped” by “elastic valves” such as “elastic fasten-
ers.” Id. at col. 2, ll. 51–59. “When [the] containers 18
have reached a desired size and/or they are filled with the
desired volume of fluid, they may be removed from tubes
16. They can be removed . . . by shaking them off[.]” Id. at
col. 4, ll. 60–64.
Claim 1, the sole independent claim, is representative
of the invention, and recites:
1. An apparatus comprising:
a housing comprising an opening at a first end,
and a plurality of holes extending through a com-
mon face of the housing at a second end;
a plurality of flexible hollow tubes, each hollow
tube attached to the housing at a respective one of
the holes at the second end of the housing;
a plurality of containers, each container remova-
bly attached to a respective one of the hollow
tubes; and
a plurality of elastic fasteners, each elastic fasten-
er clamping a respective one of the plurality of
containers to a corresponding hollow tube, and
each elastic fastener configured to provide a con-
necting force that is not less than a weight of one of
the containers when substantially filled with wa-
ter, and to automatically seal its respective one of
the plurality of containers upon detaching the
container from its corresponding hollow tube, such
that shaking the hollow tubes in a state in which
the containers are substantially filled with water
overcomes the connecting force and causes the con-
tainers to detach from the hollow tubes thereby
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 5
causing the elastic fasteners to automatically seal
the containers, wherein the apparatus is config-
ured to fill the containers substantially simulta-
neously with a fluid.
Id. at col. 6, ll. 30-51 (emphases added).
The specification does not define claim term “substan-
tially filled.” Nor does the term appear anywhere in the
specification. The specification does, however, discuss the
term “filled” in the context of detaching the container
from the hollow tube. See, e.g., id. at col. 3, ll. 48–51
(“After containers 18 have reached a desired size or
volume, they may be detached from tubes 16. In one
example embodiment, filled containers 18 may be de-
tached by pulling them away from tubes 16.” (emphases
added)).
In fact, original claim 1 of the application that issued
as the ’066 patent did not recite “substantially filled.”
J.A. 106–07. Rather, the examiner introduced “substan-
tially filled” and its surrounding claim language in an
examiner amendment in the Notice of Allowance. Id.
Specifically, the examiner added the below underlined
language to claim 1:
A plurality of elastic fasteners, each elastic fas-
tener clamping a respective one of the plurality of
containers to a corresponding hollow tube, and
each elastic fastener configured to provide a con-
necting force that is not less than a weight of one
of the containers when substantially filled with
water, and to automatically seal its respective one
of the plurality of containers upon detaching the
container from its corresponding hollow tube, such
that shaking the hollow tubes in a state in which
the containers are substantially filled with water
overcomes the connecting force and causes the
containers to detach from the hollow tubes there-
6 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
by causing the elastic fasteners to automatically
seal the containers . . . .
J.A. 106–07 (emphases added). In the examiner’s reasons
for allowance, the examiner stated that these additions
“define a configuration and functional capability of the
elastic fasteners that is not taught by [the prior art]. In
particular, the language beginning with ‘such that shak-
ing . . . ’ defines an upper limit of the connecting force and
thus defines the elastic fastener in a way that distin-
guishes over [the prior art].” J.A. 107–08. The ’066
patent issued shortly thereafter.
B. The Post-Grant Review Proceeding
On June 22, 2015, Telebrands filed a petition to insti-
tute a PGR of claims 1–14 of the ’066 patent on grounds
that the claims are more likely than not unpatentable
under 35 U.S.C. §§ 103 and 112. Before the Board issued
its institution decision, Tinnus filed a statutory disclaimer
under 35 U.S.C. § 253(a), disclaiming claims 7 and 9 of
the ’066 patent. Telebrands Corp. v. Tinnus Enters., LLC,
No. PGR2015-00018, 2016 WL 270152, at *1 n.1 (P.T.A.B.
Jan. 4, 2016) (“Board Institution Decision”). On January
4, 2016, the Board granted institution on both §§ 103 and
112 grounds after “determin[ing] that the information
presented in the Petition demonstrates that it is more
likely than not that [Telebrands] would prevail in show-
ing that the challenged claims, except claims 7 and 9, are
unpatentable.” Id. at *1.
On December 30, 2016, the Board issued a final writ-
ten decision in the PGR. In its decision, the Board ap-
plied the indefiniteness standard articulated in In re
Packard to find that the claim term “substantially filled”
was indefinite, and therefore, rendered all challenged
claims of the ’066 patent unpatentable. Board Decision,
at *6–14. Because the Board found all challenged claims
indefinite, it did not reach the instituted obviousness
grounds.
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 7
C. The Concurrent Litigation
After the Board instituted the PGR, but before it is-
sued the final written decision, Tinnus filed a complaint
against Telebrands alleging that Telebrands’s product,
Balloon Bonanza, infringes the ’066 patent. Tinnus
Enters., LLC v. Telebrands Corp., No. 6:15-cv-00551-RC-
JDL, ECF No. 66 (E.D. Tex. Sept. 11, 2015) (“Tinnus I”).
In that case, Tinnus moved for a preliminary injunction.
The district court granted the motion after applying the
indefiniteness standard articulated in Nautilus to find
that Telebrands “ha[s] not raised a substantial question
concerning the validity of the ’066 [p]atent based on the
claim term ‘substantially filled’ being indefinite.” Tinnus
I, slip op. at 10–11. Telebrands appealed. Tinnus Enters.,
LLC v. Telebrands Corp., 846 F.3d 1190 (Fed. Cir. 2017)
(“Tinnus II”).
On January 24, 2017, after the Board issued its final
written decision in the PGR at issue in this appeal, this
court affirmed the district court’s order granting Tinnus’s
motion for a preliminary injunction in Tinnus I. Id. at
1194. In affirming the order, we found that “the district
court’s conclusion that Telebrands’ indefiniteness argu-
ment failed to raise a substantial question of validity does
not suffer from a clear or obvious error.” Id. at 1206
(internal quotations omitted). Rather, “[w]e f[ou]nd it
difficult to believe that a [person of ordinary skill in the
art, defined as] a person with an associate’s degree in a
science or engineering discipline[,] who had read the
specification and relevant prosecution history would be
unable to determine with reasonable certainty when a
water balloon is ‘substantially filled.’” Id.
Tinnus now challenges the Board’s decision granting
institution and appeals from the Board’s final written
decision finding the challenged claims unpatentable. We
have jurisdiction to review the Board’s final written
decision pursuant to 28 U.S.C. § 1295(a)(4)(A).
8 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
II. DISCUSSION
First, Tinnus challenges Board’s decision granting in-
stitution, arguing that the Board applied the wrong
statutory standard for institution. Second, Tinnus ap-
peals the final written decision, arguing that the Board
erred in applying the standard for indefiniteness articu-
lated in Packard rather than the standard articulated in
Nautilus, and that, regardless, the claim term “substan-
tially filled” is not indefinite under either standard. 1 We
address each issue in turn.
A. The Standard for Instituting Post-Grant Review
Section 324(a) of the Patent Act sets forth the stand-
ard for instituting a PGR, and states that “[t]he Director
may not authorize a post-grant review to be instituted
unless the Director determines the information presented
in the petition . . . would demonstrate that it is more
1 The Director of the PTO intervened in this appeal
to support Telebrands’s positions on two issues—first, the
PTO advanced the Packard standard as the correct indef-
initeness standard in both examinations and PGR pro-
ceedings, and second, the PTO reiterated that decisions to
institute are nonappealable under Cuozzo Speed Techs.,
LLC v. Lee, 136 S. Ct. 2131 (2016). Prior to oral argu-
ment, however, the PTO moved to withdraw as interve-
nor, stating that “[t]he USPTO stands by the position that
the indefiniteness approach advocated in our brief is
correct in the context of examination. But because the
[Board]’s approach to claim construction and indefinite-
ness during post-issuance proceedings under the America
Invents Act is something the agency is actively consider-
ing, the Director has decided not to advocate for a particu-
lar approach in this appeal.” Tinnus Enters., LLC v.
Tinnus Corp., No. 17-1726, ECF No. 73, slip op. at 1–2
(Fed. Cir. Mar. 29, 2018).
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 9
likely than not that at least 1 of the claims challenged in
the petition is unpatentable.” In comparison, § 314(a)
imposes a lower standard for institution of inter partes
review (“IPR”) proceedings, stating that the Director may
institute an IPR only if he determines that the petition
“shows that there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.”
Tinnus argues that the Board exceeded its statutory
authority when it instituted the PGR because it applied
the lower, “reasonable likelihood” standard for instituting
IPRs rather than the higher, “more likely than not”
standard for instituting PGRs. Telebrands argues that
the question of whether the Board applied the incorrect
standard for institution is nonappealable under Cuozzo.
See Appellee’s Br. 16 (citing 35 U.S.C. § 324(e)). We need
not decide the appealability issue because, as explained
below, we would reach the question of whether the Board
erred in its final written decision regardless of whether
the institution decision is appealable.
As Tinnus notes, the Board recites the “reasonable
likelihood” standard at various places in its decision
granting institution. See, e.g., Board Institution Decision,
at *8 (“Petitioner has demonstrated a reasonable likeli-
hood of prevailing under 35 U.S.C. § 112(b)[.]”); id. at *14
(“For the foregoing reasons, we determine that Petitioner
has established a reasonable likelihood of prevailing
under 35 U.S.C. § 103(a)[.]); id. (“Petitioner also has
established a reasonable likelihood of prevailing under 35
U.S.C. § 112(b)[.]”). Although these statements may be
imprecise, they do not amount to error because the Board
made specific findings and an ultimate determination
under the correct standard recited in § 324(a).
For example, when assessing the indefiniteness
grounds, the Board found that, “[d]ue to the ambiguity in
both how much volume a container holds when it is ‘sub-
10 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
stantially filled’ and how much ‘shaking’ the hollow tubes
must be subjected to, a skilled artisan would be unable to
determine whether a given apparatus does or does not
have the shake-to-detach feature[.]” Id. at *8. Addition-
ally, the Board concluded that it was “persuaded at this
stage of the proceeding that the [disputed claim language]
is indefinite.” Id. at *7. Further, when assessing the
instituted obviousness grounds, the Board “determine[d]
that [Telebrands] ha[d] provided adequate articulated
reasoning with rational underpinning to support a legal
conclusion of obviousness . . . based on the combined
teachings of” the prior art. Id. at *13. These statements
indicate that the Board made specific findings under the
correct, “more likely than not” standard.
Indeed, the Board stated the correct standard in its
ultimate determination that “the information presented
in the Petition demonstrates that it is more likely than
not that [Telebrands] would prevail in showing that the
challenged claims . . . are unpatentable.” Id. at *1.
Thus, even if this issue were appealable, we would
find that the Board did not err in instituting the PGR
because it made explicit determinations under the correct,
“more likely than not” standard; references to “a reasona-
ble likelihood” were harmless.
B. The Board Erred in Finding
the ’066 Patent Indefinite
The definiteness requirement, set out in 35 U.S.C.
§ 112(b), states that the “specification shall conclude with
one or more claims particularly pointing out and distinct-
ly claiming the subject matter which the inventor or a
joint inventor regards as the invention.” Indefiniteness is
a legal question with underlying factual determinations.
Azko Nobel Coatings, Inc. v. Dow Chemical Co., 811 F.3d
1334, 1343 (Fed. Cir. 2016). We review the Board’s legal
conclusions de novo and its underlying findings of fact for
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 11
substantial evidence. In re Baxter Int’l, Inc., 678 F.3d
1357, 1361 (Fed. Cir. 2012).
In Nautilus, the Supreme Court articulated the
standard for whether a claim in an issued patent meets
the definiteness requirement under § 112, ¶ 2, now §
112(b). 134 S. Ct. at 2129. There, the Supreme Court
stated that it “read[s] § 112 . . . to require that a patent’s
claims, viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of
the invention with reasonable certainty.” Id. The Court
specifically addressed indefiniteness in the context of
issued patent claims asserted in a district court litigation.
Id. at 2126–27. The Supreme Court did not expressly
limit its holding to that context, however.
In Packard, which pre-dates Nautilus, we addressed
indefiniteness in a different context. There, we resolved
the limited question of “what standard for indefiniteness
should the [PTO] apply to pre-issuance claims[.]” 751
F.3d at 1309 (emphasis added). We held that an examin-
er may properly reject a pending claim as indefinite if it
“contains words or phrases whose meaning is unclear.”
Id. at 1309–10. We based our holding, in part, on the
PTO’s examination function “to ensure compliance with
the statutory criteria” during the pre-issuance process,
and the “substantive interaction” that occurs between the
examiner and the applicant during prosecution. Id. at
1311-12. The PTO continues to apply this standard today
for pre-issuance assessment of indefiniteness. Manual of
Patent Examining Proc. § 2170.02.
We expressly acknowledged in Packard that, at that
time, the Supreme Court was reviewing in Nautilus the
question of what indefiniteness standard should apply to
issued patents; we therefore decided the question before
us in Packard “without regard to the proper formulation
of the judicially-applied indefiniteness standard that may
12 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
be appropriate for post-issuance assessment of indefinite-
ness[.]” Id. at 1312-13, (emphasis added).
Here, Tinnus argues that the Board erred in applying
Packard to assess the indefiniteness of its issued patent
in the context of a PGR. Telebrands responds that the
Packard standard should apply in this context because
post-grant review proceedings share more similarities
with examinations than with district court litigations.
Neither party points to any binding precedent that direct-
ly addresses this question, and the PTO has not promul-
gated a rule addressing which standard should apply.
Importantly, moreover, neither party explains why a
choice between the two standards would affect our review
of the final written decision. 2
In his motion to withdraw as intervenor, the Director
stated that the “[Board]’s approach to claim construction
and indefiniteness during post-issuance proceedings
under the America Invents Act is something the agency is
actively considering[.]” No. 17-1726, ECF No. 73, slip op.
at 1 –2. This suggests that the PTO may promulgate
rules surrounding this issue in the future. Indeed, the
PTO recently issued a notice of proposed rulemaking for
claim construction that “proposes to replace the broadest
reasonable interpretation (‘BRI’) standard for construing
unexpired patent claims in [post-grant] proceedings with
a standard that is the same as the standard applied in
federal district courts[.]” Changes to Claim Construction
Standard for Interpreting Claims In Trial Proceedings
Before the Patent Trial and Appeal Board, 83 Fed. Reg.
21,221 (proposed May 9, 2018) (to be codified at 37 C.F.R.
2 After the Supreme Court decided Nautilus, the
appellant in Packard petitioned the Supreme Court for
writ of certiorari to review this court’s decision. Packard
v. Lee, 135 S. Ct. 2310 (2015). The Supreme Court denied
the petition. Id.
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 13
pt. 42). While that notice does not address indefiniteness,
it does indicate that the Director is committed to reas-
sessing questions such as that presented here.
We need not decide which standard governs PGRs
here, because Tinnus concedes that the standard is not
dispositive because we may resolve this case in its favor
under Packard. See Appellant’s Br. 33 n.4 (arguing the
Board incorrectly decided indefiniteness under the Pack-
ard standard “for the same reasons discussed here under
Nautilus[.]”); see also Oral Arg. at 1:56−2:06,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-1726.mp3 (Q: “If we find this not indefinite, even
under Packard, isn’t that enough for you? A: It would be,
your honor . . . .”).
We, thus, await an appropriate case to resolve any
apparent inconsistency between the two indefiniteness
standards—one where the result actually turns on such a
resolution and any views we express would not be dicta.
At that time, we will consider any rulemaking from the
Director on the matter.
1. The ’066 patent is not indefinite under either
Nautilus or Packard
We find that the Board erred in its ultimate legal de-
termination that “substantially filled” is indefinite be-
cause the claim language, specification, and prosecution
history of the ’066 patent provide objective boundaries for
understanding the disputed term under either Nautilus or
Packard.
As a threshold matter, we find that use of the relative
term “substantially” within the disputed claim term does
not render the term indefinite. We have explained “that
relative terms such as ‘substantially’ do not render patent
claims so unclear as to prevent a person of skill in the art
from ascertaining the scope of the claim.” Deere & Co. v.
Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012).
14 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
Rather, “[a]s long as claim terms satisfy [the Nautilus]
test, relative terms and words of degree do not render
patent claims invalid.” One-E-Way, Inc. v. Int’l Trade
Comm’n, 859 F.3d 1059, 1063 (Fed. Cir. 2017). Here, the
claim term “substantially filled” satisfies the Nautilus
standard because, as explained next, the claim language,
in view of the specification and prosecution history, in-
form a person of ordinary skill about the scope of the
invention.
We begin our analysis with the claim language. At
first blush, the claim term “substantially filled” appears
to reference the volume of the container. When read in
the context of the surrounding claim language, however,
it is clear that “substantially filled” serves to inform a
person of ordinary skill of the strength of the elastic
fastener disclosed in claim 1. The relevant claim lan-
guage recites:
a plurality of elastic fasteners, each elastic fasten-
er clamping a respective one of the plurality of
containers to a corresponding hollow tube, and
each elastic fastener configured to provide a con-
necting force that is not less than a weight of one of
the containers when substantially filled with wa-
ter, and to automatically seal its respective one of
the plurality of containers upon detaching the
container from its corresponding hollow tube, such
that shaking the hollow tubes in a state in which
the containers are substantially filled with water
overcomes the connecting force and causes the con-
tainers to detach from the hollow tubes thereby
causing the elastic fasteners to automatically seal
the containers, wherein the apparatus is config-
ured to fill the containers substantially simulta-
neously with a fluid.
’066 patent at col. 6, ll. 30-51 (emphases added).
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 15
The claim language indicates that, to meet the limita-
tion of “elastic fastener” with the requisite “connecting
force,” the apparatus must be “substantially filled” such
that it detaches when shaken. Thus, a person of ordinary
skill would understand that, to avoid infringement, one
could select an elastic fastener that is either weak enough
that the container would fall off without shaking or strong
enough that a container would not fall off despite shaking.
As Tinnus notes, this reading of the claim language is
supported by Dr. Kudrowitz’s testimony that “whether a
container is substantially filled with water is directly
related to the ability to shake and detach that container,”
and that a person of ordinary skill in the art “would
understand that there was a definitive point at which
there would be too much water such that the containers
would detach without shaking, thereby not practicing the
claim.” Appellant Br. at 38. This reading is also con-
sistent with statements in the specification that describe
various ways in which a container could detach from the
tubes, including via gravity, pulling, and shaking. These
embodiments serve to inform a person of ordinary skill of
the objective boundaries of the claimed limitation.
For example, the specification describes an elastic fas-
tener that is weak enough to detach without shaking
when it states that, in some embodiments, “when filled
containers 18 reach a threshold weight, they slip off tubes
16 due to gravity.” ’066 patent, col. 3, ll. 65–col. 4, ll. 5.
This type of elastic fastener would not infringe claim 1
because it would detach without shaking and therefore,
would not be “substantially filled.”
In another instance, the specification contemplates an
elastic fastener that is strong enough that it will not
detach despite shaking when it states that, in some
embodiments, “filled containers 18 may be detached by
pulling them away from tubes 16.” Id. at col. 3, ll. 50–51.
This type of elastic fastener also would not infringe claim
16 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
1 because it would not detach despite shaking and, there-
fore, would not be “substantially filled.”
Finally, the specification describes the claimed limita-
tion when it states that in other embodiments, “the con-
necting force holding filled containers 18 to tubes 16 may
be overcome by an upward acceleration on tubes, for
example, when they are shaken.” Id. at col. 3, ll. 52–57.
Unlike the other two embodiments, this last embodiment
describes the claimed limitation, and together, these
embodiments demonstrate that the ’066 patent is “precise
enough to afford clear notice of what is claimed, [and]
thereby ‘apprise the public of what is still open to them.’”
Nautilus, 134 S. Ct. at 2129 (quoting Markman v.
Westview Instruments, Inc., 517 U.S. 370, 373 (1996))
(alterations omitted).
The prosecution history provides further evidence
that the claim term is not indefinite. As stated above, the
original claims of the application that issued as the ’066
patent did not contain the disputed claim term. Rather,
the examiner added the language in an examiner’s
amendment in the Notice of Allowance. In the examin-
er’s reasons for allowance, the examiner stated that these
additions “define a configuration and functional capability
of the elastic fasteners that is not taught by [the prior
art]. In particular, the language beginning with ‘such
that shaking . . . ’ defines an upper limit of the connecting
force and thus defines the elastic fastener in a way that
distinguishes over [the prior art].” J.A. 107–08.
The examiner’s own remarks confirm that the claim
language informs a person of ordinary skill of the objec-
tive boundaries of the claim term. Additionally, we
presume that an examiner would not introduce an indefi-
nite term into a claim when he/she chooses to amend the
claim for the very purpose of putting the application in a
condition for allowance. See Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 939 (“It is presumed that
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 17
public officials do their assigned jobs”). Thus, we find
that the ’066 patent is not indefinite under the Nautilus
standard because the claims, viewed in light of the speci-
fication and prosecution history, inform a person of ordi-
nary skill about the scope of the invention with
reasonable certainty.
For the reasons stated above, we also find that the
Board erred in its ultimate legal conclusion that the claim
term is indefinite under Packard. Under Packard, “a
claim is indefinite when it contains words or phrases
whose meaning is unclear.” 751 F.3d at 1314. Here, the
claims, in the context of the specification, “notify the
public of what is within the protections of the patent, and
what is not.” Id. at 1313. Therefore, the claim term is not
indefinite under Packard.
The Board erred in its analysis when it read the dis-
puted claim term in isolation rather than in the context of
the surrounding claim language as § 112(b) requires.
Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343,
1350 (Fed. Cir. 2010) (“To comport with § 112's definite-
ness requirement, the boundaries of the claim, as con-
strued by the court, must be discernible to a skilled
artisan based on the language of the claim, the specifica-
tion, and the prosecution history, as well as other
knowledge of the relevant field of art.”). This led the
Board to assume that “substantially filled” refers to the
volume of the container. As noted above, when read in
the context of the surrounding claim language, “substan-
tially filled” does not refer to the volume of fluid in the
container, but rather further defines the elastic fastener
limitation. See Hill-Rom Servs., Inc. v. Stryker Corp., 755
F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in
view of the specification, of which they are a part, we do
not read limitations from the embodiments in the specifi-
cation into the claims.”).
18 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
This error infected the rest of the Board’s analysis
and led it to conclude that the claim term is indefinite
under Packard on “several levels.” Telebrands, 2016 WL
7985419, at *7. We address each aspect of the Board’s
analysis below.
First, the Board found that “the [s]pecification con-
sistently teaches that whether a container is ‘filled’ de-
pends, subjectively, on whether a desired size or volume
has been reached.” Id. at *7. In support, the Board cited
various instances where the specification recites detach-
ing the containers when they reach a “desired size.” Id. at
*7 (quoting ’066 patent, col. 3, ll. 48–51 (“After containers
18 have reached a desired size or volume, they may be
detached from tubes 16. In one example embodiment,
filled containers 18 may be detached by pulling them
away from tubes 16.” (emphasis added)); col. 4, ll. 6–9 (“In
some embodiments, containers 18 may be marked with
volumetric measurements, and fluid flow may be turned
off when the fluid has filled containers 18 to a desired
volume.” (emphasis added)); col. 4, ll. 60–63 (“When
containers 18 have reached a desired size and/or they are
filled with the desired volume of fluid, they may be re-
moved from tubes 16. They can be removed . . . by shaking
them off.” (emphasis added)); col. 5, ll. 43–46 (“When fluid
fills container 18A to a desired volume, for example, as
indicated by volumetric measurement marking 44, con-
tainer 18A may be detached from tube 16A.” (emphasis
added))).
Again, the Board mistakenly interprets these state-
ments in the specification divorced from the surrounding
claim language of the disputed claim term. The claim
language clearly sets forth that a container is substantial-
ly filled based not on the size or volume of the container,
but rather on whether the container overcomes the con-
necting force of the elastic fastener such that it detaches
upon shaking. Further, in Tinnus II, we found it signifi-
cant that the “specification . . . does not define or equate
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 19
‘substantially filled’ with ‘desired size.’” 846 F.3d at
1206. 3 Rather, we concluded, as we do now, that the
claims themselves teach that, “if the balloons detach after
shaking, then they are ‘substantially filled.’” Id. Thus,
we adopt our reasoning in Tinnus II to find that these
statements from the specification do not render the claim
term indefinite.
Telebrands argues that we must review the Board’s
determination that the term “filled” is indefinite for
substantial evidence because it is based on the Board’s
subsidiary factual finding that “the level of water in a
‘substantially filled’ container is not ascertainable or
measurable by reference to any objective standard.”
Appellee Br. at 40 (quoting J.A.32). The Board’s ultimate
determination of indefiniteness, however, is reviewed de
novo. Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc.,
554 F.3d 1010, 1022 (Fed. Cir. 2009); cf. Cuozzo, 135 S.
Ct. at 841 (“[t]he district judge, after deciding the factual
dispute, will then interpret the patent claim in light of the
facts as he has found them. This ultimate interpretation
is a legal conclusion.”). Even if we find that substantial
evidence supports the Board’s factual finding as to the
level of water, we need not defer to the Board’s ultimate
legal determination that this finding renders the claim
term indefinite. Here, the inability to measure the level
of water is ultimately irrelevant to whether the claim
term is indefinite because a person of ordinary skill may
still determine if a container is “substantially filled” if the
3 While our decision in Tinnus II has no preclusive
effect because the indefiniteness issue there was embed-
ded in a preliminary injunction analysis, and thus in-
volved a different burden of proof and different standard
of review than the issue presented in this case, 846 F.3d
at 1205–06, we still find the merits of our reasoning from
Tinnus II persuasive to our analysis here.
20 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
balloon detaches upon shaking. Thus, the Board’s factual
finding does not change our conclusion that the claim
term is not indefinite.
Second, the Board found that claim 1’s use of “ex-
pandable containers” adds a second level of ambiguity
because “neither claim 1 nor the [s]pecification provides
an objective standard for measuring the scope of [the
disputed claim term] as applied to an expandable contain-
er.” Telebrands, 2016 WL 7985419, at *10. In support,
the Board points to the testimony of Tinnus’s expert, Dr.
Kudrowitz, and states that his analysis “highlights [this]
second level of ambiguity.” Id.
Here, we find, as we did in Tinnus II, that the claim
language and the specification of the ’066 patent clearly
set out the objective boundaries for the claim term in the
context of expandable containers such as balloons—i.e., “if
the balloons detach after shaking, then they are substan-
tially filled.” 846 F.3d at 1206. The Board’s conclusion
that Dr. Kudrowitz’s testimony highlights “a second level
of ambiguity” does not persuasively counter the weight of
the intrinsic evidence.
Telebrands argues that we must review the Board’s
finding that an expandable container adds a second layer
of ambiguity for substantial evidence because the Board’s
reasoning is based in its assessment of testimony from Dr.
Kudrowitz and Telebrands’s expert, Dr. Kamrin. As
Tinnus notes, however, “Telebrands attempts to cloud the
issue by claiming that the Board’s alleged findings of fact
are the real reason why the Board reached its conclusion,”
when instead, “none of the ‘facts’ raised by Telebrands
served as the basis for the Board’s decision.” Reply Br. at
14. We agree with Tinnus at least as to Dr. Kamrin’s
testimony because nowhere in the Board’s discussion of
this purported “second level of ambiguity” does the Board
reference or cite to Dr. Kamrin’s testimony.
TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION 21
Regardless, we need not defer to the Board’s assess-
ment of Dr. Kamrin’s testimony or of Dr. Kudrowitz’s
testimony when it is inconsistent, as it is here, with the
intrinsic evidence. See Homeland Housewares, LLC v.
Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017)
(“[W]e must disregard the testimony of an expert that is
plainly inconsistent with the record, or based on an incor-
rect understanding of the claim[s]” (citations and internal
quotation marks omitted)). Here, we find that the Board’s
assessment that the expert testimony “highlights a second
level of ambiguity” is inconsistent with the intrinsic
evidence, because the intrinsic evidence sets out the
objective boundaries for the claim term within the context
of expandable containers. Therefore, we need not defer to
the Board’s assessment of the expert testimony.
Third, the Board found “that the claims are unclear
and indefinite for the additional reason that there is no
standard by which one of ordinary skill in the art can
measure ‘substantially’ so as to understand what is
claimed when the claims are read in light of the
[s]pecification.” Telebrands, 2016 WL 7985419, at *14.
As stated above, this court has repeatedly confirmed that
relative terms such as “substantially” do not render a
patent claim per se indefinite. Deere, 703 F.3d at 1359.
Here, the claim language and the specification guide the
determination of whether a balloon is “substantially
filled.” Thus, we are not persuaded that the use of “sub-
stantially” in claim 1 renders the claim indefinite.
III. CONCLUSION
We have considered the parties’ other arguments and
find them unpersuasive. 4 For the foregoing reasons, we
4 Tinnus also argues that the PGR proceeding vio-
lated Tinnus’s constitutional rights. We reject this argu-
ment in view of the Supreme Court’s decision in Oil States
22 TINNUS ENTERPRISES, LLC v. TELEBRANDS CORPORATION
reverse the Board’s finding that the ’066 patent is un-
patentable as indefinite and remand for further proceed-
ings consistent with this opinion and the Supreme Court’s
intervening holding in SAS Institute Inc. v. Iancu, 138 S.
Ct. 1348 (2018).
REVERSED AND REMANDED
COSTS
No costs.
Energy Services, LLC v. Greene’s Energy Group, LLC, 138
S. Ct. 1365, 1373–74 (2018), holding that inter partes
review proceedings do not violate a patent owner’s consti-
tutional rights because patents are the grant of a public
franchise. We find that the Supreme Court’s holding in
Oil States applies equally in the context of PGR proceed-
ings.