PTAB Indefiniteness Standard Is Different than the Federal Circuit’s

In Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018 (Dec. 30, 2016), the PTAB found the phrase “substantially filled” indefinite under 35 U.S.C. § 112(b) on post-grant review (PGR). In the course of reaching this conclusion, the PTAB (Patent Trial and Appeal Board) explained that the USPTO uses a different standard than the federal courts to determine indefiniteness under 35 U.S.C. § 112(b).

This is the second time in a week that the PTAB has invalidated a patent on § 112 grounds in a PGR (Post-Grant Review). The patent this time was US 9,051,066, directed to “a system and method for filling containers with fluids.” You might recognize this product if you’ve been to a kid’s summertime birthday party. It’s for filling a lot of self-sealing water balloons quickly.

Here is claim 1 of the ’066 patent:

An apparatus comprising:

a housing comprising an opening at a first end, and a plurality of holes extending through a common 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 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 corresponding hollow tube, and each elastic fastener configured to provide a connecting 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 thereby causing the elastic fasteners to automatically seal the containers,

wherein the apparatus is configured to fill the containers substantially simultaneously with a fluid.

The recitation at issue was: “a connecting force that is not less than a weight of one of the containers when substantially filled with water.” The Petitioner argued that this is indefinite under § 112(b) because the phrase “substantially filled” lacks objective boundaries. The Patent Owner responded that the plain meaning of the terms along with the Specification and testimony from its experts establish the boundaries of the claim term.

First, the PTAB held that the indefiniteness standard in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014)—not Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014)—applies for PGRs:

We do not understand Nautilus, however, 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 test for indefiniteness approved in Packard, which is applied by the USPTO in patent examination, sets a threshold for indefiniteness that demands at least as much clarity, and potentially more clarity, than the Nautilus definiteness requirement. See MPEP § 2173.02(I).

The PTAB found the claims indefinite under Packard since the term “filled” was not unambiguously defined in the Specification. “[T]he Specification consistently teaches that whether a container is ‘filled’ depends, subjectively, on whether a desired size of volume has been reached.” Thus, “[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.’”

Further contributing to the ambiguity, the PTAB was unable to resolve the claim language in the context of expandable containers.

[J]ust before bursting, the balloon or elastic fastener might not be strong enough to perform the required attachment and sealing functions due to the weight of the water in the container. At a lower level of expansion, however, … the same elastic fastener might be strong enough to provide “a connecting force that is not less than a weight of one of the containers when substantially filled with water,” as claim 1 requires.

Finally, the PTAB took issue with the term “substantially.” The panel explained that “the claims and Specification teach that whether a container is ‘filled’ depends, subjectively, on whether a desired size or volume has been reached.” Further, “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 Specification.”

Accordingly, the patent was invalidated as indefinite under § 112.

Lessons for Practice

  • The PTAB considers Packard, not Nautilus, to be the appropriate standard for AIA challenges under § 112(b).
  • Avoid using terms of degree, like substantially, in your claims. If you can’t avoid it, objectively define the term in the specification.
  • During patent preparation and prosecution, pay attention to which use cases fall within the scope of the claims and whether there are any conditions that could cause inconsistent results relative to the claim scope. Include appropriate definitions in the Specification to address such issues.

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