Posts Tagged: "Tinnus Enterprises v. Telebrands"

On Wednesday, May 30th, the Court of Appeals for the Federal Circuit entered a decision in Tinnus Enterprises v. Telebrands Corporation which reversed and remanded an earlier decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent covering the award-winning Bunch O Balloons toy developed by inventor Josh Malone. The Federal Circuit panel of Circuit Judges Kathleen…

Director Iancu is known to be engaging in something that might be called a listening tour, speaking with various interested parties and groups as he attempts to formulate his own strategies and anticipated rulemaking efforts. It is widely expected by insiders that Iancu will bring change to PTAB proceedings in an effort to realize a more balanced procedure; perhaps even sweeping change. That the USPTO is now openly announcing that they are actively reconsidering the PTAB’s approach to claim construction and indefiniteness should be welcome news to all inventors.

On November 21st, a jury verdict entered in the Eastern District of Texas awarded $12.3 million in damages to Tinnus Enterprises and ZURU Ltd. in a patent infringement case against major U.S. telemarketing firms Telebrands and its subsidiary Bulbhead.com. The verdict, which also carries a finding of willful infringement of the patents-in-suit, further upheld the validity of patents owned by Tinnus in stark contrast to findings which have issued by the Patent Trial and Appeal Board (PTAB) on those patents.

Tinnus argues in its appeal that the PTAB panel applied standards for inter partes review (IPR) proceedings to a trial that was instituted as a PGR. “In its institution decision, the Board incorrectly applied the lower ‘reasonable likelihood’ standard used for IPRs, rather than the higher ‘more likely than not’ standard governing PGRs,” Tinnus’ appeal reads, adding that the PTAB panel didn’t recognize this error in its final written decision.

The PTAB is openly refusing to follow the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., it has found a term previously determined definite by the Federal Circuit to be indefinite, and the Solicitor’s Office is siding with an infringer with a reputation as a knock-off artist over an independent inventor… But why doesn’t the USPTO follow Nautilus? Because the Patent Office feels that since they apply the broadest reasonable interpretation to claims that means that the indefiniteness standard set forth by the Supreme Court in Nautilus does not apply to the Office. Breathtaking!

The Federal Circuit, while deciding a preliminary injunction was properly granted, addressed the PTAB decision in its oral arguments and in its decision. In oral arguments Judge Moore stated, “You have to be able to say substantially, ‘cause there’s a million patents that use the word substantially.” And in their written decision the Federal Circuit explained: “We find it difficult to believe that 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.”