First AIA Lawsuits

by Dennis Crouch

In one of the first lawsuits involving an AIA patent is Tinnus Enterprises, LLC et al v. Telebrands Corporation et al., 15-cv-00551 (E.D.Tex. 2015).  In that case, Tinnus alleges that Telebrands’ Baloon Bonanza infringes its U.S. Patent No. 9,051,066 – covering a “system and method for filling containers with fluids.” Bed Bath & Beyond is also a defendant.

The utility application was filed in September 2014 (claiming priority to a pair of February 2014 provisional applications) and issued in June 2015.  As part of the Track-One filing, the PTO issued the first office action within three months of filing of the non-provisional application.

There may be interesting issues raised in the case. My understanding is that the utility application includes some amount of disclosure and claim structure not found identically in the original provisional applications.  After the provisional was filed but before the non-provisional filing, the patentee admittedly (1) “began taking steps to manufacture the Bunch O Balloons product using certain Chinese contractors. The first batch of product was manufactured [and sales began] in June 2014.”  In addition, the patentee publicly launched a successful Kickstarter campaign prior to the non-provisional filing.  A number of questions arise if we assume (or it turns out) that those disclosures included information different from the provisional application.  Will the Chinese-contracting, delivery, and sales count as prior art under 102(a)(1); and are the disclosures covered by the grace period found in 35 U.S.C. 102(b)(1)?

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35 U.S.C. 102

(a) NOVELTY; PRIOR ART.–A person shall be entitled to a patent unless– (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention …

(b) EXCEPTIONS.– (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.–A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if– (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

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Another AIA-patent case captioned Likwid Concepts v. Linzer (D.N.J.) was voluntarily dismissed without prejudice.  (U.S. Patent No. 9,084,474).

21 thoughts on “First AIA Lawsuits

  1. Curious about the priority issue, I had a look at the only independent claim and then see if ist subject matter is in one or the other of the two priority filings.

    I find that it is, so the priority point is no longer very exciting.

    But 112 definition, and patentability over the art at the priority date, might still be interesting issues. The claimed subject matter is an apparatus which has a plurality of depending tubes, each to fill an empty container that has been slid upwardly onto the open lower end of each such tube. The claimed contribution to the art (whether apparatus or method) is to shake the depending container-filling tubes, to cause the containers, when filled up with water, to slide downwardly, off the respective tubes. No wonder the ISA declined to search it.

    What comes to my mind is, inter alia, the machine used for milking a cow in a milking parlour, and what a cow does, that decides it no longer wants to be milked by the machine. It shakes it off.

    So even though the apparatus as claimed might not have been old or obvious to the USPTO, it might have been to any self-respecting and reasonably well-informed milking cow.

      1. Les, the claim is not confined to water. It recites “fluid”. It is just that, according to the claim, the apparatus has to possess the technical-functional feature that, when you proceed to fill the container with water, you can thereafter shake it off the filling tube.

        Now tell me, in your worldview, is milk a “fluid”, does a cow udder exhibit a plurality of depending tubes, and does not the milking machine have a plurality of containers, each one of which is advanced upwardly to respectively receive one of those depending tubes? If so, why is it not within the ambit of the claim?

        Over to you Les.

        1. All valid points Max, which I understood prior to my post. Its just that for a document to be in an “analogous art” it must have recommended itself to one of merely ordinary skill in the art, looking to solve the problem address by the invention, at the time the invention was made. The breadth of the claim (drafted I’m sure by an IP professional) not withstanding, I think there is an argument that the inventor was looking to solve problems related to the filling of water balloons (fluid from a high pressure source) and that milking machines (which suck milk from the source) would not have recommended themselves to one of merely ordinary skill in the water balloon filling art.

        2. I submitted a rely to you Max. But it is awaiting moderation. I imagine it is being moderated because it uses a four letter word to describe the low pressure based operation of a milking machine…

  2. The corresponding filing under the PCT is WO2015118518. The international search report issued after the US patent issued. It finds that four issued US patents deprive all the searched claims of inventive activity. I see only two of those four listed as prior art on the issued and asserted US patent. Interestingly, the IPEA is the Australian PTO and the applicant’s representative is a firm in Wellington, New Zealand.

    Speed is of the essence, of course, when attempting to tread on infringement but how much of a presumption of validity do the issued claims of a US patent have, when they issued before there was any search report other than that at the USPTO?

    Also, I wonder how much difference in substance (rather than mere scope) there was, between i) the claims of each of the (two) priority filings ii) the non-pro as filed and iii) the issued US patent. The thing about FtF is that the ONLY means of determining priority between rival inventors is the substantive content of each of the various PTO filings. With time, the courts discover an inevitability, that very single word counts. Thus it is, that the summit of the FtF patent attorney’s professional skill is drafting.

    Indeed, this case looks interesting.

    1. “peed is of the essence, of course, when attempting to tread on infringement but how much of a presumption of validity do the issued claims of a US patent have, when they issued before there was any search report other than that at the USPTO?”

      As much as it would have if application were only made in the U.S., I suppose.

    2. Note also that “inventive activity” is a different standard than novel and not obvious.

      Still further, an initial search report (PCT or otherwise) is not the final word in any jurisdiction.

  3. What is the thinking that any disclosure to the Chinese supplier or Kickstarter wouldn’t be included under the (b)(1) exception?

    1. Kickstarter may have been a disclosure more than a year prior to the non-provisional filing (or more that a year prior to both the provisional and non-provisional). We don’t have that date from the post above.

  4. I’m not sure what the issue is here.

    Did the kickstarter campaign describe the claimed contraption more closely than did the provisional application?

    1. Les, I obviously don’t have all the facts at issue here. I have not analyzed what all was disclosed in Kickstarter that was not disclosed in the original provisional applications or how those disclosures relate to the eventual claims.

      1. Sorry Dennis –
        I meant that rhetorically.

        I’m sure someone is making great hay out of the lack of verbatim support in the provisional spec, while at the same time asserting that the kickstarter campaign means “the invention” was publicly known. I’m just guessing of course, but my money is on the provisional being at least as detailed as the kickstarter description. Since you didn’t give us a date for the kickstater description, I assume it is within one year of the provisional, but not of the non-provisional.

        If my assumption about the content of the provisional being at least as complete as the kickstarter campaign is correct, then if the kickstarter campaign amounts to the invention being publicly known, then the provisional has to be full support of the claimed invention.

        1. Oh…. I see now that the Kickstarter is dated July 22, 2014, a date after the provisionals and just a few months before the non-provisional filing…..

          So, I guess the whole ball of wax is whether the claims are entitled to the provisional date.

          I wonder what is allegedly missing from the provisional…..’cause the provisionals show a bunch of balloons connected to a pipe….and have a few pages of words and claims….

  5. Interesting? You bet. At least for an observer from the Fist to File Rest of the World. How will the USA get to grips with new 35 USC 102, in a case where the asserted claim is not found, verbatim, in the provisional, and commercial activity and disclosure started before the non-pro was filed. Will the grace period save what might under RoW FtF amount to shooting oneself in one’s own foot.

    I recall commentaries soon after EPC law came into force in the UK and displaced the pre-1978 patent law, to the effect that the outcome of the first case can affect for all time the development of the law thereafter, so that the precise facts of the first case can be of above-average historical significance. Hard cases make bad law, as they say, so what if the first case is indeed a “hard” case?

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