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