TINNUS ENTERPRISES, LLC V. TELLEBRANDS CORP.: Jan. 24, 2017. Before Moore, Wallach, and Stoll.

Takeaway:

  • Instruction manuals that teach a claim element can be used as circumstantial evidence of a customer’s direct infringement.
  • Claim terms are not indefinite when the claims themselves provide parameters for determining whether the disputed limitation is present in an accused product.
  • There is no motivation to combine prior-art references to show obviousness when a reference from a different field of endeavor is not reasonably pertinent to the problem addressed by the asserted patent claims.
  • Evidence of irreparable harm from before the date a patent issues can be circumstantial evidence of identical post-issuance harms sufficient to support injunctive relief.

Procedural Posture:

The Magistrate Judge in the E.D. Tex. issued a report and recommendation recommending granting plaintiff Tinnus’s motion for a preliminary injunction barring defendant Telebrands from selling its accused product. The district court overruled the defendant’s objections, adopted the Magistrate Judge’s findings, and granted the injunction. The CAFC affirmed.

Synopsis:

  • Injunctions-Likelihood of Success-Direct Infringement: The CAFC affirmed the district court’s grant of a preliminary injunction, ruling first that the report and recommendation adopted by the district court did not clearly err in finding that plaintiff Tinnus was likely to succeed in proving infringement. It was not clear error for the district court to decline to construe the terms “not less than” and “connecting force,” because the record showed Tinnus was likely to prove infringement regardless of the construction adopted for these terms. The district court did not clearly err in its analysis of the claim terms describing tubes “attached” to a housing, because the court applied the plain and ordinary meaning for the term “attached,” i.e., “connected or joined to something,” and found that the accused product’s tubes must be “connected to” the housing’s holes in order to function properly. Finally, the district court did not clearly err in relying on the description of the accused product in an instruction manual to show the presence of a “shake to detach” claim limitation, because the manual was at least circumstantial evidence sufficient to show infringement.
  • Injunctions-Likelihood of Success-Indefiniteness: The district court did not plainly err in finding that the claim term “substantially filled” is not indefinite. The patent did not merely create a “subjective standard” for determining when a container is “substantially filled,” as the defendant argued. Instead the claims themselves provided “specific parameters” for making this determination by teaching that a container is “substantially filled” with water if the claimed balloons are sufficiently full that they detach after shaking. Although the PTAB had issued a Final Written Decision in a co-pending PGR proceeding finding this claim term indefinite, the CAFC noted that the PTAB’s decision was not binding and not persuasive.
  • Injunctions-Likelihood of Success-Obviousness: The CAFC held that the district court did not clearly err by finding that the combination of the cited Cooper, Saggio, and Lee references did not render the claims obvious. There would have been no motivation to combine Lee, which described an endoscopic balloon insertion device for treating obesity, with the other cited references because it was not from the same field of endeavor or reasonably pertinent to the problem addressed in the asserted patent, i.e., how to rapidly fill multiple containers with fluid.
  • Injunctions-Irreparable Harm: Finally, it was not clear error for the district court to hold that the plaintiff would be irreparably harmed absent an injunction. The district court did not err in relying on evidence of consumer confusion, harm to reputation, and loss of goodwill pre-dating the issuance of the patent, because that evidence was at least circumstantial evidence demonstrating the possibility of identical harms once the patent issued. And, in any case, the irreparable harm analysis did not depend solely on evidence pre-dating the patent, but also relied on evidence of harm to the plaintiff’s reputation based on customer reviews dated after the patent issued.